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materials with which the examiner has to work, the better and quicker will be his search, and the stronger the issuing patent.

There are a number of other steps the Patent Office can take internally to streamline the Patent Examining Operations and speed the processing of patent applications. Several significant steps in this direction have been taken during the past year. For one thing, we developed and began utilizing the "First Action Form." This has significantly reduced the time required to prepare and mail first actions. Though perhaps not fully accepted by everyone, I think it fair to say that the form has proved successful, and that-modified in light of suggestions and comments we have received—we do intend to continue its use.

In another area, the time required for the post-examination processing of applications (which involves all operations after allowance, including the actual printing of a patent) has been reduced by almost 2 months since last July.

As these examples illustrate, such improvements will permit reduction of pendency time without entailing any sacrifice of professional effort placed on these applications by examiners. Actions to Reduce Fraud

As most of your would quickly agree, fraud and inequitable conduct in patent prosecution is today a very live subject. Increasingly, "fraud on the Patent Office" is being alleged as a defense in litigation. Many courts are holding patents invalid or unenforceable on such grounds. This is a matter of concern to us all, and in the Office we have been giving thought to what can be done which might be helpful.

In one type of situation, the challenger contends that the patentee misled the Patent Office by failing to call attention to a prior use or prior art.

In another, but similar situation an applicant presents data or other evi. dence tending to support patentability, but fails to call attention to additional data which do not help his case and may run counter to it. Even if the omission is not specifically intended to deceive, the patent may be held unenforceable on the ground that the patentee's conduct was lacking in candor (as witness the recent Third Circuit decision in Montsanto V. Rohm & Haa«).

We feel this is an area where the Patent Office, can be of help. Rule 132, as you know, provides for the submissions of affidavits to overcome rejections. We contemplate amending that rule, to require the affiant to state, in effect, that no facts, data or test results are known which are inconsistent with those in the affidavit or which would tend to give a different impression from that conveyed by the affidavit. A similar statement would also be required in cases in which the specification refers to test results.

The end result of such proposed change, we hope, will be a strengthening of the presumption of validity.

To the same general end, we are also considering some liberalization of our policy regarding examiners testifying in cases where a question of fraud before the Patent Office is an issue in litigation. The Trademark Examining Operation

We are quite enthusiastic about the changes taking place on the trademark side of the office, but before I discuss these changes, I would like to stress one general observation: We are making progress in eliminating from Patent Office thinking the “rumble seat" attitude toward our trademark functions.

The principal vehicle which has been used to move trademarks back op to share the front seat has been the creation of a Public Advisory Committee on Trademark Affairs. Its mission has been to review the trademark problems of the office from the standpoint of the public interest, and to recommend solu. tions. Its Chairman is a Pennsylvanian, a good frend of long standing-Frank Foote of Mine Safety Appliances. This Committee has done a great deal of good in developing a more direct approach to the diagnosis and solution of

trademark problems in the Patent Office. We will continue on this course of modernization and improvement.

I would like to illustrate what is being done in response to the recommendations of this committee. The most recent change to be fully implemented was a reorganization in the section of the Trademark Examining Operations in which trademark applications receive initial processing. Essentially, those changes were directed to emphasize those functions which were most important from the standpoint of public needs. Without going into detail, suffice it to say, that whereas several months ago the public search file was more than 3 months behind as to data concerning newly-filed applications, this delay has now been reduced to 4 weeks. Our eventual goal is to deliver data to the Public Search Room within 10 days of the receipt of new applications.

In another important area-communication between the office and the applicant-we are introducing a number of new techniques. At present, our emphasis is on first actions and the techniques now in use, or in active stages of development, include the use of form paragraphs, transcribed by mechanicallyaided typewriters; the use of check-off forms, where feasible; and the preaddressing of the forms used in first action letters. In introducing these improvements, our goal is to increase efficiency without sacrificing substance. In order to achieve the best possible results we will, of course, need your cooperation, constructive criticism and suggestions.

There are just two examples of our current activity. The Committee made some 64 recommendations, and we have implemented, or are engaged in implementing, more than 75 percent of them. Furthermore, this Committee is continuing to advise us on matters not covered in the original report, and it will, I hope, continue to do so. Legislation

As I am sure this Association recognizes, we remain vitally interested in sound patent revision legislation, including the Scott Amendments. And certainly we share your concern over the recent events culminating in the issuance of the Committee Print of S.643. More than ever, we are convinced that a stabilization and clarification of the licensable nature of the patent grant is as vital to the nation's economy and and technological growth as it was when the Department of Commerce supported such amendments before the Senate Subcommittee on Patents, Trademarks and Copyrights last May. Moreover, we share your concern over the amendments to the Committee Print which, among other things, would require an attorney oath, would require a patentability brief without adequate protection for patent applicants, and would permit the importation into the United States of products made abroad by processes patented in this country. I can assure you that we will continue to press for a sound patent law revision, including the substance of the Scott Amendments. International

As you know, it has been almost 2 years since the negotiation and signing of the Patent Cooperation Treaty. Since that time, we have been working with the associations such as your own, to develop the posture this country should take with regard to ratification of the Treaty. We intend to ratify the PCT and have already drafted in preliminary form the necessary legislation. And I should emphasize that our position on the Treaty is fully consistent with that expressed by the patent community.

We are quite optimistic about the advent of the PCT. We believe it will benefit the U.S. business community, and also assist our examiners to perform more thorough and complete patent searches of applications in the United States.

Equally important to the U.S. businessman is our effort to secure an acceptable Trademark Registration Treaty. This was launched by a resolution by the United States to the Executive Committee of the Paris Union in October, 1970, tration system in which countries not now party to the Madrid Agreement might participate.

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On May 2 of this year there will be convened in Geneva, Switzerland, a Committee of Experts to consider a revised draft of this Treaty.

This upcomong May meeting—the third of a series is most important, since the draft treaty is now taking shape to an extent that prompt and serious examination of its provisions by interested trademark owners and associations in the United States is essential.

As you are aware, the most recent draft of the Trademark Registration Treaty was released by the World Intellectual Property Organization on January 31, 1972, and was published in the February 22nd issue of the Official Gazette. Some of the main features of the Treaty in its present form are:

1. Securing international registration, effective in designated member countries, by filing a single international application directly with WIPO.

2. Correspondingly simplified renewal, by filing a single renewal application with WIPO.

3. Notwithstanding these procedural benefits substantive matters would continue to be governed by the national law of the designated countries. While several issues remain to be resolved, we believe that the Trademark Registration Treaty could result in significant advantages to American busi. nessmen. We are continuing to work with a number of interested associations to obtain their comments on the draft treaty for the May Committee of Experts. The culmination of the present efforts will be a diplomatic conference scheduled to be helf in Vienna, Austria, in May and Junė of 1973. The Patent System and the Future

It must be clear to you that we have a broad-based concern for improving the patent system. This has its roots in the conviction that the Patent System is of vital importance, and that we will rely more, rather than less, on the incentives it affords as we move ahead into the Seventies.

In his recent State of the Union Address, President Nixon, recognized that American ingenuity has enjoyed a wide International reputation and has contributed greatly to our domestic prosperity and our international strength. He further emphasized that we should be doing more to apply our scientific and technological genius directly to domestic opportunities. In the coming year, an all out effort will be made to focus our research and development resources on projects where an extra effort is most likely to produce a breakthrough, and where the breakthrough is most likely to make a difference in our lives.

I need hardly remind this audience of the central role that the patent system has played in stimulating and making practically effective the American ingenuity of which the President spoke. In this day of competitive international challenge, it is incumbent upon us, both in Government and the private sector, to do all within our power, to strengthen the Patent System in order that it may play in fullest measure its proper role in revitalizing and strength. ening the American economy. The President called upon the patent system to stimulate the application of American technological genius to the problems of the environment, and we can be sure that the President also intends that the incentives of the patent system be similarly applied to the transfer of technol. ogy from the public to the private sector which he has stressed as increasingly important.

We have learned through experience how the growth of industry and competition in this country has been fostered by the patent system. We hare learned, too, how potent a force in international commerce American Trademarks can be.

We recognize that our ability to compete internationally rests in no small degree upon the strength of patent incentives in this country and the effective protection of our technology and trademarks abroad.

I pledge to you today that my efforts, and those of our entire Patent Office team, will be dedicated to doing all in our power to accomplish the President's goals through the strengthening of our patent and trademark systems.

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CHABAB 76 1343CS-2S02CS (1972) SUBJECT INDEX (In 5 Parts Part 4)

January-lune. 1972




A publication of the CHEMICAL ABSTRACTS SERVICE published weekly by

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