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I will skip a little bit of what he says but he concludes by saying We always felt we should tell them—he is referring to the Patent Officeprerything we know and in saying what the prior art was, you should say what it really was because, if you don't do it you are really cheating the Patent Office.
That brings me to a second point in S.1321, which is the patentability brief. I highly support that provision. I think Mr. Rabinow's words, which I just quoted, which say that you should not play games with the Patent Office, that you should tell them what you think the invention is and why it distinguishes over the prior art in my opinion is recommending a patentability brief, for such a brief enables this function of candid communication with the Patent Office to be performed. It will not be performed absent such a brief; well, let me say it this way, it has not been performed fully in the past by applicants.
In that same "American Patent Law Association Bulletin," Mr. Dunner-and I believe I am pronouncing his name correctly—said and I will quote from page 635 of that bulletin:
I think there should be an explicit rule which requires an attorney at some appropriate stage in the application, certainly well ahead of the allowance, to file a written statement of the best public prior art he knows of.
Again that seems to me to be in support of the principle of the attorney's oath and of patentability brief.
There is one other point which may be a minor point and hasn't been brought up here and this appears in section 112 which prescribes the form of patent claim which is to be used, a form which the American Patent lawyers call a Jepson form of claim and which really follows the German form of claim prescribed by the laws of Germany. I think everybody agrees that Ġermany has a very good patent system.
Again in the bulletin of the American Patent Law Association for November December of 1932, page 76, there is a quote, and I do quote.
A good inany of the holdings that patents are invalid stem from the discovery on the part of a district judge that the invention which the Examiner thought was a substantial forward step was in fact the tiniest little pipsqueak of change from a product that had been in public use for years and which the Examiner had no way of learning about.
Now that is true; and, if you do not have a proper form of claim, it is often very difficult for the courts to determine what the inventive step was because that "little pipsqueak sort of change" is buried in a mass of obscure words, in very long and very difficult language. And that is the reason why I support the Jepson form of claim which is prescribed by section 112 of this bill, because if you have that form of claim and if the applicant has been candid with the Patent Office, that claim would have read in this manner. The claim would have read as follows:
(1) In a product that has been in public use for years,
If we insisted upon this form of claim, which to some may seem to be not too important, but which I think is very valuable; if we have this sort of claim presented to the examiner, it would lighten his burden because first of all he would direct his attention immediately to the final portion of the claim to see whether this "tiniest little pipsqueak change"—if that is what it was really amounted to invention and it would expedite his search of the prior art and would expedite his consideration of the application. It might do it to a very material degree. On the other hand, if the last portion of the claim was not in fact a little pipsqueak change” but was a substantial invention, its clear delineation in a Jepson claim would still help the examiner because it would expedite his search and his evaluation of the invention.
Furthermore, the patentability brief should bear directly upon that portion of the claim which comprises the invention, which comprises the foward step in the art and I assure you there are many claims that have been litigated that do not do that at all and you have to search through the language of the claim and find, if you can, what the invention is and pick it out from the prior art. I think it is most important that a patent claim be in such form that the examiner and the public and the courts will be able to understand it easily and completely.
I might also add that if the claims of a patent were in such Jepson form, and if that patent later reached the courts in a patent litigation, the court would be able to understand almost immediately just what the invention was all about. This again, is a provision which expedites the exercise of candor with the Patent Office. You are telling the examiner first by the attorney's oath and by the investor's oath that you are giving him all of the prior art of which you have knowledge, and in this form of claim you are stating precisely what your invention is; and with your patentability brief you are stating why it should be allowed.
There is one other section of S.1321 I wish to comment on; that is the examination provision in which the Patent Office, for the first time, is told explicitly to put down in the record the reasons why a patent is allowed. It is a very disturbing and infuriating experience to read the file history of a patent to find that the examiner has repeatedly rejected the claims and then suddenly you find there was an interview and without any further explanation the patent was allowed. It is allowed without any explanation of why the Patent Office changed its position after repeatedly rejecting the claims. I heartily recommend that the examination procedures of S.1321 be adopted.
Let me turn to the question of deferred examination and early publication. I approve both of those provisions without reservation. Early publication performs the function of the patent law, to inform the public, and the earlier the public is informed as to the advances in the art, the better it is for the public. As to the 6-month waiting period which is provided, I think such 6-month period is reasonable. Let me state that most corporations today keep a close watch of the foreign patents and usually within 2 years of the filing of U.S. Patent application a foreign patent issues or is made avail
able for inspection--I am talking now about in France, South Ifrica, or Australia-sometimes it takes 212 years. It used to take about 15 or 18 months. We then know which of our competitors have filed what sort of patent applications in this country. It would be cheaper and better and quicker if we could ascertain the same information by this provision for early publication.
So far as deferred examination is concerned, I am in favor of it for two reasons—first of all, many patents are filed as a protective measure, as shields. We are concerned about whether somebody else may at a later time take out a patent on one of our own developments and so we file a patent application only for the purpose of protecting ourselves against a patent suit brought by someone else who later on makes the same improvement. If we were to file an application and it were to be published within 6 months, then we would be sure that 1 year later or 18 months later that no one else could file a patent application covering that same subject matter and obtain a valid patent.
Other patent applications are filed orginally in the hope and expectation that they represent a real advance in the art, but after a year or 2 of further experience we find that we were mistaken. Now if there were a deferred examination, we would probably allow those applications to lapse by failure to request an examination.
in both of those instances, deferred examination would save the Patent Office the problem of examining applications in which applicants really have no interest and I am sure there are many thousands of such applications filed each year. This result would give the Patent Office more time to turn their attention and their examining time to those applications in which the public and the parties are really interested. So I urge that there be early publication and deferred examination which will save the parties' time and will save the Patent Office's time. In that way the public interest will be served.
There are many things I would like to talk about but at this time I would rather answer some questions.
Oh, I have one point which I want to speak to also. It came up yesterday. It was a question of whether we should have “patent courts. Senator Hart stated that he preferred “generalists" and I heartily second that opinion. I think it would be a great mistake to have specialized patent courts to determine patent matters. The present Federal courts are capable of doing the job provided there is adquate advocacy by counsel for both sides. I think that a Federal judge can handle the technical problems of patent litigation just as well as he can, for example, handle the medical problems that come up before him in personal injury litigation or the complex problems involved in SEC litigation. The legal and technical problems in patent cases are not overwhelming and I cannot conceive of a specialized patent court that could do as good a job as our present courts. Furthermore, I think that a specialized patent court system would eventually create its own little world without access to the public and I would much rather have Federal judges throughout this country handle the patent laws; and develop the application of the patent laws in the interest of the public than to have an ingrown
specialized patent court that would begin to believe that they were dealing only with their own little world.
Now I will be glad to answer any questions if there are any.
Senator Hart. Well, Mr. Clark, your prepared testimony that we did have an opportunity to read supplemented by your oral testimony this morning is so comprehensive that I think we are left with very little to ask. There is no obscurity with respect to your views as to at least the principle elements of the bill. For all of that we are grateful. I know that in the earlier record of this committee on the occasion that you testified, I believe in 1970 or 1971, this item is reflected, but let me for the benefit of this record ask you the name of the company whose chief patent counsel you have served as for these many years?
Mr. CLARK. I am, and have been counsel for 14 years, with Firestone Rubber Co.
Senator Hart. What kind of track record does Firestone have in the Patent Office and in patent litigation in the courts?
Mr. CLARK. Firestone has over the years been involved in almost every major piece of litigation involving the tire industry. There is one case that has not yet been finally decided, but in all other cases, Senator, we have resisted the major patents which we thought were invalid and at great cost and expense substantiated that position and won those cases. We have not filed patent applications—no, pardon me, patent suits against the tire industry based upon our own patents. I would say that our competitors would say that the Firestone Tire & Rubber Co. is antipatent. I do not believe it is. We are antiinvalid patents. And strongly so.
Senator Hart. One of the points you have developed in your prepared testimony, and you referred to it again in your oral testimony, was the desirability of section 115's oath provision. Mr. Kauper, speaking for the administration or at least appearing on behalf of the Department of Justice and commenting on the bill, suggested that the administration bill does not include the attorney's oath. I asked this question just to underscore for the record your position. What is your view with respect to that?
Mr. CLARK. I see no problem with the attorney's oath. I am in favor of it. There has been a bugaboo raised that this puts too great a burden upon the attorney but in any oath the affiant need only tesify as to what he knows and if he has no information as to a particular point, he can always state that fact. But I think that as to what an attorney knows which is relevant, he should state that and be willing to state it under oath or at least under conditions that would call for penalties if he deliberately misled the Patent Office.
The question has been raised that perhaps every application that is filed must have a search and that the attorney must make an exhaustive search before he can make such an oath. I don't think that is required. I think all he has to state is that we have made no search or we have made a small search, but in any event here is the prior art and the best prior art that we know of.
We have been doing this at Firestone for some years, because I feel and my management feels that an invalid patent is a debit and not a credit on the books of a company and it is a great mistake to
believe that you have an asset of some value when in fact you
have an invalid patent, which could in the end become a very dangerous instrument to be turned against you.
I might add that insofar as an adversary proceeding in the Patent Office is concerned, Senator, there has for some years been an informal adversary proceeding. Let's assume that a corporation finds an issued French patent, which indicates XYZ corporation has filed a C.S. application, and they get a copy of that C.S. application from the French Patent Office. This is a normal, routine, proper procedure; and assume they are concerned about XYZ's patent application. They can take up a bundle of relevant prior art and submit it to the division of the Patent Office that is handling that subject matter and show them that issued French patent and say that if there is a U.S. application pending, and we are not asking you to state whether there is or not, but if there is one, then here is what we think is good, relevant, prior art.
Now sometimes that works and sometimes it doesn't. There are some patent lawyers that will not submit prior art to the Patent Office saying they would rather reserve it for later use in court. They say let the patent issue and then we will fight it in the courts using this prior art. The reason they do this is because they have more faith in the courts in applying the prior art than they have in the patent examiner to apply it properly. So the formal adversary system that is provided for in this bill will work to the extent the patent bar cooperates with it and to the extent the patent bar has an increasing confidence in the competence of the Patent Office and the willingness of the Patent Office to apply prior art properly. If they do not gain that faith, then they will hold the prior art back and wait for their day in court. That is why it is important in the administration of this bill that the adversary system be administered with great care in the Patent Office and that the Patent Office take steps to see to it that the proir art is properly applied; otherwise people will feel that they have "wasted" their prior art, in the Patent Office. However, I think the adversary system that is provided for by this bill could be very useful and I am in favor of it.
Senator HART. You have endorsed the deferred examination system. Now, as I understand the criticism or the opposition to deferred examination, and taking your view as being responsible for Firestone patents, the argument goes that you should be worried about your competitors filing a large number of spurious applications and deferring examination. As I understand it, the argument goes that this would create sort of a cloud over the technology because you wouldn't know which patents will issue. Firestone would be fearful of entering that area. Additionally, as I understand the argument, you would have to start reviewing all of the patent applications of your competitors in the art and the art would be burdened with a large number of questionable applications to be reviewed. How do you feel about that?
Mr. Clark. I don't agree with that. I would in the first place much rather know what my competition has filed and have an opportunity to examine it and be sure of what is going on. We do find out as I said earlier, we generally find out from an examination