The Patent Office relies primarily on two factors to achieve increases in output of examined applications: (1) increasing the staff as permitted by the budgetary process, and (2) achieving real-time savings in examination such as by making a thorough and complete first search and action, pointing out how claims may be amended to make them allowable, and acting on all applications in order of their filing date. Therefore, it is not believed there is undue pressure on the examiner which a deferred examination system would obviate. Also, much has been said about the quality of issued patents. However, the patents in litigation now or litigated in the past several years generally have received their examination many years ago. The new examination procedures adopted since 1964 could well result in higher quality. In any event, it should be remembered that the Patent Office, as an administrative agency under the patent law (35 U.S.C.), examines only for patentability under the law. The courts are the final testing fround for validity. A patent may be declared invalid or unenforceable on grounds not available to the Patent Office to refuse the issuance of a patent. It is my belief that a deferred examination system will not make any significant change in the quality of issued patents. Consideration should be given, however, to deferring the examination of foreign-filed U.S. applications where the priority application is in a deferred status in its home country. This could affect up to about 25% of all filings in the United States Patent Office. An irreversible high-cost impact of any deferred examination system is that all patent applications would be published and consequently would have to be classified and copies thereof placed in the search files. This increases the input to the files by about 50% over the present full examination system which eliminates about 32% of all applications. The eliminated applications have little value as a prior art disclosure because they are obvious improvements or are completely anticipated by already existing reference material in the search file. When placed in the file, permanent storage space requirements are a liability and the examiner loses time looking at publications which are merely duplicative. Here again, it is not seen that a deferred examination system compares favorably with full examination. V. I favor independent status for the Patent Office, particularly if it would make the budgetary system more realistic and more responsive to the needs of the Office. Further, the present 4 statutory commissioners should be replaced by a 3 or 5 person commission with commissioner serving a 3 or 5 year term on an overlapping basis. This would provide a desperately needed continuity of administration. Respectfully, RICHARD A. WAHL Former Assistant Commissioner. ORCHARD LAKE, MICH., Re Hart Bill S. 1321. Mr. THOMAS C. BRENNAN, Chief Counsel, U.S. Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks and Copyrights, Washington, D.C. DEAR MR. BRENNAN: I am a patent attorney practicing patent law in the State of Michigan. I would appreciate it if you would consider my comments on Bill S.1321. These comments may be broken down into the following subject areas: (1) Modification of patent examination proceedings to provide public adversary hearings (2) The creation of the Office of Public Counsel (3) Establishment of a system for deferred examination of patent applications, and (4) Revision of the patent fee schedule including establishment of maintenance fees. Concerning Item I, the modification of patent examination proceedings to provide public adversary hearings, I believe it would be more advantageous to institute mandatory opposition proceedings in which interested third parties may forward their comments to the Patent Office in order to question the patentability of allowed but pending applications. These opposition proceedings should contain the following features: (1) Every application shall be automatically opened up for inspection and copying after the Notice of Allowability. (2) Notice of access to such applications shall be simultaneously published in the Official Gazette along with a representative figure of the drawings, the broadest claim and a list of references cited. (3) The public shall have a limited period (at least three months) beginning from the date of the Official Gazette notice to protest the grant of a patent. (4) Prosecution shall be suspended during the protest period. (5) If the submitted evidence is considered to be probative and relates to public use or sale of the invention more than one year before the filing of the application, inter partes public use proceedings outlined in present Rule 292 should be followed. (6) If submitted evidence is considered to be probative and relates to publications and patents not cited by the Patent Office or to the manner in which cited art has been applied, examination shall be reopened. (7) If the submitted evidence is considered to be not probative, the protesting party shall be so notified and a Notice of Allowance shall be issued in due course. The protesting party shall have no right to appeal from this adverse decision. (8) If the examination is reopened the applicant shall be allowed to amend his claims, submit new claims, or argue the proprietary of the new rejection. After a final decision on patentability by the Patent Office, the applicant, if the decision is adverse, shall be given the right to appeal along presently provided channels. The applicant shall be provided with copies of all papers forwarded to the Patent Office during the protest period. (9) Identity of the protesting party shall not be revealed to the applicant unless the protesting party insists that he be identified. (10) A provision must be provided that in any subsequent litigation involying a patent issuing from the protested application that there shall be no estoppel or res judicata based on participation or lack of participation in opposition proceedings relating to the application that subsequently matured into the patent. Such a provision would be in accordance with present legal standards since the protesting party had no right to appeal the Patent Office decision on the submitted evidence and had no right to rebut comments made by the applicant regarding the submitted evidence. (11) There should be no governmental fees required in connection with the opposition proceedings and all parties shall bear their own costs. (12) Following issuance of the patent the patentee shall have the right in an infringement action to recover damages for infringing acts occurring during and after the protest period. Such right should be subject to the following two conditions: (a) the claim sued upon shall be substantially identical to a claim appearing in the application at the time it was opened up for inspection, and (b) the infringer shall have received an actual Notice of Infringement which was transmitted after the application was opened for inspection. Concerning Item 2, the creation of the Office of Public Counsel, it is my opinion that such a bureau is not needed. As patent laws presently stand the examiner fulfills this position by determining patentability. His decisions are in turn reviewed by the primary examiner which are in turn reviewed on a periodic basis by other agencies of the Patent Office. The addition of a Public Counsel could only add extra expense to the already overburdened applicant. It should further be appreciated that an adversary proceeding does not exist in the Patent Office at this time. Applicant's counsel is required to present all information in his possession to the Patent Office which he believes is relevant to the question of patentability and which was not uncovered by the Examiner. In the absence of performing such a task applicant's attorney is subject to disbarment and the patent may be invalidated for reasons of fraud in the procurement. If it is truly believed that the examining procedure is not as adequate as it should be, then more time should be provided to the examiners to make a more thorough investigation on each application. Concerning Item 3, the establishment of a system for deferred examination of patent applications, I am in favor of such a system. I believe that the deferred examination would provide applicant with the time needed to determine the commercial value of his invention. In this manner he may decide to drop certain ideas which at the time of filing appeared to be commercially viable but subsequently proved to be of no commercial value. A deferred examination period should exist for a minimum of three years after filing. If the deferred examination proceeding is instituted for a three-year period it would be preferable to change the term of a patent from 17 years from the issuance date to 20 years from the filing date. Concerning Item 4, I am against the establishment of maintenance fees for patents. Such fees would put an undue burden upon the patent holder in that he would be required to periodic review of all patents in his portfolio to determine which patents were being used, which patents weren't being used and which of those patents that weren't being used would not be used at some subsequent date. Further, an individual private inventor would be required to pay maintenance fees on patents which he was trying to develop or market at a time when he was least able to afford such fees. I hope the above comments will provide some aid to you and the members of the Committee in determining the future of the patent system in the United States. It is recognized that certain portions of the system could and probably should be modified. It is further recognized however that the U.S. Patent System has been instrumental in its present state in bringing the United States of America to the forefront as a world leader in new technology. Major modifications to the system would appear to be detrimental to such continued leadership. Sincerely, JOHN W. YAKIMOW. о |