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It would seem then that the case is made that a few squeaky wheels (cases which are notorious because of some fact or personality) do not signify that the lubricants supplied the millions of wheels in the world are unsatisfactory. Likewise, the entire operation of the system cannot be seen by scaling up from that very small minority that are notorious cases. The possibility for multiplication of gross errors is too great! Even on scale-up, however, the positive value of the system—which has truly served the country as we know-is still evident!
This letter would be grossly incomplete if it did not urge that the remedy for the "problems" lies primarily in supplying the art to the examiner and in heavily punishing the few who are intentionally dishonest.
S. 1321 proposes a much greater burden be placed upon the public in its dealings with its government than in any other public dealings simply because, admittedly, there will always be dishonest persons amongst us.
9. The great majority of the chemical or chemistry-related inventions now sought to be patented are of non-reverse engineerable nature. This means that such inventions can be guarded as secrets if obtaining a patent is fraught with too much difficulty or if an application can result in public disclosure without obtaining a satisfactory patent. If kept secret, the "hordes" of scientists, chemists and engineers cannot know of them. These people will not be able to apply their talents to improving such inventions or to inventively designing around them. These remarks apply not only to the esoteric "chemical" inventions, but also to such inventions in electronics based upon esoteric treatment of materials, such as transistors, filaments, tubes, alloys, getters, and the like. Even in mechanical contrivances, there are assembly or adjustment "tricks of the trade" which may be held secret.
Accordingly, the publication of abandoned applications for patent should not be permitted except in special situations substantially as now provided in Section 122. This matter is now on appeal in the Fourth Circuit from a decision of the U.S. District Court in Alexandria, Virginia in a civil suit. Several associations, companies and persons presented information and arguments in the trial in support of the Patent Office which sought to prevail under the constitutionality of the Section. Section 122 should not be changed without careful consideration.
Under every circumstance the applicant or his assignee should have the full right to abandon his application prior to publication and maintain confidential his information disclosed in it, even after allowance of claims, if he is not satisfied that the system is securing to him his right to his invention or discovery as provided in the Constitution. See Congressional intent in Freedom of Information Act relating to receipt by government of information in confidence. Guaranteed this right, inventors will continue to come forth to seek patents.
10. A witness was asked by the chairman at the hearing why the business community does not sound off about the unsatisfactory nature of the product of the Patent Office. His response, which is not worthy of repetition, is in the record. The question made an erroneous assumption that business generally does not approve of the product of the Patent Office. Those organizations and persons who cite pertinent art to the Office and who prosecute vigorously on all issues, as can be documented from the files of issued patents at the Patent Office, will disagree that they are dissatisfied with the product. Their dissatisfactions are not of the general kind intimated by the chairman at the hearing.
Generally business wants to plan on a sound basis. It cannot go ahead on invalid patents and does not do so intentionally. Again, the broad picture must be viewed.
In closing this letter I am not to be understood to deny that much improvement in our Patent Incentive System is possible. However, the record should show the relative unbalance of the testimony with regard to points made in this letter.
S. 643 as distinguished from the "committee print" was a good bill. The Administration and the proposed bar bills have made additional changes which upon careful examinaion may be found to add improvement. S. 643 is more in tune with the reality of the administrative and functional operations of the Patent Incentive System, including the Patent Office, the licensing of patents and the judicial reviews of the patents and licensing arrangements involving patents.
There is attached to this letter an addendum noting a number of points relating to provisions of S. 1321, not noticed for hearing. Several statements,
presented at the hearings, made reference to such provisions of the bill as requiring study and hearings. Some alluded to a few points in this connection. No statement was addressed to the manifold provisions which are a departure from any bills earlier considered and from the present law. These comments and addendum are simply submitted so that the record will show that the bill, in my view, require additional study and hearings and not by way of being comprehensive or the result of final study of each provision of the bill. Indeed, the comments, prepared early in May, are not intended as final, but as notes with a view to initial preparation for hearings on the manifold principal new provisions of the bill. It is hoped that further study and hearings will be permitted before the subcommittee adopts provisions a good number of which are now viewed by me to be most likely disincentive in character.
I ask that this letter and its addendum be printed in full in the record as my personal reaction to the bill, statements and hearings of September 1963.
Thank you kindly.
PAUL L. GOMORY. P.S. The Administration bill, just in hand, in which certain key provisions have been read, will, it clearly appears, require considerable comment, upon further study!
WASHINGTON, D.C. P.S. To my letter of September 27, 1973, I am attachig my reasons for having patent licensing provisions as reprinted in the May 1972 ACTION. Please print this as part of my letter.
PAUL L. GOMORY.
JOURNAL OF THE ASSOCIATION FOR THE ADVANCEMENT OF INVENTION AND
PATENT LICENSING PROVISIONS
The time for action is now. I urge that the separate action be supported by all interested parties for at least the following important reasons.
1. Consumerism.—the consumer will benefit because the exchange of technological information taking place under increased licensing, as herein discussed, will permit to be produced by American industry better and lower priced products. This will lead to more competition.
2. Fight Against Inflation.—the production of better and lower priced products will aid in the fight against inflation since these products will compete for the increased flow of dollars.
3. More Job8.-more jobs will be created because there will be more inventions and/or products to be produced or to operate.
4. More Pay To Labor.--because the new improved technology will reduce other production costs, more will be left with which to pay labor increased wages.
5. Increased Competition Here At Home Among Domestic Organizations.the increased spread of technology, even in field of use licensing, will in each field produce new and better products at lower prices and thus will increase competition in each field of licensing.
6. Competition Here At Home Against Imports From Abroad.—this is siinilar to 5 above.
7. Competition Abroad By U.S. Organizations.—this again is similar to 5 above.
8. Environmental Improvement and Control.-Clearly, items 1-7 will considerably aid the technological leap forward required to improve and protect our environment.
9. Cities Problem-s.--by no means least, there are the cities problems. There is the decay, crime, drugs and added problems.
We cannot expand the fund of technology quickly enough to deal with the listed problems-for example, to develop antidrug drugs. Yet, there must be incentive to the patent holder to license various fields of use and in each field to those who would most quickly and most effectively develop the invention in the respective fields.
The continued inroads causing attrition of the “incentive" of the U.S. Patent Incentive System by lessening the value of patents, which are being made by those opposing the kind of legislation here favored, are detrimental to the solutions of the problems outlined above. When asked the question at the May, 1971, hearings, the Department of Justice spokesman could not point to any decision which would be overruled by the then discussed version of the Scott Amendments. Hearings May 13, Part 2, page 648, paragraph 2.
PAUL L. GOMOBY,
COMMENTS ON S. 1321-HART
The following are preliminary comments. Reference to the present Patent Code, other bills or drafts should not be taken to mean that there has been made a word for word, line for line comparison at any time of anything which has been included herein.
SECTION 1 In line 4, the word "privilege” is not the word "patent". It is not a "privi. lege” which is to be granted. The word "right” appears in Article I, Section 8 of the Constitution. The patent secures this right under law.
SECTION 2 The establishment of the Patent Office as an independent agency will increase its exposure to the public and, generally, if properly operated, can be a tremendous influence for good of our country!
In line 30, after the word "promulgate" the words- -not inconsistent with law-would not have to be implied. The words are in the present Code.
At (d), line 14, page 3, the establishment of a Public Counsel will in effect establish within the Patent Office a second Patent Office and a second examining staff! The Patent Office operation will be hampered probably more than it will be helped. The budget of the Patent Office will have to be considerably enlarged.
Page 4, lines 7 et seq, the Public Counsel may be viewed by professional patent examiners and others in the Patent Office as constituting a “big brother.” Supervisors now exist in the Patent Office. There is a Law Solicitor's office. After all, quality still depends upon persons—we have those persons now. There is a very real possibility that the Patent Office will be mired down in-fighting with itself.
At (d), page 3, line 34, apparently the Public Counsel will determine what is “important, new, or developing areas of technology.” This could easily be applied to all technology since all technology can always be said to be developing. What a bureaucracy! It takes years to develop and to prove out which are the important cases-important in whose judgment?
In line 38, page 3, my copy reads in the margin "... another Commissioner of Patents !" Two standards of validity-two presumptions !
Page 6, line 12, though the decision, which has been appealed, may change the Senator's mind or the minds of others on this point, the fact is that this Section provides for indexing abandoned applications. See also Section 122, page 26, of the Bill.
At (f), lines 33–38, it is not a proper function of the Patent Office to disseminate information except by way of patents and trademarks and perhaps closely related matters. There is now an Office of Technical Services, a Library of Congress and a great many other government organizations disseminating
public technological and other public information ..."
At (b), page 8, lines 28–29, “. . . the quality of United States patents ..." gives rise to the possiblity that the Council may study validity of specific patents and possibly all patents. This should be carefully considered.
At (a), line 17, "evidence"--Does this mean that abandoned applications could be subpoenaed here if Section 6 and Section 122 have been redrafted to eliminate access to abandoned applications thereunder?
At (c)(1), maintenance fees will be an impossible burden to meet for many small individuals or organizations. So will the burden provided for in line 32 and in line 35. The little fellow will have to divulge his finances. Will this be made public? The bureaucracy here will have a tremendous clout to apply to the little fellow and to his attorney, if he can afford one. If he cannot afford one, he is really in poorer shape.
SECTION 100 At (g), lines 26 and 27, this would make unpatentable ". . . any obvious variation of or on such known composition of matter or the structure thereof ... whether or not the same is adapted for practicing a new use thereof." This is contra to the present law and cases such as Deutsche-Gold, In re Papesch, etc. which hold that unobvious properties or results might well be basis for a further product or a further process claim.
Comments on this Section, even cursorily made, would take too much time and space for this preliminary memo.
“... other tangible form ..." as in (a) and (b) is simply impossible. There is nothing to show that the "tangible form" is reasonably available in such manner as to promote the progress of the useful arts in this country when the "tangible form” is simply available in some out-of-the-way place in some outof-the-way country.
These subsections are in derogation of incentive to disclose here in this country.
“Use or knowledge abroad" is not use or knowledge in this country and should be most carefully considered. It is in this country that the progress of the useful arts should be promoted, according to the Constitution.
"... public use or on sale ... foreign country ..."-same comment.
The sections here discussed would require, and no doubt the courts would do so, to be interpreted and limited to “. reasonably available ..." in each case the reasonableness would have to be determined.
The subsections will probably be quite okay when all information is in a computer-years from now!
SECTION 102 At (e), lines 28-30, Section 119 gives benefit of earlier filing date in a foreign country.
SECTION 103 On page 17 in line 2, the meaning of "the prior art” will need to be determined afresh in view of changes in Section 102.
In S. 643, Section 103 reads "such prior art."
In the bill this section omits two sentences of S. 643, Section 103_these are important as instruction on intent to the courts.
Limits severely the earliest date upon which one can rely in succeeding applications in (a) lines 7-12.
Subsection (b) is, in effect, a first to file system unless and until “... reduction to practice . comes into play. Note that the last quoted phrase is not qualified as to the kind or kinds of reduction to practice.
At (c), the phraseology here should be reviewed in light of Section 100(g). It can be understood that the realization of patentable invention having been made may depend upon at-the-time recognition of the particular property.
At (d), what about a formula or other incorrect disclosure which is unaccompanied by an "enabling" discussion or description?
At (e), this subsection would derogate from the incentive to find the problem to which then the solution would be obvious. Common ground on such a subsection and no subsection at all might be to require reciting the situs of the problem in the claim and limit the "obvious concept” to that problem to get a patent.
SECTION 111 In lines 3 and 10_differs from S. 643 which reads "invention" instead of “... the subject matter sought to be patened.
In line 15, (3), this requirement is new over S. 643.
SECTION 112 Disclosure of all properties of results on which reliance will be based is required and for each claim the date of invention “... including any date of reduction to practice.” What a burden! In how many applications is a date relied on?
The requirement in line 19 to disclose "all" know-how known is a temendous burden. A telephone book may be needed unless data can be considerably condensed (at the applicant's and assignee's peril?).
Primary examiners could burden applicants with requests for affidavits on the slightest “basis".
In subsection (b) a statement in the specification of that "... which is obvious ..." from the prior art puts quite a burden on the applicant and his attorney. What if it is not properly met? How much is "obvious" from how much prior art? Lines 33–36 impose an impossible burden-yet claims issued will be too narrow. This will send nonreverse-engineerable inventions into secrecy with a return to the "guilds" especially in chemical inventions-alloys -special treatments of metals and other esoteric operations.
At (d), the requirement that the preamble describe "all" of the elements (not even limited to "essential" elements) is a make work. Skilled in the art read the specification and claims. They have done so for years.
At (d), page 20, line 14, the words "some or all" are questionable. A subcombination within a combination should be here considered. Consider a gyro subcombination in an overall combination.
The burden of this section is heavy. Not only do agents, attorneys and all other persons who participated and who are recognized under Section 31 need to file a statement, page 22, line 38, but each inventor must specifically identify which claim or claims he made where two or more inventors appear. See page 22, lines 18 and 19. Not to do so, it is possible, may later incur some penalty if facts prove otherwise. Thus, joint inventorships will have to be carefully scrutinized in each case. However, this could be helpful in an interference where a named inventor could, without more, corroborate.
Note on page 23, Section 116(b).
SECTION 119 At (a) (2), lines 18 and 19. This will be an additional work for foreign agents and applicants who intend to file in this country.
Page 26, lines 3 et seq. Appearing in the conjunctive, section (4) will require the second application to be filed prior to the filing of an appeal under Section 134. It would no longer be possible to file an appeal pending refiling of a case to avoid losing early date!
Subsection (E) would seriously limit the filing of a C.I.P. This point should be borne in mind when reviewing in detail, Section 122.
Additional to the comment made immediately ahead of this sentence note that abandoned patent applications “. . . and any papers filed during the prosecution thereof, shall be indexed and maintained available for public inspec