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treated than one that hasn't, but this 'smacks' of paying for the patent privilege rather than having the patent judged on its merit.
The fee schedule proposed in S.1321 would involve a cost of nearly $20,000 to obtain and maintain a patent for its present 17-year life, assuming there was no deferred examination. For a company that obtained an average of 20 patents a year, the annual cost to maintain all such patents would be over $200,000. While the Bill also proposed to reduce the term of patents to 12 years, the fact that this would reduce the total fees by about one-half is small solace for the loss of patent rights involved. It is hard to conceive of any measure which would do more to discourage the making of inventions.
For the reasons discussed, it is believed that a patent maintenance fee program is undesirable.
RESOLUTION NO. 5
(Administrative restructuring of the Patent Office, including the proposed establishment of the Patent Office as an independent agency)
BE IT RESOLVED: That the Milwaukee Patent Law Association adopts the following Statement of Position with respect to those provisions of S.1321 that relate to or touch upon the administrative restructuring of the Patent Office, including the proposed establishment of the Patent Office as an independent agency.
Establishment of Patent Office as an Independent Agency.-The Milwaukee Patent Law Association, believing that Sec. 2 of S.1321 cannot, in and of itself, either contribute to or detract from attainment of the expressed objective "to assure that United States patents are of high quality and reliable," takes no position on that specific proposal but recommends careful study of it with respect to such considerations as:
The status of Patent Office officials vis a vis their counterparts in foreign countries, having in mind the increasing importance and magnitude of international patent operations;
Adequacy of liaison with Congress and with other Federal administrative agencies;
Duplication of personnel and functions; and
Availability to the Patent Office of expertise for the solution of administra tive problems.
Availability to the Patent Office of expertise for the solution of administration. The Milwaukee Patent Law Association opposes those provisions of S.1321 that would freeze, in statutory form, administrative practices which are now within the Commissioner's regulatory and discretionary powers and which therefore can now be readily changed to accommodate changing conditions. As specific examples:
Sec. 6(d) would mandate the Commissioner to maintain public search facilities "in various (unspecified) parts of the United States." Such facilities would be costly if complete and of doubtful utility if incomplete; but the Commissioner would have no discretion to discontinue all of them if their cost proved disporportionate to benefits from them.
Sec. 6(e) would mandate the Commissioner to further the improvement of information retrieval facilities without requiring a cost/benefit appraisal. Such development, coupled with such appraisal, is now inherent in the Commissioner's administrative authority.
Sec. 8(e) re-enacts an administrative detail that has been dropped from the earlier patent laws by the Patent Codification Act of 1952
Imposition upon Commissioner of Burden of Fixing Fees Now prescribed by Statute.-The Milwaukee Patent Law Association opposes the principle of S.1321 insofar as it imposes upon the Commissioner the burden of fixing Patent Office filing, examination and maintenance fees and requires that such fees be calculated to recover a specified proportion of costs of Patent Office operations. Allowing the Commissioner to determine both the income and the expenditures of the Patent Office, without external supervision would be unwholesome. Whether fees are fixed from within the Patent Office or from outside it, the administrative problems of fee fixing under the proposed criteria would be complicated by the difficulty of predicting the income that would be realized from any particular fee schedule, owing to provisions in the bill
for discretionary exceptions to such fee schedule and for steeply graduated maintenance fee percentage increments. Furthermore, the need for changing the fee schedule from time to time, to accommodate changing Patent Office expenditures and fee receipts, would give rise to confusion in calculating, collecting and accounting for fees in particular cases.
Administrative Burdens Imposed by Substantive Provisions.-The Milwaukee Patent Law Association opposes certain substantive provisions of S.1321 for the reason that they would impose administrative burdens upon the Patent Office that would not "assure that United States patents are of high quality and reliable." For example:
Sec. 112, in its several provisions requiring a complete exposition of the prior art, and particularly in its subsec. (d) (1), would require the examiner to ascertain whether the applicant had in fact set forth all that was known and conventional; and even assuming that the section is intended to require such disclosure only as to known and conventional art that is relevant (a qualification that does not appear in the section), the examiner would be required, in effect, to spend time on matters which, by their very nature, made no contribution to the advancement of the useful arts.
Sec. 122 and certain related provisions with respect to early disclosure may compromise national security by permitting inventions relating to advanced military equipment to be inadvertently published before sufficient time has passed for adequate evaluation by the defense agencies. The two month period for such evaluation provided for in Sec. 181(b) is unrealistically short. Even with a longer period, the need for expeditious handling of patent applications containing such subject matter would be disruptive to Patent Office routine.
Sec. 132 (c), in requiring that "all decisions by a primary examiner" be accompanied by the equivalent of a judicial opinion, would materially increase the work load upon the Examining corps (thus increasing an already overwhelming backlog) without achieving any offsetting gain to the public or patentees.
THE MILWAUKEE PATENT LAW ASSOCIATION APPROVED:
ARNOLD J. ERICSEN
I certify that the foregoing resolution was adopted by a unanimous vote of the members of the Milwaukee Patent Law Association at a regular announced meeting of the members of the association with a quorum of members present held on September 11, 1973.
The Honorable JOHN L. MCCLELLAN,
BARRY E. SAMMONS, Secretary, The Milwaukee Patent Law Association.
Saint Paul, Minn., September 27, 1973.
DEAR SENATOR: We are concerned with several aspects of S. 1321, the bill to reform and revise the Patent Laws, Title 35 U.S. Code.
In introducing a similar bill (H.R. 7111) in the House in April of this year, Congressman Wayne Owens quoted with approval from the President's technology message to Congress in March, calling "a 'strong and reliable patent system' an important predicate to U.S. technological progress and industrial strength". He also stated it to be an objective of the act "to restore confidence in the patent system by increasing and strengthening the quality and reliability of the U.S. patent grant". We agree with both of these propositions. But how they may best be attained is quite another question.
In this country we have never had opposition proceedings against the grant of a patent which are common in various other countries, e.g., the United Kingdom and West Germany. While we have had a limited provision for receiving protests to the grant of a patent and limited public use proceedings (Rules 291 and 292 of the Rules of Practice of the U.S. Patent Office), yet there has been no provision for publishing the application or laying it open to
public inspection prior to grant. It was only when one received legitimate knowledge of the pendency of an application (as in a priority contest or interference in the Patent Office or in a contract negotiation) that he was in a position to file a protest or initiate a public use proceeding.
We believe this country should come to some proceeding where applications for patents, if allowed, are then published and laid open to public inspection, to invite protests or oppositions; or, alternatively, a patent could issue forthwith the public could be given a period of time, e.g., six months to lodge nullity proceedings, following which the claims might be revised or recast, much as is now done in reissue patents.
You will note that we do not propose that the public be allowed to participate in the examination process until claims have been allowed, viz., the Examiner finds the application in condition for allowance.
Former Commissioner of Patents Robert Gottschalk, as a first step in a procedure to increase the quality and reliability of patents, recommended a change in the Rules of Practice to provide for voluntary proceedings to permit protests to the grant of patents. That is, an applicant would be given the opportunity to open his application to public inspection prior to the issuance of a patent, to allow competitors or other members of the public the opportunity to protest the grant of a patent and to cite prior art, publications, etc.. believed to have been overlooked by the Patent Office. Proposed changes in the Rules to implement this proposal were published in the Official Gazette of the U.S. Patent Office on June 19, 1973, by order of the Commissioner of Patents, with the approval of the Assistant Secretary of Commerce for Science and Technology. A hearing is scheduled in the Patent Office on this proposed rule change on October 31, 1973.
This innovation in the practice, if actually promulgated, would offer a revealing proving ground. In his address to the American Patent Law Associa tion meeting in Saint Paul on May 10, 1973, Commissioner Gottschalk said:
"It is our hope that the experience gained with this practice may well be the forerunner of legislation along the same general lines; . . . [but applicable] to all applications."
The Hart bill, S. 1321 (and likewise the Owens bill, H.R. 7111) contains such a drastic proposal for increasing the quality and reliability of patents as to defeat its stated objective.
Sections 122 and 135 of the Hart bill would provide for laying an application open to public inspection and copying (unless it was vital to national security under Sec. 181) promptly after it is filed and "prior to the date of first examination". That is, before there was any decision by the Examiner that any patent should issue or, if so, what scope of claims the applicant was entitled to in the Examiner's opinion, the applicant could be burdened with premature and perhaps wholly unnecessary protests. Additionally, the fact that a competitor could immediately get access to an application-whereas today applications are maintained in confidence (Sec. 122 of 35 U.S. Code)—would dissuade many inventors from filing a patent application or otherwise publiciz ing their inventions.
Laying open to public inspection eighteen months after filing is the earliest exposure of an application to the public in any major industrial nation, e.g... Germany, France, the Scandinavian countries, etc.; and the quid pro quo for that disclosure is the vesting of certain rights in the applicant. In the United Kingdom there is no laying open until acceptance, i.e., 21⁄2 years or more after filing.
So we are very much opposed to Sections 122 and 135 of the Hart bill, S. 1321.
The Hart bill also proposes the new office of "Public Counsel"; see Sections 3(d), 24, 132(a), 134 (a), 142, etc. The Public Counsel could "intervene and participate at any time in any Patent Office proceeding" and would be "independent of the Commissioner" [Section 3(d) (1)]. It would be the Public Counsel's duty to assure that only "high quality patents. . . issue from the Patent Office" and "To that end he shall consider and review all proceedings in the Patent Office" (Sec. 3d). Section 3(d) also indicates that he would have "delegates". His delegates would necessarily be very numerous if he followed the aforesaid mandate. Indeed, the office of Public Counsel might rival the size of the present Examining Corps of the Patent Office; and, if the office of Public Counsel did what the bill provides, there would in effect be a separate examining corps in that office. And what reason would we have to assume that they
would be more competent than the present Examining Corps? Or what needed function would that office serve which is not now served by the Solicitor's office and the Supervisory Examiners.
No patent office of any major industrial nation has a second tier of examination such as that proposed for the office of Public Counsel.
We are opposed to the Public Counsel proposal. We consider it unwieldy, unworkable and grossly expensive. If protest proceedings are inaugurated, starting with the Gottschalk proposal, this should offer a preferable and more economical approach to the problem.
If S. 1321 is revised to take care of the points discussed, we will be glad also to lend any assistance we can on other aspects of the bill.
DEAR SENATOR MCCLELLAN: I understand that written comment pertinent to S.1321 is welcome if submitted before the end of this month. My credentials as a commentator on patent law reform are active private practice in all phases of intellectual property law since 1938 in New York to 1958 and in Washington since (1941-1946, U.S. Army excepted), and teaching a course in intellectual property law at the School of Law of the University of Virginia since 1959.
My crystallized comment is embodied in a complete draft of a patent statute, a copy of which I attach. This proposal borrows heavily from S.1321, but it reflects my earnest conviction that the Framers of the Constitution were right. By that I mean that effectively securing exclusive rights to discoveries for the benefit of their inventors for limited times really does promote the progress of the useful arts.
To accomplish this Constitutional policy, my proposal concentrates on providing a strengthened examination system to ensure that the disclosure of every United States patent includes a patentable discovery while at the same time simplifying formalities and encouraging inventors to get into the system. The principal "strengthening" device I propose is conferring upon parties to a patent application, including the applicant and the examiner initially, and the public after allowability has been provisionally determined, a subpoena power utilizing Rule 31 of the Federal Rules of Civil Procedure. This device was selected to prevent otherwise desirable adversary proceedings in the Patent Office from becoming a weapon in the hands of the owners of the deepest purse. It also assures that subpoenas will be supervised by the District Courts and the abuse of witnesses readily prevented by experienced local judges. Additionally, I would enlarge the role of the Solicitor of the Patent Office to make him the examiner's advocate in subpoena matters and in both administrative and court appellate proceedings. You will find support for the basics of my proposal in a recent article "Proposal for Modifying the Administrative Procedure of the Patent Office to Improve Patent Validity" by Roland T. Bryan, 1 APLA Quarterly Journal, No. 3 (Summer, 1973) 193–201.
The principal "simplifying" devices I propose are abolition of interferences in favor of first-to-file a system including provision for simple preliminary disclosure and a one-year moratorium on inventor-derived prior art and a functional definition of prior art.
The principal "encouraging" devices I propose are deferred examination and low initial fees, with revenue being made up by maintenance fees on a moderate scale.
I believe that adoption of my proposal, as compared with S.1321 would
(1) more patent applications filed;
(2) a higher percentage of validity of the patents issued; and
(3) substantially lower costs to inventors in Patent Office and attorney fees, especially per application, but also per issued patent.
In addition to reforms in the Patent granting process, I also propose to define patent infringement in its relation to patent claims and to correct certain deficiencies of U.S. patent law in the protection it affords U.S. patent owners against "foreign" activities which create profits for U.S. exploiters of their discoveries.
Many other details have had to be dovetailed into foregoing basic reforms and many minor modernizations and ameliorations have been effected. When the S.1321 hearings have been completed, this record added to the very exhaustive records of prior hearing on patent reform already held under your chairmanship, your sub-committee will, I have every reason to believe, be in possession of all the guidance it could need to use my draft in aid of its task of producing a "committee print".
W. BROWN MORTON, JR.
For the promotion of the progress of the useful arts by the general revision of the Patent Laws, title 35 of the United States Code, and for other purposes.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That, in accordance with the authority granted, and in furtherance of the policy adopted, by article 1, section 8, clause 8 of the United States Constitution, title 35 of the United States Code, entitled "Patents,", is hereby amended in its entirety to read as follows:
"1. National Patent Policy.
"2. Establishment and seal.
"3. Commissioner and other officers.
"4. Restriction on officers and employees as to interest in patents.
"5. Board of Appeals.
"6. Library, classification of patents, public search facilities.
"7. Certified copies of records.
"9. Advisory Council on the Patent System.
"10. Annual report to Congress.
"§1. National Patent Policy
"It is hereby recognized and declared that it is the constitutionally-established policy of the United States that the progress of the useful arts is promoted by granting to inventors or their assigns for a limited time the exclu sive right to those discoveries of the inventors which are new and useful and publicly disclosed, all as provided by the succeeding provisions of this title. The rights so granted are to be exercised as property rights according to law.