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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 advise 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?
SECTION 134 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!
SECTION 138 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.
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.
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.
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!
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 patent.
SECTION 263 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 oncethrough 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 SUBCOMMITTEE,
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 as 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” searching 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 ('ongress reformed the potent statutes.
It would appear that the proposed Hart Bill is a conglomerate of all suggestions that have been made over the last decade to see where they rank at the present time with respect to “promoting the Progress of Science and the Useful Arts.” Some suggestions therein would be steps forward and others would be steps backward; some are not likely to promote progress while others do hold promise by way of worthwhile reform to promote even greater progress. Care must be taken, and, apparently reactions of patent lawyers in the field of practice are welcome even though a full scale research has not been conducted by the legislators upon which a scientific approach to the problem could be made. For instance, the writer is unaware of any determined comparison of how many invalidity decisions are based upon "new" prior art that was, or, was not available to the Patent Office. The causes could be quite different.
Accordingly, it should be noted first that over-characterization of allegedly critical conditions are not convincing and radical treatment of a patient without complete diagnosis results in a long recovery, or invalidism. Maybe the illness has not been carefully diagnosed for legislative remedy and prognostication.
Before discussing several points, however, reform objectively appears to be desirable specifically along the following broad lines because of validity results occurring in foreign countries : (Modus of operandi will be discussed later.)
1. Increasing the prior art available to the Examiner to include what is outside that which is now available in the Patent Office files.
2. Assuring appropriate revelation to the Patent Office by potential infringers possessing pertinent outside art by applying a penalty to those who fail or refuse to help.
It could be at the present time that broad claims vs. privately-known invalidating art is more attractive to an infringer than a patent having claims of assured validity.
a. Some precedent exists because the inventor is already being penalized by Court reprisals for concealment of pertinent prior art known to him during patent prosecution.
h. The infringer should be penalized if significant prior art is withheld from the Patent Office when he should have presented it. This is up to both Congress and the Courts.
3. Legislatively, making the disclosure of known prior art to the Patent Office a requirement assists Courts in exacting personal estoppels if withheld prior art is critical. Such prior art could then be open to others also who did not know of existence before an issuance of the patent or a notice of infringement.
4. Publication of patent application claims deemed allowable by the Patent Office and opening the application to surveillance before issuance of the patent also assists potential infringers in their research and development plans.
5. A patent Reissue procedure for Patent Office consideration of prior art anytime patentee considers newly discovered prior art to be pertinent is desirable, but only for the purposes of narrowing the claims or for interferences.
6. Reissue application also published when allowable for the surveillance of members of the public is desirable for citation of further prior art if none was cited at the previous publication.
7. There is little reason not to assure validity for the Courts if the patent is likely to be infringed.
Corrective legislative treatment is simple. It is believed that a minor but critical corrective operation, not needed when prior art was sparse and the patent system was young, is all that is required now to satisfy the Courts, the Patent Office, the inventors, and, more important, the purpose expressed by the Constitution involving the Congressional duty to Promote Progress of Science and the Useful Arts.
If the Courts feel they are doing more and more of what should already have been accomplished by trained Patent Office personnel which is technically better equipped to pass on validity, they are right. Moreover, if they feel that somehow patent claims that come before them should have been better finalized before issuance instead of being subjected after issuance to further public prior art knowledge and strained technical interpretations to save validity and still be infringed, they are right. But more and more prior art is being brought to the attention of the Courts than the Patent Office Examiner bas available to him. The questions are to determine where it is coming from and how to get it to the Examiner.
But first, are the Courts correct in blaming the Patent Office? Senator Hart mentions 72% invalidity, whereas it was 80.89% for 1940–1944 (J.P.O.S. vol. 32, page 807). It went down to 76.58% for 1945–1949. For 1968–1972 it was 50% validity.* With no figures known, it looks like something has already been improving. What are the figures? Then, see also J.P.O.S. vol. 52, page 407, where 75% of the invalidations are traced to new art. Is this what Senator Hart meant? So, let us say the new art is most likely the major part of the problem, if there is one.* The critical question, however, is was the "new" art found in the Patent Office collection, or, outside the Patent Office? Is research on this impossible?
In five of the ten Circuit Courts, it appears in the J.P.O.S. vol. 32, page 807 that the percentage of invalidity was over 80% with two Circuits well into the 90's, while four others were below “72%" with one as low as 23.07%, and, these figures include also non-infringement. Maybe the 23% Circuit is approaching a solution to the problem, and, maybe a "standard of invention" is being sought to level this sawtooth curve among the Circuits. Reconnoitering on remedies to further omote progress
It would seem that in a quest for some "standard of invention" or a remedy for the percentage of patent mortality by invalidity, such may already be at hand in the jurisprudential hierarchy of “rules, principles and standards" for judicial consistency throughout the Circuits, and, to shorten as well as reduce patent litigation. Actually, the wise forefathers provided a standard in the Constitution that would endure with impartiality against ravages of change and self-interest influences. The U.S. Constitution provides that:
"The Congress shall have power ... to Promote the Progress of Science and the Useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective writings and discoveries.”
(Art. I, Sec. 8.) This is a standard. The question for both Courts and Legislature is not "why" but "how" to better Promote the Progress of Science and the Useful Arts. This end would justify any reasonable Court consideration or Congressional means if progress will be advanced. It is a broad and enduring standard that is tried and true. Future legislation and judicial decision should measure up to this standard because they can well be measured by it.
First, what does advance progress?
(a) The Constitution also sets forth one way as a started for Congress; namely, by securing the exclusive Right to the Inventor, i.e. the true inventor, so that the inventor personally receives the credit.
In the first half century of the Constitution, however, Congress found this was a step in the right direction, but not too much "progress" was being made with the patentee having the burden of sustaining validity.
(b) In 1836 Congress enacted a provision that a patent was presumed to be valid. The infringer was shouldered with the burden of proving invalidity.
It worked. Ever since these two basic concepts were brought together, the greatest and most rapid progress has occurred for Americans that is known to our civilization of man, all in the brief period of less than five generations of the 200 generations of recorded civilization, and, the greatest compendium of Science and the Useful Arts is now found in the U.S. Patent Office and in reductions to practice, public uses and publications. More than this, Invention is still stimulated with a momentum for even greater progress industrially and for even better standards of living. Progress has been and is being promoted.
Now that golden eggs are resulting, shall we risk killing the goose? Or, shall we further nuture it? If we can, reformation is in order.
Suggestions or possible solutions indicated by the Courts should not be overlooked, but if what promotes the progress and useful arts for the people comes under criticism merely because it might be a burden to the Court, the Court would be willing to bear its burden of promoting progress. The Courts are the servants of the people as well as being people themselves.
But with this burgeoning of U.S. technology and the standards of living, a strong reaction by the Courts to hard-fought infringement actions is well
*Patent Office Study of Court Determinations of Validity/Invalidity 1968–1972 (P.T.C.A. for September 13, 1973, page F-1).