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SECTION 23 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 trememdous 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.
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. 613, 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 115 is quite detailed.
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).
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
tion and copying.” On April 26, Judge Oren Lewis in the United States District Court, Alexandria, Virginia, decided against the Plaintiff in Sears v. Commissioner of Patents. An appeal has been taken. I, personally, could not adrise a client where there is a chance of maintaining secrecy to file an application for a patent in all those cases where some real doubt exists as to whether the Patent Office (courts) will issue a patent. Note that under subsection (c) pending applications shall be published promptly for public inspection. There will be no secrecy at all! Most cases where ultimately an application is now abandoned filing in the Patent Office will be about like publishing an article in a trade journal.*
Subsection (2), page 28, lines 3 and 4, is required patentability brief which places a burden on the Patent Office. The examiner should see the art cited by the applicant. Then, when the examiner applies the art is the proper time for the applicant or his attorney to make the argument. Admissions against interests, in the legal sense, should be considered here.
Lines 19–21, the Public Counsel can be invited to participate in any proceeding.
On page 29 subsection (e), lines 11 and 12, would prevent enlarging the scope of claims of the application once filed. Presumably one could refile.
In subsection (f) will the examination by two or more primary examiners, paid for by the applicant, permit removal of much of the restriction practice ?
Appeals to the Board of Appeals will be inter partes and the Public Counsel will brief and argue the case before the Board with respect to "any appeal taken by any applicant" except in interference situations in which the participation of the Public Counsel ". . . shall be at his discretion.” Primary examiners are not allowed to appear before the Board of Appeals.
Any party and this includes the Public Counsel may introduce new evidence before the Board of Appeals which may consider de novo or remand and under (d) the proceedings before the Board of Appeals are open to the public and a transcript of the hearing must be kept. So even before any claims are allowed the inventor may have un-"secure"d his "right".
Opposition proceedings of a modified character are provided. The opposer notifies and if he wishes submits explanation presumably in writing of prior art and he can appeal and he can elect not to be identified.
During the period of Section 135, a later interested party will have ignored the procedure. If Section 135 is to be retained some protection against estoppel to assert prior art known at the time, but not made known to the Patent Office because of the then lack of interest, should be provided.
I do not see why simply placing the prior art of record in the patent file would not suffice thus placing the burden, like now, on those who would be interested in the validity of the patent. The proceedings are time-consuming, expensive and burdensome to the operation of the Patent Office.
I think to provide for anonymity of the “opposer” is a step backward in our form of society. Harassment especially of small business or individual inventors can be imagined.
Harassment possibilities—also means must open the application to public. The little fellow will never make it !
At (b), page 32, line 35, appears to provide protection for those who have "... failed to proceed in accordance with the provision of this title."
See Kewanee Oil Company v. Bieron Corporation (6th Cir. Ct. of Appeals), holding no protection for trade secrets.
SECTION 139 Settlement agreements would have to be filed in the Patent Office“. before the termination of the proceeding as between such parties." Further, the ". . . copy shall be made part of the public record of the proceeding.” Penalty for failure to file “... such agreement or understanding ..."-patent unenforceable.
SECTIONS 141-147 On review of Patent Office decisions in the courts the Public Counsel is involved in Ex parte proceedings and at his discretion in priority of invention contests. Appeals from CCPA are to the U.S. Court of Appeals, D.C., by petition for allowing an appeal. No petition for certiorari unless such petition has been denied.
SECTION 153 Patent expires 12 years from actual filing date plus time application was deferred. This with two-year limitation to sue makes disclosure by patenting less attractive!
Patent invalid if application made without procuring a license. No excuse for inadvertent failure to obtain license appears.
SECTIONS 191–193 Deferred examination. The bad experience abroad is considered by some to be persuasive. Deferred examination adds to the knowledge of the examiner. He is less likely with his much later “present day" knowledge to be able to stand, as required under Section 103, in the shoes he occupied at time inrention was made, much less therefore in shoes of one skilled in the art at that time.
The possibility of harassment page 43, line 4, is noted. A party who is prolific in producing applications for patent but is of relatively small size could be made to undergo expenses of examination with no ability to prove any contention that he is being harassed. Anonymity in the patent law and practice thereunder should be preserved for applications, especially abandoned applications. This would kill a Polaroid or a Xerox!
SECTION 201 Page 44, line 3, dealing with reissues—this line it seems ought to include Sections 116 and 117 and therefore make reference to chapter 11. Or are the benefits of these sections intended to be excluded ?
At (c), whereas the present code permits enlargement of scope of claims applied for within two years from date of grant of the original patent, this subsection permits no enlarging the scope of the claims of the original pateut.
This would require payment of minimum of two percent of profit or savings to employer attributable to employee for subject matter of an application for patent or patent, etc. Otherwise the assignment is invalid.
The Commissioner must establish "procedures and methods including accounting procedures ..." for giving effect to this section. Thus the employer would have to determine under governmentally established procedures the contribution of the particular subject matter. It does not appear upon a once. through reading of the section that a patent need necessarily have issued. See page 47, line 29.
Page 49, lines 36 et seg, one need only make a heavy commitment on publication of the application to obtain a court-granted license of any patent which issues!
At (d), page 51, line 20, “... any party of record ..." could be a counterclaimant who might be quite willing to abandon his counter-claim, without prejudice, if the claimant for some reason does not make out his case. This should be further studied.
Suit for infringement cannot recover for more than two years prior to filing of complaint or counter-claim and in case of government the limit is four years. The present code in both instances gives six years. The shortened period of time may make it impractical for many smaller patentees even to recover the cost of the suit! The “incentive" of the United States patent incentive system is here considerably weakened !
Again, the foregoing is on a once-through reading-simply to get the gist of the bill.
HARBAUGH AND THOMAS,
Evanston, Ill., September 25, 1973. THE CHAIRMAN AND MEMBERS OF THE ANTI-TRUST AND MONOPOLY SUBCOM MITTEE,
U.S. Senate, Washington, D.C. GENTLEMEN: It would appear to be mandatory that if reform of the Patent Law is desirable then Congress will do that which well measures up to the principle and standard of Promoting the Progress of Science and the Useful Arts, and, more important, shall do nothing that does not promote the Progress of Science and the Useful Arts. If there is doubt on this principle about any item of reform, the answer should be No.
It is this writers opinion that there should be some reform. Enough experience is accumulating with patent systems of other countries who are endeavoring to catch up with the effects of the U.S. system that it may be time for the C.S. to improve to stay ahead.
Something could also be done to correct the U.S. word game approach to claiming an invention to an approach better portraying the inventive concept that is being protected as an assist to Courts and public considering infringement. Have Examiner indicate concept supporting allowance.
Regarding reform of the U.S. Patent System, it is my conclusion that the Federal Courts have shown the way to further promote progress. Extend their estoppel potential.
REASONS AND COMMENTS No endeavor is made to be profound in these down-to-earth comments intended only to be suggestively helpful for a legislative body. but, the crux of the recurrent interest in the reform of the present U.S. Patent System appears essentially to be the suspected frequency of adjudicated patent invalidity over the last decade or so. This has occurred primarily because the Patent Office staff did not locate or cite the prior art upon which invaldity was ultimately determined in Court, plus the tendancy of patentees in a "word game” to interpret claims narrowly for issuance and then broadly for infringement. For years the Patent Office has had very little exposure to the “new” prior art outside the Patent Office from which anticipations are drawn to the Judge's attention by defendants who possess the art. Incidentally, there are very few patents litigated compared with the total number of patents issued, substantially less than one percent, and, this is also significant.
The Patent Office is doing quite well with its facilities, particularly where there is full cooperation of the applicants and attorneys on prior art known to them. But no patent office alone can cope with the vast burgeoning accumulation of new prior art occurring day by day let alone do “outside art" sea rching in the shortened examination procedure necessitated by the budget afforded the Patent Office. Invalidity based on new prior art could increase if something is not done about the prior art outside the Patent Office.
The critical reaction of Courts is expected. They are concerned in having to pass on extensive prior art that is cited defensively against a patent which should have been considered with the expertise of the Patent Office before the patent issues. They seldom cosider patents where validity is admitted and licenses are taken or infringement avoidance is accomplished without litigation.
The questions for everyone is not "will" but "what" can be done about it. This would not be the first nor the last time Congress reformed the potent statutes.