By this recommendation, a patentee whose claims are "infringed" before the patent issues, would have some degree of protection, while at the same time the public would be provided with a clear indication of its possible liability. The provision that a claim will not be held infringed unless it appears both in the application as first published and in the resulting patent should encourage the applicant, before publication, to present claims he considers patentable. The further requirements of an allowable published claim and actual notice would reduce public uncertainty as to possible interim liability. Also, an infringer would be provided with an opportunity to cease and desist before damages accrue. In exchange for the right to recover damages during this interim period, an applicant would have to give up any right to an injunction as to things made prior to issuance, and could recover no more than a reasonable royalty for any infringing acts occurring prior to the issuance of the patent. Under any circumstances, suit could not be brought before issuance of a patent. If an applicant should elect not to pursue an infringer for interim liability, by withholding the required notice, present remedies available after the patent issues would remain undisturbed. XVIII The term of a patent shall expire twenty years The term of a U.S. patent now extends for a period of seventeen years from the date of issuance. Measuring the patent term from this point encourages deliberate delays in the prosecution of applications, particularly those filed primarily for speculative reasons and those having little immediate value. Another effect can be the filing of continuing applications solely to delay the start of a patent term. 90-355 0-68-pt. 1 -7 33 The proposed change would induce the applicant to present claims promptly that he believes patentable and to avoid delaying the prosecution of the application. Since the term of a patent stemming from a continuing application would expire on the same day as one issued on its parent application, there would be less incentive to use a continuing application for the purpose of delay. Measuring the patent term from the earliest domestic filing date will bring U.S. practice into closer conformity with most foreign systems. This would become advantageous if the Paris Convention were to be modified to permit measuring from the earliest foreign filing date asserted (Recommendation No. XXXIV). XIX The term of a patent, whose issuance has been At present, whenever publication or disclosure of an invention by grant of a patent might be detrimental to national security, the application may be placed under secrecy order by the Commissioner of Patents. The applicant, provided he receives a notice of allowability, is entitled to compensation for use of the invention by the Government and for damages caused by the secrecy order. In determining this compensation, consideration has been given to the fact that the applicant may benefit by a delayed monopoly, running seventeen years from the date of issuance of the patent. With the patent expiring twenty years after its earliest effective U.S. filing date (Recommendation No. XVIII), an applicant would receive no such benefit. Accordingly, it is proposed to extend the term of such a patent for a period equal to the delay in issuance of the patent after notice of allowability caused by the secrecy order. XX The filing of a terminal disclaimer shall have This recommendation is intended to endorse the interpretation given the present statute, with regard to the filing of a terminal disclaimer to overcome a holding of double patenting, by the Court of Appeals for the District of Columbia Circuit. A contrary decision by the Court of Customs and Patent Appeals has created confusion in this area. The Commission supports the position that the granting of more than one patent on a single invention, even if there is a common inventor or assignee, would constitute, inter alia, an undue "extension of monopoly." While a terminal disclaimer would prevent the extension of monopoly in time, it would not preclude the undue extension of monopoly in scope. In this regard, it would not keep the patentee from "blocking" out a field, by successfully prosecuting applications covering otherwise unpatentable variations of what he already has patented. Further, it would discourage attempts by others to "invent around" the patented invention by developing modifications and improve ments. The granting of more than one patent on obvious variations of a single inventive concept also would minimize advantages to be obtained by the provision for in rem invalidity (Recommendation No. XXIII). Otherwise, a patent owner, even after claims in one such patent had been held invalid, still could threaten suit on similar claims in his other patents. XXI The importation into the United States of a The unauthorized importation into the United States, or sale or use, of a product made abroad by a process patented in the United States, does not now constitute infringement. A process patent owner may seek to have the offending product excluded from this country under the Tariff Act of 1930, on the ground that importation will tend to cause substantial injury to an efficiently and economically operated domestic industry. However, because of these requirements, the patent owner has little prospect for success. This recommendation would make it possible to prevent evasion, of the process patent owner's exclusive rights in the United States, by the practice of his process abroad and the importation of the products so produced into this country. XXII The licensable nature of the rights granted There is no doubt, in the opinion of the Commission, of the importance to the U.S. economy of both the U.S. patent system and the antitrust laws. Each is essential and each serves its own purpose within the framework of our economic structure. However, conflicts between the two have arisen. But this does not mean that the two systems are mutually exclusive, that a strong patent system is a threat to the antitrust laws, or that the latter cannot be effectively enforced so long as a patent system grants limited monopolies. On the contrary, the two systems are fully compatible, one checking and preventing undesirable monopolistic power and the other encouraging and promoting certain limited beneficial monopolies. In this way, each may easily achieve its objectives in a strong economy. The Commission, therefore, does not favor any proposal which would weaken the enforcement of the antitrust laws or which would curtail in any way the power of the courts to deny relief to a patent owner misusing the patent he seeks to enforce. However, uncertainty exists as to the precise nature of the patent right and there is no clear definition of the patent misuse rule. This has produced confusion in the public mind and a reluctance by patent owners and others to enter into contracts or other arrangements pertaining to patents or related licenses. No useful purpose would be served by codifying the many decisions dealing with patent misuse into a set of rules or definitions permitting or denying enforceability of patents in given circumstances. The risk of unenforceability is too great and such a codification is wholly unnecessary. All that the Commission believes to be required is explicit statutory language defining, for the purpose of assignments and licenses, the nature of the patent grant heretofore recognized under the patent statute or by decisional law. This is, the right to exclude others from making, using and selling the patented invention. The mere exercise, conveyance or license of these conferred rights should not in itself constitute misuse of a patent. A patent owner should not be denied relief against infringers because he either refused to grant a license or because he has exercised, transferred or licensed any of the conferred patent rights himself. This should not include immunity of even these conferred patent rights from the antitrust laws when the patent owner becomes involved in a conspiracy to restrain or monopolize com |