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those that have become patents. Under current practice applications which do not become patents never must be published. As a result deferred examination would entail a substantial increase in printing costs for the Patent Office.
Deferred examination has an adverse effect on the users of inventions. During the period of deferral there is uncertainty whether the application will ever become patented and what subject matter will be within its ultimate claims if examination is requested. Each possible user must conduct his own examination of those applications which might affect him. Separate examinations by all potential users would be wasteful as compared with a single examination, by the Patent Office.
Most countries where deferred examination has been adopted were faced with intolerable backlogs of unexamined applications, so that it was almost a matter of necessity to adopt this procedure. The situation is quite different here where the backlog has been dropping steadily and is by no means unmanageable. We are not convinced that the advantages of deferred examination overcomes the disincentives and possibility of additional costs that accompany it.
If deferred examination should be adopted, there would be no need to publish those applications where examination is requested immediately, and it would seem desirable not to do so.
While the patent bar in this country has been historically and uniformly opposed to maintenance fees, there is currently some sentiment that such fees, if reasonable in amount and non-discriminatory, might be preferable to further increases in the filing and issue fees.
If maintenance fees should be instituted, they should not be so large as to make it prohibitive to keep in force patents which may not yet have produced any income but which have a reasonable chance of producing such income in the future. An inventor who has complied with his part of the bargain and disclosed his invention to the public should not have his right of exclusion taxed away simply to satisfy some preconception that the fewer patents in force the better. The maintenance fees called for by S. 1321 seem entirely too high and border on being confiscatory.
Even when kept reasonable in amount, maintenance fees are inherently burdensome and wasteful in that they involve record-keeping and publication expense to the Patent Office, and effort and expense to the patentee who must periodically decide whether to keep track of when fees are due.
Finally, fees, whatever their nature, should be kept administratively as simple as possible. Fees should not vary according to who owns the patent, nor should there be special exemptions.
In this connection we would urge that the matter of fees be reconsidered generally. At the hearings held by this Subcommittee in May, 1971, the American Patent Law Association submitted a report urging the following basis for fee practice:
(a) costs of examination be divided equally between the Patent Office and the applicant, since the examination process is equally of benefit to the applicant and to the public;
(b) the cost of supplying patent copies and similar services should be charged entirely to the persons receiving the services;
(c) the cost of maintaining search facilities and the Scientific Library. and the printing of patents should be funded entirely from public funds, as representing functions of benefit to the general public rather than to applicants; and
(d) the trademark operation should be entirely self-sustaining, as it is primarily for the benefit of trademark owners.
Similar recommendations were made at the same time by former Commissioner Brenner.
We continue to think that this suggested handling of fees would be fairer to applicants and to the public than trying to maintain any arbitrary overall percentage of return. If it were followed, it might well turn out to be unnecessary to look to maintenance fees to supply needed revenue.
ADMINISTRATIVE RESTRUCTURING OF PATENT OFFICE In our proposd version of a patent law revision bill, we have retained language which would leave the Patent Office where it now is, in the Depart. ment of Commerce. Nevertheless many of our members would be pleased to see it become an independent agency. This would give the Commissioner a degree of freedom of operation that would be desirable. On the other hand, it would deprive the Patent Office of the protection afforded by being part of a regular department of the Executive branch and could make its financial stability more precarious.
An alternative, of course, would be to make the Commissioner an Assistant Secretary of Commerce, as is provided in S. 1957 introduced June 7, 1973 by Senator McClellan. This provision was also present in S. 1254 of the previous Congress, which passed the Senate but not the House. Part of the problems of the Patent Office in the past decade or so seem to have resulted from an apparent dilution of the Commissioner's authority because of his position in the administrative structure of the Department of Commerce. This difficulty might be alleviated if he were made an Assistant Secretary.
While the topics discussed so far are those on which comments were particularly solicited, I would like to mention briefly a few of the other provisions of S. 1321 which seem undesirable to us, either because they seem burdensome or would seem to erode the protection which an inventor could obtain and would thus help to destroy the incentive which the system should provide, I will not try to discuss these in detail but would simply like to note some of them. My failure to mention any section, of course, does not necessarily indicate that we approve it.
Section 102(a) would make knowledge or use by others in a foreign country prior to the applicant's invention a bar. Section 102 (b) would similarly make public use or sale in a foreign country more than a year prior to the actual L'.S. filing date a bar to patentability. We believe that such foreign knowlege, use or sale is often difficult to discover and that a bona fide applicant having no knowledge of it should not be prevented thereby from obtaining a patent. It is, after all, the encouragement of the development, disclosure and use of technology in the United States that is the central purpose of our patent system.
Under Section 104(e) any desription of a product could be used an a reference even though it did not teach how to make or use the product. Under this provision anyone in the chemical field could preclude patenting entire classes of compounds by publishing lists of theoretical structural formulas without ever having benefitted the public by providing it with the information Deeded to make the compounds available.
Section 104(e) denies patentability where the inventor has perceived a problem the solution of which is obvious. This is at least too broadly stated for it would seem to cover situations where a technical difficulty could not be solved until someone had ingeniously and unobviously discovered what was causing the difficulty. This is of benefit to the public and should be a patentable discovery even though once the cause is known it would be obvious how to remedy it.
The requirements of Section 112(a) are extremely onerous, particularly in view of the readiness of the courts to find that there has been fraud or lack of candor in connection with the supply of information to the Patent Office. It could often be very difficult for an applicant to be sure he had included in the specification "all .. , novel or unexpected properties or results and all .. substantially superior known or obvious properties or results.” Applicants should not be required to supply, in addition to a complete description of the intention, all of the know-how which has been developed with respect to the subject matter of the invention. Much of this know-how can readily be acquired by anyone who wishes to spend the time and money to develop it. Why should an applicant have to disclose it for nothing without having any assurance at all that he will obtain the desired patent protection?
Section 112(b) limits a patentee to the range of equivalents expressly set forth in the specification. This effectively denies him any range of equivalents, since if he knows all the possible ways of evading his patent, he can make his claims broad enough to include them. The doctrine of equivalents was devised to protect the patentee from persons who would copy the substance of the invention while carefully avoiding the literal language of the claims. The applicant cannot be expected to anticipate every form of evasion of this tyre.
Section 122 provides for the prompt publication of all applications. We believe there should be no publication in any event until the application has been indicated as allowable, and especially no sooner than eighteen months after the filing date.
Section 153(b) would establish the term of a patent at twelve years dating from the filing date, but with the addition of any time during which the application was deferred. We would be strongly opposed to a reduction of term of this magnitude.
Section 201 (c) would bar any broadened reissue patent. We are in favor of reducing the time during which a broadened reissue may be sought from the two years provided by current law to one year, but see no reason why patentees should be denied any opportunity to correct his claims to give him whatever protection his invention warrants.
Section 263 would require a minimum 2% payment from an employer to an employed inventor for assignment of an invention. The proper resolution of employer-employee rights in inventions is a complicated matter, is the subjct of other proposed legislation, and should not be dealt with in a general patent revision bill without adequate hearings on this topic.
Section 286 (a) would provide a two-year statute of limitations for infringement suits instead of the six years now provided. Considering the many difficulties that a patentee must overcome to enforce his patent at all, it seems unfair to whittle down his rights in this manner.
Mr. Daxx. Also, I have delivered to the subcommittee a copy of a proposed version of a patent revision bill which the board of managers of our association has recently given approval to, and feeling that this might be helpful in your consideration of these matters, we've asked that this be printed in the record.
Senator HART. So ordered.
AMERICAN PATENT LAW ASSOCIATION
PART I-PATENT OFFICE Chapter 1. Establishment, Officers, Functions.. 2. Proceedings in the Patent Office--3. Practice Before the Patent Office. 4. Patent Fees
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Chapter 1-Establishment, officers, functions Sec. 1. Establishment. 2. Seal. 3. Officers and employees. 4. Restriction on officers and employees as to interest in patents. 5. Bond of Commissioner and other officers. (Omitted) 6. Duties of Commissioner. 7. Board of Appeals. 8. Library. 9. Classification of patents. 10. Certified copies of records. 11. Publications and public services. 12. Research and studies. 13. Copies of patents for public libraries. Section 1.-Establishment
The Patent Office shall be an Office in the Department of Commerce, 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. Scction 2.-Seal
The Patent Office shall have a seal with which letters patent, certificates of trademark registrations, and papers issued from the Office shall be authenticated.
Section 3.-Officers and employees
ia) There shall be in the Patent Office a Commissioner of Patents, a deputy commissioner, two assistant commissioners, and not more than twenty-four examiners-in-chief. The deputy commissioner, or, in the event of a vacancy in that office, the assistant commissioner senior in date of appointment, shall fill the office of Commissioner during a vacancy in that office until the Commissioner is appointed, and takes office. The Commissioner of Patents, the deputy commissioner, and the assistant commissioner shall be appointed by the President, by and with the advice and consent of the Senate. The Secretary of Commerce, upon the nomination of the Commissioner, in accordance with law, shall appoint all other officers and employees.
(b) The Secretary of Commerce may vest in himself the functions of the Patent Office and its officers and employees specified in this title and may from time to time authorize their performance by any other officer or employee.
(c) The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each examiner-in-chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 17 of the General Schedule of the Classification Act of 1949, as amended. Section 4.-Restiction on officers and employees as to interest in patents
Officers and employees of the Patent Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent or, during such period and for one year thereafter, being named in an inventor in an application for patent for an invetion made during such period or for one year thereafter and of acquiring, 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. Such applications for patent thereafter shall not be entitled to any priority date earlier than one year after the termination of their appointment. Section 5.-(Omitted.) Section 6.-Duties of Commissioner
(a) The Commissioner, under the direction of the Secretary of Commerce, shall superiotend or perform all duties required by law respecting the granting and issuing of patents and the registration of trademarks; shall have the authority to carry on studies and programs regarding domestic and interna. tional patent and trademark law; and shall bave charge of property belonging to the Patent Office. He may, subject to the approval of the Secretary of Commerce, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office.
(b) The Commissioner, under the direction of the Secretary of Commerce, may, in coordination with the Department of State, carry on programs and studies cooperatively with foreign patent offices and international intergovernmental organizations, or may authorize such programs and studies to be carried on, in connection with the performance of duties stated in subsection (a) of this section,
(c) The Commissioner, under the direction of the Secretary of Commerce, may, with the concurrence of the Secretary of State, transfer funds appropriated to the Patent Office, not to exceed $100,000 in any year, to the Department of State for the purpose of making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and related matters. These special payments may be in addition to any other payments or contributions to the international organization and shall not be subject to any limitations imposed by law on the amounts of such other payments or contributions by the Government of the United States. Section 7.-Board of Appeals
(a) The Commissioner, the deputy commissioner, the assistant commisxiouers, and the examiners-in-chief shall constitute a Board of Appeals in the Patent Office. The examiners-in-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed under the classified Civil Service. (b) The Board of Appeals shall:
(1) Review adverse decisions of the primary examiners upon applications for patents as provided in section 134 of this title.
(2) Review or consider actions arising under chapter 18 of this title.
(3) Perform the functions specified as being performed by a Board of Patent Interferences in other Acts of Congress and when performing said
function shall constitute a Board of Patent Interferences. (c) Each appeal or other action shall be decided by at least three members of the Board of Appeals. The Board of Appeals has sole power to reconsider its decision.
(d) 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 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 such designated examiner-in-chief shall be a member of the Board of Appeals hearing an appeal or considering a case. The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each designated 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 of positions referred to in section 5104 of title 5, United States Code. The per annum rate of basic compensation of each designated 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 if such designation had not been made. Section 8.-Library
The Commissioner shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the patent Office to aid the officers in the discharge of their duties. Section 9.-Classification of patents
The Commissioner may maintain with appropriate revisions the classification by subject matter of published specifications of United States patents and of such other patents and applications and other scientific and technical information as may be necessary or practicable, for the purpose of determining with readiness and accuracy the patentability of inventions for which applications for patent are filed. Section 10.-Certified copies of records
The Commissioner may, upon payment of the prescribed fee, furnish certified copies of records of the Patent Office to persons entitled thereto. Section 11. Publications and public services
(b) The Commissioner may cause to be published, in such format as he determines to be suitable, the following:
(1) The specifications and drawings of patents, and patent applications; subject to the provisions of this title.
(2) Certificates of trademark registrations, including statements and drawings. (b) The Commissioner may cause to be published, in such format he he determines to be suitable, the following:
(1) Patent abstracts.
(3) Annual indices of patents, published applications and of trademarks and information concerning the same.
(4) Annual volumes of decisions in patent and trademark cases.
(6) Pamphlet copies of the patent laws and rules of practice, laws, and rules relating to trademarks and circulars or other publications re
lating to the business of the Office. (c) The Patent Office may print the headings of the drawings for patents for the purpose of photolithography.
(d) The Commissioner (1) shall maintain public facilities for the searching of patent materials, (2) may establish a public information service for the dissemination to the public of information concerning patents and trademarks, and (3) may from time to time disseminate or provide for dissemination of public technological and other public information, the publication of