UNIVERSITY OF BALTIMORE ● SCHOOL OF LAW 301-625-3396 October 17, 1983 Robert W. Kastenmeier Chairman, Subcommittee on Courts, Civil Liberties and the Administration of Justice Committee on the Judiciary U.S. House of Representatives Washington, DC 20515 Subject: The Patent and Trademark Office Procedures Improvement Act of 1983 Merger of the Board of Appeals and the Board of Patent Interferences Dear Chairman Kastenmeier: Your letter of August 22, 1983 forwarded eight bills or proposed bills related to patents and antitrust law for my review and comment. My role as a full time law professor who has taught both patents and antitrust law for many years is to give an independant opinion on these bills or proposals. Of course I am influenced by my background as a patent attorney for several years before teaching law full time, but the teaching career does give a good perspective, continually subject to reevaluation in the classroom. I will give you my comments on each bill or proposal in a separate letter, unless certain bills can logically be combined in one letter. The subject proposal, presented as a draft bill with the Secretary of Commerce Baldridge's letter of July 18, 1983 is a welcome change. I support it for the following reasons: 1. 2. It shifts the limited resources of the Patent and Trademark Office (PTO) to a more efficient form. The proposed bill combines the Board of Appeals (BOA) and the Board of Patent Interferences (BOPI). A sharp division existed before on what could be handled by the BOPI. The BOA was the primary decision maker on the 35 U.S.c. Section 102 and 103 patentability questions. Interferences some times. raised questions under these statutes. The procedure involved to decide the patentability questions was inefficient. It is far better to have one board able to handle all questions at one time. The appeal rights of applicants are not sufficiently changed. 3. The BOA can utilize an increase in members to more efficiently assigned work to persons best able to handle a matter. Detailed Comments: There was some discussion I heard earlier of other changes in the interference process, to expedite this review in the PTO. Some feel that the whole interference process should be dropped in favor of a first-to-file system used in most other countries, where the date of invention is the application filing date in the PTO. Ther present legal system in the U.S. under 35 U.S. Section 102(g) gives credit in some situations for prior work in the United States. I teach each year, in addition to my law school patent courses, a course to foreign patent attorneys in Washington DC. It includes a detail explanation of our patent law on the determination of the date of invention. Each time I am challenged to reevaluate the importance of the U.S. law versus the laws under which the students in the class have practiced for many years. Each time I come out of that four hour session with a commitment the the U.S. system is better, because it creates an incentive to the U.S. inventor to more completely develop the invention earlier, beyond a mere description in a patent application. The present U.S. law has an incentive that other systems lack. The U.S. patent applications are more detailed on how the invention can be built and the best form at that time, a part of the U.S. patent system that is expressed in 35 USC Section 112 in the requirement for the best mode. The public receives a better disclosure in the U.S. patent then in foreign patents, generally. Of course, there are situations where the differences between the two systems are not that great, depending on the nature of the U.S. company's international business. The negative side of the proposed bill is that it does remove a group of individuals in the PTO that have specialized in interference practice, somewhat diluting the experience of the PTO in this area of expertise. This problem does not appear to be significant, as the management of the work can be effectively arranged within the merged BOA and BOPI. The proposed bill will not change in any way the basic law in the U.S. on determination of the date of invention. I support the bill. If you have any questions, I will be glad to answer them promptly. Letters on the other bills will follow shortly. Sincerely yours, W. T. Fryer III William T. Fryer, III WTF/ps University of Illinois at Urbana-Champaign College of Law 209 Law Building 504 East Pennsylvania Avenue 217 333-0931 October 5, 1983 The Honorable Robert W. Kastermeier Chairman, Subcommittee on Courts, Civil Liberties and the Administration of Justice Committee on the Judiciary United States House of Representatives Dear Congressman Kastenmeier: Thank you for your letters of August 18 and September 29 asking for my comment on patent reform measures that are before your subcommittee. I enclose separate memoranda on each of these bills. I greatly appreciate your concern for modernizing and improving our patent legislation to keep the United States at the forefront of world technology. Sincerely, Petor B. Wazy Peter B. Maggs PBM: blm Enclosures COMMENTS ON H.R. 3577 SUBMITTED BY PETER B. MAGGS, PROFESSOR OF LAW, UNIVERSITY OF ILLINOIS AT URBANA-CHAMPAIGN By restricting importation of goods made with patented processes, this bill would encourage developers to reveal processes through the patent system rather than to keep them as trade secrets and would bring U.S. law into line with that of many other countries. The formulation of the rule is simpler and clearer than in S. 1535. The presumption is essential to the effectiveness of the legislation, since without it, procedural difficulties (e.g., the unavailability of discovery) may make it impossible to enforce a rule against foreign infringement of process patents. |