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It is acceptable for application to be read to applicant who is illiterate, blind, or does not understand English or explained to him in way that allows him to suppose with some confidence that application he is called on to sign covers invention that he believes he has invented, to constitute actual inspection for purposes of Patent Rule 56; however, signing in blank or with no inspection and without other circumstances reasonably leading to such confidence on part of applicant justifies striking application as not vouched for by applicant.

3. Applications for patent - In general (15.1)

Oath (§47)

Actions of coinventor of plant whose principal characteristic was color, who looked at picture showing color and discussed application with attorney, and who would have realized that stated reference to plant's genetic parent was incorrect if he had read

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Patent interference No. 98,252 between Walter H. Jessel, Jr., William E. Duffett, and Marvin D. Mix, application, Serial No. 232,393, filed March 7, 1972, and Robert N. Newland, Walter H. Jessel, Jr., and William E. Duffett, application, Serial No. 218,569, filed Jan. 17, 1972. On party Jessel's petition for reconsideration of decision striking application and dissolving interference. Decision vacated in part.

Original opinion 195 USPQ 678; see also 195 USPQ 674.

Stephen W. Blore, Portland, Ore., for party Newland.

Daniel P. Chernoff, and Jacob E. Vilhauer, Jr., both of Portland Ore., for party Jessel.

Dann, Commissioner of Patents and Trademarks.

The party Jessel et al. has filed a petition to the Commissioner requesting reconsideration of that part of the Commissioner's decision of February 25, 1977 which held that the Jessel et al. application should be stricken from the files under the provisions of 37 CFR 1.56, based on the failure of inventor Mix to read the application before signing it.

After careful reconsideration of the facts and arguments presented, it is concluded that the result reached in the February 25, 1977 decision represented too inflexible an application of 37 CFR 1.56.

[1] That rule states that an application may be stricken if it is signed and sworn without actual inspection by the applicant. Although it is admitted that Mix did not read the application "throughout" before signing it, petitioner nevertheless urges that there was sufficient actual inspection to preclude any striking under 37 CFR 1.56.

[2] What is needed to constitute actual inspection? It is certainly desirable that applicants read their applications carefully and completely before signing them. When the applicant is illiterate, blind, or does not understand English, it is acceptable for the application to be read to him or explained in a way that allows him to suppose with some confidence that the application he is called on to sign covers the invention that he believes he has invented. On the other hand, a signing in blank or with no inspection and without other circumstances reasonably leading to such confidence on the part of the applicant would justify striking the application as in essence not vouched for by the applicant.

[3] In the present case it is contended that Mix adequately inspected the application at the time of signing when he looked at the picture of the flower and discussed the application with his attorney. The principal characteristic of the new plant variety known to Mix was its color, which was shown in the picture. He indicated that he knew nothing about the data on the asexual reproduction and the botanical characterization supplied by his co-inventors, which constituted the bulk of the specification. It is claimed that he would have had no better idea of the application's coverage if he had read it completely, except that he would have realized that the reference to Gay Anne as the genetic parent of the new variety was incorrect.

All of this adds up to something more than a heedless signing in blank, though it is

doubtful whether it is enough to qualify as an actual inspection. Assuming arguendo that it does not, there remains the question of whether the circumstances call for the severe penalty of striking the application.

There is no suggestion that Mix's failure to read the application was part of an effort to deceive the Patent and Trademark Office in any way or that it had that effect. As noted, Mix testified that if he had seen the reference in the specification to Gay Anne as the genetic parent of the new variety Copper Anne, he would have realized that this was incorrect. This corroborates his admission that he failed to read the specification, but the correct identification of the parent is evidently not significant in providing a description of the new variety. With this one fairly unimportant exception, the application was what he supposed it to be and what he intended to have filed in the Patent and Trademark Office. The circumstances are consistent with a conclusion that Mix's failure to more adequately inspect the application occurred because he was satisfied that the application covered what he believed to be his invention.

[4] The original declaration signed by Mix stated inter alia that we have read the foregoing specification and claims ***" Mix apparently failed to read these words as well as those constituting the specification and the claims. To sign a declaration under pain of perjury without reading it is most reprehensible. Nevertheless this particular allegation is not required by statute or rule and does not bear in a substantive way on the patentability of the Jessel et al. application. “The requirements of section 115 and of the implementing rules are concerned with substance and not with form.'

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[5] Under the present form of 37 CFR 1.56, the Commissioner is required to strike an application when fraud was practiced or attempted on the Office in connection with it. Striking is discretionary when the application has been executed in blank or without actual inspection. Striking is justified under these circumstances if the resulting application does not fairly reflect applicant's invention or if he has not taken reasonable steps to satisfy himself that the application does so reflect his invention.

'Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 173 USPQ 65, 91 (1972). In this case execution of an application which was later partially retyped and a claim added before filing was held not to be defective.

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This responds to your letter of August 18, 1983 requesting my comments on various pending bills relating to the patent laws.

I am honored that you asked me and I am happy to provide my observations.

Before I begin, a disclosure is in order. In addition to being an adjunct lecturer in patent law on the U.C.L.A. Law School faculty, I am also a full-time private practitioner conducting an active litigation practice in the patent and trademark field. However, in this letter, I will attempt to provide the neutral view which you requested based on my scholarly activities.

H.R. 3577 (Relating to Protection of

Process Patents Outside the United States)

I believe the proposed amendment to Section 271 of 35 U.S.C. set forth in new paragraph (a) (2) of the proposed bill will provide a significant strengthening of the incentive to invention provided by patents without offsetting anticompetitive effects. There is no doubt that, at present, some holders of U. S. patents on process inventions are being deprived of the patent reward for their contributions by off-shore use of the process and importation of the resulting product. Although 19 U.S.C. 1337 (a), an ITC proceeding, provides some relief, there is no possibility of a damage award under such proceeding. A particularly serious problem is that the intense pace and expense of ITC proceedings can simply be too much for an individual inventor or an inadequatelyfinanced business to bear. A suit for patent infringement in the United States District Court would offer a preferable avenue for relief in such cases.

The second portion of the bill, Section 295, would establish a presumption that the product was produced by the patented process where the court found there was substantial likelihood thereof and that the client had exhausted all reasonably available means through discovery to determine the process actually used. Notwithstanding these safeguards, I think proposed Section 295 overreaches and would have potentially anticompetitive results which outweigh its benefits. Certainly, I am aware of the difficulty of obtaining discovery in foreign countries that the patent owner would face. However, I think that, by leaving the burden of proof at a normal "preponderance of the evidence" standard for proving infringement, there are still preferable alternatives to the proposed presumption that should be available to a patentee to meet that burden, e.g., that no economically alternative process for making the product was known, that use of the process inherently produced side products detectable in the accused product, and so on. The fatal problem I see with the presumption of Section 295 is that the products that are imported are often basic staples, e.g., ordinary gasoline obtained by a new refining process. Such a staple product may enter the United States and be comingled with other products and pass through a succession of hands before it reaches the possession of the defendant who is charged with infringement. Consider a purchaser of a staple product, such as gasoline, who is charged with infringement. Such a user may have no practical way of tracing back through the chain of distribution to find out how the product was made to establish that an alternative noninfringing process was used, to establish its freedom from liability, or that the commodity has been so mingled with major quantities of product produced by a noninfringing process to reduce the extent of its liability. The existence of such a presumption would, I foresee, encourage process patent owners to litigate against weakly funded defendants and could have anticompetitive effects which far exceed the beneficial effects that the existence of such a presumption could be expected to have.

In sum, I believe that the first part of H.R. 3577 represents sound legislation but that the second part of the bill, proposed Section 295, should be eliminated, leaving the burden of proof on the patent owner, as it is at present, by a preponderance of the evidence.

H.R. 3256

A copy of this bill was enclosed with your letter. Because the bill does not relate to patents, I assume it was included by error in place of H.R. 3286 which is referred to in your letter, but was not enclosed.

3256.

Accordingly, I have not provided any comments on H.R.

H.R. 2610 (Defensive Patents)

In my view, the proposal for a defensive patent, while basically sound, requires revision. The defensive patent concept should be confined to the purpose for which it was originally conceived by its proponents, namely as a vehicle for the United States government to obtain defensive publications. The purpose of making such an instrument available to the Government would be to insulate it from prospective liability to any private parties who later independently make the same inventions, in a way that would relieve the government agency obtaining the patents, and the United States Patent and Trademark Office examining the patents, from the full effort and expense involved in patent preparation, prosecution and examination.

The

By broadening the original concept to make the defensive patent available to private parties, opportunities will be ripe for exploitation of the name and prestige of a "patent" by unscrupulous promoters of such quack remedies as cancer cures, automobile gas saving gadgets, baldness potions, aphrodisiacs and the like. word "patent" has historically denoted an instrument conferring an exclusionary right granted by the sovereign. As such, a patent is accorded considerable respect by the public. Many, perhaps most, citizens are inclined to honor patents during their lifetime to the overall benefit of the inventive community and the advancement of technology. The existence of an instrument issued by the United States Patent Office as a "patent" which would be issued without the examination for utility, novelty and obviousness subjected to real patents, would open the door for promoters of quack products to advertise them as patented with all the connotation of government approval that the word connotes to unsophisticated members of the public. To confer that term upon a mere publication cannot fail to weaken the general respect accorded to true patents.

Additionally, there will be some members of the public, who upon seeing the word "patent" upon such an instrument will mistakenly conclude that the subject matter is subject to some type of exclusionary right which forbids its use. This could be particularly pernicious because the subject matter of such instruments may well be matter that is old and in the public domain because it has escaped the normal examination scrutiny of the Patent Office. It is not difficult to foresee that there may be occasions when owners of so-called defensive patents may make verbal or other

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