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131 provides for the submission of a so-called "patentability brief" and is at requirement, once again, that an applicant for patent be open and candid with the Patent Office. Such a brief will have the further advantage of reliving the Patent Office of much of its burden (and the Patent Office is over-burdened), and will provide a record which will prove of benefit to the parties and to the courts in the event the patent becomes involved in subsequent litigation. Section 132. Eramination proceedings

Section 132 (e) introduces some useful and needed reforms into the prosecution of a patent application. All too often, the file history of a patent is completely silent as to the reasons why the Patent Office finally allowed the patent. Subsection (c) of this section which requires the examiner to state the reasons for his actions and to include a complete narrative report of all matters discussed with the applicant and his attorneys will be very useful. I have suggested in the past and I suggest now that the Patent Office make tape recordings of all oral discussions with the applicant or his agents and attorneys, at the expense of the applicant, and make copies of such recordings available to the public. Verbatim tape recordings will take much of the mystery out of unrecorded interviews which presently constitute critical gaps in the prosecution of a patent application. All too often, the claims of a patent are rejected; the history then shows an interview, the substance of which is not reported in any form ; and then allowance by the Patent Office without any real explanation for the change of position by the examiner. Tape recordings of such interviews will remove such clouds of uncertainty from the prosecution history of a patent.

Section 132 (e) also has a desirable provision requiring that amended or new clains presented during the prosecution shall not materially enlarge the scope of the claims of the application as originally filed. If this is adopted, it will prevent that practice of which many courts have complained ; namely, the practice of some applicants to hold a pending application in the Patent Office for a number of years and at the last minute adding new and enlarged claims to encompass the latest advances of the art in which the applicant himself played no part. The provision just referred to should foreclose such practice. Sertion 122. Public availability, publication, and confidential status of applica

tion Sertion 191. Deferment of examination

Section 191, which provides for deferred examination of applications, is desirable. It will save both the Patent Office and many applicants a great deal of time and money. The provision is particularly useful in connection with Section 122 which provides for early publication of applications. Since many patents are obtained for defensive purposes it is likely that many applications will be allowed to lapse without examination for the same reason. In addition, the subject matters many applications which seem to be of great importance when initially filed do not stand the test of time and such applications will within a few years turn out to have little interest and will likewise be allowed to lapse. Thus both deferred examination and early publication of applications offer many advantages with no discernible disadvantages. Section 282. Presumption of validity; defenses

Section 282 (c) is a change which has long been needed. That section requires the parties in infringement litigation to make definite statements as to their position before trial. I would hope that the courts will require the parties to take such definite positions "as soon as practicable" and not wait until 90 days before trial and 30 days before trial, respectively, which are specified as the ultimate time limits in this section. If this section is properly applied by the courts, patent cases no longer will reach trial and even the appellate stages without either party having taken a position and without the issues ever having been properly defined. Section 286. Time limitation on damages

This section which reduces the statute of limitations from six years to two years properly takes into account the almost instant means of communication which exist in the world today. Perhaps a hundred years ago a patentee could not learn of another's infringement for several years. Today, if he is alert, he can learn of it almost immediately and there is no justification in permitting a patentee to sit idly by for a period of six years while potential damages accrue in large amounts.

I have noted with approval the absence of any reference to patent practices and the antitrust laws. Any legislation concerned with such subject matter is unnecessary and inappropriate, and should not be intermingled with legislation that is concerned with patent reform such as the proposed bill.

Obviously, there are many features of the bill which I have not commented upon. I would rather confine my remarks to those changes in or clarifications of the present law which I believe are in the public interest and should be supported. If all of these public interest provisions, both those upon which I have commented and those as to which I have remained silent, should become legislation, then better and stronger patents should issue, the patent system should be improved, and the public interest thereby be better protected. I urge spreedy consideration, approval and enactment of this legislation. Respectfully submitted,




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Costa Rica
New Zealand
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(By Martin R. Horn* and Saul Epstein*)


Almost all recent articles dealing with the subject of the invalidity of patents are based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. It is high time indeed that the opposite side of the coin be closely scrutinized. As pointed out in the present article the conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees with the basic premise of the article that the courts are not applying a too strict standard of patentability.

Do the officials of the Patent Office really care about the validity of the patents which are issued from their agency, as long as the production goals which they set for the patent examiners concerning the disposal of patent applications are met? The official position of the Patent Office is that they desire the issuance of patents of the highest possible validity. But, in view of their actual conduct councerning production goals, this position must be viewed as at least open to question. As long as the officials of the Patent Office demand greater production of disposals each year, even though the number of examiners remains about the same and the amount of prior art to be searched increases ominously each year, it is difficult indeed for anyone with an objective viewpoint to be convinced that they are paying anything more than lip service to the concept of the highest possible patent validity.

Nor are the others involved in the issuance of invalid patents to be considered entirely blameless. Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long as they can obtain these patents (which may or may not be valid). Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware? Then the examination process could be focussed on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and applicant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.

Finally there are the patent examiners, and their conduct in the examination of patent applications. At this point it must be stated bluntly that what they require is help, not hindrance, in the examination process. It may well be that, as urged by many, the issuance of patents of the highest possible validity by patent examiners is simply not possible if the Patent Office contin. nes to operate under present conditions and procedures. If this is in fact true, then all possible help should be given to them by all interested parties, as noted in the article, concerning grounds for invalidity of which they may be aware.


Editor In Chief. Senator Hart. Let me make an addition at this point in the hearing schedule. The subcommittee has heard from several former Patent Office Commissioners and the Acting Commissioner currently. I became aware of Commissioner Gottschalk, the former Patent Commissioner, sitting in the audience and listening to testimony given the committee during these days of hearings. Also, I have been hearing reference to the relationship of the Patent Office to the Department of Commerce and the question of whether that

• Spensley, Horn, Jubas and Lubitz, Los Angeles, California.

Patent Office should be made an independent agency. That is a proposal that is contained in S. 1321. I think Commissioner Gottschalk is in a position to bring us first hand knowledge and private experience to that otherwise theoretical question of should we have an independent agency! And at my request he has agreed to appear this morning. I welcome him.

Mr. BRENNAN. Mr. Chairman, just a brief statement for the record. Both the counsel for the subcommittee and the counsel to the Minority Leader were available in their offices until 5:30 last evening. The first we were informed of this development was at 9 a.m. this morning. The well-established practice of the subcommittee has been to request witnesses to submit statements 24 hours in advance. The subcommittee staff has tried to cooperate with your staff on these hearings. I regret that we were not extended the same courtesy. Thank you Mr. Chairman.

Senator Hart. I regret that that sequence of events occurred and will assume full responsibility for it. I did not determine until midday yesterday afternoon to invite the Commissioner. It occurred to me it was a clear violation of the 24-hour rule, a rule very difficult to enforce in other committees, but a very desirable rule. Your comment I think is completely proper. My explanation does not change that. You should have been advised.

However, I felt it was desirable to call the Commissioner for two reasons: First, to get your reaction, Mr. Commissioner, generally, to the concept of the independent agency proposal, and, secondly, to ask of you a question that I asked of an earlier witness to react to trade press reports as to the circumstances and reasons for your res. ignation. As I understand the problem it relates directly to the independent agency proposal.

So let me ask first the question that I directed to the Commerce Committee witnesses and I hope I am almost reciting literally what I asked them.

It has been brought to my attention through trade press reports that Commissioner Gottschalk was fired without prior warning by the Assistant Secretary for Science and Technology for three reasons: Refusing to give special consideration to a particular patent application, advocating the many other reforms in S. 1321 to the displeasure of the organized patent bar, and arguing that since patent reform was so vitally needed, the administration should not risk the fate of 1971 and should sever the antitrust considerations from the patent reform considerations.

Would you describe, Commissioner, the circumstances that attended your resignation and specifically what your opinion is in respect to the accuracy of those reports?



Mr. GOTTSCHALK. Senator, let me acknowledge your invitation and my willingness to appear. I hasten to explain that as you might anticipate. I have had mixed feelings about appearing as a witness in these hearings but felt that I had no choice in the light of your remarks yesterday followed by your invitation to testify.

I certainly must agree that your inquiries are directed to points which I would consider most relevant and undoubtedly important in arriving at appropriate solutions of the problems with which the committee is now concerned. If my participation in these hearings, and if drawing upon my past experiences can be helpful, then I would regard it as desirable to make myself and those experiences as fully available as possible. I would like not to be misunderstood in that. I was concerned—and I think understandably so-lest any voluntary approach on my part be misunderstood in the light of the developments to which some of your inquiries have been directed.

It might be appropriate to point out by way of general background that I spent approximately 3 years in the Patent Office.

I joined the Patent Office as Deputy Commissioner in the spring of 1970. I became Acting Commissioner on or about August 25th, 1971. I became Commissioner by recess appointment on January 4 of 1972. I was later confirmed by the Senate and, pursuant to Senate confirmation, reappointed. My resignation from the Patent Office and from Government service was effective June 29.

Part of what concerns us of course is your interest in determining the circumstances with respect to, and indeed the nature of, that resignation. I can describe the mechanics of what happened. I don't believe I am in position to answer in detail questions raised with respect to the three points you mentioned, for the reason that in truth, I do not know why I was fired. I think possibly that the references with respect to those points may have some basis in fact, but I would regard this on grounds of reason and probability—as unlikely. I could be wrong. The fact remains that I do not understand and was never given any adequate explanation of the circumstances attending the request for my resignation.

I will, as best I can, outline the situation broadly. I must say that at the time I was appointed Commissioner I was greatly surprised, but I think possibly that the appointment was a direct response to the efforts which I had been making while Deputy Commissioner and Acting Commissioner. The point I would make there is that the then Secretary, Mr. Stans, had been very concerned about the internal state of the Patent Office and I knew that he was deeply interested in dealing effectively and promptly with many of the important problems with which the Office was struggling. I think it not unfair to characterize his approach as one of near-desperation, impatience, and perhaps even anger. I do know that there were tense moments between us; but I know too that as time went on, and as he became better acquainted with what was going on as I attempted to achieve his objectives, he became more optimistic about the resolution of those problems. What I am saying in short is that what had begun as a relatively antagonistic experience resulted in one of very close cooperation and, on the part of the Secretary, appreciation expressed many times for the “fine work“ that I was doing in my role as Commissioner.

I seemed also to serve well and by all standards to satisfy the requirements that his successor, Mr. Peterson, imposed. We had an excellent relationship.

It was against that background that it came as a total surprise that the things that I was doing seemed so totally unacceptable. The

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