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"(d) Assistant commissioners of patents and examiners-in-chief in office on the effective date of this Act shall continue in office under and in accordance with their then existing appointments.
"(e) The amendment of title 35, United States Code, by this Act, shall not affect any rights or liabilities existing under title 35 in effect immediately prior to the effective date of this Act.
"(f) Notwithstanding any other provision of this Act, subsection (d) of section 112 of title 35 as amended by this Act shall not apply to patents issued, and applications filed, prior to the effective date of this Act. No such applica tion shall be held incomplete, and no such patent shall be held invalid, because availability to the public of a deposit of a microorganism recited therein was conditioned upon issuance of a United States patent reciting a deposit of said microorganism.
"Sec. 5. Nothing in title 35 as amended by this Act shall affect any provision of the Atomic Energy Act of 1954 (Aug. 30, 1954, ch. 1073, 68 Stat. 919) as amended or of the National Aeronautics and Space Act (Pub. L. 85-568, July 29, 1958, 72 Stat. 426) except that the functions of a Board of Patent Interferences specified in said Acts may be performed by the Board of Appeals as specified in section 7 of title 35 as amended by this Act.
"Sec. 6. The Clean Air Amendments Act of 1970 is amended by striking out section 308 and inserting in lieu thereof the following:
"If the Administrator determines that the implementation of the purposes and intent of this Act is being significantly retarded by any section of title 35 of the United States Code he shall, after consultation with the Department of Commerce, recommend to the Congress such modification of title 35, as may be necessary.
"Sec. 7. This Act may be cited as "The Patent Act of 1973."
NATIONAL ASSOCIATION OF PLANT PATENT OWNERS.
Hon. JOHN L. MCCLELLAN,
Washington, D.C., September 17, 1973.
Chairman, Subcommittee on Patents, Trademarks and Copyrights, Committee on the Judiciary, U.S. Senate, Washington, D.C.
DEAR SENATOR MCCLELLAN: The National Association of Plant Patent Owners is a trade association representing members and businesses to whom plant patents have been granted.
A committee of our Association has spent nearly two years studying the portions of the patent laws governing the grant of plant patents. As the result, we have concluded that a minor change in Section 161 and the addition of a new Section 165 would clarify and strengthen these laws and promote their objectives.
Our members hope that these changes can be considered by your Subcommittee during the hearings and review of S. 1321.
The changes we recommend read:
Section 161.-Delete the words "or a plant found in an uncultivated state." Sction 161 would then read as follows:
"Whoever invents or discovers and asexually reproduces a distinct and new variety of plant, including cultivated sports, mutants, hybrids and newly found seedlings, other than a tuber propagated plant, may obtain a patent therefor subject to the conditions and requirements of this title.
"The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided."
The deletion of the words "or a plant found in an uncultivated state" will eliminate the need for deciding what constitutes an "uncultivated state." For example, a knowledgeable person might find a wild blackberry plant on a river bank, with berries three times larger than normal. Because of his knowledge, he recognizes that this is a superior plant deserving of commercial propagation. He could, under present law, obtain a plant patent only by failing to make full disclosure of where the plant was found, which he would be sorely tempted to do and which might well be undetected in any litigation over a patent for this blackberry plant. Under our proposed change, he could obtain a plant patent just as if he found the plant in his back yard. In short, the change removes the temptation for dishonesty and promotes the incentives of the patent system to make public new botanic discoveries.
The other recommended change is the addition of a new Section 165 which reads:
165 Certificate of Plant Variety Protection.
a. For purposes of Section 102 (d) of this title, a certificate of plant variety protection or any grant of exclusive rights in a new plant variety of foreign country shall have the same effect as a patent granted by that country.
b. An application in a foreign country for a certificate of plant variety protection or the grant of exclusive rights in a new plant variety shall have the same effect for the purpose of a right of priority under Section 119 of this title as an application for patent in that country, provided the conditions and requirements of Section 119 for applications for patent are complied with.
Public Law 92-358 of July 28, 1972 grants, under certain circumstances, rights of priority to a U.S. patent application based on an earier filed application for an inventor's certificate in a foreign country. It further provides, under certain circumstances, that an inventor's certificate becomes a statutory bar to the grant of a U.S. Patent. This law was designed to carry into effect provisions of the Stockholm revision of the Paris Convention for the Protection of Industrial Property of 1883 to which we will shortly be bound.
The ratification by the United States recognizes an inventor's certificate as a right tantamount to the grant of a patent. Most foreign countries rather than providing patent protection for plants, have Breeder's Rights or Plant Variety Protection Laws which grant rights in the same manner as patents. In many of these countries, one who has filed for a plant patent in the United States, by virtue of the filing can establish his right of priority under the Breeders Rights or Plant Variety Protection Laws. On the other hand, one who has filed or obtained an exclusive right under Breeders Rights or Plant Variety Protection Laws in foreign countries cannot use that as a basis for a right of priority under U.S. Law-an anomalous situation.
Proposed Section 165 would accord a certificate of plant variety protection or any similar grant of exclusive rights in a plant the same treatment as a patent grant by the country under Sections 102 (d) and 119 of Title 35. The National Association of Plant Patent Owners strongly recommends adop tion of the foregoing changes to the patent laws.
L. J. DONAHUE, Administrator.
THE NEW YORK PATENT LAW ASSOCIATION,
Re Written statement of the position of the New York Patent Law Association on selected portions of the Patent Reform Act of 1973 (S.1321).
Hon. JOHN L. MCCLELLAN
Chairman, Subcommittee on Patents, Trademarks and Copyrights, U.S. Scnate, Senate Office Building, Washington, D.C.
DEAR SENATOR MCCLELLAN: The New York Patent Law Association is a professional organization for patent attorneys practicing this legal specialty in the New York metropolitan area. The Association has served the interests of the public and the bar in this field since 1922. The Association, moreover, has a membership of about 1200 patent attorneys. This membership represents most of the patent attorneys engaged in practice in New York City and the surrounding New York, New Jersey and Connecticut areas.
By letter dated August 6, 1973 the Chief Counsel of the Subcommittee on Patents, Trademarks and Copyrights of the United States Senate invited the New York Patent Law Association to submit a report on its position concerning selected portions of The Patent Reform Act of 1973 (S.1321) (hereinafter called the "Hart Bill"). The New York Patent Law Association is grateful for the invitation to comment on the Hart Bill and this letter is respectfully submitted in that connection.
The Hart Bill was closely examined by the New York Patent Law Association through its Subcommittee on Patent Law Revision and this letter repre sents the position of the Association regarding the Hart Bill.
Our patent system has remained basically unchanged since 1836. It has been reviewed, examined and re-examined several times by presidential commissions, such as the TNEC Hearings of 1938-41; the National Patent Planning
Commission, c. 1945; The Attorney General's Committee to Study the Antitrust Laws (Report, March 31, 1955); and The Report of the President's Commission on the Patent System (1966). The patent system has been reconfirmed as beneficial to the public and a just reward for inventive contributions to the useful arts. As most recently reported by the Presidential Commission of 1966: "The members of the Commission unanimously agreed that a patent system today is capable of continuing to provide an incentive to research, development and innovation. They have discovered no practical substitute for the unique service it renders."
This remarkable stability of the patent system is not due to industry's, private inventors' or the patent bars' resistance to change. Rather it results from the foresight of our Founding Fathers in recognizing and applying the simple logic that persons invent and disclose their inventions, and entrepreneurs commit the necessary capital to bring these inventions to the public,_only where there is an adequate incentive to do so. Quoting further from the Presi dential Commission:
"First, a patent system provides an incentive to invent by offering the possi bility of reward to the inventor and to those who support him. This prospect encourages the expenditure of time and private risk capital in research and development efforts.
Second, and complementary to the first, a patent system stimulates the investment of additional capital needed for the further development and marketing of the invention. In return, the patent owner is given the right, for a limited period, to exclude others from making, using, or selling the invented product or process.
Third, by affording protection, a patent system encourages early public dis closure of technological information, some of which might otherwise be kept secret. Early disclosure reduces the likelihood of duplication of effort by others and provides a basis for further advances in the technology involved.
Fourth, a patent system promotes the beneficial exchange of products, services, and technological information across national boundaries by providing protection for industrial property of foreign nationals."
We are seriously concerned that the proposed Hart Bill would work against these purposes of the patent system. The total effect of the bill would be so burdensome on inventors and developed of inventive technology as to destroy their incentive to invent and/or force them to elect secrecy rather than public disclosure under the patent system. It would discourage them from investing the capital necessary for developing and bringing new products to the public. In short, the progress of the useful arts would be inhibited rather than promoted.
This report will now address itself to the specific subjects listed in the Chief Counsel's letter of August 7, 1973.
1. Modification of Patent Examination Proceedings to Provide Public Adversary Hearings
The provisions of the Hart Bill establishing adversary proceedings are Section 122 which requires the Commissioner to make all applications available for public inspection and copying within six months of filing, and Section 135 which permits any party between such publication and allowance to intervene with any information which might have a bearing on the patentability of the application. The term "party" includes the Public Counsel (discussed below), any agency, state, political subdivision, or instrumentality thereof, and any person adversely affected by any action of the Patent Office under Section 100 (h). The intervening party may identify himself and participate in further proceedings, or remain unidentified under Section 135(d).
What is contemplated is an open ended, unlimited, pre-issuance patent opposition proceeding in which the opponent (or opponents) need not even be identified.
Past proposals for pre-issuance opposition proceedings have consistently been disapproved. This disapproval usually centered on the increased operating costs in the Patent Office from two separate publications for each application, and increased cost and interminable delay to the applicant. Pre-issuance opposition would also deprive the inventor of his right to know the scope of his patent before being obliged to surrender his right to keep his invention secret,
The consequence of such opposition proceedings is not only a decrease in inventor's rights, but also the probable disuse of the patent system to the detriment of the public and the progress of the useful arts.
The Hart Bill is subject to all of these objections to earlier opposition proposals and adds some shortcomings of its own. The twelve-year patent term from the date of filing provided by Section 153 (b) without a saving clause in case of opposition proceedings, together with the provision of Section 271(a) limiting infringements to activity occurring only after issuance, subjects an inventor to a shortened and, in the event of a protracted opposition, possibly no effective patent life at all.
In addition, since the proposed Section 102 (a) follows a universal prior art approach and no longer limits prior art to publicly available printed documentary evidence (or public uses), an opposition could be based upon prior knowledge or use anywhere in the world, even if the use was secret. Thus, an inventor could be denied his rights notwithstanding the fact that he is the first to provide in this country what is now recognized as the quid pro quo entitling him to a patent, namely, the disclosure of the invention to the public.
The proposed opposition proceedings would be conducted by a Primary Examiner. The Examiner's decision would be appealable to the Board of Appeals under Section 134(a), and appeal could be initiated by any party (as that term is defined above) under Section 137. Furthermore, under Section 134 (c) the appeal could be conducted as a de novo proceeding with any party introducing new evidence not previously in the record. The potential burdens on the applicant, as well as on the Patent Office, are staggering. Also, it is questioned whether a Primary Examiner should be called upon to receive, supervise and analyze testimony in adversary proceedings (as would be necessary on public use proceedings) and to make decisions based thereon. De novo proceedings on appeal could lead to abuse in that an opposer could withhold art from the Examiner on the basis that he could always introduce it on appeal.
In preference to the pre-issuance adversary proceedings proposed in the Hart Bill, we would recommend a post-issuance revocation procedure. This type of proceeding would not destroy the present trade secrecy rights of an inventor. He could maintain his invention secret during pendency of his application. The costs on the Patent Office and the patentee would be far less. In addition, this proceeding would not shorten the effective life of the patent, as would the adversary proceedings under the Hart Bill.
Accordingly, we feel that the adversary proceedings provided in the Hart Bill would seriously discourage inventors from using our patent system. Assuming the purpose of thse provisions to be the improvement of the quality and reliability of issued patents, we believe that post-issuance revocation proceedings are a far better means for accomplishing this purpose.
2. Creation of Office of Public Counsel
The Hart Bill (Section 3 (d)) establishes the position of Public Counsel who shall be appointed by the President with public approval; and he shall be "independent of the Commissioner in carrying out his responsibilities." In addition to the duties now assumed by the Solicitor, the Public Counsel is delegated the responsibility of assuring the issuance of "high quality patents" by reviewing "all proceedings in the Patent Office." He "may intervene and participate at any time in any Patent Office proceeding" where he believes developing law or technology or the public interest warrants such intervention. In order to carry out the purpose of the proposed statute, the Public Counsel, at his discretion, may take any action, participate in any other proceeding, or conduct any inventigations or inquiries he deems appropriate.
He would have power under Section 24 to subpoena "any applicant, patentee, or any other person within the jurisdiction of the United States . . . to appear .... to testify, produce documentary evidence, or produce other information or material. . . or file reports or answers in writing to specific questions." Under Section 132 he could be called upon by the Primary Examiner to "intervene and participate in any proceeding". He would brief and argue appeals to the Board of Appeals under Section 134,a nd to the Court of Customs and Patent Appeals under Section 143, and to the District Court for the District of Columbia under Section 145.
In our view, this section should be opposed because of the anticipated high costs of implementation which would inevitably result in escalation of patent fees and the broadness of the powers granted the Public Counsel. We have difficulty in reconciling the anamolous and inconsistent situation of having the Public Counsel represent the Patent Office in the defense of appeals from final actions, while in the same breath being virtually independent of the Commissioner or Patent Office policy. It is feared that his autonomy and uncontrolled power could be potentially more harmful than beneficial to the patent system. 3. Establishment of a System for Deferred Examination of Patent Applications The 1966 President's Commission on the Patent System adopted as one of its recommendations the proposal that enabling legislation be enacted to permit the Commissioner of Patents to establish a deferred examination program if he deemed it desirable. This was coupled with a recommendation for the publication of each application within an 18 to 24-month period after its effective filing date. (Cf. the Hart Bill proposal of 6 months.)
In 1966 the average pendency period between filing an application and issuing a patent thereon was two and one half years and rising. Likewise, the patent application backlog was rising. The Commission's purpose in recommending the publication of applications was to provide the public with knowledge of the advancements in technology more rapidly than the Patent Office was then doing it. The deferral of examinations was believed to be a possible solution to relieving the Patent Office of some of its work since some applications would be abandoned and would never require examination.
Since that time the average pendency time has been reduced to 24 months. As former Commissioner Gottschalk reported in May of this year, "Pendency time is now at the lowest level in over 50 years." (APLA April-May '73 Bulletin, p. 262) He also reported that the application backlog is going down, and that the Office's rate of disposals is exceeding the new filings by 12,000 applications per year.
With this present average period of pendency of two years, the publication of applications for the purpose of early disclosure is no longer necessary. Likewise, in view of the more rapid disposal of cases, the need to lighten the workload of the Patent Office (one of the objects of deferred examination) is not urgent today as it might have been in 1966.
It is also not known whether the number of applications that will be abandoned during the deferred period, if any, will be significant. The investment an applicant makes in filing is not limited to the Patent Office fees. He must also pay for the services of an attorney or agent and generally, as a result, the total expenditures for filing become substantial. Having made the decision to file despite the required initial investment, it is not likely that very many applications will be abandoned without at least receiving a first examination to determine possible patentability.
Section 192 (b) of the Hart Bill, providing for the examination of deferred applications, permits any party (as defined above) to request examination by paying a so-called basic examination fee. The applicant would then be required to pay all other fees. The amount of this basic fee is not set forth, but it is assumed that it would be nominal. It is also not definite whether an applicant may refuse to pay all other fees subject to his application being declared abandoned, but this "relief" would appear to be available. In any event. it would appear that this provision lends itself to abuse by parties who, by paying a nominal fee, could force an applicant, at best, to pay the remainder of an examination fee when he was not prepared to or, at worst, to abandon his application.
A pre-issuance publication procedure would be necessary to implement a deferred examination system if delayed disclosures are to be avoided. Reasons for opposing such publication are discussed elsewhere in this report. These reasons alone are sufficient basis for opposing the deferred examination proposal. This Association opposes the deferred examination system proposed by the Hart Bill. The seemingly insignificant benefits that might be derived from such a system are far outweighted by the disadvantages that would result from both it and the publication of applications.
Thus, it is our view that deferred examination is unnecessary in view of the Patent Office's current predency and backlog status, unfair to the applicant in that it would require pre-issuance publication, and unwise in that the hoped for benefits of fewer examinations are illusory.