Further, the A.B.A. recommends the amendment of Section 103 by adding after "pertains" the phrase--at the time the invention was made—. The Association favors imposition on parties challenging the validity of a patent, the burden of establishing obviousness with clear and convincing evidence. Utility. The A.B.A. approves the statutory definition of the utility requirement for patentability to include utility in agriculture, commerce, industry, health, and research. Antitrust. The following positions have been adopted by the A.B.A.: (a) Disapproval of the prohibition of patent assignment and license restrictions as to selling price, geographical area, production and use, and authorizing the Section to oppose legislation for enacting any of such prohbitions. Such legislation was recommended on pages 16-18 of the report of the Temporary National Economic Committee, by a Section referendum in which 488 members opposed any such prohibition while 53 favored some degree of prohibition in one form or another. (b) The A.B.A. approved amendment of the Sherman Act to give legislative sanction to types of limitation in patent licenses now recognized as lawful, such as limitations to quantity, type, field of use, etc. Section 35 provides that patents in antitrust cases shall be presumed to be valid unless previously declared invalid, or unless person relying on patent is on reasonable notice that patent is invalid. Section 36 denied to the Government any retroactive holding that the patent is held invalid in an antitrust case. (c) The A.B.A. approves, legislation by which the licensable nature of patent rights should be clarified by specifically stating in the patent statute that applications for patents, patents, or any interests therein may be licensed in the whole, or in any specified part, of the field of use to which the subject matter of the claims of the patent are directly applicable, and FURTHER, that a patent owner shall not be deemed guilty of a patent misuse merely because he agreed to a contractual provision or imposed a condition on a licensee, which has (a) a direct relation to the disclosure and claims of the patent, and (b) the performance of which is reasonable under the circumstances to secure to the patent owner the full benefit of his invention and patent grant; and FURTHER, that the Section approves of legislation by which it is made clear that the "rule of reason" shall consititute the guideline for determining patent misuse. Fees. The A.B.A. basic position is that the Patent Office should be supported adequately to insure first class staffing, housing and equipment, that the Office should not be self-sustaining, and that fees charged should be reasonably apportioned according to the cost of providing particular services. I has opposed granting to the Commissioner a right to fix fees. Assignee Filing.-A.B.A. has adopted a resolution favoring this principle providing that the inventor or inventors be named in the application. Double Patenting.-The Association favors elimination of "double patenting" as a basis for refusing issuance of a patent where expiration will occur on the same date or as a result of a terminal disclaimer provided that the right to sue for infringement is maintained in the same legal entity. Publication.-A.B.A. has several positions. (a) Disapproves publication of applications prior to allowance of the claims without authorization of an applicant, or after allowance without first giving applicant a reasonable time within which to elect whether or not to abandon the application, thereby preventing publication. (b) Approves consideration by the Patent Office of patents and publications cited by the public within six months after publication of the application, provided that the applicant is given an opportunity ex parte to rebut any determination of unpatentability and also to amend the scope of any claim. (c) Disapproves mandatory publication of applications before issue for opposition purposes. (d) Approves a re-examination period of one year after the date of issue during which the public may cite prior art, with the opportunity given to applicants to rebut any determination of unpatentability and also to amend the scope of any claim. Patent Court.-The Association approves the appointment of lawyers experienced in patent law as judges of a federal court of record established under 23-932-74- -37 Article III of the Constitution and the utilization of such judges to sit in any Court of Appeals. It also favors revision of Titles 28 and 35, U.S.C. to confer sole jurisdiction to review Patent Office decisions on an Article III court of record (other than a District Court). Term of Patent.-In contrast to the 12 year proposed in S. 1321, A.B.A. favors a 20 year term running from the filing date of the application. Prior Art (Section 102).-The Association opposes inclusion of foreign knowledge, use or sale as prior art. Respectfully submitted, Hon. JOHN L. MCCLELLAN, Washington, D.C. T. L. BOWES, Chairman, Section of Patent, HUNTINGTON WOODS, MICH., September 12, 1973. DEAR SENATOR MCCLELLAN: In the little time that has been available since I was informed that, to be given full consideration, comments on Hart S.1321 "For the general reform and revision of the Patent Laws" should be submitted by September 15, time has not been available to prepare a finished presentation on the bill. I am, therefore, limiting myself to an outline of those provisions which I think are most objectionable. My basic objection to the bill is that I am afraid that it will be self-defeating and tend to destroy, rather than improve, the Patent System by reason of the very provisions intended to implement the commendable but impracticable objective of Sec. 1 "to assure that United States patents are of high quality and reliable." In the light of Sec. 41(b) (1) that “Fees shall be designed to affect an overall recovery in the range of 65 to 75 per centum of the costs of operation of the Patent Office" and the following and other implementing provisions, I am afraid that such a policy would make it prohibitively expensive and complicated to obtain a United States Patent: Sec. 3(d) would establish a Public Counsel and provide that "he shall consider and review all proceedings in the Patent Office." Secs. 23 and 24 would authorize the Primary Examiners and the Public Counsel to issue subpenas. Sec. 41 (c) (1) would provide that "Beginning the fourth year after a patent issues, the maintenance fee thereon shall be no less than $1,000, and shall increase annually by at least 25 per centum each year." Sec. 122 (a) would provide for the publication of pending and abandoned applications. Secs. 134 (c), 135 and 137 would establish opposition proceedings. Secs. 191 and 192 would provide for deferment of examination unless such examination is requested within five years of the effective filing date of the application. Such examination may be requested not only by the applicant but by any other person at the expense of the applicant except for the base examination fee. If the request is made by the Public Counsel or the United States, even this exception does not apply. The following provisions would, in my opinion, make unreasonable or excessive demands on applicants: Sec. 112(a) and (b) would require that the specification contain in addition to what is now required a number of new features including “all know-how known to the inventor and applicant necessary or commercially required to make, use and work the invention." Sec. 115(a) and (a)(3) would require not only the present oath by the inventor but reaffirmation of this oath after notice of allowance and further oath that "he is aware of no prior art or other information that he .. believes to be more pertinent than that considered by the Patent Office." This Section would also require the Attorney after notice of allowance to file a statement that he has no reason to believe the inventor not to be the original and first inventor and further statement to the same effect as the additional averment of the applicant's oath. Sec. 131(b) would provide that "The applicant shall . . . submit (1) copies of or citations to those patents, publications or other prior art or evidence of the state of the art which the applicant has considered in connection with such application for patent, the disclosure of which is necessary to make the application as a whole not misleading; and (2) an explanation as to why the claims in such application are patentable over such matter." Sec. 140 would provide that "In all proceedings in the Patent Office, the applicant shall have the burden of persuading the Office that a claim is patentable." The following Sections would, in my opinion, also confer excessive authority on the Commissioner and other Officials of the Patent Office: Sec. 3(a) would confer upon the Commissioner the authority to "define any and all terms used in this title in connection" with proceedings before the Patent Office. Secs. 23 and 24 would confer upon the Primary Examiner and the Public Counsel the authority to issue subpenas. In addition, there are several provisions which I also consider objectionable for various reasons: Sec. 122 (a) would provide for the publication of pending and abandoned applications. Sec. 153 (b) would reduce the term of patents to twelve years from the actual filing date in the United States or if priority is claimed on the basis of a corresponding foreign application from the filing date of the foreign application. Secs. 191 and 192 would provide for deferment of examination unless such examination is requested within five years of the effective filing fate of the application. Such examination may be requested not only by the applicant but by any other person at the expense of the applicant except for the base examination fee. If the request is made by the Public Counsel or the United States, even this exception does not apply. Sec. 263 would provide that no assignment by an employee to his employer of an invention made in the course of his employment shall be valid unless the employee receives in addition to his regular salary a minimum of 2 per cent of the profit or savings made by the employer. Sec. 4(a) of the Transitional and Supplementary Provisions provides that the Act shall apply not only to applications filed on or after its effective date but also to applications filed but not allowed before the effective date of the act. Sincerely Yours, A. F. BAILLIO. THE PATENT LAW ASSOCIATION OF CHICAGO, Re: S-1321 Mr. THOMAS BRENNAN, Old Senate Office Building, DEAR MR. BRENNAN: It is our understanding that the Senate Subcommittee hearings on the Patent System, which commenced on September 11, 1973, were limited to five proposed legislative changes in the patent laws, and we welcome the opportunity to comment on these five proposed changes which we understand are: 1. Modification of patent examination proceedings to provide public adversary hearings; 2. the creation of the Office of Public Counsel; 3. establishment of a system for deferred examination of patent applications; 4. revision of the patent fee schedule, including the establishment of maintenance fees; and 5. administrative restructuring of the Patent Office, including the proposed establishment of the Patent Office as an independent agency. 1. Modification of Patent Examination Proceedings to Provide Public Adversary Hearings Based upon our long experience with public adversary proceedings in Germany and Japan, our Association believes that our system would not be strengthened but would be weakened by such adversary proceedings. In those countries we have found that many interested parties automatically file oppositions to the issuance of any patent in the particular area of their endeavor. Some few of such oppositions have merit but most of them are merely to harass and prevent the patent applicant from obtaining a patent. It is not uncommon in Germany, for example, for opposition proceedings to run the entire term of the panett. We believe such proceedings are unnecessary and undesirable in our Patent System. It is felt that the prior proposal by Senator McClellan for reexamination after issue, Section 191 of S. 643 would help improve the quality of patents without the undesirable and lengthy adversary proceedings such as exist in the German and Japanese patent laws. Note that the proposed European Patent (of which Germany will be a member) incorporates a similar arrangement for opposition or reexamination after grant. 2. The Creation of the Office of Public Counsel Our Association approves in principle actions to improve the system of Patent Office examination and the quality of issued patents. However, it should be remembered that under our present system the Commissioner of Patents and his corps of Examiners, as well as the Board of Appeals, are in effect Public Counsel. The establishment of an office which could or would reexamine each application would not improve the system. The Public Counsel would become another tier in the examination process, and merely make it more cumbersome. The grant of subpoena power to Public Counsel to intervene in Patent Office examination procedures would unduly extensively delay the examination procedures, and greatly increase the cost to an inventor of obtaining a patent. It is believed that the most beneficial step to improve the quality of patents would be to upgrade the quality and number of Patent Office Examiners, and to improve the techniques for searching of the prior rights. 3. Establishment of a System for Deferred Examination of Patent Applications We are opposed to deferred examination in principle unless and until there is some viable reason for it. It would appear better to target in on a goal of examining and issuing U.S. patents within 18 months of application rather than going to a system such as is utilized in Germany, Holland, Japan and Australia. The reason for these aforementioned countries going to a deferred examination system was that they were in a hopeless situation with regard to their backlog. Such a backlog does not exist in the U.S. Patent Office. 4. Revision of the Patent Fee Schedule, Including the Establishment of Maintenance Fecs Our Association believes that the present method of setting fees for Patent Office Services, i.e., by Congress, is better than any of the proposed revisions suggested thus far. Our Association is opposed to maintenance fees. 5. Administrative Restructuring of the Patent Office, Including the Proposed Establishment of the Patent Office as an Independent Agency Our Association supports the proposal that would establish the Patent Office as an Independent Agency. Sincerely yours, JAMES R. SWEENEY. YOUNT, TAROLLI & WEINSHENKER, ATTORNEYS AT LAW, Cleveland, Ohio, September 25, 1973. Re: Written Statement of the Position on Selected Portions of the Patent Reform Act of 1973 (S. 1321). Hon. JOHN L. MCCLELLAN, Chairman, Subcommittee on Patents, Trademarks and Copyrights, U.S. Senate, Senate Office Building, Washington, D.C. DEAR SENATOR MCCLELLAN: This letter is written on behalf of the Board of Directors of the Cleveland Patent Law Association to advance comments concerning State Bill 1321, 93d. Congress, 1st Session. The Cleveland Patent Law Association has a membership of about 250 patent attorneys from Northeastern Ohio who represent a cross section of patentees from individual inventors to large corporations. Since the Subcommittee will be receiving many comments concerning the bili as a whole, the Board would like to concentrate its remarks on certain features of the bill which it believes are anti-competitive in that they favor entrenched oligopolists and which introduce excessive patent costs into the system. Senate Bill 1321 provides for re-examination proceedings of an application before issuance. Re-examination proceedings are often used anti-competitively by those entrenched in the market place to frustrate new competitors who have made an invention and need a patent to gain a foothold in the market. This is true when the system encourages: (a) Delaying the issuance or enforcement of a legitimate patent by instituting re-examination proceedings. (b) Taking specious appeals during the re-examination proceedings. (c) Imposing heavy financial burdens on new competition unable to carry the burden. Such tactics are particularly harmful to the small businessman and in areas of fast moving technology. Re-examination before issuance of the patent is susceptible of use as an anti-competitive tool particularly if the patent term is measured from the filing date of the application. Moreover, such a system requires the compulsory publication of pending patent applications. This poses an additional financial burden on the Patent Office, whose publication costs now run approximately 40% of the budget. It also fills the Examiner's search files with many redundant disclosures increasing not only the cost of classifying and maintaining the search files, but also the time of the Examiner to make a search. Accordingly, the Board favors re-examination only after issuance of the patent and without the right of the person instituting the re-examination to participate as a party in the proceedings. Re-examination after issuance will not make it possible to delay the patent of the legitimate patentee and will enable him to recover damages for infringement after issuance. The person instituting the re-examination proceedings should not have the right to participate as a party so that the proceedings cannot be used anti-competitively to unduly delay enforcement of the patent. Public Counsel may be given the right to participate in the post-issuance reexamination, thus protecting the public interest. The Board opposes any Public Counsel who has the duty to select applications prior to issuance for purposes of re-examination. The task of screening applications to select those which should be re-examined would not only be a Herculean (and expensive) task but also raises constitutional law questions and delays the issuance of legitimate patents. The latter is detrimental to the public if the patent term is measured from issuance and detrimental to the legitimate patentee if it is measured from filing. Without addressing ourselves to the desirability of modest maintenance fees, we do believe that the maintenance fees proposed by Senate Bill 1321 are excessive in magnitude, would work contrary to the purposes of the patent system, and would be particularly harmful to the small businessman. Here again the fees would become anti-competitive in an oligopolistic market. We favor proposed bills providing voluntary defensive publication of an application by an applicant who is only interested in preserving a right to an interference. From the foregoing you can see that we, in this letter, specifically oppose Sections 3(d), 41(c), 122, and 135 of S. 1321. While these considerations are being advanced at this time, representatives of the Cleveland Patent Law Association would welcome further opportunity to meet with the staff and discuss in depth the above considerations and other proposals of the bill. Also enclosed is a letter which was received from Merton H. Douthitt, Patent Counsel for SCM Corporation, Glidden-Durkee Division, and directed toward many of the points of the bill on which we as Directors of the Cleveland Patent Law Association have not taken a formal position. Mr. Douthitt is now President-Elect of the Cleveland Patent Law Association. Very truly yours, J. HERMAN YOUNT, JR., President, Cleveland Patent Law Association. |