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solutions of the problems outlined above. When asked the question at the May, 1971, hearings, the Department of Justice spokesman could not point to ans decision which would be overruled by the then discussed version of the Scott Amendments. Hearings May 13, Part 2, page 648, paragraph 2.
PAUL L. GOMORY.
COMMENTS ON S. 1321-HART
The following are preliminary comments. Reference to the present Patent Code, other bills or drafts should not be taken to mean that there has been made a word for word, line for line comparison at any time of anything which has been included herein.
SECTION 1 In line 4, the word “privilege” is not the word "patent". It is not a “privi. lege” which is to be granted. The word “right" appears in Article I, Section 8 of the Constitution. The patent secures this right under law.
The establishment of the Patent Office as an independent agency will increase its exposure to the public and, generally, if properly operated, can be a tremendous influence for good of our country!
In line 30, after the word "promulgate" the words, -not inconsistent with law-would not have to be implied. The words are in the present Code.
At (d), line 14, page 3, the establishment of a Public Counsel will in effect establish within the Patent Office a second Patent Office and a second examining staff! The Patent Office operation will be hampered probably more than it will be helped. The budget of the Patent Office will have to be considerably enlarged.
Page 4, lines 7 et seq, the Public Counsel may be viewed by professional patent examiners and others in the Patent Office as constituting a “big brother.” Supervisors now exist in the Patent Office. There is a Law Solicitor's office. After all, quality still depends upon persons—we have those persons now. There is a very real possibility that the Patent Office will be mired down in-fighting with itself.
At (d), page 3, line 34, apparently the Public Counsel will determine what is “important, new, or developing areas of technology." This could easily be applied to all technology since all technology can always be said to be developing. What a bureaucracy! It takes years to develop and to prove out which are the important cases-important in whose judgment?
In line 38, page 3, my copy reads in the margin "... another Commissioner of Patents !" Two standards of validity—two presumptions !
Page 6, line 12, though the decision, which has been appealed, may change the Senator's mind or the minds of others on this point, the fact is that this Section provides for indexing abandoned applications. See also Section 122, page 26, of the Bill.
At (f), lines 33–38, it is not a proper function of the Patent Office to disseminate information except by way of patents and trademarks and perhaps closely related matters. There is now an Office of Technical Services, a Library of Congress and a great many other government organizations disseminating "... public technological and other public information ..."
At (b), page 8, lines 28–29, “... the quality of United States patents ..." gives rise to the possiblity that the Council may study validity of specific patents and possibly all patents. This should be carefully considered.
At (a), line 17, "evidence"-Does this mean that abandoned applications could be subpoenaed here if Section 6 and Section 122 have been redrafted to eliminate access to abandoned applications thereunder?
At (c)(1), maintenance fees will be an impossible burden to meet for many small individuals or organizations. So will the burden provided for in line 32 and in line 35. The little fellow will have to divulge his finances. Will this be made public? The bureaucracy here will have a trememdous clout to apply to the little fellow and to his attorney, if he can afford one. If he cannot afford one, he is really in poorer shape.
At (g), lines 26 and 27, this would make unpatentable “... any obvious variation of or on such known composition of matter or the structure thereof . whether or not the same is adapted for practicing a new use thereof." This is contra to the present law and cases such as Deutsche-Gold, In re Papesch, etc. which hold that unobvious properties or results might well be basis for a further product or a further process claim.
Comments on this Section, even cursorily made, would take too much time and space for this preliminary memo.
... other tangible form. as in (a) and (b) is simply impossible. There is nothing to show that the “tangible form” is reasonably available in such manner as to promote the progress of the useful arts in this country when the "tangible form” is simply available in some out-of-the-way place in some outof-the-way country.
These subsections are in derogation of incentive to disclose here in this country.
“Use or knowledge abroad" is not use or knowledge in this country and should be most carefully considered. It is in this country that the progress of the useful arts should be promoted, according to the Constitution.
"... public use or on sale ... foreign country . -same comment.
The sections here discussed would require, and no doubt the courts would do so, to be interpreted and limited to “. reasonably available ..." in each case the reasonableness would have to be determined.
The subsections will probably be quite okay when all information is in a computer-years from now !
SECTION 102 At (e), lines 28–30, Section 119 gives benefit of earlier filing date in a foreign country.
SECTION 103 On page 17 in line 2, the meaning of “the prior art" will need to be determined afresh in view of changes in Section 102.
In S. 643, Section 103 reads "such prior art."
In the bill this section omits two sentences of S. 643, Section 103—these are important as instruction on intent to the courts.
Limits severely the earliest date upon which one can rely in succeeding applications in (a) lines 7-12.
Subsection (b) is, in effect, a first to file system unless and until "... reduction to practice .. comes into play. Note that the last quoted phrase is not qualified as to the kind or kinds of reduction to practice.
At (c), the phraseology here should be reviewed in light of Section 100(g). It can be understood that the realization of patentable invention having been made may depend upon at-the-time recognition of the particular property.
At (d), what about a formula or other incorrect disclosure which is unaccompanied by an "enabling" discussion or description?
At (e), this subsection would derogate from the incentive to find the problem to which then the solution would be obvious. Common ground on such a subsection and no subsection at all might be to require reciting the situs of the problem in the claim and limit the "obvious concept" to that problem to get a patent.
In lines 3 and 10 differs from S. 643 which reads "invention" instead of
SECTION 112 Disclosure of all properties of results on which reliance will be based is required and for each claim the date of invention "... including any date of reduction to practice.” What a burden! In how many applications is a date relied on?
The requirement in line 19 to disclose “all” know-how known is a temendous burden. A telephone book may be needed unless data can be considerably condensed (at the applicant's and assignee's peril?).
Primary examiners could burden applicants with requests for affidavits on the slightest "basis”.
In subsection (b) a statement in the specification of that ". . . which is obvious ..." from the prior art puts quite a burden on the applicant and his attorney. What if it is not properly met? How much is "obvious" from how much prior art? Lines 33-36 impose an impossible burden-yet claims issued will be too narrow. This will send nonreverse-engineerable inventions into secrecy with a return to the "guilds” especially in chemical inventions-alloys -special treatments of metals and other esoteric operations.
At (d), the requirement that the preamble describe "all" of the elements (not even limited to "essential" elements) is a make work. Skilled in the art read the specification and claims. They have done so for years.
At (d), page 20, line 14, the words "some or all" are questionable. A subcombination within a combination should be here considered. Consider a gyro subcombination in an overall combination.
At (c), new.
The burden of this section is heavy. Not only do agents, attorneys and all other persons who participated and who are recognized under Section 31 need to file a statement, page 22, line 38, but each inventor must specifically iden. tify which claim or claims he made where two or more inventors appear. See page 22, lines 18 and 19. Not to do so, it is possible, may later incur some penalty if faets prove otherwise. Thus, joint inventorships will have to be carefully scrutinized in each case. However, this could be helpful in an interference where a named inventor could, without more, corroborate.
Note on page 23, Section 116(b).
At (a) (2), lines 18 and 19. This will be an additional work for foreign agents and applicants who intend to file in this country.
Page 26, lines 3 et seq. Appearing in the conjunctive, section (4) will require the second application to be filed prior to the filing of an appeal under Section 134. It would no longer be possible to file an appeal pending refiling of a case to avoid losing early date!
Subsection (E) would seriously limit the filing of a C.I.P. This point should be borne in mind when reviewing in detail, Section 122.
Additional to the comment made immediately ahead of this sentence note that abandoned patent applications "... and any papers filed during the pros. ecution thereof, shall be indexed and maintained available for public inspa
tion and copying." On April 26, Judge Oren Lewis in the United States District Court, Alexandria, Virginia, decided against the Plaintiff in Sears v. Commissioner of Patents. An appeal has been taken. I, personally, could not advise a client where there is a chance of maintaining secrecy to file an application for a patent in all those cases where some real doubt exists as to whether the Patent Office (courts) will issue a patent. Note that under subsection (c) pending applications shall be published promptly for public inspection. There will be no secrecy at all! Most cases where ultimately an application is now abandoned filing in the Patent Office will be about like publishing an article in a trade journal.*
Subsection (2), page 28, lines 3 and 4, is required patentability brief which places a burden on the Patent Office. The examiner should see the art cited by the applicant. Then, when the examiner applies the art is the proper time for the applicant or his attorney to make the argument. Admissions against interests, in the legal sense, should be considered here.
Lines 19-21, the Public Counsel can be invited to participate in any proceeding.
On page 29 subsection (e), lines 11 and 12, would prevent enlarging the scope of claims of the application once filed. Presumably one could refile.
In subsection (f) will the examination by two or more primary examiners, paid for by the applicant, permit removal of much of the restriction practice?
Appeals to the Board of Appeals will be inter partes and the Public Counsel will brief and argue the case before the Board with respect to "any appeal taken by any applicant" except in interference situations in which the participation of the Public Counsel "... shall be at his discretion." Primary examiners are not allowed to appear before the Board of Appeals.
Any party and this includes the Public Counsel may introduce new evidence before the Board of Appeals which may consider de novo or remand and under (d) the proceedings before the Board of Appeals are open to the public and a transcript of the hearing must be kept. So even before any claims are allowed the inventor may have un-"secure"d his “right".
Opposition proceedings of a modified character are provided. The opposer notifies and if he wishes submits explanation presumably in writing of prior art and he can appeal and he can elect not to be identified.
During the period of Section 135, a later interested party will have ignored the procedure. If Section 135 is to be retained some protection against estoppel to assert prior art known at the time, but not made known to the Patent Office because of the then lack of interest, should be provided.
I do not see why simply placing the prior art of record in the patent file would not suffice thus placing the burden, like now, on those who would be interested in the validity of the patent. The proceedings are time-consuming, expensive and burdensome to the operation of the Patent Office.
I think to provide for anonymity of the "opposer" is a step backward in our form of society. Harassment especially of small business or individual inventors can be imagined.
SECTION 137 Harassment possibilities—also means must open the application to public. The little fellow will never make it!
At (b), page 32, line 35, appears to provide protection for those who have "... failed to proceed in accordance with the provision of this title.”
See Kewanee Oil Company v. Bieron Corporation (6th Cir. Ct. of Appeals), holding no protection for trade secrets.
Settlement agreements would have to be filed in the Patent Office " before the termination of the proceeding as between such parties." Further, the “... copy shall be made part of the public record of the proceeding." Penalty for failure to file “... such agreement or understanding ..."-patent unenforceable.
SECTIONS 141-147 On review of Patent Office decisions in the courts the Public Counsel is involved in Ex parte proceedings and at his discretion in priority of invention contests. Appeals from CCPA are to the U.S. Court of Appeals, D.C., by peti. tion for allowing an appeal. No petition for certiorari unless such petition has been denied.
SECTION 153 Patent expires 12 years from actual filing date plus time application was deferred. This with two-year limitation to sue makes disclosure by patenting less attractive!
SECTION 185 Patent invalid if application made without procuring a license. No excuse for inadvertent failure to obtain license appears.
SECTIONS 191-193 Deferred examination. The bad experience abroad is considered by some to be persuasive. Deferred examination adds to the knowledge of the examiner. He is less likely with his much later "present day" knowledge to be able to stand, as required under Section 103, in the shoes he occupied at time invention was made, much less therefore in shoes of one skilled in the art at that time.
The possibility of harassment page 43, line 4, is noted. A party who is prolific in producing applications for patent but is of relatively small size could be made to undergo expenses of examination with no ability to prove any contention that he is being harassed. Anonymity in the patent law and practice thereunder should be preserved for applications, especially abandoned applications. This would kill a Polaroid or a Xerox!
Page 44, line 3, dealing with reissues—this line it seems ought to include Sections 116 and 117 and therefore make reference to chapter 11. Or are the benefits of these sections intended to be excluded ?
At (c), whereas the present code permits enlargement of scope of claims applied for within two years from date of grant of the original patent, this subsection permits no enlarging the scope of the claims of the original patent.
This would require payment of minimum of two percent of profit or savings to employer attributable to employee for subject matter of an application for patent or patent, etc. Otherwise the assignment is invalid.
The Commissioner must establish "procedures and methods including accounting procedures ..." for giving effect to this section. Thus the employer would have to determine under governmentally established procedures the coutribution of the particular subject matter. It does not appear upon a oncethrough reading of the section that a patent need necessarily have issued. See page 47, line 29.
SECTION 273 Page 49, lines 36 et seq, one need only make a heavy commitment on publi. cation of the application to obtain a court-granted license of any patent which issues !
At (d), page 51, line 20, “... any party of record ..." could be a counterclaimant who might be quite willing to abandon his counter-claim, without prejudice, if the claimant for some reason does not make out his case. This should be further studied.