three named sections of title 5 (5335, 7521 and 4301). This would protect the independence of the examiners-in-chief and primary examiners in their decision making functions by making applicable to them the provisions dealing with performance ratings, step increases, and removal relating to administrative law judges. The proposed changes to section 5(e) are intended to reflect the grade maximums being proposed for primary examiners. Proposed section 5.1 would authorize a maximum of grade 16 for primary examiners, the per annum compensation to be fixed by the Commissioner of Patents. It is intended that the Grade 16 rate would be fixed for supervisory primary examiners only. This would make possible a grade differential between them and the grade 15 non-supervisory primary examiners. It would appear to be just as logical to specify the maximum grade of primary examiners as that of examiners-in-chief, both of these positions being expressly provided for by statute. The proposed grade is believed justified by the duties spelled out in the bill. Respectfully yours, LEON ZITVER, Chairman, Legislative Committee. PROPOSED AMENDMENTS TO S. 1321 SUBMITTED BY SUPERVISORY PRIMARY Rewrite Section 5(a) as follows: There shall be in the Patent Office not to exceed twenty-four Examiners-inChief, who shall be appointed under the competitive service. The per annum rate of basic compensation of each Examiner-in-Chief shall be fixed by the Commissioner at not in excess of the maximum scheduled rate provided for positions in Grade 17 of the General Schedule (5 U.S.C. 5104). In section 5(e), insert "supervisory" before "primary examiner" (p.5, line 20 of the bill) and change "16" to "17" (p.5, line 29 of the bill). Insert the following sections after Section 5: Sec. 5.1(a) There shall be in the Patent Office such number of Primary Examiners as are necessary for the proceedings required to be conducted in accordance with Sections 131 to 136 of this Title, who shall be appointed under the competitive service. The per annum rate of basic compensation of each Primary Examiner shall be fixed by the Commissioner at not in excess of the maximum scheduled rate provided for positions in Grade 16 of the General Schedule (5 U.S.C. 5104). (b) The Primary Examiners shall be persons of competent legal knowledge and scientific ability. Sec. 5.2 The Examiners-in-Chief and the Primary Examiners shall be subject to the same provisions of law and regulations of the Civil Service Commission as are Administrative Law Judges appointed under Section 3105 of Title 5, United States Code, with respect periodic step increases under Section 5335; removal under Section 7521; and exclusion from performance ratings under Section 4301 of said Title. WATSON, COLE, GRINDLE & WATSON, Re S. 1321. HON. PHILIP A. HART, U.S. Senate, Russell Office Building, Washington, D.C. MY DEAR SENATOR HART: One of your assistants, Mr. Nash, was kind enough to send me a copy of the Bill which you introduced last March for the purpose of effecting numerous changes in our patent laws. This is to let you know that I favor quite a few of your proposals, particularly (1) To make the Patent Office independent of the Commerce Department; (2) To require patentees to pay maintenance fees; (3) To publish before patent issuance. As I understand the Bill, it includes no clause or section which protects members of the Examining Staff of the Patent Office from Court attack, i.e., from being required to testify in Court with reference to proceedings which took place in the Patent Office and which resulted in the issuance of a patent. The Bill should, in my opinion, be amended to fully protect Examiners against demands of plaintiffs or defendants engaged in patent litigation. I enclose a copy of an article which appeared in the July 1967 issue of the Journal of the Patent Office Society and call your attention to the paragraph which appears on page 39 of that article and which deals with that subject. Also enclosed is a copy of an article written by Mr. Ray Lupo of the legal staff of the Patent Office in which the same problem is discussed. This article is well written and most persuasive, clearly having been drafted after consideration of all aspects of that problem. It will be observed that Mr. Lupo entertains the view that Examiners should be allowed to testify, when ordered to do so, as to purely factual matters. However, it is my belief that the best long term interests of the public will be served if Examiners are not required, or permitted, to testify in Court even with respect to purely factual matters and that the examining procedure be so conducted that every material fact may be ascertained by one who studies the file wrapper of the patent involved in litigation. No attempt will be made in this letter to enumerate all of the factors which tend to support the view that Examiners should not be required to testify as witnesses in suits involving patents. Study of the "tetracycline" case to which Mr. Lubo makes reference will reveal the nature of some of the problems involved. The purpose of this letter is to suggest that this subject be given consideration while S.1321 is pending and that appropriate action be taken. Very truly yours, ROBERT C. WATSON, Commissioner of Patents 1953–61. [The two articles referred to Journal of the Patent Office Society, July, 1967, page 39, and Journal of the Patent Office Society, April, 1973, page 217, may be found in the files of the committee.] JOHN L. MCCLELLAN, Washington, D.C. VIRGINIA STATE BAR, September 28, 1973. SECTION ON PATENT, TRADEMARK AND COPYRIGHT LAW, DEAR SENATOR MCCLELLAN: The Patent, Trademark and Copyright Section of the Virginia State Bar has polled its membership on the five subjects covered in the recent hearings on Senator Hart's bill, S 1321, before the Patents, Trademarks and Copyrights Subcommittee of the Senate Judiciary Committee. The results of the poll are shown in the attached report. Our questions were essentially the same as those used in a parallel poll by the PTC Section of the D.C. Bar, except for our addition of supplemental questions 4(a) and 4(b), so that the results of the two polls may readily be compared or combined. Approximately 30% of our membership responded in time for inclusion in this report. Patent lawyers are interested in the improvement of the patent system, both in the Patent Office and in the courts, and favor changes that do more good than harm. Thus, the responses to our poll favor a number of changes, but indicate a desire that each change should be carefully considered to give the desired end result, rather than a net adverse effect. For example, a majority favored maintenance fees, but not if they are so high as to be unduly burdensome. This submission on behalf of our section is offered for inclusion in the record of the hearings. Very truly yours, JOHN F. C. GLENN, Chairman. POLL OF MEMBERS OF THE PATENT, TRADEMARK & COPYRIGHT LAW SECTION OF THE VIRGINIA STATE BAR ON FIVE ASPECTS OF HART BILL S 1321 ADVERSARY PROCEEDINGS 1. Are you in favor of providing for adversary proceedings in the United States Patent Office with the opportunity of the public to participate in the examination Yes 17 No 9 Pro: Majority favored adversary proceedings in order to be of assistance to the Patent Office in uncovering prior art and strengthening presumption of validity of patents; however, many of the majority wish to have adversary proceedings limited so that the time and money involved will not be prohibitive. Con: Minority indicated that cost of additional adversary proceedings would be so expensive that parties having economic leverage would be able to harass the small business man. In addition, the cost to the taxpayers for an adversary proceeding was thought to be excessive as compared to the benefits obtained. PUBLIC COUNSEL 2. Are you in favor of a public counsel participating in an examination proceeding? Yes 6 No 22 Pro: In favor of public counsel are a small minority who believed that a public counsel would enhance the presumption of validity of a patent. However, many of the minority qualified their views, e.g.,: (a) only at the request of the Examiner, (b) only when no other member of the public enters into an adversary proceeding, and (c) only to the extent of submitting additional prior art to the Examiner. Con: The substantial majority were against public counsel and considered such an institution to be redundant to the function of the Patent Examiner, and one which would cast a bad reflection on the work product of the Patent Office and lead to morale problems. DEFERRED EXAMINATION 3. Are you in favor of deferred examination before expiration of five years from the filing date? Yes 10 No 15 Pro: The minority who were in favor of deferred examination based their opinion on the assertion that similar systems have worked well in foreign countries, that the cost of prosecution could be delayed until the time of commercial acceptance of the invention, and that the load on the Patent Office would be reduced so that the Patent Office would be able to focus attention on more important matters. Con: Against deferred examination was a majority who believed it would create great uncertainty on the part of industry as to the extent of patent protection for disclosed inventions. Furthermore, many indicated that because the reduced backlog in the Patent Office, there was no real justification for deferred examination. MAINTENANCE FEES 4. Are you in favor of maintenance fees? Yes 16 No 14 Pro: The consensus of the members in favor of maintenance fees emphasize that they were in favor only if such fees are not exorbitant. The fees should be fairly tied to the cost of helping maintain the patent system and to hold down the cost of applications. Many felt that such reasonable fees would help identify live or productive patents. The individual inventor and smaller companies are more able to pay additional fees several years after the patent has been in force and used. Con: Those members against the concept of maintenance fees, cited most often that it would discourage private inventors and small companies from filing patent applications in the first instance. Another point raised against maintenance fees was that the public's responsibility should not be forgotten since the quid pro quo for the exclusive right for a limited time to exclude others is the full disclosure of the invention. Further, it was pointed out by some that it would be unfair to tax patents on all inventions alike when they produce different results in terms of profit for the parties concerned. 4(a). Would you be in favor of maintenance fees in magnitude of $1,000.00 per year with twenty-five percent increase each year? Yes 1 No 29 Pro: One member felt that the "commercially meaningless" patents should be so eliminated. Con: The point made by the overwhelming majority in voting against this provision is that the amount is excessive and would stifle the patent system. Secrecy of technology would be the way of life in the United States in the opinion of several of the members. The amount is not fairly related to the cost of maintaining the patent system. 4(b). Would you be in favor of a single maintenance fee in magnitude of $500.00 at the end of the eighth year? Yes 12 No 15 Pro: This "compromise" was favored by slightly under half of the members responding. It seems that this amount would be sufficient to eliminate the "dead wood" in the issued patents thereby certainly opening more technology to the public domain. It would assist in fiscal maintenance of the patent system, but is not too burdensome for small inventors and small companies that have been able to place their patents into the economic main stream. Con: Those opposed to the maintenance fee "compromise" felt that the present system of expense recovery is sound. Some favored nominal maintenance fees, but expressed concern that possibly the eighth year was too soon to provide the owner with the necessary time in all cases to sufficiently commercialize the invention. INDEPENDENT AGENCY 5. Are you in favor of the Patent Office becoming an independent agency? Yes 18 No 5 Pro: The consensus here was that the Patent Office would be strengthened by making it an independent agency. Members cited the conflicts of recent Commissioners with the Commerce Department hierarchy and the fact that the present several agencies' views could better be brought together in a single agency resulting in an agreement on a patent policy that is workable. It is thought that an independent agency with Secretary status would also be able to work more closely with Congress when needs arise. Con: The present system has not presented major problems. A compromise, such as Assistant Secretary of Commerce status for the Commissioner of Patents, is suggested by some. Avoidance of direct budget cuts is seen by some be an advantage of remaining under the Commerce umbrella. MCLEAN, VA., September 26, 1973. Re S. 1321-five points included in the hearings of September 11, 12, and 14, 1973. Senator JOHN L. MCCLELLAN, Chairman, Senate Judiciary Committee, Subcommittee on Patents, Trade Marks and Copyrights, DEAR SENATOR MCCLELLAN: The comments presented in this paper are based on my 36+ years of service in the United States Patent Office. During those years I came into close contact with nearly all operating areas of the Patent Office. In addition to basic service in the patent examining professional corps, I served as a Designs Examiner, as a Trade Mark examiner, as a Patent Classifier and as an acting member of the Board of Appeals. In August, 1965, President Lyndon B. Johnson appointed me to be Assistant Commissioner of Patents. My appointment was continued by President Richard M. Nixon in 1968 and in 1972. Also, I have been active in international patent and patent classification matters, serving as chairman of the Technical Cooperation subcommittee of the Patent Cooperation Treaty Interim Committee and chairman of the 12-nation Joint ad hoc Committee of the Council of Europe and the World Intellectual Property Organization on the International Classification of Patents. I resigned as Assistant Commissioner and retired in May, 1973. In quick overview, my position on the five points considered at the hearings is: I. I support modification of patent examining procedures to provide public opposition or adversary proceedings. II. I oppose the creation of the Office of Public Counsel. III. I oppose the establishment of a system for Deferred Examination of Patent Applications. IV. I oppose the establishment of Maintenance Fees. V. I favor administrative restructuring of the Patent Office, including the proposed establishment of the Office as an Independent Agency. I will address each of the five points, briefly, to explain my position. I. I believe that only those patent applications which have been either, (a) passed to issue ("allowed") by the examiner, or, (b) appealed by applicant from an adverse holding by the examiner, should be opened for public opposition. Those patent applications which are rejected or refused by the examiner, and in which no appeal is taken by the applicant, do not enter into the patent grant arena; no further public or private funds or manpower should be expended on such applications. Appealed applications should be subject, to opposition proceedings so the entire question of patentability under the law can be settled in one further proceeding in the Patent Office. Before my retirement I advocated institution of public opposition proceedings by permitting applicants whose applications had been passed to issue by the examiner to opt for publication of the allowed application under a system which would invite public involvement. My view was that this could be done by the Commissioner under existing law. I also advocated public involvement in "public use" proceedings (Patent Office Rule 292) and in reissue applications especially where the parent patent was involved in litigation. A period for public opposition and the proceedings thereunder should be such as to consolidate all oppositions and hear the matter in but one proceeding; this would minimize or eliminate harrassment possibilities. II. I oppose the creation of the Office of Public Counsel. The purpose supposedly is to weed out and eliminate frivolous or fraudulent claims for patentability. In hindsight, it may be easy to pick examples of patents whose applications might have been challenged by a public counsel. However, while an application is still only pending, it is a well-nigh impossible task to identify such candidates for attention by the public counsel. The counsel could not intervene in each of the 100,000+ applications now being filed each year Intervention in less than all could (and probably would) be challenged as discriminatory or retaliatory or political. A far better way to accomplish the weeding out process is the use of public adversary or opposition proceedings on allowed, appealed or reissue applications. III. The usual justification for a deferred examination system is to lighten the case load on the examiner and thereby increase the quality of the examination. A basic assumption here is that the number of examiners funded by appropriations would remain at today's level. There is no assurance of such a manpower level continuation. To the contrary, based on my long experience in the budgetary process of the Federal government, the odds are strongly in favor of a cut in authorized staff and appropriations if the workload drops. Indeed, in the past several years, in the face of rising numbers of applications filed each year, Patent Office requests for increases in examiner staff have been denied or reduced, variously at the Secretarial, O.M.B. or Congressional level. No reasons have been advanced to show that this budgetary situation will be different under a deferred examination system. Much has been said lately about a "quota" or goal systems for examiners that compels them to spend too little time on each application, thereby lowering quality of examination. This effect has been alleged in view of the constant increases in new filings and the necessity to keep output abreast of the input. True, the Patent Office uses productivity measurement systems in several areas of its operations. Such systems are fostered by any good and reasonable management in government or in private industry. However, and very importantly, the individual productivity measurement system has not been tied to the annual output expectancy of the Patent Office Examining Corps as set forth in annual appropriation requests. The expectancy figure for any individual examiner docket has been constant even though the Office expectancy has moved up. for example, from 104,000 in the FY 1971 Congressional budget submission to 118,000 in the FY 1973 submission. |