Pro: Majority favored adversary proceedings in order to be of assistance to the Patent Office in uncovering prior art and strengthening presumption of validity of patents; however, many of the majority wish to have adversary proceedings limited so that the time and money involved will not be prohibi tive. Con: Minority indicated that cost of additional adversary proceedings would be so expensive that parties having economic leverage would be able to harass the small business man. In addition, the cost to the taxpayers for an adver sary proceeding was thought to be excessive as compared to the benefits obtained. PUBLIC COUNSEL 2. Are you in favor of a public counsel participating in an examination proceeding? Yes 6 No 22 Pro: In favor of public counsel are a small minority who believed that a public counsel would enhance the presumption of validity of a patent. However, many of the minority qualified their views, e.g.,: (a) only at the request of the Examiner, (b) only when no other member of the public enters into an adversary proceeding, and (c) only to the extent of submitting additional prior art to the Examiner. Con: The substantial majority were against public counsel and considered such an institution to be redundant to the function of the Patent Examiner, and one which would cast a bad reflection on the work product of the Patent Office and lead to morale problems. DEFERRED EXAMINATION 3. Are you in favor of deferred examination before expiration of five years from the filing date? Yes 10 No 15 Pro: The minority who were in favor of deferred examination based their opinion on the assertion that similar systems have worked well in foreigu countries, that the cost of prosecution could be delayed until the time of commercial acceptance of the invention, and that the load on the Patent Office would be reduced so that the Patent Office would be able to focus attention on more important matters. Con: Against deferred examination was a majority who believed it would create great uncertainty on the part of industry as to the extent of patent protection for disclosed inventions. Furthermore, many indicated that because the reduced backlog in the Patent Office, there was no real justification for deferred examination. MAINTENANCE FEES 4. Are you in favor of maintenance fees? Yes 16 No 14 Pro: The consensus of the members in favor of maintenance fees emphasize that they were in favor only if such fees are not exorbitant. The fees should be fairly tied to the cost of helping maintain the patent system and to hold down the cost of applications. Many felt that such reasonable fees would heip identify live or productive patents. The individual inventor and smaller companies are more able to pay additional fees several years after the patent has been in force and used. Con: Those members against the concept of maintenance fees, cited most often that it would discourage private inventors and small companies from filing patent applications in the first instance. Another point raised against maintenance fees was that the public's responsibility should not be forgotten since the quid pro quo for the exclusive right for a limited time to exclude others is the full disclosure of the invention. Further, it was pointed out by some that it would be unfair to tax patents on all inventions alike when they produce different results in terms of profit for the parties concerned. 4(a). Would you be in favor of maintenance fees in magnitude of $1,000.00 per year with twenty-five percent increase each year? Yes 1 No 29 Pro: One member felt that the "commercially meaningless" patents should be so eliminated. Con: The point made by the overwhelming majority in voting against this provision is that the amount is excessive and would stifle the patent system. Secrecy of technology would be the way of life in the United States in the opinion of several of the members. The amount is not fairly related to the cost of maintaining the patent system. 4(b). Would you be in favor of a single maintenance fee in magnitude of $500.00 at the end of the eighth year? Pro: This "compromise" was favored by slightly under half of the members responding. It seems that this amount would be sufficient to eliminate the "dead wood" in the issued patents thereby certainly opening more technology to the public domain. It would assist in fiscal maintenance of the patent system, but is not too burdensome for small inventors and small companies that have been able to place their patents into the economic main stream. Con: Those opposed to the maintenance fee "compromise" felt that the present system of expense recovery is sound. Some favored nominal maintenance fees, but expressed concern that possibly the eighth year was too soon to provide the owner with the necessary time in all cases to sufficiently commercialize the invention. INDEPENDENT AGENCY 5. Are you in favor of the Patent Office becoming an independent agency? Yes 18 No 5 Pro: The consensus here was that the Patent Office would be strengthened by making it an independent agency. Members cited the conflicts of recent Commissioners with the Commerce Department hierarchy and the fact that the present several agencies' views could better be brought together in a single agency resulting in an agreement on a patent policy that is workable. It is thought that an independent agency with Secretary status would also be able to work more closely with Congress when needs arise. Con: The present system has not presented major problems. A compromise, such as Assistant Secretary of Commerce status for the Commissioner of Patents, is suggested by some. Avoidance of direct budget cuts is seen by some be an advantage of remaining under the Commerce umbrella. MCLEAN, VA., September 26, 1973. Re S. 1321-five points included in the hearings of September 11, 12, and 14, 1973. Senator JOHN L. MCCLELLAN, Chairman, Senate Judiciary Committee, Subcommittee on Patents, Trade Marks and Copyrights, DEAR SENATOR MCCLELLAN: The comments presented in this paper are based on my 36+ years of service in the United States Patent Office. During those years I came into close contact with nearly all operating areas of the Patent Office. In addition to basic service in the patent examining professional corps, I served as a Designs Examiner, as a Trade Mark examiner, as a Patent Classifier and as an acting member of the Board of Appeals. In August, 1965, President Lyndon B. Johnson appointed me to be Assistant Commissioner of Patents. My appointment was continued by President Richard M. Nixon in 1968 and in 1972. Also, I have been active in international patent and patent classification matters, serving as chairman of the Technical Cooperation subcommittee of the Patent Cooperation Treaty Interim Committee and chairman of the 12-nation Joint ad hoc Committee of the Council of Europe and the World Intellectual Property Organization on the International Classification of Patents. I resigned as Assistant Commissioner and retired in May, 1973. In quick overview, my position on the five points considered at the hearings is: I. I support modification of patent examining procedures to provide public opposition or adversary proceedings. II. I oppose the creation of the Office of Public Counsel. III. I oppose the establishment of a system for Deferred Examination of Patent Applications. IV. I oppose the establishment of Maintenance Fees. V. I favor administrative restructuring of the Patent Office, including the proposed establishment of the Office as an Independent Agency. I will address each of the five points, briefly, to explain my position. I. I believe that only those patent applications which have been either, (a) passed to issue ("allowed") by the examiner, or, (b) appealed by applicant from an adverse holding by the examiner, should be opened for public opposi tion. Those patent applications which are rejected or refused by the examiner. and in which no appeal is taken by the applicant, do not enter into the patent grant arena; no further public or private funds or manpower should be expended on such applications. Appealed applications should be subject to opposition proceedings so the entire question of patentability under the law can be settled in one further proceeding in the Patent Office. Before my retirement I advocated institution of public opposition proceedings by permitting applicants whose applications had been passed to issue by the examiner to opt for publication of the allowed application under a system which would invite public involvement. My view was that this could be done by the Commissioner under existing law. I also advocated public involvement in "public use" proceedings (Patent Office Rule 292) and in reissue applications especially where the parent patent was involved in litigation. A period for public opposition and the proceedings thereunder should be such as to consolidate all oppositions and hear the matter in but one proceeding; this would minimize or eliminate harrassment possibilities. II. I oppose the creation of the Office of Public Counsel. The purpose supposedly is to weed out and eliminate frivolous or fraudulent claims for patentability. In hindsight, it may be easy to pick examples of patents whose applications might have been challenged by a public counsel. However, while an application is still only pending, it is a well-nigh impossible task to identify such candidates for attention by the public counsel. The counsel could not intervene in each of the 100,000+ applications now being filed each year Intervention in less than all could (and probably would) be challenged as discriminatory or retaliatory or political. A far better way to accomplish the weeding out process is the use of public adversary or opposition proceedings on allowed, appealed or reissue applications. III. The usual justification for a deferred examination system is to lighten the case load on the examiner and thereby increase the quality of the examination. A basic assumption here is that the number of examiners funded by appropriations would remain at today's level. There is no assurance of such a manpower level continuation. To the contrary, based on my long experience in the budgetary process of the Federal government, the odds are strongly in favor of a cut in authorized staff and appropriations if the workload drops. Indeed, in the past several years, in the face of rising numbers of applications filed each year, Patent Office requests for increases in examiner staff have been denied or reduced, variously at the Secretarial, O.M.B. or Congressional level. No reasons have been advanced to show that this budgetary situation will be different under a deferred examination system. Much has been said lately about a "quota" or goal systems for examiners that compels them to spend too little time on each application, thereby lowering quality of examination. This effect has been alleged in view of the constant increases in new filings and the necessity to keep output abreast of the input. True, the Patent Office uses productivity measurement systems in several areas of its operations. Such systems are fostered by any good and reasonable management in government or in private industry. However, and very importantly. the individual productivity measurement system has not been tied to the annual output expectancy of the Patent Office Examining Corps as set forth in annual appropriation requests. The expectancy figure for any individual examiner docket has been constant even though the Office expectancy has moved up, for example, from 104,000 in the FY 1971 Congressional budget submission to 118,000 in the FY 1973 submission. The Patent Office relies primarily on two factors to achieve increases in output of examined applications: (1) increasing the staff as permitted by the budgetary process, and (2) achieving real-time savings in examination such as by making a thorough and complete first search and action, pointing out how claims may be amended to make them allowable, and acting on all applications in order of their filing date. Therefore, it is not believed there is undue pressure on the examiner which a deferred examination system would obviate. Also, much has been said about the quality of issued patents. However, the patents in litigation now or litigated in the past several years generally have received their examination many years ago. The new examination procedures adopted since 1964 could well result in higher quality. In any event, it should be remembered that the Patent Office, as an administrative agency under the patent law (35 U.S.C.), examines only for patentability under the law. The courts are the final testing fround for validity. A patent may be declared invalid or unenforceable on grounds not available to the Patent Office to refuse the issuance of a patent. It is my belief that a deferred examination system will not make any significant change in the quality of issued patents. Consideration should be given, however, to deferring the examination of foreign-filed U.S. applications where the priority application is in a deferred status in its home country. This could affect up to about 25% of all filings in the United States Patent Office. An irreversible high-cost impact of any deferred examination system is that all patent applications would be published and consequently would have to be classified and copies thereof placed in the search files. This increases the input to the files by about 50% over the present full examination system which eliminates about 32% of all applications. The eliminated applications have little value as a prior art disclosure because they are obvious improvements or are completely anticipated by already existing reference material in the search file. When placed in the file, permanent storage space requirements are a liability and the examiner loses time looking at publications which are merely duplicative. Here again, it is not seen that a deferred examination system compares favorably with full examination. V. I favor independent status for the Patent Office, particularly if it would make the budgetary system more realistic and more responsive to the needs of the Office. Further, the present 4 statutory commissioners should be replaced by a 3 or 5 person commission with commissioner serving a 3 or 5 year term on an overlapping basis. This would provide a desperately needed continuity of administration. Respectfully, RICHARD A. WAHL Former Assistant Commissioner. ORCHARD LAKE, MICH., Re Hart Bill S. 1321. Mr. THOMAS C. BRENNAN, Chief Counsel, U.S. Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks and Copyrights, Washington, D.C. DEAR MR. BRENNAN: I am a patent attorney practicing patent law in the State of Michigan. I would appreciate it if you would consider my comments on Bill S.1321. These comments may be broken down into the following subject areas: (1) Modification of patent examination proceedings to provide public adversary hearings (2) The creation of the Office of Public Counsel (3) Establishment of a system for deferred examination of patent applications, and (4) Revision of the patent fee schedule including establishment of maintenance fees. Concerning Item I, the modification of patent examination proceedings to provide public adversary hearings, I believe it would be more advantageous to institute mandatory opposition proceedings in which interested third parties may forward their comments to the Patent Office in order to question the patentability of allowed but pending applications. These opposition proceedings should contain the following features: (1) Every application shall be automatically opened up for inspection and copying after the Notice of Allowability. (2) Notice of access to such applications shall be simultaneously published in the Official Gazette along with a representative figure of the drawings, the broadest claim and a list of references cited. (3) The public shall have a limited period (at least three months) beginning from the date of the Official Gazette notice to protest the grant of a patent. (4) Prosecution shall be suspended during the protest period. (5) If the submitted evidence is considered to be probative and relates to public use or sale of the invention more than one year before the filing of the application, inter partes public use proceedings outlined in present Rule 292 should be followed. (6) If submitted evidence is considered to be probative and relates to publications and patents not cited by the Patent Office or to the manner in which cited art has been applied, examination shall be reopened. (7) If the submitted evidence is considered to be not probative, the protesting party shall be so notified and a Notice of Allowance shall be issued in due course. The protesting party shall have no right to appeal from this adverse decision. (8) If the examination is reopened the applicant shall be allowed to amend his claims, submit new claims, or argue the proprietary of the new rejection. After a final decision on patentability by the Patent Office, the applicant, if the decision is adverse, shall be given the right to appeal along presently provided channels. The applicant shall be provided with copies of all papers forwarded to the Patent Office during the protest period. (9) Identity of the protesting party shall not be revealed to the applicant unless the protesting party insists that he be identified. (10) A provision must be provided that in any subsequent litigation involv ing a patent issuing from the protested application that there shall be no estoppel or res judicata based on participation or lack of participation in opposition proceedings relating to the application that subsequently matured into the patent. Such a provision would be in accordance with present legal standards since the protesting party had no right to appeal the Patent Office deci sion on the submitted evidence and had no right to rebut comments made by the applicant regarding the submitted evidence. (11) There should be no governmental fees required in connection with the opposition proceedings and all parties shall bear their own costs. (12) Following issuance of the patent the patentee shall have the right in an infringement action to recover damages for infringing acts occurring during and after the protest period. Such right should be subject to the following two conditions: (a) the claim sued upon shall be substantially identical to a claim appearing in the application at the time it was opened up for inspection, and (b) the infringer shall have received an actual Notice of Infringement which was transmitted after the application was opened for inspection. Concerning Item 2, the creation of the Office of Public Counsel, it is my opinion that such a bureau is not needed. As patent laws presently stand the examiner fulfills this position by determining patentability. His decisions are in turn reviewed by the primary examiner which are in turn reviewed on a periodic basis by other agencies of the Patent Office. The addition of a Public Counsel could only add extra expense to the already overburdened applicant. It should further be appreciated that an adversary proceeding does not exist in the Patent Office at this time. Applicant's counsel is required to present all information in his possession to the Patent Office which he believes is relevant to the question of patentability and which was not uncovered by the Examiner. In the absence of performing such a task applicant's attorney is subject to disbarment and the patent may be invalidated for reasons of fraud in the procurement. If it is truly believed that the examining procedure is not as adequate as it should be, then more time should be provided to the examiners to make a more thorough investigation on each application. Concerning Item 3, the establishment of a system for deferred examination of patent applications, I am in favor of such a system. I believe that the |