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founded. Seeing prior art being turned up before them by the alleged infringers through extensive validity searches, costing in the thousands of dollars, which the Patent Office Examiners cannot match, the Courts well may question the validity of patents being issued by the Patent Office within its budget. This is a critical question of interest.
(c) Accordingly, a further ingredient for the promotion of Progress of Science and the Useful Arts would logically be to do all that is possible to strengthen the presumption of validity. There is little else basically for con
How is this to be accomplished? The Patent Office cannot provide extensive searches for every patent application passing through it for examination and keep current in its work and promptness of issuance, which factors also promote progress. Nor, can the Patent Office have an inventor's foresight to select significant patents upon which to concentrate examination, and, even if it had, it could not approach litigation validity searches on all patents to cover the less than one percent of the patents which are litigated. The Patent Office simply does not possess all the prior art that can be cited by defendants.
If the Patent Office cannot do the outside searching for many reasons, then how can the holders of pertinent prior art be induced or compelled to reveal it to the Patent Office? Estoppel? Quite probably, but a Court would have difficulty in helping by "estoppel” if Congress does not lay down requirements that have to be met to avoid an estoppel.
In this direction, the applicants should not be burdened with "new" art validity searches. Their prosecution expenses are already extensive. The presumption of invalidity would be re-invoked that was corrected in 1836. Anything that unnecessarily increases the burden upon the inventor other than properly disclosing and claiming his invention, or, deprives him of exclusivity and the validity presumption, it is obviously a negative approach by previous trial and error with respect to promoting progress. Yet, an improvement of the status of validity of issued patents will promote progress.
Of course, the inventor can be induced to disclose that he knows of the prior art under threat of invalidity, etc., with penalties. (See Brand Plastics Co. v. Dow Chemical Co. 168 U.S.P.Q. 133, C.D. Calif. 1971 and 177 D.S.P.Q. 33 C.A.9 1973.) But the inventor doesn't know all the prior art. And the inventor having conscientiously done his best, expects the public benefited by his invention to do its best to assure the presumption of validity with a complete presentation of the pertinent prior art for examination by the Patent Office and the Public to assay the novelty and claims of a patent which might become important.
If this assurance necessarily requires further expense for the inventor, then the inventor should be rewarded some additional return as a patentee for his valid patent. Otherwise, the promotion of progress by disclosures and the granting of a patent begins to break down.
Psychologically, inventions do not just appear upon which patents can be granted. The inventor has had to make extra effort and sacrifices to improre his environment and disclose it to the public by patent or product, and seeks a reward. Unfortunately, this psychology is not comprehended by most people, including legislators, even though many will walk away from a business promotion which has nothing in it for them.
Briefly, practically everyone is an innovator. Congress innovates. An inventor is an innovator working in a field where novel innovations can be protected by statute. The psychology does exist and must be understood in order to promote progress.
An inventor thinks creatively for the ultimate benefit of the public ere though most of the patentees are ranked as employed personnel. His employer then expects recompense.
Trade secrets and guilds would be very inviting comparatively if discouragement of recompense is increased, and, there is interest in this subject today.
How is the "public" going to better deliver on its part of assuring valid exclusivity? Here again are two general considerations.
It generally is only when a copier wants to capitalize on another's innovation without compensation to the innovator-inventor that validity becomes a litigation problem. Thus, the only time validity becomes serious for the Courts is when someone copies the patented subject matter thereby indicating appreci. able current importance of the invention to the public, and, the patentee objects by litigation if negotiations for a license break down.
How about a pre-issuance validity assurance treatment for patents in which knowledgeable members of the public participate in helping the Patent Office? There obviously are comparatively only a few patents of all those issued that will ultimately reach the Courts. There is no need to burden all patents with a pre-issuance validity assurance treatment. However, selecting the ones which are important for pre-issuance treatment requires a preselection that only the inventors and competitiors are competent to perform, and, the Patent Office should also have an option to require it, confidentially knowing of developments before it.
The first person to pass on the selection would be the inventor himself who already cites his prior art knowledge to the Patent Office. As mentioned, concealment in this quarter is already being penalized. Then, after preliminary prosecution and a tentative allowance, the inventor could have a choice, either to have the patent issue for a predetermined term, a choice for which he has no one to blame except himself, or, he can elect and pay an additional fee and have it published for public appraisal purposes. Thereby, he would appreciably reduce the expenses of universal or general publication procedure since such an election may be in the minority, yet, provide the advantages of prior art outside the Patent Office being brought, upon election, to the attention of Patent Office before issuance. If these requests increase, then the inventors are accepting a system whose expense was not forced upon them and adjustments can be made in the Patent Office with some assurance of public acceptance and improved validity results. This promotes progress.
Public relations thereon also would indicate that someone else should not inform the inventor that his effort is not a worthy invention. Let the inventor have his choice if he merely wants a patent. He may not want a patent for litigation purposes. Just issue the patent. Many competitors file competive patents for disclosure reasons which they may not even use. This also promoted progress.
On the other hand, after electing to assure validity by public reaction, then with one more action on the merits given by the Patent Office after preissuance publication, the patent can be issued for a longer period of years dating from its filing data as some recompense for extra trouble and expense encountered by the applicant in looking to help a Court, if infringed.
A significant question, of course, is how to induce others to present to the Patent Office prior art known to them. First, who knows the prior art any better than competitors in the product being patented ? If they do not know specifics, a search for additional art can be conducted by the competitors when they have the otherwise allowable claims before them. They are the most knowledgeable in the field involved, particularly if litigation appears to be likely, and they can be required by legislation to indicate to the Patent Office before the patent issues that prior art they would rely upon if they were to be sued on the published allowable claims in event they were issued as the claims of a patent. No opposition proceeding like in Germany is contemplated, just citation of the prior art, if any, for benefit of the Examiner. In other words, the modus operandi enable the competitors to bring the knowledgeable prior art in full focus for the Patent Office on patents which, in the opinion of the inventors and competitors, are most likely to be litigated. If an "unpublished" patent becomes infringed, a notice of infringement is followed by citation of art and a Reissue procedure. A single current disclosure by a competitor may well be worth a 102 rejection instead of a § 103 rejection for obviousness. Accordingly, the knowledgeable experts in the industry must be legislatively induced to indicate the prior art for the experts in the Patent Office to consider while handling the prosecution of the patent before it reaches a Court.
The Courts would assist this in view of the results that: Potential litigants are making adversary contacts on prior art before a Court action is filed ; the Patent Office acts upon "new" prior art while the patent is still in its formative stages; and, possibly rather than risk a failure, it is likely competitors and would-be competitors will file patents and publish articles on pertinent subject matter so that the prior art is already before the Patent Office, thus also promoting progress.
On the question of estoppels, as already mentioned, a Court may have some hesitation in applying an appropriate estoppel if a statute makes no requirements that are to be met. After that, if further prior art might appear as a defense in a Court action which should have been timely drawn to the attention of the Patent Office, the Court can apply a personal estoppel or discourage
non-citation of prior art by monetary awards against the defendant even if he wins.
If there is no prior art revealed by the competitors, as required by legislation, the Courts can then feel justified in exercising their perogatives with estoppels and other procedural limitations of proofs. An infringement suit certainly can be expedited. In fact, if the competition cannot find pertinent art, there either is none, or, it is a lost or abandoned art such as something suppressed, a concealed reduction to practice, or report, etc.
Additionally, an early publishing of the tentatively allowable claims and disclosure is worthwhile so that the public is also informed of developments at the earliest opportunity. An earlier opportunity is provided others to design a new non-infringing product. This also promotes progress.
Such estoppels encourage possessors of prior art to disclose it to the Patent Office while it can be used at the examination level. Reviewing the aims
The Courts and plantiffs desire that patents issue with all the available prior art before the patent Office, particularly that which would be most likely to be cited if an action is instituted on the issued patent.
The patentee wants a valid patent for what he had to pay, and, he wants relief from infringement with the least amount of expense and greatest net recovery, including some additional advantage for choosing the assured validityrecheck publication procedure.
All the prior art of interest should pass before the patent Office before the patent issues, thereby relieving the Courts of that burdensome task. Implementing the procedure
The procedure merely requires one optional additional step in the present prosecution of the patent application, namely :
All patent applications are prosecuted to allowability in presently routine manner. Thereupon, the Inventor-Applicant or Assignee has an option to take at his future risk the patent “as is” for å limited term, say 10, 12, or 17 years from date of publication, or, by option and paying an additional fee, elect to have it published with the allowable claims for public surveillance to enable competition to cite prior art in that particular field. Thereupon, the Patent Office reopens prosecution for one action, if need be, and the application goes to final rejection or allowance for a term of say 20 years from an appropriate date. The patentee is thus rewarded by a sounder patent and an extra length term for the extra expense he incurred. This has also made it possible for the Court to consider with greater confidence a patent prepared for litigation haz ards with a full portfolio of prior art in event of trial. Thereafter, any infrin. ger failing to cite pertinent prior art of which it was aware during the publication period is personally estopped from using that art defensively in that action. In brief, the Court takes the patent as is for the purposes of essentially determining infringement in that particular action.
Many advantages occur:
1. The inventor or the Patent Office can select an important patent application that should have outside prior art exposure before issuance.
2. The inventor or assignee is induced to publish for citation of new art by the reward of a stronger patent and an increased life in trying to be sure to have a valid one for a Court to consider if ever there is an infringement.
3. Risk of infringement and loss of defensive strength induces competitors to bring forth prior art rather than withhold it and then not be able to use it later. The Patent Office and the public are better appraised of a technological situation instead of not knowing of otherwise withheld prior art that might free other competition also, as part of the knowledge that actually should be in public domain.
4. The Patent Office is further financed by a fee for publicly rechecking validity before issuance.
5. The Courts can rule for or against evidence improperly withheld when the possessor should have revealed and did not.
6. The necessitated study of patent applications published for opposition stimulates earlier competitive search, research and investigation of develop ments overlooked and may be suggestive of further developments for the ultimate further progress of Science and the Useful Arts.
7. Potential litigants are brought into less strained contacts leading to determination of relative rights and future activity without courtroom antagonism. 8. Technical questions that would plague the deliberations of the Courts are not present, or, have already been decided with the expertise of the Patent Office.
Finally, many excellent articles, treatises and editorials have been written over a period of years by outstanding minds in the Judiciary and Patent Law profession regarding validity and invalidity involving U.S.C.A. § 103, often referred to as the “obviousness" section, and, a defendant having a better chance of invalidating broad claims of a patent in Court with the prior art kept secret until infringement suit is started. (J.P.O.S. vol. 52, page 433 (1970).
The swing of the pendulum has been towards freedom-of-competition which has somehow swayed towards invalidity in close patent cases. It has not been unappreciated that it may be less expensive for a competitor to seek to invali. date an infringed patent by an all-out invalidation effort under Section 103 before taking a license rather than promote progress by a new design or redesign to another construction that avoids infringement. A product in the hand in physical from may be worth two research problems on the design board.
However, under it all, there seems to lurk in some decisions a background realization which may well swing from the freedom-of-competition touchstone towards the progress-being-promoted touchstone by the concept being recognized that two competing articles may be greater progress as compared with competitors expensively litigating on one article. A design or redesign to avoid infringement often involves improvements which would also promote progress if an infringer were forced to design and make a different products. The Courts may very well wish to encourage this. A true freedom to compete and progress is encouraged when a new or improved construction comes on the market. The Courts cannot help but see a thread of significance in a copier being forced to redesign because of infringing a validity-rechecked patent and then the infringer complaining when he is copied, thus ultimately there being three competing products for the public instead of lengthy protracted litigation.
Progress of Science and the Useful Arts would be better promoted and that is what is is all about. The Courts have shown the way to further promote progress. Extend their estoppel potential. Respectfully submitted
WATSON D. HARBAUGH, Articles containing arguments of interest Publication of Pending Applications (R.Y. Peters), J.P.O.S. vol. 48, page 553
(1966). Re-examination System? (Martin Abramson), J.P.O.S. vol. 52, pages 407, 415
LICENSING EXECUTIVES SOCIETY, INC.,
New York, N.Y., September 26, 1973. U.S. SENATE, Committee on the Judiciary, Subcommittee on Patents, Trademarks, and copyrights, Washington, D.O.
GENTLEMEN : We are very grateful to you for your response to our letter of September 11, 1973 informing us that the record would be kept open until September 28th.
As you know, our Society is a non-profit, professional organization having some 1500 members throughout the business world actively engaged in the interchange of technology. We, therefore, have the greatest concern for the U.S. patent system, its integrity and operation, and appreciate the opportunity to express our views on the issues of S. 1321 (Hart) which you have been considering in the recent hearings. We shall keep our comments as brief as possible.
On the question of providing a Public Counsel in the Patent Office, we recog. nize this as an attempt to improve the essential reliability of the Patent Office. However, the creation of an office of Public Counsel, and the staff associated with it, would require a substantial investment. Further, there probably would be conflicts and overlaps with "regular" Patent Office employees. We suggest that the funds provided to support this office of Public Counsel would be
better spent in increasing the size of the examining corp of the Patent Office. This would provide the Examiners more time to search the art, the result being more reliable patents.
With respect to adversary proceedings, we have no basic objection to this provided the proceedings occur after the allowance of the patent application. It would be a mistake to lay open non-allowed applications because of the substantial printing costs and the resultant administrative involvement which, in many cases, would be useless. We would prefer that such "adversary proceedings" be limited to permitting submission of prior art by third parties.
With respect to maintenance fees, we would oppose these unless the filing and issue fees were substantially reduced. In such case the “maintenance fee" would, in effect, be deferred fees. In any event, however, we strongly oppose such fees at the level suggested in S. 1321, because experience has taught us that many patent rights do not become valuable in the market place until many years after their issuance.
We see no net advantage in the deferred examination system suggested in S. 1321 and feel it creates more trouble than it is worth. We note that European countries which have the most experience in this area has not provided for deferred examination in the new European Patent Convention.
We support the idea of making the Patent Office an independent agency. We also support the idea of making the Commissioner of Patents at least an Assistant Secretary of Commerce if the Patent Office is to remain in that Department. It is obvious that substantial changes are necessary to improve the stability of the Patent Office management staff. Changing the Patent Office to an independent agency would accomplish this and therefore, we approve.
In addition, we strongly urge that any new patent legislation include specific guidelines specifying what the patent owner can properly do in licensing his patent rights. Indeed, we feel Congress would be derelict in its duty if it did not clarify this area of the law. To leave the validity of any particular licensing practice to the vagaries and expenses of litigation is a distinct disservice to the innovative sector of our Society.
We thank you for this opportunity to comment on this vitally important, pending legislation. Very truly yours,
C. H. CHAPPELL, President.
PATENT LAW ASSOCIATION OF LOS ANGELES,
Los Angeles Calif., September 12, 1973. Hon. John L. McCLELLAN, Chairman, Subcommittee on Patents, Trademarks, and copyrights, Committee
on the Judiciary, U.S. Senate, Washington, D.C. DEAR SENATOR MCCLELLAN: The Patent Law Association of Los Angeles has been informed by your Chief Counsel, Thomas C. Brennan, Esq., under date of August 7th, that hearings will be held September 11, 13, and 14, 1973, on the Hart bill, S. 1321 (93d Congress, 1st Session). We are informed that it will not be possible to allocate time to representatives of our Association. We have, however, been urged to request our members to furnish to your subcommittee any suggestions regarding the bill's provisions, including those relating to specified issues discussed hereinafter. The comments which follow are an expression of the consensus of our Legislative Committee and of our Board of Governors, including our officers.
The patent bar has devoted thousands of man-hours since the report of the Presidential Commission in efforts to assist your subcommittee in modernizing the patent laws. We have traveled across the continent repeatedly to special meetings of our national associations which were devoted to no other purpose. Our deliberations and debates produced successive drafts of proposed legislation culminating in a draft, each and every provision of which had been carefully considered and determined to represent legislation in the public interest.
Senator Hart's bill, S. 1321, is not the result of such a deliberate process of open debate participated in by any member of the patent bar wishing to be heard on the subject. This is not to say that it lacks merit. It does, however, provide a basis for our opinion that it would be improvident to enact legislation so different from any previously proposed, without subjecting it to the same deliberation and debate.