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ceedings in the Patent Office, one still remains completely uncertain as to whether his patent is valid or not. The second is the delay that has characterized patent procedures, both in obtaining the patents and in litigating and settling controversies concerning them. Third, has been the cost of the patent system, both in terms of obtaining patents and in terms of the cost of litigation--especially the latter. Fourth, has been the inflexibility that has characterized the patent system; we are dealing with a system in which contributions may vary but in which only one single reward is given once it has been determined that a person has indeed made a substantial contribution. The fifth shortcoming is the nonharmonization of our patent system with other patent systems of the world. This is a matter of special concern at a time when more and more international technological exchange is occurring and when serious efforts are being made to achieve a considerable amount of international cooperation.

What I want to examine here are the specific proposals that are before this subcommittee and to examine them in terms of their merits and shortcomings in dealing with these fundamental problems that confront the patent system.

Five matters are the subject of discussion here: One, onposition proceedings and related matters; two, the establishment of a public counsel in the Patent Office (one and two deal with the problem of uncertainty as to validity that I have mentioned); three, a deferred examination procedure, four, maintenance fees (three and four involve the problems of cost and delay); and finally the matter of setting the Patent Office up as a separate ageney, a proposal which is designed to make the system operate more independently and effectively than it has in the past.

You will note that two elements that I have suggested as problems, have been left out. One is the matter of harmonization. S. 1:321 does not address itself to that particular problem, and probably this is just as well. In retrospect, it may be that some of the difficulties the Presidential Commission Report ran into arose because the Commission was trying to key the American system to the international system and this opened the way for the contention that what we were doing was selling our own good system down the river. So there is probably much to be said for saying,

Let's get our own system in shape first and then see how we can work our system into the international picture.

The other matter that is not really dealt with by S. 1321 is this question of inflexibility that I referred to. This omission is a more serious matter and one I will discuss briefly in connection with both the opposition and public counsel proceedings.

Opposition proceedings. Let me turn now to the individual proposals that are before the committeee, starting with the opposition proceedings. There is no point in my attempting to summarize the provisions of the bill. We are all aware of what it provides. So I will limit my comments to my reactions and any suggestions I may have.

Let me start by saying that I feel that the opposition proceeding is long overdue. Other countries have had it for years. Granting that

opposition proceedings pose some problems at times, as far as I know no country that has such a proceeding shows the least disposition to abandon it. Our own experience-and there has been ample testimony here during these hearings as well as in other instancesindicates clearly that the ex parte procedure simply will not work satisfactorily. The Patent Office examiner simply cannot do the job alone. He needs help. There are three places where he can go for it. He can go to the applicant, and there are provisions in S. 1321 which require that the applicant give him far more assistance than he has given in the past. Those who are working with the applicant, including his attorney, must also give assistance in the form of briefs, disclosures, and so forth. Second, the examiner can go to inside help. This is what is contemplated in the public counsel proposal that I will discuss next. The third source to which he can look is the outside third party, and this is what the opposition proceeding is all about.

The probabilities, I suspect, are that an adequately operating opposition proceeding is likely to prove the most effective. There is nothing like self-interest, after all, to push a person into doing the best possible sort of a job in pressing a case, and it is the self-interested individual that is the most likely to appear in an opposition proceeding

Two additional points are worth noting in connection with the opposition proceeding. The mere existence of an opposition proceeding is going to put both the primary examiner and the applicant on their mettle to do the best job they possibly can. If they know that within a very short time after the applicant's disclosures and the examiner's search, the matter is going to become a public record and opportunity will arise for third parties to come in and show where such disclosures were inadequate or such searches were inadequate, this is certainly going to force them, if they were at all disposed otherwise, to do the best possible and most thorough job that they can.

A second factor to consider in connection with the opposition proceeding, is the probable salutary effect upon the courts. At present, the presumption of validity which is formally on the books, is almost nonexistent and probably for good reason. The courts have had before them too many instances in which it was quite clear that there was no justification for presuming that a particular patent was valid. Courts have traditionally been unwilling to accord extensive presumptions in favor of an agency where they have not had confidence in the operations of that agency. The existence of an opposition procedure, especially if the opposition occurs but probably, even if one does not occur, is likely to result in a shift in court attitudes and enable us to get away from the distressing, expensive, complex procedures in which the whole matter of validity is tried all over again before a court. I would be the last to urge that there be a strong presumption if one is not justified, but for the reasons that I have previously mentioned, a stronger presumption would be justified as a result of the opposition procedure because there would be more reasons for believing that a patent was valid once it has been issued.

There are one or two minor points that I will mention briefly in connection with the opposition proceeding. One is the question whether it may be advisable to issue the patent first and then follow with the opposition. This would prevent the kind of tieup and delay that results from a protracted opposition proceeding of the type Commissioner Gottschalk was talking about a few moments ago. This would seem especially relevant if a patent is to run from the date of application, as is proposed by S. 1321, instead of from the date of issuance.

Second, is the question whether there should be a time limit on the opposition. It is frequently proposed that one speak up within a given period of time or forever hold his peace. The suggestion seems to me a rather doubtful one. There may be various reasons-lack of motivation, lack of information, or lack of resources—which may make it impossible for one to institute an opposition proceeding within a given time. It would seem that, if it is desirable to permit this procedure before the Patent Office within a period of 3 months, then it should be desirable within 4 months; if within 3 years, then it should be desirable within 4 years. At the same time the committee might appropriately give some thought to developing means to encourage opposers to come in as fully and as promptly as possible since this would be desirable in the public interest.

Finally, I raise the question whether the opposer should be permitted, at least at this point, to become a party. Here again, some of the difficulties of the foreign systems have been the protracted, cumbersome proceedings that result from an opposition which frustrates rather than promotes the operation of the patent system. It may turn out eventually that the procedure is not meaningful unless one is permitted to become a party, but it would seem wise to start out initially by permitting an opposer to submit information to the examiner but not permit him to become a formal party to the proceeding.

A collateral matter that I might suggest is indicated in a footnote on page 6 of my statement. That is the possibility of a procedure in which courts, with litigation before them, might at their discretion submit evidence to the Patent Office for re-examination and an expression of views in the light of newly discovered evidenceviews which the court would not be bound to follow.

Public counsel. The second proposal is the matter of a public counsel. The public counsel, like the opposition proceedings and the provisions for patentability briefs, disclosures by applicants and oaths, is designed to bring out as fully as possible whatever information the Patent Office ought to have, prior to the time that the patent is granted, with respect to such grant.

The public counsel, in a sense, is playing the role within the Patent Office that a serious opposer would be playing working from outside in an opposition proceeding. Here again, the effect would be to provide a needed balance to the present one-sided ex parte type of proceeding and to that extent contribute to the integrity of the patent system.

I would suggest one caveat with respect to the public counsel. Since this is a new proposal, it may be wise to start out modestly rather than giving public counsel a multitude of sweeping responsibilities as S. 1321 does. It might be preferable to limit his responsibilities to playing the role of devil's advocate rather than having him spread himself too thinly or having him get into a situation where there could be real confusion concerning his role, both in his own mind and in the minds of the patent office, the public, and the applicant as well. In suggesting that he not take on the responsibility of handling appeals and that sort of thing for the Patent Office, I do reiterate that someone other than the primary examiner should have the responsibility of defending the position that the primary esaminer has taken instead of putting this additional burden on the examiner who, after all, has simply done his job in a conscientious fashion.

All in all, what I am suggesting is that the public counsel feature is a desirable thing to experiment with, but it is something that perhaps one should go slowly with and feel one's way before extending his responsibilities into broader areas than this relatively limited role,

At this point I do want to make a comment about the problem of inflexibility as it exists in the patent system, Senator. My comment relates both to the opposition proceeding and to the public counsel proposal. Both of these proposals will be useful in providing for greater certainty as far as patents are concerned. They are not going to solve the problem alone. Part of the difficulty that we have in our patent system is the fact that both the Patent Office and the courts are faced with a dilemma. With only one single reward available for a given novel contribution, namely, a 17-year exclusive right in the invention, the decision maker often finds himself confronted with a situation in which an inventor has made a substantial but not outstanding contribution, with the result that granting a patent gives him too much and denying him a patent gives him too little. In this situation there is no room for a right decision. As I expressed it 25 years ago, our patent grant is comparable to "a system in which every worker receives, say, $10 a day, irrespective of whether he is a college graduate or an illiterate, capable of a hard day's work or a weakling, industrious or one who soldiers on the job.”

There are various ways in which flexibility might be injected into the patent system: Petty patents; patents of addition; possibly some relaxation, subject to careful sa feguards, with respect to double patenting and the introduction of new matter; and finally, some ways of providing more flexible remedies than we have at the present time where the whole thrust of relief is in terms of an absolute injunction. It would seem desirable to explore some of these more fully than S. 1321 has.

DEFERRED EXAMINATION

The third topic before the committee is the matter of the deferred examination. Here, we move from the proposals that are designed to enhance the integrity of a patent to proposals that are procedural and contribute to a reduction in cost and delay.

Deferred examination has been extensively debated, pro and con, for quite some time ever since it was introduced intially in the Netherlands. It has both virtues and vices and this suggests that it should be explored sympathetically and respectively but also very carefully and critically. Its virtues are that it avoids a long drawn out, complicated, expensive, burdensome proceeding in the Patent Office, fighting over a patent which after it has issued, may never become the subject of any kind of controversy in any way, most frequently because no one else is interested in using the particular invention. It would be nice if all of our inventions were the subject of great economic importance but the simple fact is that they are not. Yet, every patent must be subjected to the examination procedure. This is burdensome both on the Patent Office and on the applicant. Secondly, deferred examination provides for prompt publication and expeditious disclosure and this, after all, is in the public interest. Third, it is often urged—although I think this is an unfortunate emphasis to give it—as a means of taking care of the backlog that plagues the Patent Office not only in this country but in other countries as well.

Having emphasized these good points, it is important to recognize some very real dangers. The greatest danger, of course, is that we end up with a great many inadequately conceived and inadequately formulated patents or potential patents that provide little useful and novel information and create a multitude of actual and potential barriers to freedom of use and impose heavy burdens of examination, review, and possible litigation. Secondly--although I think this danger is less important because patentees are likely to be fairly sophisticated about these matters—it may provide a pitfall for the unsuspecting. Thirdly, if inadequately administered, it could very easily result in a substantial increase in the number of applications and thus defeat the purpose of trying to reduce the Patent Office's backlog.

In light of these concerns, I would suggest, one, that initially it is important to study the experience in the Netherlands, Germany and Japan and see how the system has worked, in order to detect pitfalls that may exist and see how we might avoid these. From a procedural standpoint, the important thing is that the deferred examination be administered in a careful and responsible fashion.

My second suggestion is to urge a careful screening of applications and an outright rejection of any that are inadequate because of inadequate disclosure, clear noninvention, or any other reason, and further, to urge that the Patent Office make at least an initial prior art review and attach this to the patent so that it goes along with the patent and one has the benefit of whatever evaluation has already been made by the Patent Office.

Thirdly, it would seem advisable to permit an applicant to withdraw his application if he decides that he does not want it to issue in the deferred application form. Finally, the fees should be carefully tailored—and this would call for some doing—in order to provide fees that would be low enough to make the deferred application procedure attractive to applicants and at the same time high enough to discourage frivolous, nuisance-type applications.

All in all, if adequately and properly administered, the program could result in the publication of deferred applications of sufficient

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