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A.

PTC RESEARCH FOUNDATION QUESTIONNAIRE

Has your company/client challenged the validity of a patent that it had
licensed under the Lear doctrine?
(If so, was the challenge successful?
Court decision or settlement?)

B.

C.

D.

No

Has your company/client, as a licensor, been challenged by a licensee as
to patent validity under the Lear doctrine?
(If so, was the challenge
successful?

Court decision or settlement?)

No

Has Lear had any significant practical impact, in your experience, upon the licensing process?

(If so, please explain briefly.)

The New PROVISIONS
REEXAMINATION MAY

NOT REALLY

REGARD To

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with ULTIMATELY

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yes b.

Repeal of Lear, Inc. v. Adkins by legislation?

Legislation to require license payments until a decision ad-
verse to the patent?

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A.

PTC RESEARCH FOUNDATION QUESTIONNAIRE

Has your company/client challenged the validity of a patent that it had licensed under the Lear doctrine? (If so, was the challenge successful?

Court decision or settlement?)

There have been no challenges by doctrine.

under the Lear

B.

Has your company/client, as a licensor, been challenged by a licensee as
to patent validity under the Lear doctrine?
(If so, was the challenge
successful? Court decision or settlement?)

has not been challenged by a licensee under the Lear

doctrine.

C.

Has Lear had any significant practical impact, in your experience, upon the licensing process? (If so, please explain briefly.)

The only impact relative to

m operations is the

elimination of the formerly standard license agreement provision prohibiting the licensee from attacking the licensed patent.

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No b.

No c.

Repeal of Lear, Inc. v. Adkins by legislation?

Legislation to require license payments until a decision ad-
verse to the patent?

Any other legislation? (Briefly delineate.)

PTC RESEARCH FOUNDATION QUESTIONNAIRE

A.

Has your company/client challenged the validity of a patent that it had
licensed under the Lear doctrine?
(If so,
was the challenge successful?
Court decision or settlement?)

B.

C.

D.

No

Has your company/client, as a licensor, been challenged by a licensee as
to patent validity under the Lear doctrine?
(If so, was the challenge
successful?

Court decision or settlement?)

No

Has Lear had any significant practical impact, in your experience, upon the licensing process?

No

(If so, please explain briefly.)

Do you favor:

a.

Repeal of Lear, Inc. v. Adkins by legislation?

maybeb.

C.

d.

Legislation to require license payments until a decision adverse to the patent?

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UNIVERSITY OF BALTIMORE ● SCHOOL OF LAW
1420 North Charles Street Baltimore, Maryland 21201

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Subject: H.R. 3577 and corresponding S. 1535 (paragraph e only) letter of August 22, 1983 Requesting Opinion.

Dear Chairman Kastenmeier:

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My opinion on these bills is limited by a lack of complete information on the worldwide picture. I urge you to ask the sponsors for a detailed report on which of the industralized countries follow the approach of protecting patented processes to prevent importation of products made by the patented process in other countries. This report should be specific on how the law is interpeted, as I will mention in detail below.

Generally, I think you will find the answer to the above question is that in most of these countries the proposed general approach is followed. For example my recent visit to the European Patent Office in Munich, West Germany, where I attended a meeting of the Association for Teaching and Research Intellectual Property Law, gave me an opportunity to review the European Patent Convention. Article 64(2) specifically expands the European patent rights in each member country, no matter what the law was earlier, to include the general protection proposed in the above bills. The European Patent Convention text in article 63(2) is:

"If the subject-matter of the European Patent is a process,
the protection conferred by the patent shall extend to the
products directly obtained by such process."

I am not aware that the European Patent Convention or any of its regulations specifies how the law will be applied, leaving it to the member countries to develop their specific application. For example, what happens if a product is manufactured overseas by U.S. patented process before the U.S. process patent expires, but it is not imported until afterwards? This step could be a cute way of getting a jump on U.S. companies who could

not manufacture the product under the patented process until the U.S. process patent expired under the proposed bill. H.R. 3577 specifies that infringement occurs only during the term of the U.S. process patent, so the foreign stock piling approach would be permitted. My view is that the U.S. process patent expiration should be the cut-off date. The reason for my opinion is that everyone is free to use the process, either to import products or to manufacture in the U.S. after the U.S. process patent has expired. The subject matter is in the public demand then and it is consistent U.S. patent law principles to allow anyone, either foreign or U.S. base to sell the product in the U.S.

I would, however, like to know how other countries approach this problem. If some countries prevent products made before the process patent expires from being imported, even after the process patent expires, I would suggest that language be added that gives the same restriction for importation from that country into the U.S. This proposed addition gives the balance so important in international relations, where practical, as

here.

The proof question is handled in proposed Section 295 of H.R. 3577. I see a potential nightmare of allegations that infringing products are imported and made by the patented process, as well as disputes over disclosure of confidential information by foreign manufactures. It appears that section 295 is as good a job as we can find for a start. The U.S. will not be alone in this problem and these expreiences should lead to adjustments down the road. I would not shy away from implementing the proposal because these difficulties may weigh heavily on the importer, as proposed. The bill is fair, but tough now until we see how the approach works in reality.

I have included in this analysis S. 1535, paragraph (e) that amends 35 U.S. section 271, since it is generally the same proposal. The other proposals in S. 1535 are too distinct to cover in this letter. I find the S. 1535 bill inadequate on this topic, failing to cover the important procedural question of proof burden. I interpret S. 1535 to be the same as H.R. 3577 on the cut-off effect of the U.S. patent expiration, as mentioned above.

In summary I support H.R. 3577 at this stage, with a desire for more information and a possible revision to clarify the bill, if the further research indicates such a step is in the interest of the U.S. process patent holder and international relations. evaluation, I will be glad to answer them. and proposals will follow shortly.

If you have questions on my

My response on the other bills

Sincerely yours,

W. T. Fryer III

William T. Fryer,
Professor

III

WTF/ps

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