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                         56 FR 22702-02

                             NOTICES

                     DEPARTMENT OF COMMERCE

                   Patent and Trademark Office

 Request for Comments for the Advisory Commission on Patent Law
                             Reform

                     Thursday, May 16, 1991

 AGENCY: Patent and Trademark Office, Commerce.

 ACTION: Notice;  request for public comments.

 SUMMARY: The Advisory Commission on Patent Law Reform Commission
will be submitting a report to the Secretary of Commerce by August
1992 on the state of, and the need for, any reform in the United
States patent system.  To ensure that the Commission recommenda-
tions represent a true consensus of the American public and the
patent user community, public comments are invited on the issues
to be considered by the Commission.

 DATES: Written Comments must be submitted by July 15, 1991.

 ADDRESSES: Submit written comments to E.R. Kazenske, Executive
Assistant to the Commissioner, U.S. Patent and Trademark Office,
Box 15, Washington, DC 20231.

 FOR FURTHER INFORMATION CONTACT:Jeff Kushan, Commission Special-
ist, or Paul Salmon, Commission Specialist;  U.S. Patent and
Trademark Office, Box 15, Washington, DC 20231.  Phone:  (703)
557-3071.

 SUPPLEMENTARY INFORMATION: The Commission requests public comments
on the issues set forth below.  Each issue should be individually
addressed. Submissions should be concise statements of position,
including supporting material where relevant, and should be limited
to the questions framing each issue.  All submissions must include
the name and/or professional affiliation of the contributor.  To
ensure full consideration by the Commission, the submissions should
be received by July 15, 1991.

 I. Protection of Computer Related Inventions

  The principal issue to be examined is whether the current U.S.
patent laws provide adequate and appropriate protection of novel
computer program-related inventions.  The relationship of patent
protection for computer program-related inventions to other forms
of intellectual property protection will also be considered.
  (a) What problems, if any, exist in the current framework of laws
which protect computer-related inventions
  (b) What changes, if any, should be made in the domestic and
international systems for protection of computer-related inventions

  (c) The Supreme Court has found that new and useful computer
program-related inventions are eligible for patent protection.
What rationale, if any, exists in law or policy for Congress to now
remove patent protection for this field of science and technology
  (d) What evidence exists, if any, that patents issued on new and
useful computer program-related inventions do or do not provide an
incentive to conduct research and development on new products, and
that such patents do or do not promote the development of new
technology
  (e) What conflict or overlap is created by the existence of a
patent for a new and useful computer program-related invention and
either (1) a copyright for original expression embodied in the
computer program fixed therein, or (2) a mask work in the inven-
tion;  and if any exists, is it harmful or helpful
  (f) Should Congress legislate the boundary for patents in the
computer program area, or is it preferable to permit the courts to
continue to define the outer boundary
  (g) Are the tests of patentability for computer program-related
inventions implemented by the USPTO in the notice published in the
Official Gazette on August 9, 1989, consistent with the patent
statute and/or court decisions If there are inconsistencies, what
are they
  (h) What concrete steps should be taken, if necessary, to revise
the PTO examination procedure for computer program-related
inventions in order to achieve high-quality issued patents,
particularly with respect to:
  1. Providing patent examiners with complete, up-to-date prior
art;
  2. Providing patent examiners with training in this field to
raise/maintain their expertise;
  3. Recognizing computer science as a "science" for the purpose
of qualification to take the PTO registration examination and
recruiting computer scientists as patent examiners;
  4. Providing an optimum system of classification to maximize the
searchability of inventions in this field;  and
  5. Taking steps to reduce the PTO pendency time for patent
applications in this field
  (i) What procedures, not currently available, should be consid-
ered to correct problems caused by improperly granted patents
(i.e., post grant oppositions, court nullification), and how would
these procedures particularly relate to computer program-related
inventions

 II. Federal Protection for Trade Secrets

  Trade Secret statutes now exist only at the state level, and are
not uniform in the states wherein they exist.
  The principal issue to be examined is whether Federal Statutory
protection should be enacted and if so, how it should relate to
state statutes
  (a) Is there a need for a Federal law on trade secrets What
problems have been caused by the absence of such a law What
problems would such a law create
  (b) If there is need for a Federal trade secrets law, on what
legal theories (i.e., tort, contract, etc.) should it be based How
should it relate to state laws and to what extent, if any, should
it preempt state laws
  (c) If there are specific areas of trade secrets that are
inadequately protected by present state laws or by their nature
cannot be adequately
 protected by state laws, would it be possible to enact Federal
laws in those areas only, leaving to state law what is currently
adequately protected Would such a bifurcated system create more
problems that it would solve

 III. Cost and Complexity of Patent Enforcement

  Although many patents are enforced through negotiation, resort
is frequently made to either litigation in the Federal district
courts or to arbitration or one of several other forms of alterna-
tive dispute resolution (ADR).
  Patent litigation is said to be complex, expensive, unpredictable
and heavily dependent on the ability of the judge to exert fair and
effective control. Arbitration and other forms of ADR would seem
to offer significant advantages in many types of dispute, but are
not frequently used.
  (a) Is the cost of patent enforcement too high If so, what can
be done within the existing Federal Rules to achieve determinations
of validity, infringement and damages more efficiently and
economically Which, if any, of the Federal Rules should be changed
to improve patent litigation, and how Would provisions in the Civil
Justice Reform Act of 1990 improve patent litigation
  (b) Is there a need for a "small claims" type of patent proceed-
ing in the Federal courts, with simplified procedures and limited
recovery If so, describe the characteristics such a proceeding
should have, e.g., how procedures would be simplified, what the
limits on recovery should be, etc.
  (c) Should the use of arbitration and other forms of ADR be
increased How What, if any, deterrents are there to using ADR and
how can they be overcome What additional forms of ADR should be
considered for patent disputes

 IV. Grounds for Holding Patents Unenforceable

  In the United States, a party charged with infringement of a
patent can raise an equitable defense of unenforceability which,
if sustained, may preclude exercise of the patent rights even
though the patent is valid and infringed. Historically, the defense
has usually been based on alleged misconduct occurring after the
patent is granted, e.g., restrictive conditions in patent licensing
agreements.
  In more recent years, conduct before the Patent and Trademark
Office has frequently been claimed to give rise to the defense,
e.g., misrepresentations or alleged failure to comply with the
standard for disclosing to the Office information in the patent
applicant's possession.  Such claims, some argue, are often
frivolous and unsupported.
  (a) What are the benefits and drawbacks of permitting an
unenforceability defense in patent litigation, based on alleged
misconduct either before or after patent grant
  (b) Should any change be made in the present Patent and Trademark
Office standard relating to the submission of prior art informa-
tion, recognizing the need of the Office to consider information
bearing on patentability before the patent issues
  (c) Are existing judicial procedures and standards for resolving
unenforceability defenses adequate If not, is legislation desirable
and, if so, what kind Discuss any other changes believed desirable.
  (d) Once inequitable conduct has been found, whether based on
conduct before
 or after grant, is unenforceability the appropriate remedy If not,
what other types of remedies might be applied and in what types of
situations

 V. Licensee Challenges to Patent Validity

  Since 1969, when the U.S. Supreme Court in Lear v. Adkins, 395
U.S. 653, abrogated the doctrine of licensee estoppel, the courts
have been dealing ad hoc with a variety of issues flowing from that
decision.  These include the right of the patent owner to terminate
the license agreement and sue for patent infringement, the right
of the licensee to recover royalties should the patent be declared
invalid, the extent to which the parties should be permitted to
contract in advance for the various eventualities, etc.
  It is asserted by some that this has created considerable
uncertainty.  Some would provide for all post-Lear eventualities
by statute.  Others would permit a licensor and licensee to bargain
for provisions necessary to protect their respective interests.
  (a) Is legislation desirable to clarify the results of the Lear
decision If so, what should it provide
  (b) Should any restraints, beyond the normal law of contracts,
be imposed on the rights of licensee and licensor to bargain for
the results of a potential challenge by the licensee of the
licensed patent's validity

 IV. First-to-File System

  In the United States patent system, when more than one patent
application is filed claiming the same invention, the patent is
awarded to the applicant who establishes the earliest acts of
invention in the United States and who has not thereafter sup-
pressed, abandoned or concealed his invention ("first-to-invent"
system).  In international treaty negotiations aimed at more
uniform patent laws throughout the world, particularly the World
Intellectual Property Organization (WIPO) patent harmonization
proceedings, the United States is being urged to adopt a different
procedure, almost universally used in other countries, under which
we would award the patent to the first applicant to file a patent
application for the invention ("first-to-file" system).  The
principal issue presented is whether the United States should
change from a first-to- invent procedure to a first-to-file
procedure (1) only as part of a comprehensive treaty to harmonize
all of the world's patent systems, (2) without regard to a
harmonization treaty, or (3) not at all.  The following questions
are designed to help frame this issue:
  (a) What benefits do United States patent holders and the public
realize from the first-to-invent procedure What detriments are
there, particularly those that might not be addressed by further
simplification of the procedure to determine priority of inventor-
ship
  (b) What benefits are United States patent holders and the public
expected to realize from a first-to-file procedure What deteriments
should be expected
  (c) What benefits are United States patent holders and the public
expected to realize from a harmonization treaty What detriments
should be expected
  (d) If the United States retains the first-to-invent procedure,
a partial step toward harmonization could be a change permitting
applicants to establish dates of invention by reference to
knowledge, or sue, or other activity in foreign
 countries in addition to such activities in the United States.
Should such an expansion of admissible evidence of inventorship be
adopted (1) only as part of a comprehensive treaty to harmonize all
of the world's patent systems, (2) without regard to a harmoniza-
tion treaty, or (3) not at all Should such an expansion of
admissible evidence of inventorship be adopted (1) only in respect
to foreign countries that provide for practicable and effective
judicial discovery of foreign inventorship activity, (2) only on
a limited basis reflecting credibility of the foreign evidence, or
(3) without regard to the legal procedures available in foreign
countries
  (e) If the United States adopts a first-to-file procedure, should
it condition this adoption on a grace period during which activi-
ties of the inventor or derived through the inventor will not be
a bar to patentability by the inventor Should the oath and its
attendant sanctions be strengthened in respect to the requirement
of originality
  (f) If the United States adopts a first-to-file procedure, would
it be desirable to codify the rights, if any, of a prior user of
the invention If so, should such a user have (1) no defense or
rights in respect to the subsequent patent, (2) a personal
exemption to continue existing commercial use, or (3) some other
right Should the prior user rights, if any, extend to one not an
actual user, but who has made effective and serious preparations
for such use Should it matter if the prior user had elected to
practice the invention as a trade secret Should any prior user
right be transferrable to someone else Should any such right extend
only to use in the United States (a feature in other patent
systems) Should any prior user right extend to such users who were
not originators of the invention
  (g) Would a first-to-file patent procedure run afoul of the
reference to "inventors" in Article I, Section 8, Clause 8 of the
Constitution

 VII. Automatic Publication of Applications

  In the United States patent system, patent applications are held
in confidence by the Patent and Trademark Office and not published
until a patent is granted.  Patent rights begin on the date of
grant.  In international treaty negotiations aimed at more uniform
patent laws throughout the world, it has been proposed that patent
applications be published and confer provisional protection
commencing on the date of publication.  The Japanese and European
patent systems provide for publication of patent applications 18
months after their effective filing dates and feature provisional
protection, generally a right to compensation from infringers with
actual notice.  The principal issue is whether United States patent
applications should be published before grant of a patent (1) only
as part of a comprehensive system to harmonize all of the world's
patent system, (2) without regard to a harmonization treaty, or (3)
not at all.  The following questions are designed to help frame
this issue:
  (a) What benefit do United States patent holders and the public
realize from keeping patent applications confidential until a
patent is granted What are the detriments
  (b) What benefits are United States patent holders and the public
expected to realize from a procedure requiring automatic publica-
tion of patent applications What are the detriments
  (c) Should U.S. patent applications be published by some fixed
time measured
 from their U.S. or foreign priority filing dates Does the need for
a pre-grant publication differ depending upon whether patent terms
are measured from filing date or issue date
  (d) If pre-grant publication becomes part of the U.S. patent
system, is there a need for provisional protection starting from
the date of publication Does the need for provisional protection
depend upon how the term of the patent is measured
  (e) If provisional protection is appropriate, what should it
include

 VIII. Patent Term

  In the United States patent system the term of a patent is 17
years from the date when the patent is granted.  Many other
countries provide a 20-year term for their patents from the date
when the application for the patent was filed. The appropriate term
for a patent is under consideration in negotiations aimed at more
uniform patent laws throughout the world, as well as in the
negotiations on the Trade-Related Aspects of Intellectual Property
(TRIPs) in the current General Agreement on Tariffs and Trade
(GATT) Round.  The principal issue is whether the United States
should measure the life of a patent from the date when the
application for it was filed (1) only as part of comprehensive
treaties to harmonize all of the world's patent systems, (2)
without regard to harmonization treaties, or (3) not at all.  The
following questions are designed to help frame this issue.
  (a) What benefits do United States patent holders and the public
realize from measuring the life of a patent from its date of grant
What detriments are there
  (b) What benefits are United States patent holders and the public
expected to realize from a procedure that would measure the life
of a patent from its filing date What would the detriments be
  (c) If the term of a United States patent is to be measured from
the filing date, should the term be extended to compensate for
delays due to (1) secrecy orders, (2) marketing delays due to FDA
or EPA regulatory procedures, (3) NASA or DOE ownership proceed-
ings, (4) appeals, or (5) any other delays outside of the control
of the patent applicant
  (d) Should a United States patent application be permitted to
rely upon the date of more than one foreign-filed application for
priority, and, if so, should the term of the United States patent
be measured from the earliest priority date (recognizing that a
modification of the Paris Convention probably would be necessary
for adoption of any procedure to measure the life of a patent from
any foreign priority date)
  (e) If the term of a United States patent is to be measured from
a filing date, should that date be (1) the earliest United States
filing upon which priority is based, (2) the earliest filing upon
which priority is based, be it foreign or United States filing
date, or (3) the filing date of the application on which the patent
is granted
  (f) If the United States adopts a patent term based upon a filing
date, should that term be 20 years If not, how long should the term
be

 IX. Deferred Examination

  United States patent laws permit an applicant to petition for a
deferral of
 the examination process only for a short period, and then only for
"good and sufficient cause." Deferred examination at the option of
the applicant is a feature of several foreign patent systems.
  (a) What would be the benefits of a procedure whereby a patent
application is not examined in due course, but instead, the
applicant is given the option, for a period of years, to request
that the application be examined What would be the detriments
  (b) If optional deferred examination were adopted, what necessary
or desirable companion changes (such as mandatory publication of
applications) should be made, if any, in the United States patent
law or procedures Should a third party have the right to request
examination
  (c) If optional deferred examination were adopted, should a
patent application be deemed abandoned if the applicant fails to
request examination within a fixed time after filing Should the
applicant be permitted thereafter to re-file an application for the
same invention
  (d) Should the applicant have the option, in lieu of requesting
formal examination, to obtain a lower-cost patent of shortened term
and reduced enforcement rights

 X. In re Hilmer

  Under the interpretation of United States patent law in the case
of In re Hilmer (and other cases), a United States patent has a
patent-defeating effect (becomes a "reference") as of the earliest
filing date in the United States to which it is entitled, but not
the earliest foreign filing date to which it is entitled.  In other
patent systems, patents or applications are effective as references
as of their earliest filing date, be it domestic or foreign.
  (a) If the effective date of a United States patent as a
reference should be based on a foreign application filing date,
should that foreign priority date be the effective date for
anticipation purposes only and not for obviousness purposes so that
the Hilmer rule is partially retained in that the United States
patents with a foreign priority date are effective only as a
reference for obviousness purposes as of the filing date in the
United States
  (b) Is there rationale for abolishing the Hilmer rule totally so
that foreign- origin United States patents will be effective as
references for all purposes as of their foreign priority filing
dates
  (c) What changes in procedure, if any, should the Patent and
Trademark Office adopt to ensure adequate consideration of the
disclosures in foreign-origin United States patents in the
examination of United States patent applications
  (d) Should bilateral reciprocity be applied when deciding whether
or not a United States patent is entitled to an earlier foreign
filing priority date in a particular country for reference purposes

 XI. Reexamination

  The reexamination statute permits any person to file, with the
requisite fee, a request for the reexamination of a patent in view
of prior art limited to prior patents and printed publications.
Issues of inequitable conduct, public use and sale, and the like,
may not be addressed in reexamination.  If the USPTO determines
that the request raises "a substantial new question of
 patentability," the patent is reexamined under the same procedures
applicable to the examination of new applications and concludes
with the issuance of a reexamination certificate.  The reexamina-
tion process is basically ex parte in nature, with very limited
participation by a third party requestor.  Since the present system
of reexamination was established by Congress in 1980, there have
been numerous proposals to modify reexamination to increase the
degree of participation of the requestor and/or to enlarge the
scope of reexamination.
  (a) Do you believe the present reexamination system is working
effectively If not, identify each deficiency that you believe
exists in the system.
  (b) Do you believe that the present reexamination system should
be modified to permit complete inter partes participation by a
protestor at all phases of the reexamination proceeding If so,
explain why.  If not, explain why.
  (c) If your answer to question (b) is "no," to what extent, if
any, should third parties be allowed greater participation than at
present in reexamination proceedings
  (d) Would you be in favor of modifying the present reexamination
system to permit or require one or more of the following:
  (1) Permitting a reexamination petitioner other than the patentee
to comment on any claims in their finally allowed form, so as to
provide the examiner with the petitioner's views prior to a final
decision as to whether to issue a reexamination certificate
  (2) Permitting a reexamination petitioner to appeal both to the
PTO Board of Patent Appeals and Interferences and to the Federal
Circuit from any final decision favorable to a patentee in a
reexamination proceeding
  (3) Conditioning the appeal noted in subparagraph (2) on the
petitioner's agreement to forego litigating in any other forum any
issue raised or which could have been raised on appeal
  (4) Precluding an accused infringer from relying as a defense on
any prior art of printed publication unless that prior art or
printed publication has been previously considered by the PTO
either during the original prosecution of a patent or in a reissue
or reexamination proceeding involving that patent
  (5) Precluding a party or its privies, against whom a judgment
of invalidity of a patent claim or claims has been entered, from
seeking or maintaining reexamination of that claim or claims
  (6) Requiring that claims of a reexamined application be
construed under the same standards as those claims would be
construed in a district court infringement proceeding
  (e) Should the scope of issues considered by the examiner during
reexamination be broadened If so, how (e.g., by permitting
consideration of public use or on sale bars, section 112 issues,
inequitable conduct, etc.)
  (f) In what other ways, if any, should reexamination proceedings
be changed

 XII. Assignee Filing of Applications

  The United States currently requires the actual inventor or
inventors to file patent applications, subject to a few limited
exceptions such as death, unavailability, or insanity.  Each
application must be accompanied by an oath from the actual inventor
which states that the applicant believes he was the first to invent
the claimed invention.  Nearly all foreign patent systems permit
the owner of an invention (whether the actual inventor or the
assignee)
 to file the patent application without an oath signed by the
inventor.
  (a) Should the United States allow filing of patent applications
by assignees
  (b) What benefits and drawbacks would occur by allowing filing
of patent applications by assignees
  (c) What contours should an assignee filing proposal have,
including possible safeguards for inventors and the public

 XIII. PTO Funding and Fee Structure

  The Patent and Trademark Office historically recovered its costs
through a combination of fees and funding from general tax
revenues.  The major patent fees are filing fees, and issue and
maintenance fees in a two-tier system with lower rates for small
entities.  These fees have undergone substantial increases recently
as Congress and the Administration have changed from a policy under
which applicants and patent owners paid only a portion of these
costs to one under which they pay full costs.
  (a) What impact, if any, will a system in which PTO costs are
almost entirely user-fee funded have on (1) U.S. inventors
generally, (2) on small entities, including independent inventors,
and (3) the public
  (b) What realistic and practical alternatives can you suggest,
other than user-fee funding, for funding PTO operations
  (c) Congress historically has provided fiscal oversight for the
PTO. Will this attention by Congress continue at the same level in
the absence of a significant allocation of taxpayer funds and, if
not, what other fiscal oversight is appropriate
  (d) Should the more public-oriented functions of the PTO, e.g.,
public search room operations, be funded by user fees, or should
such operations be supported by appropriated funds
  (e) Would it be desirable to increase the average application
pendency time in the PTO to a level above 18 months if such
increase permitted a significant reduction in PTO fees
  (f) What are the advantages and disadvantages of retaining a
two-tier fee structure
  (g) Should large entities subsidize small entities in a two-tier
structure, or should public funds be used to supplement small
entity fees
  (h) As part of a two-tier fee structure, what would the pros and
cons be of (1) redefining a small entity to include fewer than 500
employees, (2) providing a tax credit (e.g., 50%) in lieu of part
or all of the 50% subsidy for small entities, (3) denying 50%
subsidy benefits, on a need basis, to small entities who receive
a defined minimum (e.g., $200,000) in technology transfer fees
during the preceding year, and (4) imposing a flat (e.g., 10%)
across-the- board fee increase if this permitted the continuance
of the current small entity reduced fee structure
  (i) A major current cost of the PTO is that of automating the
search files and system.  How should this cost be recovered, if not
through fees
  (j) Is there a mechanism in the Government for long-term
investments, such as computer equipment, to be capitalized and paid
off over their useful life Would it be possible and desirable to
have such investments paid for by a bond over a period of years
(e.g., 20 years) instead of by user fees) Should the current
relation among filing, issue and maintenance fees be changed and,
if so, how
 Are there other fee strategies which will better balance the need
to recover costs and the need to keep the patent system accessible
to inventors
  (k) Should the current relation among filing, issue and mainte-
nance fees be changed and, if so, how Are there other fee strate-
gies which will better balance the need to recover costs and the
need to keep the patent system accessible to inventors
  (l) In discussions of patent harmonization, the question of
pre-issuance publication of U.S. patents has been raised.  Given
the possible reluctance of Congress to fund the costs of such
publication from general revenues, would you support such publica-
tion if its cost were totally user-funded
  Dated:  May 8, 1991.

 Harry F. Manbeck, Jr.,

 Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.

 56 FR 22702-02