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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, III
Professor

WTF/ps

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

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. 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 sometimes. 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.

2. 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
Professor

WTF/ps

University of Illinois

at Urbana-Champaign

College of Law

209 Law Building

504 East Pennsylvania Avenue
Champaign
Illinois 61820

217 333-0931

October 5, 1983

COT

The Honorable Robert W. Kastenmeier

Chairman, Subcommittee on Courts, Civil Liberties

and the Administration of Justice

Committee on the Judiciary

United States House of Representatives
Washington, D.C. 20515

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,

Peter B. Wazy

Peter B. Maggs
Professor of Law

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.

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