JOURNAL of the PATENT Published monthly by members of the Patent Office Society PETER D. ROSENBERG, Associate Editor HERBERT T. CARTER, Advertising Manager LEON ZITVER, (Ch.) BOARD OF DIRECTORS THOMAS H. WEBB WILLIAM WAYNER A medium of expression for the exchange of thought in the fields of Patents, Trademarks and Copyrights; a forum for the presentation and discussion of legal and technical subjects relating to the useful arts; a periodical for the dissemination of knowledge of the functional attributes of the patent, trademark, and copyright laws, in order to effect a more uniform practice thereof and through which all interested in the development and appreciation thereof may work to a common end. Vol. 56 November 1974 No. 11 Publication of signed articles in this JOURNAL is not to be understood as an adoption by the Patent Office Society of the views expressed therein. Office of Publication, 104 Academy Ave., Federalsburg, Md. Entered as second class matter, February 12, 1932, at the post office at Federalsburg. Md., under the act of March 3, 1879. 1974 by the Patent Office Society A Proposed Compromise To The "Prior Art" Con- 699 -Harris A. Pitlick A Glance At The Law And Practise In The Matter 746 -Enrique Jiminéz Batalla B. C. Reid FOREWORD: THE MEANING OF ACCIDENT This frail barque of a paper is launched with some hesitation on its journey across the Atlantic Ocean. The foreign lawyer who presumes to opine on the mysteries of the United States patent law is to be regarded at best as being fearless, at worst merely foolish. Insofar as he may be wrong, the domestic patent lawyer will have the self-satisfaction of noting his errors; but insofar as he may be right, he will perhaps have made some slight contribution to the development of United States patent jurisprudence. In this paper, I deal with the question of accidental prior use, specifically, with the doctrine that accidental prior use does not anticipate. My theme is that the doctrine really bears in the United States a somewhat different complexion compared to that conventionally attributed to it in much of the case-law and legal literature. I should explain that my interest in the doctrine arises from the recent House of Lords decision over here in the United Kingdom in Bristol Myers Co. (Johnson's) Application. Prior user had been alleged by the opponent; in reply the applicants asserted that the use was accidental. British jurisprudence on the subject of accidental prior use being sparse, the parties canvassed extensively the United States jurisprudence for assistance. THE TILGHMAN LINE OF AUTHORITY: In Deller's Walker on Patents (2nd Edition) the doctrine is defined generally as being: Novelty is not negatived by any prior accidental occurrence or production, the character and function of which was not recog Barrister-At-Law, Middle Temple, London, England. 1 1974 Fleet St. Patent Law Reports 43; 1974 2 W.L.R. 79; 1974 1 A.E.R. 333. 718 Journal of the Patent Office Society claimer or because a Rule 131 affidavit removed a pertinent reference and which would be invalidated by Bass, only those which issued on equivalent inventions would now be invalidated. It might be argued that the proposed compromise is not much better than the actual Bass holding in the large corporation-group effort situation. Thus it is much more likely that equivalent inventions rather than only obvious inventions will result in a substantial number of cases due to the nature of the group effort, i.e., various parts of a group will each be working on related facets of a particular subject matter. Be that as it may, if each part of the group independently produces equivalent inventions, it would be inequitable to allow the common assignee to obtain patents on all of them whereas, if there had been no common assignee, only the first inventor would have been entitled to a patent. On the other hand, if there is no independence among the common-assignee co-workers, and all participants cannot be joined as co-inventors, then the additional problem of derivation 7 is presented, a topic beyond the scope of this paper. The only other solution to the assignee would be to allow for assignee filing of patent applications, a suggestion fraught with constitutional problems.48 It is submitted that with the proposed compromise herein, however, the common assignee does not come off that badly because it can still rely on the doctrine of equivalents "9 to protect itself from infringing equivalent inventions so that in this sense, its patent protection would indeed extend to all obviously equivalent inventions. 49 47 This problem pertains to 35 U.S.C. 102(f). See, for example, Examiner-in-Chief Federico in Ex parte Thelin, 152 U.S.P.Q. 624, 625 (1966) and Ex parte Stalego, 154 U.S.P.Q. 52, 53 (1966). 48 See, for example, Sears, The Continuation-In-Part Practice— Should It Be Abolished?, 55 J.P.O.S. 542, 561 (1973). 49 See Note 46, supra for a discussion of the doctrine of equivalents. November, 1974, Vol. 56, No. 11 719 Neal Orkin • THE LEGAL RIGHTS OF THE APPROACHES TO OLD IV. A CONSTITUTIONAL APPROACH TO EMPLOYED A. Proposed Legislation Although Congressman Brown's proposed legislation would have to some extent disregarded the employer's contribution to any invention, it is unlikely that it would have been deemed unconstitutional. The employer would still have been protected by status or the common law; depending upon the circumstances he would be able to obtain either an assignment of all rights to the patent or at least a shop right. There would probably have been few instances in which the employee would obtain full rights to the invention." Furthermore, the legislation was proposed pursuant to Congress' interstate commerce power (Article I, S8, C1.3); this power afforded to Congress by the Constitution is a plenary power and in recent years the Supreme Court has upheld all types of legislation that may in the minutest way affect interstate commerce.16 Basically the only restraints on this power are those found within the Constitution itself.47 Congress also had the power to enact this statute pur 45 * Student, Temple Univ. School of Law, Operations Research Analyst, Naval Air Development Center, Warminster, Pennsylvania. 44 It is difficult to conceive a situation in which an employee could design and test an invention with the complex equipment that only his employer could furnish for his doing so. Only very simple inventions would not fall into this category. 45 "Congress shall have power to regulate commerce with foreign nations, and among the several states, and with the Indian tribes." 46 Congress has consistently sought to protect certain groups of individuals through this power. See Heart of Atlanta Motel, Inc. V. U.S., 379 U.S. 241 (1964), upholding the Civil Rights Act of 1964. 47 Wickard V. Filburn, 817 U.S. 111 (1942). |