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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 Association 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 publicizing 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., 242 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 “inde. pendent of the Commissioner" [Section 3(d) (1)]. It would be the Public Coun. sel's duty to assure that only “high quality patents ...josue from the Patent Office" and "To that end he shall consider and review all proceedings in the Patent Office" (Sec. 3). Section 3(d) also indicates that he wonld hare *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 eramining corps in that office. And what reason would we have to assume that they

Tould 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, anworkable 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. Very truly yours,

HARRY HELTZER,

Chairman and Chief Executive Officer. cc: Members of Senate Judiciary Committee

MORTON, BERNARD, BROWN, ROBERTS & SUTHERLAND,

1054 THIRTY-FIRST STREET, NORTHWEST

Washington, D.C., September 13, 1973.
Re Patent Reform Legislation
Hon, John D. MCCLELLAN,
Chairman, Subcommittee on Patents,

Trademarks, and copyrights,
Committee on the Judiciary,
U.S. Senate,
Washington, D.C.

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 result in :

(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 detine 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”. Respectfully,

W. Brown MORTON, JR. Enclosure.

A BILL

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 author. ity 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:

"TITLE 35—PATENTS Part

I. PATENT OFFICE
"II. PATENTABILITY OF INVENTIONS AND

GRANT OF PATENTS
"III. PATENTS AND INFRINGEMENTS OF PATENTS

Sec.

1

100 261

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"CHAPTER 1.-ESTABLISHMENT, OFFICERS, FUNCTIONS “Sec. "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. ('ertified copies of records. “8. Publications. "9. Advisory Council on the Patent System. "10. Annual report to Congress.

"S1. National Patent Policy

“It is hereby recognized and declared that it is the constitutionally-estab lished 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 excluisive 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.

"§2. Establishment and Seal

“The Patent Office shall be an independent agency, where records, books, drawings, specifications, and other papers and things pertaining to patents and to trademark registrations shall be kept and preserved, except as otherwise provided by law. The Patent Office shall have a seal with which letters patent, certificates of trademark registrations, and papers issued from the Office shall be authenticated. $3. Commissioner and other officers

“(a) A Commissioner of Patents shall be appointed by the President, by and with the advice and consent of the Senate, and he shall be compensated at the rate now or hereafter provided for level IV of the Executive Schedule pay rates (5 U.S.C. 5315). The Commissioner shall superintend or perform all duties required by law respecting the granting and issuing of patents and the registration of trademarks, and he shall have charge of property belonging to the Patent Office. The Commissioner is authorized to promulgate rules and regulations as may be necessary or proper for purposes of his office.

(b) There shall be a Deputy Commissioner of Patents, who shall be appointed by the President, by and with the advice and consent of the Senate. and who shall be compensated at the rate now or hereafter provided for level

of the Executive Schedule pay rates (5 U.S.C. 5316). The Deputy Commissioner shall perform such functions as the Commissioner may assign or delegate and he shall act as Commissioner during the absence or disability of the Commissioner or in the event of a vacancy in the office of Commissioner.

"(c) There shall be no more than three Assistant Commissioners of Patents, who shall be appointed by the Commissioner and who shall be compensated at a per annum rate of basic compensation fixed by him not in excess of the maximum scheduled rate provided for positions in grade 18 of the General Schedule (5 U.S.C. 5104). Such Assistant Commissioners shall perform such functions as the Commissioner may from time to time assign or delegate. In the event of vacancies in the offices of Commissioner and Deputy Commissioner, or their absence or disability, the Assistant Commissioner senior in date of appointment shall fill the office of Commissioner until said vacancies, absences, or disabilities terminate.

“(d) There shall in addition be a Solicitor of the Patent Office who shall be appointed by the President, by and with the advice and consent of the Senate, and he shall be compensated at the rate now or hereafter provided for level 1 of the Executive Schedule pay rates (5 U.S.C. 5316). The Solicitor shall be general counsel of the Patent Office and the advocate responsibile for the presentation of the Patent Office position in all adversary proceedings provided for by his title, and he or his delegates :

"(1) shall prosecute or defend appeals from any final action of the Patent Office; and

“(2) shall take such action, participate in such other proceedings, and conduct such other investigations or inquiries, as may be necessary or

appropirate to carry out the purposes of this title. (e) The Commissioner shall, subject to other requirements of law, appoint other officers and employees of the Patent Office, assign or delegate to them the functions of the Office, and fix the per annum rate of basic compensation therefor. "S4. Restrictions on officers and employees as to interest in patents

"Officers and employees of the Patent Office shall be ineligible during the period of their appointments and for one year thereafter, to be named as an inventor in a patent application, to apply for a patent, and to acquire, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment. "$5. Board of Appeals

“(a) There shall be in the Office not to exceed twenty-four examiners-inchief, who shall be appointed under the competitive service, in the manner prescribed for Administrative Law Judges (5 U.S.C. 3105, 5362, 7521). The per annum rate of basic compensation of each examiner-in-chief shall be fixed at not in excess of the maximum scheduled rate provided for positions in grade 17 of the General Schedule (5 U.S.C. 5104).

“(b) The examiners-in-chief shall constitute a Board of Appeals in the Patent Office. The exaininers-in-chief shall be persons of competent legal knowledge and scientific ability, who will perform and exercise the judicial functions of the Office. "(c) The Board of Appeals shall :

“(1) Hear all appeals pursuant to section 138 of this title;
“12) Conduct all proceedings pursuant to section 182 of this title; and

“(3) Perform the functions specified as being performed by a Board of Patent Interferences in Public Law 593, Eighty-second Congress (ch, 950, 66 Stat. 792, Section 1), and other Acts of Congress and when performing

such functions shall constitute a Board of Patent Interferences. “(d) Each appeal or other action shall be determined by a panel of at least three members of the Board of Appeals, except as otherwise provided in subsection (e) of this section. The panel shall be designated for each case by the examiner-in-chief senior in date of appointment, consistent with the provisions of section 3105, of title 5, United States Code. The Board of Appeals has sole power to grant rehearings.

“(e) Whenever the Commissioner considers it necessary to maintain the work of the Board of Appeals current, he may designate any patent examiner of the primary examiner grade or higher having the requisite ability, to serve as acting examiner in chief for periods not exceeding six months each. An examiner so designated shall be qualified to act as a member of the Board of Appeals. Not more than one acting examiner in chief shall be a member of the panel of the Board of Appeals hearing any appeal or considering any case. The Commissioner is authorized to fix the per annum rate of basic compensation of each acting examiner in chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 16 of the General Schedule (5 U.S.C. 5104). The per annum rate of basic compensation of each acting examiner in chief shall be adjusted, at the close of the period for which he was designated to act as examiner in chief, to the per annum rate of basic compensation which he would have been receiving at the close of such period of such designation had not been made. “S6. Library, classification of patents, public search facilities

“(a) The Commissioner shall maintain a complete and current library of patents and scientific and other works and periodicals both foreign and domes. tic, in the Patent Office which shall be available to its employees in the discharge of their duties under this title and to assist the public in the study of the useful arts.

“(b) The Commissioner shall maintain with appropriate revisions a current publicly available classification and index by subject matter of United States patents and published United States patent applications and of such patents and published applications, and other works and periodicals, foreign and domestic, as may be necessary for the purpose of determining with readiness and accuracy the patentability of subject matter for which applications for patent are filed.

"(c) The Commissioner shall maintain facilities, in various parts of the United States, for the searching of prior art and patent materials, both foreign and domestic. To the maximum extent feasible, such prior art and patent materials, shall be complete and current, drawing upon all relevant scientific, technological, and other works and periodicals, both foreign and domestic, available, to any Government agency. The Commissioner shall have such prior art and patent materials classified and indexed according to the classification of patents.

"(d) To the maximum extent feasible, the Commissioner shall mechanize, or otherwise facilitate by electrical, mechanical, or other appropriate means, the search of such prior art and patent materials. The Commissioner shall conduct an on-going program of research and development to keep the handling, classification, storage, and retrieval of such prior art and patent material current and up to the state of the art. "$7. Certified copies of records

"The Commissioner shall, upon payment of the prescribed fee, furnish certi. fied copies of records of the Patent Office within thirty days to persons entitled thereto.

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