It has been determined that the modest advance rating will be attributed to the first application approved when two applications are approved on the same date for the same use. Subcommittee on Courts, Civil Liberties and the Administration of Justice Committee on the Judiciary 2137 Rayburn Building Washington, DC 20515 Subject: Ad Hoc Group to Improve the Patent Laws Dear David: Concurrent with our preparation of testimony, we are collecting materials in response to your inquiry about background for the items in our proposed patent legislation. One of the areas for which we are seeking legislative remedy has to do with the effect, on the patentability of subsequent inventions, of background scientific knowledge within an organization. This situation has led to conflicting judicial decisions over the past decade. Our concern is for the effect of such decisions on team research and the free exchange of scientific information within research organizations. There has been extensive scholarly analysis of this situation, and several excellent reviews of the law have recently been published. Copies are enclosed. There is now extensive discussion within the bar associations of this issue, and several good suggestions have been made to improve the language of the Ad Hoc Group. We look forward to discussing this with you, because we would like to include all useful suggestions in the bill as introduced. We will write to you separately on the other sections of the proposed bill. Encl. Shurn, "Is the Invention of Another Available as Prior Art? In re Bass to In re Clemens and Beyond", 63 Journal of the Patent Office Society 516 (1981). Walterscheid, "The Ever Evolving Meaning of Prior Art", CC: Ad Hoc Group to Improve the Patent Laws d51B5 md 73 |