From: [email protected] (Gregory Aharonian)
Subject: Patent Office Reform Panel Final Report PART1
Message-ID: <[email protected]>
Organization: The World Public Access UNIX, Brookline, MA
Date: Thu, 4 Feb 1993 14:30:39 GMT
Lines: 1794


   Last year, the Patent Office sponsored a committee to review current
patent practices in the United States.  Last fall they issued their final
report, which contains many interesting suggestions, including first to
file, software patents, excessive secrecy orders, international harmonization,
challenging patents, reexamination, excessive legal costs and other issues.

   In particular, I know that a few Congressmen are introducing legislation
this spring to switch the U.S. from first-to-invent to first-to-file.

   Also, it seems that the Patent Office library does not have any IEEE or
ACM publications, as incredible as that might seem (nor have they deemed to
buy a copy of my directory of much of the government's software, a great
prior art source).

   What follows is the text to their final report, split into five files.
A paper version of this text can be obtained from the Patent Office.  I
would like to thank Noah Friedman, Toni Emerson, Keith Berrier, Glenn Tenney,
Rahul Dhesi and Jude Wilkinson for all contributing ten dollars to help me
defray the cost of acquiring a $1.50 diskette from the Patent Office with
these files.

   Gregory Aharonian
   Source Translation & Optimization

==============================================================================


                                   PART ONE

                         HARMONIZATION-RELATED ISSUES


I.  FIRST-TO-FILE


A.  Introduction and Overview

   In the United States, when more than one patent application is filed
claiming the same invention, the patent will be awarded to the applicant who
establishes the earliest acts of invention in the United States and who has
not thereafter suppressed, abandoned or concealed the invention
("first-to-invent" system) [1].   Applicants are permitted to establish a date
of invention that is prior to the filing date in an interference proceeding
conducted in the U.S. Patent and Trademark Office (USPTO).  In contrast, in
nearly every other country  which provides patent protection, priority of
invention is established by the earliest effective filing date of a patent
application disclosing and claiming the invention ("first-to-file") [2].

   A long-standing issue in discussions on patent law reform has been whether
the United States should change its patent system to conform with the manner
of awarding priority of invention in other countries [3].  This question is
again a dominant issue in discussions regarding patent law reform due to the
negotiations designed to achieve global harmonization of the intellectual
property laws.  Specifically, in the context of the multilateral patent law
harmonization treaty negotiations conducted under the auspices of the World
Intellectual Property Organization, other nations have made it clear that
there will be no treaty unless a first-to-file method for determining priority
of invention is included [4].

   The principal issue thus presented is whether the United States should
change from a first-to-invent procedure to a first-to-file procedure (1) as a
necessary part of a global harmonization package which provides, on the whole,
advantages to United States inventors, (2) without regard to a harmonization
treaty or (3) not at all.  If a change to a first-to-file system is the
ultimate decision, questions ancillary to this decision must be addressed;
specifically, whether or not the contemplated change to a first-to-file
procedure should be accompanied by features such as a "provisional
application" procedure, a grace period and a "prior user rights" defense
to patent infringement.

B.  Summary of the Public Comments

   The issue of whether the United States should adopt a first-to-file system
provoked a substantial response from the public, as measured through the
response to the invitation of the Advisory Commission for public comment [5].
The principal objections raised to first-to-file by members of the public
included:

  -   small entities might be placed at a disadvantage in the "race to the
      Patent Office" because of limited resources to prepare and file patent
      applications;

  -   a first-to-file system might tend to foster premature and sketchy
      disclosures in hastily-filed patent applications;

  -   the possibility of theft of an invention from the true inventor could
      be increased in a first-to-file system;

  -   the opportunity to explore commercialization possibilities prior to
      filing would be reduced because of the importance of early filing; and

  -   the USPTO could be burdened with an increased volume of patent
      applications filed for defensive purposes.

  Those members of the public responding in favor of adopting a first-to-file
system raised the following points:

  -   most of U.S. industry is acting now on a first-to-file basis, even in
      the United States, to avoid forfeiture of patent rights abroad, and the
      first-to-invent system could be hurting the competitiveness of U.S.
      industry;

  -   a U.S. first-to-file system would encourage early filing worldwide, so
      that patent rights are not forfeited, and would promote the early
      public disclosure of inventions;

  -   an agreement by the United States to a harmonization treaty requiring
      a change to first-to-file could bring dramatic improvements in the
      patent systems of foreign countries for U.S. applicants seeking patents
      abroad;

  -   a first-to-file system could greatly decrease the complexity, length
      and expense associated with current USPTO interference procedures;  and

  -   the first-to-file rule would provide a definite, readily determinable
      and legally-fixed date of invention, would eliminate uncertainties
      associated with interferences and would provide greater reliability
      for U.S. patents.

   Some respondents favored adopting a first-to-file system unilaterally,
i.e., without regard to harmonization negotiations.  Others, however, proposed
adopting a first-to-file system only as a part of a global harmonization
package which provides advantages to U.S. inventors who seek patent protection
abroad.

  Many proponents of the first-to-file system approach suggested that certain
features accompany the change to preserve what are perceived to be beneficial
elements of the existing first-to-invent system. These included a procedure to
allow the filing of a preliminary or "provisional" application at low cost,
which would facilitate early filing and encourage entry into the patent system
by small entities. Many others recommended inclusion of an international grace
period to protect an inventor from his or her pre-filing public disclosure of
the invention.  In addition, several responses addressed the issue of "prior
user rights" in a first-to-file system.  These issues, particularly the
question of prior user rights, were considered extensively by the Commission
members during their deliberations.

C.   Recommendation and Discussion

Recommendation I-A

   Change the U.S. patent system to award patents to the first party to file
a patent application, as opposed to the first party to  invent, as a necessary
part of a global harmonization package which provides, on the whole,advantages
to U.S. inventors, subject to the following conditions:

  (i)   adoption of a provisional patent application procedure to facilitate
        early filing at reduced cost, allowing the inventor to claim a right
        of priority for a later-filed complete application;

  (ii)  provision of a grace period during which public disclosure of an
        invention by an inventor would not affect the patentability of that
        invention if claimed in an application filed by that inventor within
        12 months of the disclosure; and

  (iii) establishment of a personal right for a third party who develops
        and/or uses an invention in good faith, before the filing date of
        an application on which a patent is granted to another, to continue
        that use under certain conditions ("prior user right").

1.  Discussion

 From a purely statistical viewpoint there would seem to be little difference
in result between a first-to-invent patent system and a first-to-file patent
system.  More than 99.9% of the U.S. patent applications now being filed raise
no dispute as to the identity of the first inventor.  Even when such disputes
arise, the inventor who filed first ("senior party") is procedurally favored
in the highly complex interference proceeding that follows -- the senior party
prevails in a significant majority of such interferences. The actual effect of
a switch to first-to-file system of priority, thus, is likely to have little
or no actual significance in terms of inventors losing priority of invention
to other inventors, based upon these statistical findings.

   However, patents vary widely in terms of commercial importance. The public
comments, as well as the experience of many Commission members, suggest that
applications involved in interferences are almost always drawn to those
inventions that are very important commercially.  Because such inventions
are often developed to answer needs in very competitive markets, the high
stakes in such situations drive parties to engage in hard-fought priority
contests.

   Disposition of this issue in favor of the simpler first-to-file approach
was not made, therefore, on the basis of statistical evidence alone.  Rather,
the recommendations of the Commission on this point reflect a careful
consideration of several issues, and have been made while being mindful of
the concerns expressed by various users of the patent system.  For example,
many have questioned whether independent inventors, small businesses and
university inventors would be able to adjust as well as others to a
first-to-file environment.  If not, a unique and creative U.S. research and
development resource that is admired and envied throughout the world for its
leadership in the advancement of science and technology could be disadvantaged
by a change to a first-to-file system. The Commission recognizes the competing
interests and the concerns expressed by these different sectors of the patent
user community.

   The Commission's fundamental belief, regardless of which system is used in
the United States to determine priority of invention, is that only bona fide,
original inventors (or their representatives or assignees) should be able to
file for and receive patents. Protection for bona fide inventors against theft
is a feature of all first-to-file patent systems throughout the world and
would  remain a feature of any revised U.S. system.  In the first-to-file
system proposed by the Commission, inventors in the United States would be
able to retain their ability to prove derivation or "theft" of an invention
in situations where a patent application is improperly filed by or on behalf
of a non-inventor.

   The Commission feels that their recommendation to convert the U.S. system
to one that measures priority based upon the first-to-file, as a whole,
represents a favorable change for U.S. applicants, both large and small,
in terms of ease of filing, clarification of rights, and, importantly,
international competitiveness.  In formulating the package, the Advisory
Commission has considered the concerns over access to the patent system by
small entities, university researchers and independent inventors, as well as
the needs of modern businesses engaged in international competition.  The
benefits that can stem from international patent law harmonization, made
possible through U.S. acceptance of the first-to-file concept, only serve
to accentuate the potential benefits of adoption of the proposed package.

2.   Elements of the Proposed U.S. First-to-File System

   The Advisory Commission proposal consists of a recommendation to change to
a first-to-file system having three basic elements; namely,

  -   a provisional application filing system to facilitate early and
      simplified patent filings,

  -   an international grace period to avoid patent-defeating prior art
      authored or created by the patent applicant, and

  -   a limited prior user right.

   Furthermore, the recommendation to shift to the first-to-file system is
conditioned upon obtaining a favorable harmonization "package" which, on the
whole, provides a net positive benefit to U.S. inventors around the world.

   Each of the elements has been thoroughly considered in the context of the
necessity of the element, and the benefits and detriments of each element,
from the perspective of various sectors of the patent user community. Because
this proposal reflects a compromise of competing concerns, a discussion of
each of the elements which explains the element, and which reflects those
concerns is provided below.

(a)  Provisional Application

   The Advisory Commission believes that a provisional application procedure
should be adopted as an essential part of a domestic first-to-file patent
system.  Such a procedure would permit patent applicants to obtain early
filing dates with a minimum of formal application requirements, and,
importantly, at a reduced cost.  Several elements of the provisional
application as contemplated by the Advisory Commission bear mention [6].

   First, inventors should be able to file a provisional application with a
minimum of formal requirements and at a low cost. Specifically, while the
provisional application would have to satisfy the description and enablement
requirements of 35 U.S.C. 112, inventors would not have to include claims to
define the invention in order to receive a filing date for the application[7].
Furthermore, to facilitate early filing, requirements for formal oath or
declaration and for inventorship nomination would be waived for the
provisional application.8  Satisfaction of these formalities of the
application would not be required until the inventor files a complete
patent application.

   In operation, the patent applicant would have twelve months after filing
the first  provisional application to file a complete application meeting all
regular application requirements.  This could be accomplished by completing
the missing elements of the provisional application, or by simply converting
a previously filed provisional application meeting all the regular application
requirements into a complete application by paying the regular filing fee. One
or more provisional applications could be consolidated into one complete
application. Once the complete application had been filed, any earlier
provisional applications would be abandoned.

   Applicants using the provisional application scheme would be entitled to
claim priority for subject matter claimed in the complete application back to
the date of filing of the provisional application, provided the provisional
application includes a sufficient "description" of the invention, and
sufficiently "enables" the practice of the invention claimed in the later
complete application[9].  The provisional application could serve also as a
priority document for foreign applications filed within one year, as
authorized by the Paris Convention[10].  The filing date of the complete
application would serve as the basis of the domestic patent term, where the
patent term is  a fixed period measured from the filing date, as recommended
later in this report.

   There are several reasons for recommending provisional applications as
part of any change to a first-to-file procedure.

   First, the ability of parties to file early and easily is essential in a
first-to-file system.  The provisional application would provide a simple and
relatively inexpensive method to establish an early priority date for the
subject matter which it discloses.  This feature is of enormous potential
benefit to inventors of limited means, because it would give them a full year
to determine whether to proceed with the expense of filing a formal, complete
application to the invention.  In addition, early priority dates in the
United States could be used abroad both offensively (to obtain patents) and
defensively (to block patents to others), since most foreign countries would
give U.S. patents claiming priority to a provisional application a
patent-defeating prior art effect as of the filing date of the provisional
application.

   Provisional applications would also serve the useful purpose of placing
U.S. patent applicants on equal footing with their foreign counterparts who
claim priority under the Paris Convention.  The Paris Convention provides that
the Convention priority year cannot be included in the patent term[11]. Hence,
where the patent term is measured from the filing date, the starting point
must be a domestic filing date. Without a provisional application system, a
domestic and a foreign applicant could file a patent application in their
respective countries on the same date, yet the foreign applicant's
corresponding patent term in this country could expire a full year after
that of the domestic applicant, because the foreign applicant can defer filing
in the U.S. during the one-year priority period. To address this inequality,
Japan and the European countries provide systems to ensure that domestic
applicants have a one-year "internal priority" period to parallel the Paris
Convention priority year of foreign applicants.  The provisional application
system recommended would provide this "equalizing" effect to U.S. patent
applicants, by affording them a similar one-year "internal priority" period
that would not be counted in the term of a U.S. patent [12].

   While a provisional application system is recommended as part of a first
to file-system, some have argued that it is desirable to add such a system to
the existing U.S. first-to-invent system.  The provisional application would
provide a simple method to establish an invention date, by serving as evidence
of a constructive reduction to practice of an invention disclosed therein.
In addition, even under our first-to-invent system, U.S. applicants wishing
to obtain patent rights abroad must establish a priority date as early as
possible to rely upon when filing in foreign countries.  Thus, this element
merits consideration outside of the current proposal of the Commission.

(b)  Grace Period

   Long and firmly established traditions in the United States scientific
community encourage open and free communication through early publication
and dissemination of the results of scientific research.  Yet, prior public
disclosure of the substance of an invention serves as the most fundamental
bar to the ability of an inventor to obtain patent protection. The U.S. patent
laws provide a compromise to these two opposing principles through a grace
period -- an explicit right of an inventor to prevent the patent defeating
effect of an earlier publication or public disclosure of the invention for
a one-year period following the disclosure[13]. If an inventor publishes
details of the invention, and then later decides to file a patent application,
that publication will not be a bar to obtaining a patent in the United States,
so long as the patent application is filed within one year of the publication.
If a third party publishes the same invention within one year of the filing
date, the publication will not be a bar to obtaining a patent in the U.S. so
long as the inventor provides an adequate affidavit establishing that the date
of invention was prior to the disclosure.14 The grace period is, therefore,
of critical importance to the scientific community in facilitating early
dissemination of research results, while preserving the patenting opportunity
of the academic inventor for a reasonable period.

   The grace period also is essential to protect entities which have limited
financial resources for speculative patent application filing and prosecution.
Such entities must have some time after a publication or other public
disclosure to validate the commercial viability of an innovation, often
by finding a prospective licensee as a precondition to making any significant
financial commitment toward obtaining patent protection for that innovation.
The U.S. grace period helps to ensure equal access for such entities to the
benefits of U.S. patent protection, and protects against inadvertent loss of
U.S. patent rights during the initial period of testing or promotional
activities.

   The protections offered by the U.S. grace period, however, are limited.
Specifically, the U.S. grace period protects the inventor only against
pre-filing publication or other public disclosure with respect to U.S. patent
rights.  The patent laws of most other countries do not provide inventors
with a grace period. This means that pre-filing publication or public
disclosure of the invention will defeat the inventor's attempt to obtain
foreign patent protection for the disclosed invention.  Thus, foreign patent
offices will use the inventor's earlier publication as a basis for denial
of the patent grant [15].

   The absence of parallel protection for the inventor who has published or
otherwise publicly disclosed the invention abroad has caused many United
States inventors to unnecessarily or inadvertently forfeit their patent
rights in much of the rest of the world.  Because of this, U.S. negotiators
in the WIPO patent law harmonization  exercise have struggled to incorporate
an international grace period into the draft harmonization treaty.  The grace
period under consideration in the current text of the draft treaty provides a
limited grace period which extends only to acts by the inventor, or by another
party who obtained the disclosed information from the inventor[16].  Hence,
persons who publish their inventions prior to the time a patent application
is filed would be protected.  Most significantly, the treaty would mandate
that all foreign patent systems recognize an international grace period so
that such "self-created" prior art would not destroy patentability in any
country.

   The prospect of obtaining the concession on an international grace period
from other countries is a significant one.  The Advisory Commission considers
a grace period to be an essential element of any first-to-file system, and its
current absence in other systems to be a significant detriment to U.S.
inventors.  However, other countries participating in the harmonization
negotiations insist that the harmonization treaty mandate a first-to-file
system for priority.  Thus, the harmonization treaty could provide a
significant direct benefit for all U.S. inventors.

   Therefore, if the United States adopts the first-to-file system, this
Commission recommends that the United States retain a grace period during
which public disclosure of an invention by the inventor would not affect the
patentability of that invention if claimed in an application filed in an
country offering reciprocal benefits within 12 months of the disclosure.
If the first-to-invent system is retained, the current grace period under
35 U.S.C. 102(b) is preferred.

   The Advisory Commission is cognizant of two potential problems that may
arise in a first-to-file system that extends a grace period only to the
inventor's publications (a so-called "personal" grace period).  These problems
are not fatal, as appropriate measures can be implemented to prevent or
control their effects.

   The first involves a situation where a party other than the inventor
learns of an invention exposed through a grace period publication and then
files a patent application on that invention before the original inventor.
Such an action would be inconsistent with existing requirements that one
affirm that he is in fact the inventor of the claimed subject matter, a
requirement that should continue even in a first-to-file based priority
system.  Retention of the requirement for an affirmation of inventorship by
the true inventor, and provision of a forum to decide derivation issues,
whether it is the USPTO in an interference)like proceeding, or in the
courts, should suffice to address this situation [17].

   The second problem ("spoiling") occurs where someone other than the patent
applicant learns of the subject matter of the invention and prior to the
filing of the patent application publishes the information.  This would have
a patent defeating effect on the true inventor's patent application. To
resolve this potential problem, the Commission believes it would be
appropriate for the USPTO to "presume" that the second publication of the
same invention was derived from the first, and then on this presumption,
grant the patent application.  The question of whether the later publication
was in fact actually derived from the inventor's grace period publication
would be resolved only in the event that a dispute over the validity of the
patent subsequently arose,  and this resolution would occur in a forum more
appropriately suited to assess inter partes disputes, namely, the Federal
courts.  This may look at first like a "first-to-publish" system.  But in the
balancing of equities, the public would benefit from having earlier access to
the information in the publication.  In any event, the United States must
remain free to establish whatever means may be appropriate under our legal
system to curb potential abuse of inventor rights.

(c)  Prior User Rights

   The issue of prior user rights presented difficult questions that the
Commission had to address pursuant to its deliberations on the first-to-file
issue.  Under the appropriate circumstances, a prior user right will enable
an earlier user of a patented invention to raise a defense to a claim of
patent infringement.  To establish the prior user right, the prior user
must show that he independently developed the invention and began use or
substantial preparation for use of that invention prior to the filing by the
patent owner.  If the extent of pre)filing activity was sufficient, the
prior user will be permitted to continue such use despite the presence of
the patent, subject to specific limitations on the extent of that use.

   Prior user rights provisions are common in many first-to-file patent
systems[18].  Such rights commonly provide a limited defense against an
infringement claim where the prior user defendant can establish commercial
use, or substantial preparation toward such use, of the patented invention
in that country prior to the effective filing date of the patent[19]. Prior
user rights are also authorized in Article 20 of the Basic Proposal of the
WIPO Patent Harmonization Treaty draft [20].

   Prior user rights, as such, do not exist in U.S. law.  The fundamental
concept, however, is partially filled by 35 U.S.C. 102(g), which provides that
an applicant will be entitled to a patent in the United States unless "before
the applicant's invention thereof the invention was made in this country
by another who had not abandoned, suppressed, or concealed it" [21].   In
operation, this enables a prior inventor who has not abandoned, suppressed or
concealed the invention to invalidate the later filed patent of another,
thereby escaping liability for infringement.  In a first-to-file system,
section 102(g) would be inapplicable, as priority in rights to a patent
would be keyed upon filing of the patent application, rather than priority
in inventorship.  However, prior user rights, as contemplated by the
Commission and as in place in foreign systems, differ in several respects
from operation of 35 U.S.C. 102(g).  One significant difference is that the
prior user right, as it exists in foreign systems, is a personal defense.
In addition, the prior user right does not have a patent defeating effect,
as is the case under existing U.S. law.

   Prior user rights are intended to provide a degree of balance created by a
first-to-file system by providing some protection to an earlier independent
inventor [22].  The basic difficulty in providing a prior user right is
crafting the right so that it does not undercut the value of the exclusive
rights obtained through patent grant, or the desirable goal of early
disclosure of inventions stimulated by a first-to-file system.

   Advocates and opponents of prior user rights have identified several
reasons to either include or preclude such rights in a U.S. first-to-file
based patent system.  The Advisory Commission has considered the merits of
these arguments at length.  While not unanimous in all respects, the consensus
of the members of the Advisory Commission is to support the establishment of
a limited prior user right as part of a U.S. first-to-file patent system. It
is important, however, to recognize the reasons that were offered in support
of, or against prior user rights, as these reasons are grounded upon specific
concerns of the different sectors of the U.S. patent user community that would
be affected by the implementation of such a system in the United States.

   Advocates of prior user rights advance several arguments in support of a
U.S. prior user right.  They point out that prior user rights are designed to
benefit those who have independently developed, in the country having the
right, an invention in good faith before the effective filing date of a patent
application on that invention.  Hence, they note, almost every industrialized
country protects its national industry by including a prior user right in its
patent system.  Without a prior user right in the United States, foreign U.S.
patent holders could "close down" U.S. prior users, while U.S. owners of
foreign patents would remain unable to exercise those patents against prior
users abroad.  Supporters also argue that without prior user rights, inventors
may be encouraged to flood the USPTO with patent applications on numerous
minor improvements during product development [23], and that prior user rights
cases are extremely rare in countries having the right [24].

   Many proponents of prior user rights also believe there is a need to
protect secret uses from the risk of later independent invention and patenting
by others.  They argue that trade secret use of an innovation is sometimes the
best, or only, way to realize the benefit of the investment that gave rise to
it.  In such cases, it is argued, trade secret protection must be given weight
in order to protect U.S. investment. Absent any protection for the secret
user, valuable technology may be lost because of the need to disclose it to
insure its continued availability for use [25].  Supporters of prior user
rights, based on activity that was intentionally protected as a trade secret,
argue that inventors can secretly commercialize only a limited set of
inventions, mainly certain process or apparatus inventions that are not
disclosed by their products.  They also maintain that the incentive to obtain
patent protection on truly important technology, outweighs the incentive to
maintain secrecy, because relying on a prior user right, for example, would
not give an inventor any protection abroad.

   Those who oppose the right point out the inconsistency of the prior user
right, at least insofar as it protects secret use, with the disclosure
inducement theory that underlies our patent system. They argue that protection
of secret prior use against a granted patent exalts secrecy over public
disclosure.  Some opponents of prior user rights believe it is not fair to
reward an inventor who does not pursue patent protection, particularly those
inventors who intentionally conceal an invention in commercial use.  Others
argue that prior user rights could increase the need for record-keeping, the
potential for litigation, and other burdens that characterize current
interference practice.  Opponents of prior user rights are also concerned
that the prior user rights threaten the exclusivity of a patent right and
jeopardizes exclusive licensing and sale opportunities, particularly if more
than one prior user exists.

   The arguments on both sides of the issue are valid and received serious
and careful consideration.  A right too easily achieved and too broad in scope
might do grave damage to the United States patent system and severely impact
the incentive to invest in research and development.  On the other hand,
elimination of the right altogether may make a first-to-file system in this
country too harsh, and seriously injure U.S. manufacturing activity.

   The Commission believes that providing a limited prior user right to
protect the legitimate interests of industry in the United States can be
achieved without unduly detracting from the  exclusivity and marketability
of the patent grant.

   The prior user right should exist as a personal defense to an infringement
claim, and should be based upon the following elements:

(i)  Time and Place

   The right should be based only upon activity in the United States prior to
the earliest filing date to which the relevant claim or claims of the patent
is or are entitled, including a foreign priority date under 35 U.S.C. 119.

(ii)  Independent Creation

   The activity must have been done in good faith and without derivation of
the patentee, and it must have been based upon the independent development of
the person claiming prior use, or of persons who had an obligation at the time
of such development to assign or license patent rights to or otherwise share
such rights with such person.

   The key to this concept of independent creation is that the prior user
should not be able to take advantage of the patentee's pre-filing disclosures
to create the right which will subsequently be used to avoid liability under
the later-issued patent.

(iii)  Extent of Prior Activity

   The prior user right must be based upon either actual use in commerce of
the patented invention, or upon substantial material preparations for such
commercial use.  In each case it is essential that the subject matter of
the patent be the subject matter of the pre-filing use by the prior user.
Preparations for commercial use that are substantial and material should
give rise to the right, provided they represent activity toward actual
commercialization as opposed to mere plans or preliminary efforts toward
subsequent activity.

   At a minimum, the prior user must have completed an actual reduction to
practice of the invention for which the right is claimed, prior to the
patentee's earliest filing date, to claim the prior user right defense.

   The following factors, among others, should be employed to determine
whether substantial preparation for use has been proven by a potential
prior user:

  (a)   the costs incurred by the prior user as of the filing date of the
        patent, as well as the proportion of those costs to the total costs
        for commercialization of the subject matter of the prior user right;

  (b)   the amount of time required for the prior user to complete the
        preparation for commercial use after the filing date, and the
        proportion of that time in relation to the total time necessary
        to fully prepare for the prior use;

  (c)   the complexity of preparation for practicing the claimed prior use;
        and

  (d)   the diligence of the prior user in preparations for the prior use.

   The burden of establishing the requisite degree of sufficient prior use by
documentary and other objective evidence should be on the party asserting the
right.

(iv)  Scope of the Right

   The right created by prior use or preparation should be limited to
continuation of the particular activity which gives rise to the right.  In
the case of processes, this would limit the use to a continuation of use of
an identified process but would not limit the products produced or affected
by the process.  In the case of products, the right would extend to future
editions of the product only if they are not materially different from
the version of the product which gave rise to the right.  For example,
improvements  to the prior use should be permitted to the extent they do
not fall within the scope of other claims in the patent.

   The prior user should be able to reasonably expand the prior use to meet
reasonable market demands within the United States, rather than being
restricted to only the pre-filing volume of use.  In addition, the prior user
should not be restricted geographically within the borders of the United
States, as entities commonly conduct development and commercialization
activities at different sites throughout the United States.  The prior
user right will not authorize use outside the United States.

(v)  Personal Nature of the Right

   Prior user rights should be personal in nature, and should not be
transferable, except with that part of the business which exploits the right.
This is essential to preserve the personal nature of the prior user right, and
to prevent the personal right from being extended to resemble a compulsory
license-like authority to avoid liability for patent infringement that can
be transferred or licensed to others.

(vi)  Legal or Equitable Nature of the Right

   Prior user rights should be an equitable defense to a charge of patent
infringement, and at a minimum should permit continuation of use on the scale
of the commercial use undertaken, or for which sufficient preparations were
made, before the patentee's earliest filing date.  Where the totality of
circumstances make it appropriate, a court should have the authority to
assess appropriate and reasonable royalties in favor of the patentee, or to
expand the right to assure that justice is done.

(vii)  Other Elements Not Recommended for Inclusion in the Prior User Right

   The Commission, pursuant to its deliberations on the definition of the
prior user right, contemplated several other options offered for inclusion in
the prior user right proposal.  These options would address real concerns
expressed during the deliberative process of the Commission. However, the
consensus opinion of the Commission is that it would not be appropriate to
include these options in the prior user right proposal.  For completeness of
the record, these options are presented below.

(a)  Special Treatment of  Non-Manufacturing Entities

   One proposal would provide special treatment for non-manufacturing
entities in relation to the exercise of prior user rights.

   First,  it was proposed that non-manufacturing entities be excluded from
application of prior user rights, so that the prior user right defense would
not be available against a patent held by such an entity.  This, in essence,
would differentiate operation of the prior user right based upon the identity
of the patent holder.  The proposal was intended to address concerns expressed
by the university community, in particular, that prior user rights would be
of little value to universities and small entities because these groups do
not commercialize their inventions.  Indeed, because such entities rely on
licensing of patent rights to realize the value of the patent grant, such
rights could disproportionately diminish the value of patent rights for
non-manufacturing entities.

   An alternative to this proposal would create an administrative process to
be implemented through the USPTO that would determine the validity of prior
use claims and then use appropriate means to establish fair compensation to
the patentee for loss of economic value of the patent.  In this alternative,
prior users would be required to "register" their claims of prior use with the
administrative body and pay a fee for administrative costs;  otherwise, they
would forfeit the right to raise the prior use defense in subsequent
litigation involving the patent.

   The Commission ultimately rejected these proposals after thorough
consideration.  The proposed exclusion of non-amanufacturing entities was
viewed as overbroad in its scope and seen as possibly chilling
industry/university collaboration.   Even though prior user rights could
not be transferred once created, Government agencies and universities could
exercise prior user rights based upon developmental activities that were
undertaken by others through contract.  As to the proposed administrative
process, the Commission viewed this as impractical and unfairly favorable
to patent owners.   For example, under the system, competitors would be
required to alert patent owners of potential infringements and to thereby
subject themselves to patent infringement suits.  This would require a
voluntary admission of liability for infringement, and if no prior user
right is established, the entity would be unfairly prejudiced in a subsequent
judicial proceeding. Finally, as USPTO determinations are subject to judicial
review, this proposal would not remove the prior user rights defense issue
from litigation.

(b)  Bar Availability of the Prior user Right Based Upon Intentionally
    Concealed Prior Use

   Another proposal offered was to preclude availability of the prior user
right when the prior user intentionally concealed the prior use. The rationale
for this proposal was that it would be unfair to reward an inventor who
intentionally opts for secrecy rather than seeking protection through the
patent system.  Concerns were expressed that the prior user right would
inappropriately elevate secret use to the stature of protected disclosed
use as is the case with patent rights, and as such, a restriction such as
this would be necessary to make prior user rights more compatible with the
disclosure-inducement theory of the patent system.

   As proposed, this limitation would not exclude secret preparations
absent intent to conceal the invention in commercial use, since most such
preparations would be unannounced or private by virtue of their character
(e.g., behind the factory gates).  However, where an earlier inventor
intentionally conceals, or intends to conceal, the invention in commercial
use, prior user rights would not be available under their proposal.

   Of course, the prior activity on which prior user rights would be based
would by definition be secret activity because prior public disclosure by
the prior user, whether through publication or public use, would have a
patent-defeating prior art effect on a subsequently filed patent application.
This is because any earlier public disclosure of an invention by someone other
than the inventor would bar the patent grant to the later patent applicant.
The grace period, personal to the applicant, would not enable the patent
applicant to escape the patent defeating effect of prior art or public
disclosure of another.

   A majority of the Commission rejected this limitation, maintaining that
such a limitation could create, in effect, a "compulsory patenting" system,
forcing the disclosure of trade secrets [26].  Trade secrets are often the
only practical form of protection for certain inventions.  For example, it
is often impractical to file for patents to minor process improvements, and
difficult to enforce such patents abroad.  Furthermore, in substance, the
distinction between intentionally concealed secret use versus unannounced
secret use amounts is non-existent.  In both cases, the effect is that the
information is not generally known to the public, cannot be used by others,
and will not serve to preclude the grant of patent rights by another.  Also,
no other country having prior user rights imposes such a limitation.  Finally,
this limitation would require proving intent with regard to development
activities.  This will not only prove to be difficult, but will impose
significant burdens through additional litigation costs and delays [27].

(c)  Legal Rather than Equitable Prior User Right

   A third proposal was to craft the prior user right as a legal defense,
rather than as an equitable defense.  Doing so would make the prior user right
an absolute defense to infringement, once the elements of the right were
proven by a sufficient showing of the prior user.  As a legal defense, the
court would retain limited discretion to set the conditions of exercising
the right.

   Some of the reasons offered in support of a legal prior user right focus
on the desirability of simplifying the process of defining the prior user
right.  For example, giving the court the authority to assign royalties may
create unpredictability and unnecessarily  complicate the prior user right.
In addition, rigidly enforced prerequisites to establishing the prior user
right, including the requirements of independent innovation and actual
reduction to practice, will ensure that the right is rarely invoked, and
if invoked, sustained only where truly merited.

  Other reasons cited were the potential for creation of anomalous situations
between U.S. and foreign markets.  For example, facing the possibility of
paying royalties only in the domestic market, domestic manufacturers may build
plants overseas where valid prior users do not face the threat of being forced
to pay compensation to patentees who file for and obtain their rights after
the manufacturer has begun substantial use of the innovation.  Also, no
compensation is currently available abroad for U.S. owners of foreign patents
by foreign prior users.  In the U.S., however, prior users could be forced to
pay compensation to owners of U.S. patents, yet nearly 50% of such owners are
foreign.

  The majority of the Commission, however, believes that the prior user right
should be equitable in nature, giving the courts power to assess royalties as
well as to expand the prior user right, to ensure that justice is done.  The
majority of members believes that, as with intervening rights in reissue
situations, courts should have broad equitable powers with respect to prior
user rights, to make decisions that are situation specific, balancing the
right of the patent holder with fairness to the prior user.

(viii)   Dissent Position

   One Commission member has voiced a strong dissension on Recommendation
I-A (iii).  He believes that the recommendation would undermine the value
of patent rights to the non)manufacturing sector, exalts secrecy over public
disclosure, increases the economic burden of enforcing one's patent rights,
and reduces the incentive for licensing and investment.

3.  Considerations in Formulating the Proposed Package

(a)  World Practice

   The current first-to-invent system may actually be harming the
competitiveness of U.S. interests by not sufficiently encouraging U.S.
inventors to file promptly.  Except for the United States, Jordan and the
Philippines, all other countries having patent systems use the first-to-file
rule in awarding priority between competing patent applications .  Even when
an inventor who did not file first is able to prevail in an interference
contest and obtain U.S. patent rights, that inventor will most likely lose
such patent rights worldwide to those filing first, either here or abroad.

   For many users of the U.S. patent system, filing practices would be
unchanged by adoption of a first-to-file procedure.  U.S. inventors with
global commercial interests must behave now as though the U.S. system was
first-to-file to preserve their rights abroad.  Parties who do not adopt this
approach commonly forfeit their rights abroad through pre-filing disclosures.
Furthermore, foreign entities, which account for slightly less than half of
all U.S. patents, are, in fact, already in a first-to-file mode due to
practices in their home countries.

   It is also useful to consider that Canada successfully replaced its
first-to-invent system with a first-to-file system in legislation that took
effect in 1989, and legislation to introduce a first-to-file system is
currently pending in the Philippines.  Canadian government officials have
noted that they did not experience any of the negative consequences that
some predicted would follow the adoption of a first-to-file system.

(b)   Premature Filings

   A first-to-file system will encourage early filing of patent applications
in the United States, because delays in patent application drafting and filing
risks preemptive filing by others in almost every other country in the world.
Rather than being detrimental, early filing of patent applications would
benefit the public.  Together  with early publication of patent applications,
a first-to-file system would accelerate the innovation process by promoting
early disclosure of inventive activity, timely dissemination of patent
information, and avoidance of unnecessary research.

   One concern that has been expressed is that better written, more thorough
patent specifications are a significant benefit of the first-to-invent system,
and that this benefit would be lost in a first-to-file patent system.  The
theory is that a patent applicant in a first-to-invent system has more time
to develop and refine the invention prior to filing, as well as more time to
prepare the application.  This theory, however, is flawed, given the practical
realities of requirements for rapid filing in order to avoid loss of patent
rights, both domestically and overseas.

   Furthermore, this concern can be addressed fully by implementation of a
provisional application system, which will enable inventors to file early,
preserve their right of priority to the invention, and then enjoy a full year
to complete the requisites of a complete application.  In fact, a system which
provides this one-year period after establishment of priority should make it
easier, rather than more difficult, to provide thorough and complete patent
applications prior to the examination of those applications.  Finally, the
requirements for full written description and enablement of the claimed
invention will continue to apply in the same substantive manner in any
U.S. first-to-file system.

(c)  Record Keeping and Diligence

   Non-commercially oriented scientific research entities have argued that
they would suffer a disadvantage from loss of equal and assured access to the
patent system if a first-to-file system is adopted in the United States, even
if a provisional application procedure is provided.  Under a first-to-file
system, the argument continues that academic researchers would be likely to
use journal articles as the basis for provisional applications.  The content
of such articles is often governed by the editorial policy of a journal, and
as such, journal articles are typically cast in a very conservative tone. This
is in contrast to the current practice, where the academic inventor, with
thorough records and diligence, can establish priority of invention not simply
on the very sparse content of a scientific publication but on underlying
experimental evidence which potentially may be of a far greater scope,
evidence of invention which under the proposed first-to-file system would not
be relevant for purposes of priority of invention.

   However, the public comments and a judicial holding involving a university
inventor suggest that inventors who are unfamiliar with interference practice
are relying upon misperceptions about the legal requirements for an adequate
"conception" of an invention[28].  In order to satisfactorily prove a
conception, the documentation of conception must be deemed "complete" (i.e.,
it must include operable means), conception must be independently
corroborated, and, most significantly, it must be coupled with continuous
activity ("diligence") toward reducing an invention to practice.  It may be
unrealistic to assume that researchers could more easily learn how to augment
a journal article for purposes of filing a broader-oriented provisional
application than learn the intricate requirements of current interference
practice.

   Furthermore, the first-to-file system would greatly reduce the need for
extensive, time-consuming and detailed record keeping.  This in turn will
provide much greater certainty in rights than exists under the present system.
For example, the number of patent applications that actually become involved
in a priority of inventorship contest is only a fraction of one percent. Yet,
to protect against the remote possibility of such a contest occurring,
inventors must keep detailed records on all inventive activity.  This requires
significant time and expense commitments.  Moreover, inventors unfamiliar with
the patenting process, especially small concerns who do not have the resources
of their larger and more experienced competitors, are disadvantaged in that
they are not familiar with the type of records that will be effective in
proving prior inventorship.  This leads to extensive efforts of such inventors
to document their dates of conception, and subsequent frustration when these
inventors discover the very difficult and highly technical legal requirements
for establishing priority of invention under existing interference practice.
Thus, much record keeping today is not only burdensome, but futile, as it
engenders a false sense of security for many patent applicants who have
not had actual experience in an interference.

(d)  Certainty

   The first-to-file system including a provisional application procedure
would result in greater reliability of U.S. patents.  This system will
substitute a fair, simple and inexpensive means by which priority of
inventorship for the delays, complexity and expense of interference
proceedings.  Further, it would reduce the time and expense of establishing
an inventor's right of priority, both domestically and world wide, as the
patent application filing date is the best way of establishing this priority,
worldwide, and without the uncertainties posed by the U.S. interference
practice. This proposal represents a substantial step toward the highly
desirable objective of a definite, readily determinable and legally fixed
date of invention, available to  all inventors irrespective of their means.
Thus, uncertainty would be replaced by certainty.

(e)  Harmonization

   Acceptance of a first-to-file system would enable the United States to
obtain needed improvements in the patent systems of foreign countries through
conclusion of a favorable patent law harmonization treaty.  For example, as
discussed above, most foreign countries do not provide a grace period. Hence,
publication or other public disclosure by an inventor before filing can lead
to loss of patent rights abroad.  A patent law harmonization treaty would
require countries to provide an international grace period to protect
inventors against their own disclosures prior to filing for a patent. Foreign
countries are clearly unwilling to make this and other important changes
sought by U.S. interests unless the United States agrees to adopt a
first-to-file system.

   If the United States retains the first-to-invent system, the Commission
believes that the United States should not take a partial step toward
harmonization by permitting applicants to establish dates of invention by
reference to inventive activity in foreign countries.  Stated otherwise, if
the U.S. retains its first-to-invent system, it should also retain 35 U.S.C.
104, which does not permit a party to introduce evidence of inventive activity
that took place outside the U.S. to establish priority of invention during an
interference proceeding. The Commission is aware that this position is in
conflict with the non-discrimination provisions of Article 27(1) of the
current draft of the GATT Trade Related Aspects of Intellectual Property
Rights (TRIPs) agreement, as published on November 20, 1991.

   To some foreign inventors, 35 U.S.C. 104 appears to favor U.S. inventors
during interference proceedings.  Yet, if the United States retained
first-to-invent system, and changed 35 U.S.C. 104 to permit introduction of
evidence of foreign activities relating to conception, diligence and reduction
to practice, there would remain a lack of substantive support for such
evidence.  Furthermore, it would be difficult to implement such a rule
procedurally, even if it did find favor on the merits.  Were 35 U.S.C. 104
to be removed from U.S. law, U.S. inventors could lose patent rights to
foreign inventors, and could be subject to vastly increased invalidity
defenses based on prior foreign conceptions of patented inventions.  Even
in those situations where patent rights were not actually lost, the cost
of both making a patent defense and pursuing a patent invalidity attack
will be substantially increased.

   Moreover, eliminating Section 104 would make early filing dates of
paramount importance to U.S. inventors in a first-to-invent system.  One of
the alleged advantages of the current first-to-invent practice in the United
States is that the filing of patent applications can be delayed until the
inventor's continued development justifies the effort and expense.  Regardless
of the accuracy of this asserted advantage, it would be greatly diminished in
a situation where every inventor -- U.S. or foreign-based -- has an equal
opportunity to demonstrate a pre-filing invention date.  If first-to-invent
practice continues in the United States, but without the protection afforded
U.S. inventors by 35 U.S.C. 104, U.S. inventors will continue to bear
the burdens associated with the first-to-invent system, and the "pseudo
first-to-invent" system that remains will become more functionally a
first-to-file system.


II.  PATENT TERM

   The patent term in the United States is currently 17 years from the date
of patent grant [29].  In contrast, many industrialized nations provide a
20-year patent term measured from the filing date of the application.  This
reflects a strong international trend which many countries, including those
which currently have far shorter terms, are now contemplating as part of an
overall reform of their patent systems (e.g., eastern European countries,
Mexico, Russia, and Thailand).  A patent term of twenty years from filing date
is also called for in drafts of the WIPO Harmonization Treaty (Article 22) and
the GATT TRIPs agreement (Article 33 of the "Dunkel text").

   The 1966 Presidential Commission on the Patent System included a
recommendation that "[t]he term of patent shall expire twenty years after
its earliest effective U.S. filing date".   The 1966 Commission outlined
certain adverse effects of a term measured from grant.  For example, they
explained that a term measured from grant encourages deliberate delays in
the prosecution of applications, adding that parties could file continuing
applications solely to delay the start of a patent term.   They reasoned that
adoption of a term measured from filing would remove any incentive for parties
to intentionally delay the issuance of patents.  In addition, the 1966
Commission observed that measuring the patent term from the filing date
would bring U.S. practice into closer conformity with most foreign systems.

   Critics of the current U.S. scheme of measuring patent term from grant
have cited cases in which a patent remains in force for an extended period in
the U.S., while counterparts of that patent have expired in the rest of the
world.   Thus, the U.S. patent acts to bar only American companies from
exploiting the patented invention, while foreign companies are free to use
the invention outside the U.S.

   Another problem, although infrequent, is the so-called "submarine" patent.
These are patents on basic procedures or products of technology filed shortly
after development of the technology which then issue long after an industry
has been established in that technology.  These patents may have serious
detrimental effects on established industries when they "surface",
particularly when the patent covers basic elements of the technology [30].

B.  Public Comments

   Several responses supported changing the patent term to a fixed term from
the filing date, with 20 years being the commonly suggested term.  Some
proponents suggested that this change be made in the context of patent law
harmonization, and others recommended that it be undertaken unilaterally.

   The following disadvantages with the present system of measuring from
grant date were noted:

  (1)   the problem of "submarine" patents issued long after filing due to
        delays in prosecution, interferences, continuation practice, and
        appeals;

  (2)   expiration of patents abroad long before their expiration in the
        United States, which could encourage competitors to build plants
        abroad and could harm consumers;

  (3)   without provisional protection in the United States, an applicant
        has no remedy against "infringers" prior to grant, which can be
        troublesome if a foreign counterpart application is published, but
        the U.S. grant is delayed; and

  (4)   in some cases, the present term of protection (17 years from grant)
        can be shorter than a term of 20 years from the filing date.

   Those who responded in favor of the present term measured from the grant
date pointed to the certainty as to expiration date of patents under this
system, and noted potential loss of patent term for extended delays in patent
prosecution.

C.  Recommendations and Discussion

   Recommendation II-A

   Change the term of patents from 17 years from the date of grant to a term
   of 20 years from the date of filing of the complete patent application as
   part of a first-to-file system.

   The primary benefit to patent applicants of measuring the term of a patent
from its date of grant is that the applicant does not lose part of the term
due to delays in prosecution, whether due to the activities of the applicant
or to circumstances beyond the applicant's control.   While the individual
applicant may benefit through this type of patent term, the public generally
is placed at a disadvantage.  For example, a patent term measured from date
of issuance provides no deterrents for intentionally prolonging prosecution.
Furthermore, there is a much greater risk of so-called submarine patents which
stem from a long series of successive, related patent applications.

   The public benefits most when the patent term is measured from the filing
date since this encourages an applicant to cooperate with the Patent and
Trademark Office in reducing pendency time.  It also avoids the disruption
to commerce that occurs when patent rights, appropriate for granting in an
earlier era, are granted at some later date.

   Recommendation II-B

   Where a patent is granted on an application which invokes one or more
   earlier domestic complete applications, the term of the patent shall
   be counted from the filing date of the earliest)filed complete
   application invoked in the subsequent application.

   By switching to a system which measures the term of patents from their
filing date, the United States can eliminate one potential source of abuse
of the patent system; namely, the use of successive continuing applications
to prolong prosecution and delay the grant of patents.  This will ensure
that no benefits accrue to the patent owner who chooses to delay, either
intentionally or through use of accepted administrative procedures, the
issuance of a patent.

   This recommendation will eliminate the uncertainty related to patent term
where a patent claims priority to a number of earlier applications.  Where a
patent claims priority to one or more earlier domestic complete applications,
the term of the patent is measured from the filing date of the earliest-filed
application invoked in the subsequent application.  This rule would apply to
all forms of continuing applications -- continuation, continuation-in-part,
and divisional applications -- whose term would be measured from the filing
date of the complete parent application.  If a provisional patent application
system is also adopted, the term should be measured from the filing date of
the first complete, non-provisional application filed [31].

   Recommendation II-C

   Address exceptional circumstances in the following manner:

   (i)   provide no extensions for administrative delays, such as appeals;
         however, such proceedings should be handled expeditiously;
   (ii)  maintain existing provisions for patent term restoration under
         35 U.S.C. 154-156 for delays due to the Federal regulatory approval
         process;

   (iii) permit extension of the term of any patent whose grant has been
         delayed by the imposition of a secrecy order for a period equal
         to the period of the delay, up to a maximum of five years, and
         amend 35 U.S.C. 183 to provide compensation for the period of
         delay, if any, which exceeds five years.

   The Commission recognizes that certainty associated with the duration and
expiration of patents is an essential component of an effective patent system.
Yet, in certain extraordinary circumstances, equity demands action to remedy a
loss of patent term due to forces outside the control of the patent owner.
Congress has already designated one class of situations as deserving of this
exceptional remedy; namely, loss in patent term due to the regulatory review
process for patented new drugs [32].  In doing so, Congress recognized that
the extension of patent term was to be available for only exceptional
circumstances, and not for routine administrative delays during patent
prosecution.  Given the strong public interest in preventing the extension
of the patent term past a reasonable period after disclosure of the patented
technology, Congress has indicated that the appropriate maximum extension is
five years [33].

   It is important to emphasize that in a system which measures term from the
date of filing, there will be a strong pressure on applicants and the USPTO to
rapidly and efficiently conduct examination of patent applications.  Where
issuance of a patent is delayed through the appeal process, whether internally
at the USPTO or through further appeals in the Federal court system, a loss of
several years in the patent term may result.  However, given the fact-specific
considerations in each prosecution history, these types of delays should be
treated as reasonably expected administrative processing delays.  Time lost
during the appeal process cannot be viewed as an exceptional circumstance
because the appeal process is an integral element of the administrative
processing of patent applications.

   There is, however, a new class of circumstances beyond the control of a
patent owner which would lead to a loss of effective patent term in a system
measuring term from filing date -- loss of term due to imposition of a secrecy
order.  It is often difficult for a patent owner to predict when a secrecy
order will be imposed on an application, and almost impossible to predict
how long such an order will remain in effect.

   Under current law, secrecy orders can postpone the start of the patent
term but do not decrease the term of a patent. This postponement can adversely
affect the patent owner by causing him/her to miss the peak time of commercial
importance for the invention.  In such cases, the only remedy is a petition
for compensation under 35 U.S.C. 183 "for the damage caused by the order of
secrecy".  Although records of such petitions have not been studied, it seems
unlikely that this is a very effective remedy, particularly where the damage
includes loss or postponement of foreign rights.

   There are other situations where a delay in the issuance of a patent
can subject unsuspecting users of a technology, having made substantial
investments, to a patent infringement action once the patent issues.  Such
patents are colloquially referred to as "submarine patents", and the public
usually has little redress under the current patent system.

  Where the term of a patent is measured from the filing date, secrecy orders
could, in extreme cases, eliminate the entire term of a patent.   For the
majority of cases, however, secrecy orders last less than five years.  A
balance between the desire to prevent an unreasonable diminishment of a patent
term, and the goal of avoiding  creation of "submarine patents" is necessary.
For this reason, the Commission recommends adopting patent term restoration
provisions for patents which have been subjected to secrecy orders.  Thus,
owners of patents which have been subjected to secrecy orders would be able
to seek extension of the term of their patent to recover the actual time
lost, up to a maximum of five years.  This tracks in principle the compromise
reached in the case of patents on pharmaceuticals subject to regulatory
delays.

   Despite the similarities, patent term lost due to imposition of a secrecy
order differs in two significant respects from term lost to delays in the
regulatory approval process.  First, in the case of a secrecy order, no patent
issues until the order is lifted.  In the case of pharmaceuticals going
through the regulatory review process, the affected party actually has patent
rights, albeit diminished in commercial value.  Thus, the party subject to a
secrecy order not only loses potential sales but also the ability to use a
patent to generate crucial investment commitments and establish a market
advantage.  Second, secrecy orders are imposed and remain in effect through
a process in which the patent applicant has little or no role.  Thus, patent
applicants can do little other than petition to have the secrecy order
withdrawn.  They are not intricately involved in this process, as they are
in the FDA review process during new drug approval.

For these reasons, the Commission considers that some measure of compensation
should be provided as an extra measure of relief where a secrecy order has
been in force for more than five years.  The Commission believes that the
right to compensation currently provided by 35 U.S.C. 183 continue to be
available, but only for  periods of delay in excess of five years.  For
periods less than five years, term extension is considered adequate
compensation.


III.  PUBLICATION OF PATENT APPLICATIONS

A.  Introduction and Background

   In the United States patent system, patent applications are held in
confidence by the USPTO and not published until a patent is granted.[34].
Patent rights begin on the date of grant.  The Japanese and European patent
systems provide for publication of patent applications 18 months after their
effective filing dates(prior to grant),and feature provisional protection[35].
The subject of publication of patent applications is under consideration in
the WIPO Patent Harmonization negotiations [36].

   The principal issue addressed by the Advisory Commission was whether the
United States should publish patent applications prior to grant of a patent.
The Commission also addressed the related issues of mode and timing of
publication, plus what, if any, provisional protection should be afforded
the patentee during the period from publication until patent issuance.

B.  Summary of Public Comments

  The public response varied considerably on the subject of early publication
of patent applications.  Some members of the public oppose adoption of
automatic publication unless undertaken as part of a harmonization package,
while others favor unilateral adoption of an early publication system.
Responses were similarly split as to the timing of early publication, with
some preferring publication at 18 months from the earliest filing date and
others expressing support for 24 months.  Most respondents suggested that
provisional protection would be a necessary component of any early publication
system.  Several members of the public expressed support for an "accelerated
publication on request" option, and some responses urged adoption of an
accelerated  examination system.

C.  Recommendation and Discussion

Recommendation III)A

  (i)   Publish patent applications within 24 months from the earliest
        priority date claimed by the applicant, including the date of
        filing a provisional application.

  (ii)  Publication should take the form of laying open to public inspection
        of the specification and claims of the patent application, as well
        as the search report when available, and should be accompanied by
        publication of an abbreviated format of the application.

  (iii) Give patent applicants a claim for compensation from an infringer of
        published claims which later issue in a patent where the infringer
        has been given written notice during the period after publication;
        the claim will entitle the patent owner to compensation for the
        period from the date of actual notice until issuance of the patent.

  (iv)  Permit applicants, through the payment of  a special fee, to request
        an accelerated examination by the USPTO and/or publication of the
        application prior to the 24th month.

  (v)   Urge the USPTO to issue first actions on the merits on patent
        applications in time to permit applicants to decide, with that
        knowledge, whether to abandon their applications without publication
        or to proceed with prosecution of their applications.

   While the Commission discussed the publication of patent applications as
part of a comprehensive system to harmonize the world's patent laws, the
specific wording of the recommendation is not predicated on a harmonization
treaty.

(1)  Rights of the Applicant and the Public

   One traditional right of U.S. patent applicants has been to keep patent
applications confidential until the date of patent grant.  This has allowed
applicants to retain trade secret protection for the invention until the
patent issues and is disclosed to the public.  The applicant also gains
knowledge about the extent of patent coverage that will be forthcoming prior
to disclosure of the invention to the public.

   While these benefits clearly are attractive for the individual patent
applicant, they have an opposite effect on the public in general.  Early
publication of pending patent applications would primarily benefit the public,
because it would accelerate access to information contained in the patent
disclosure, and will permit identification of potential patent conflicts
sooner.  These benefits would, in turn, speed technological progress by
providing useful information to the public at an earlier stage after its
discovery.

   The optimum balance is believed to be struck by having an efficient patent
granting process which takes less than two years to complete examination,
coupled with automatic publication at some fixed time after filing to account
for the cases where prosecution time is extended beyond two years from the
earliest effective filing date.  In order to make an informed decision
on whether to disclose the technical innovation described in a patent
application, however, the applicant needs a first office action on the merits
at least three months prior to publication.  This would permit the patent
applicant to make a decision to abandon the application without publication
if the likely scope of protection, if any, is deemed by the applicant
insufficient to justify a public disclosure of the applicant's development.
Of course, where an applicant's counterpart application abroad is published,
that applicant would have no equity to keep the U.S. application secret or
to avoid its publication in the United States.

   The fixed time to publication in many other patent systems around the
world is set at 18 months from filing. This time frame would require the USPTO
to issue a first Office action on the merits within 15 months from the
earliest effective filing date if three months are given to applicants to
make an informed decision on whether to proceed with prosecution of the
application or withdraw prior to publication.  It is unlikely that the USPTO
will be able, in the near term, to meet this time period for a number of
patent applications.  Also, U.S. applications based upon foreign applications
and filed 12 months from the priority date would require a special/accelerated
examination procedure since there would only be six months remaining in the 18
month period for publication.  Publication at 18 months would thus have the
undesired effect of giving examination priority to U.S. applications based
on foreign-originated applications generally having foreign inventors, ahead
of U.S. applications filed originally in the United States and generally
having U.S. applicants.

(2)  Cost Considerations

   Cost is another important factor influencing the decision to recommend
publication at the maximum period now contemplated in the proposed
harmonization treaty (i.e., 24 months) rather than at 18 months.  Deferring
the time for publication will lead to a greater proportion of patents not
requiring publication prior to grant.  At 24 months, for example, a much
larger proportion of pending applications will have been fully examined and
issued, and as such, will not need to also be published as a pending
application.  It has been estimated that 50% of patent applications would
fall in the already issued category if the period were 24 months.

   Cost considerations also favor printing titles or abstracts only, and
making the identified patent application files available for copying by
interested parties.  Studies by the USPTO indicate that early publication
at 24 months would add approximately nine million dollars per year to USPTO
operational costs [37].  It may be that full early publication will become
practical only after electronic access to pending applications, now in the
planning stage, becomes a reality [38].  Electronic access would not only
trim USPTO costs, but also offers the promise of lower costs to users of
the early publication procedure.

(3)  Provisional Rights

   The Commission recommends that applicants be given provisional patent
protection in the form of a right to reasonable compensation from infringers
of finally issued, previously published, claims with actual notice.
Provisional patent protection should not result in any loss of existing
patent rights.  In particular, there should be no room for speculation that
such provisional rights will be accompanied by a form of compulsory licensing
of interim infringers for the period after the patent issues or that the
patentee's subsequent rights under the issued patent to exclude infringers
from practicing the invention are in any way diminished.

   If the provisional patent application procedure is adopted as proposed in
the first-to-file recommendation, the later complete application would be
published within 24 months from the earliest claimed filing date, whether a
foreign patent application filing date or a provisional application
filing date.  In the case of a special fee paid for accelerated
publication/examination, publication should occur within six months
from the date when such a fee was paid.

   The Commission is unanimous in the general recommendation that an early
publication procedure be adopted in the United States for patent applications.



IV.  IN RE HILMER

A.  Introduction and Overview

   Under current U.S. law, a U.S. patent may be used as prior art for both
novelty and obviousness purposes [39], upon the grant of the patent, with the
prior art effect being retroactive only to the earliest effective filing date
in the United States, and not to the foreign filing date.  This is commonly
known as the "Hilmer rule" [40].

   The WIPO Draft Patent Harmonization Treaty would require countries to
consider a patent application as prior art from the earliest effective filing
date, including the foreign priority date, for matter contained in both
applications, if that application is later published [41].  The Draft Treaty
would require that countries provide this prior art to such applications for
determining novelty, and could optionally also use them for purposes of
determining obviousness under Article 13.

 In the European Patent Office, a patent application which has been published
is effective as a prior art reference as of its earliest effective filing
date, including foreign priority dates, for novelty purposes only, and not
for determining the "inventive step" (obviousness) of such later filed
applications [42].

   The Japanese also give patents a prior art effect retroactive to the
foreign priority date, for purposes of novelty only [43].  However, Japanese
Patent Office interpretation of novelty in this regard is said to be something
beyond "identical", but not as far as obviousness.

The questions before the Commission are:

  (1)   should U.S. patent applications be given a prior art effect as of
        their earliest effective priority dates, including foreign priority
        dates?

  (2)   if so, should such applications be given the prior art effect for
        purposes of novelty only, of both novelty and obviousness, or of
        a standard somewhere in between these?

B.  Summary of the Public Comments

   The members of the public responding to this issue held widely divergent
views on which little consensus could be discerned.  Each of the options for
changing the "Hilmer rule" discussed below was favored by a portion of the
respondents.  The various suggestions and arguments presented in the responses
are reflected in the discussion of these alternatives which follows the
recommendations.

C.  Recommendations and Discussion

   Recommendation IV-A

   (i)   If the U.S. retains a first-to-invent system, the "Hilmer rule"
         should be maintained "as is".  The U.S. should only change the
         "Hilmer rule" in the context of a global harmonization package.

   (ii)  If first-to-file is adopted as part of harmonization, U.S. patents
         and published U.S. applications should be applicable as prior art
         references for novelty as of their earliest effective filing date
         (foreign priority date), and for both novelty and obviousness as
         of their U.S. filing date (including filing date of provisional
         application).

   (iii) Whether or not the U.S. adopts a first-to-file system,  if
         publication of applications is adopted, the applicability of a
         prior-filed U.S. application as prior art should occur when the
         U.S. application either issues as a U.S. patent, or is published,
         whichever occurs first, whether or not the "Hilmer rule" is changed.
         The earliest U.S. filing date should be the effective date for
         prior art purposes.

   Outside of academic circles, little attention has been given to the
"Hilmer rule" in the United States patent community in the more than two
decades of its existence.  Impetus for change in the "Hilmer rule" developed
during the negotiations on patent law harmonization, in which the United
States has been urged to harmonize its definition of prior art with respect
to senior-filed patent applications with other countries, particularly the
countries of Europe and Japan.

   Change in the "Hilmer rule" would open up an additional one year of prior
art because those U.S. applications claiming foreign priority would be
effective as prior art references up to one year earlier against pending
applications [44].  Hence, changing the "Hilmer rule" would allow such
foreign-originated U.S. applications to "knock out" more U.S. patent
applications, whether themselves U.S.-originated or foreign-originated, than
is presently the case.  The effect would be fewer patents being granted in
the U.S.

   For these reasons, we support changing the "Hilmer rule" only in the
context of a patent law harmonization package, which, on the whole, provides
advantages to U.S. inventors, in our first recommendation (i) above.

   The second recommendation specifies the particular prior art effect that
U.S. patents and published U.S. patent applications should be given in a
first-to-file system.  This recommendation represents the preferred choice
among several options, each of whose advantages and disadvantages were
carefully considered by the Commission.

   The following two alternative approaches were considered to have greater
disadvantages than the recommended approach:

Novelty-Only Approach

   U.S. patents and published U.S. applications should be applicable as
   prior art references for novelty purposes only as of their earliest
   effective filing date (foreign or domestic priority date), and for
   obviousness as of their publication date.

Novelty-and-Obviousness Approach

   U.S. patents and published U.S. applications should be applicable as
   prior art references for both novelty and obviousness, as of their
   earliest effective filing date (including foreign priority date and
   domestic priority date to a provisional application).

   The recommended approach has advantages over these alternative approaches,
because it minimizes the effect of making an extra year of prior art available
while giving foreign-originated U.S. patents and published applications a
prior art effect for novelty purposes as of their foreign filing dates.
The recommended approach would permit fewer patents which are only obvious
variants of each other to issue than under a novelty-only approach, because
U.S. patents could be cited for obviousness purposes as of the U.S. filing
date, rather than the publication date.  In addition, the recommendation
would reduce the need for reviewing priority documents, as compared with a
"novelty-and-obviousness" approach, because the number of novelty rejections
is typically a fraction of the number of  obviousness rejections.  Finally,
foreign applicants would be permitted to obtain a prior art effect as of
their earliest filing date for purposes of both novelty and obviousness by
filing a U.S. provisional application filing.

   The Commission also considered a proposal to adopt a new standard of
patentability somewhere between novelty and obviousness in the context of
discussing what prior art effect should be given to senior-filed patent
applications upon their publication.  This approach was solidly opposed
because of the inherent uncertainty involved in the definition and
implementation of such a new standard.  The concepts of novelty and
obviousness are well-developed in U.S. patent law, and to adopt an altogether
different standard would create an enormous potential for unnecessary
litigation.

   The Commission carefully considered the advantages and disadvantages
associated with each of the alternatives outlined above, and believes the
recommended approach to be optimal if current practice is to be changed
with regard to a harmonization treaty.

   The third recommendation of the Commission on this issue clarifies that,
should the U.S. adopt publication of patent applications, then the published
patent applications should be given prior art effect as of their filing dates,
whether or not the "Hilmer rule" is changed.  Under this recommendation,
published U.S. patent applications would be treated in the same manner as
U.S. patents for prior art purposes.





NOTES FOR PART ONE

[1]   35 U.S.C. 102(g) provides:
     A person is entitled to a patent unless --

     (g) before the applicant's invention thereof the invention was made in
     this country by another who had not abandoned, suppressed, or concealed
     it.  In determining priority of invention there shall be considered not
     only the respective dates of conception and reduction to practice of
     the invention, but also the reasonable diligence of one who was first
     to conceive and last to reduce to practice, from a time prior to
     conception by the other.

[2]   Other than the United States, only Jordan and the Philippines retain
     the first-to-invent system, and legislation introducing a first-to-file
     system is pending in the Philippines.Canada replaced its first-to-invent
     system with a first-to-file system in the Canadian Patent Act of
     Nov. 19, 1987, effective Oct. 1, 1989.

[3]   The first-to-file issue has been the subject of debate for over 25
     years.  For example, the 1966 Presidential Commission on the Patent
     System addressed this precise question, and recommended that the United
     States adopt a first-to-file system.

[4]   While the principal forum for negotiations is the WIPO patent law
     harmonization negotiations, efforts to establish a first-to-file rule
     of priority as the norm were made by other countries during the
     negotiations on the Trade-Related Aspects of Intellectual Property
     (TRIPs) in the General Agreements on Tariffs and Trade (GATT).

[5]   The number of responses addressing this issue was second only to the
     number of responses addressing the question of protection of computer
     program-related inventions.

[6]   Our recommendation of a provisional application procedure expands upon
     a proposal in the 1966 Report of the President's Commission on the
     Patent System, which states:

         A preliminary application may be used to secure a filing date
         for all features of an invention disclosed therein, if the
         disclosure subsequently  appears in a complete application.
         Requirements as to form shall be minimal and claims need not be
         included.

         One or more preliminary applications may be consolidated into
         one complete application filed within twelve months of the
         earliest preliminary or foreign application relied on.

     In its report, the Presidential Commission noted:

         Under this recommendation an applicant would file a written
         description of his invention in a preliminary application, a
         document with minimal requirements as to form and needing no
         claims.  This would permit early filing of an application, since
         it could be prepared by someone having little knowledge of patent
         law and procedure.  Applicants should be made aware, however,
         that the protection afforded by the preliminary application will
         greatly depend upon the adequacy of the disclosure contained
         therein... .

         Each claim in the complete application would be entitled, for
         the purpose of overcoming prior art, to the date on which its
         supporting disclosure was first fully presented in a validly
         asserted foreign, preliminary or earlier complete application... .

         The preliminary application technique would create no significant
         burden for the Patent Office.  Preliminary applications need
         only be stamped with their date of receipt and stored pending
         the filing of a complete application, and even then would only
         be considered if the effective date of the complete application
         was brought into question.

         The Commission's recommendation further delineates the proposal
         of the 1966 Commission on the Patent System.  Minimizing the
         formal requirements for provisional applications would facilitate
         their earliest possible filing, and therefore maximize their
         benefit.

[7]   The Commission is recommending that the "best mode" requirement of
     35 U.S.C. 112 be deleted as a requirement for U.S. patent applications.
     The best mode issue is addressed in full in Issue V, Cost and Complexity
     of Patent Enforcement.  It is noted here, however, that if the best mode
     requirement is retained, it should apply as of the filing date of the
     provisional application.  In other words, there should be no requirement
     to update best mode at the time of filing the complete application.
     Otherwise, the best mode requirement could become an even more
     burdensome trap to patent applicants than at present.

[8]  The Commission recommends deferring the oath requirement and inventorship
     nomination requirement until the filing of the complete application,
     because substantive examination would not begin until after the complete
     application is filed.  Inventorship is often difficult to decide, as it
     first requires a decision as to what to be claimed as the patentable
     invention.  Only after this is determined can the contributions of
     multiple inventors be considered.  Similarly, delays in filing
     provisional applications could be reduced by permitting deferral of
     the filing of the oath or declaration until the filing of the complete
     application.

[9]   A party could take advantage of two or more priority dates through the
     filing of multiple provisional applications prior to filing a full
     patent application.

[10]  Article 4(A)(1) of the Paris Convention provides the right of priority
     for foreign filing purposes, specifically:

         Any person who has duly filed an application for a patent, or
         for the registration of a utility model, or of an industrial
         design, or of a trademark, in one of the countries of the Union,
         or his successor in title, shall enjoy, for the purpose of filing
         in the other countries, a right of priority during the periods
         hereinafter fixed.

[11]  Article 4 bis(5) of the Paris Convention provides:

         Patents obtained with the benefit of priority shall, in the
         various countries of the Union, have a duration equal to that
         which they would have, had they been applied for or granted
         without the benefit of priority.

[12]  This discrepancy in patent term will occur if the United States adopts
     a patent term measured from the date of filing, as opposed to the date
     of the patent grant.  The Commission supports such a change to the
     term of U.S. patents (see Issue II).

[13]  35 U.S.C. 102(b) provides that a person is entitled to a patent unless -

         (b)  the invention was patented or described in a printed
         publication in this or a foreign country or in public use or
         on sale in this country, more than one year prior to the date
         of the application for patent in the United States.

[14]  See 37 C.F.R. 1.131 which requires an affidavit from the patent
     applicant attempting to "swear behind" a prior disclosure.

[15]  Publication or disclosure after U.S. filing, but before filing abroad,
     will not prejudice patent rights abroad, if occurring during the period
     of priority provided under the Paris Convention (Art. 4B).

[16]  See Article 12, Disclosures Not Affecting Patentability (Grace Period),
     Draft Treaty Supplementing the Paris Convention for the Protection of
     Industrial Property as far as Patents are Concerned (Draft Patent Law
     Treaty), WIPO Document PLT/DC/3 of December 21, 1990.  It should be
     noted that publication or other public disclosure of an invention
     caused independently of the patent applicant prior to the filing date
     would be considered prior art, and would not be protected by the
     contemplated "personal" grace period.  Only "self-created" prior art
     would be protected under the first-to-file grace period because, in
     a first-to-file system, prior art is defined in terms of the filing
     date of an application, rather than the invention date.

[17]  See Charles L. Gholz, How the United States Currently Handles the
     Interference Issues That Will Remain in a First-To-File World,
     18 A.I.P.L.A. Q.J. 1 (1990).

[18]  For a comparative survey of prior user rights provisions in foreign
     countries, see "Prior User Rights", the MEMORANDUM OF INTERNATIONAL
     BUREAU, pp. 17-18 and Annex II, HL/CE/IV/ING/2 Rev.1 (English)
     (May 30, 1980).

[19]  Under Article 4(B) of the Paris Convention, acts which occur during
     the Convention priority year (i.e., after the earliest effective
     filing date of a patent application) cannot give rise to prior user
     rights.  The form of prior user rights provided by a country, if any,
     is reserved in accordance with its domestic law under Art. 4(b). Hence,
     while prior user rights provisions have common characteristics, they
     do vary considerably country by country.

[20]  See Article 20, Draft Patent Law Treaty, supra note 16.

[21]  35 U.S.C. 102(g) (1988).

[22]  It is said that failure to address the prior user issue was one reason
     why the 1966 Presidential Commission's recommendation to change to
     a first-to-file system was never adopted.

[23]  Opponents of the prior user right note that freedom to practice can be
     ensured by mere publication, which can be done cheaply, quickly and,
     if desired, anonymously.

[24]  Opponents of the right also point out that because the United States
     has a more litigious society prior user rights litigation could become
     more common in this country.

[25]  Proponents also argue that forcing trade secret users to file for patent
     protection in the U.S. could benefit offshore users in countries where
     process patent infringement is difficult to prove because of a lack of
     any discovery mechanism in litigation.

[26]  Kewanee Oil Co. v. Bicron, 470 U.S. 470, 181 U.S.P.Q. 673 (1974)
     (the Supreme Court held that Ohio's law of trade secrets was not
     preempted by the Federal patent laws.  The court noted that "trade
     secret law and patent law have co-existed in this country for over
     one hundred years.  Each has its particular role to play, and the
     operation of one does not take away from the need for the other.

[27]  See the discussion regarding deletion of the best mode requirement
     in Part II.

[28]  See Griffith v. Kanamaru, 816 F.2d 624, 2 U.S.P.Q.2d 1361
     (Fed. Cir. 1987) (attempt to finance experimentation does not
     constitute diligence).

[29]  35 U.S.C. 154.

[30]  The 1966 Commission recommended that the term of a patent whose issuance
     was delayed by reason of the application being placed under secrecy
     order should be extended for a period of equal to the delay in issuance
     of the patent.  This change would compensate for the loss of patent
     term under a system measuring the patent term from the filing date
     rather than grant date.  Of course, this could lead to the situation
     where a patent term could be extended far beyond its normal expiration
     date, taking competitors by surprise.  Hence our recommendation is
     more balanced.

[31]  See note 11 and accompanying text.

[32]  The Drug Price Competition and Patent Term Restoration Act of 1982
     amended Title 35 to add sections 164 and 165.  These provisions permit
     patent owners to recoup up to five years of patent term lost due to
     the FDA regulatory review process.  There are strict limits applied
     to the patents which are eligible for extension, the maximum length
     of any extension, and reductions in extensions due to delays by the
     patent owner.

[33]  See 35 U.S.C. 156(g)(6)(A), which states:

     (6)   A period determined under any of the proceeding paragraphs is
           subject to the following limitations:

           (A) If the patent involved was issued after the date of the
               enactment of this section, the period of extension determined
               on the basis of the regulatory review period determined
               under any such paragraph may not exceed five years.

[34]  35 U.S.C. 122 ["Confidential status of applications"] provides:

         Applications for patents shall be kept in confidence by the Patent
         and Trademark Office and no information concerning the same given
         without authority of the applicant or owner ... .

[35]  The provisional right can be described generally as a right to
     compensation from infringers of finally issued, previously published,
     claims during the interval between publication and grant, where the
     accused party had actual notice from the publication of the patent
     application or received written notice from the applicant of its
     existense.

[36]  See Article 15 of the Draft Patent Law Treaty, surpa note 16.

[37]  This presumes that only one-half of the patent applications were
     published in this abbreviated way before issuance as patents.

[38]  See Appendix A for a description of the proposed Patent Application
     Management (PAM) System.

[39]  See Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 147 U.S.P.Q. 429
     (1965) (prior art under 35 U.S.C. 102(e) is part of the state of the
     art for determining obviousness under 35 U.S.C. 103).

[40]  See In re Hilmer, 359 F.2d 859, 149 U.S.P.Q. 480 (CCPA 1966) (foreign
     priority date under the Paris Convention is not included in the
     patent-defeating date for purposes of 35 U.S.C. 102(e)).

[41]  See Article 13, "Certain Prior Art Effect of Certain Applications",
     Draft Patent Law Treaty, supra note 16.

[42]  See European Patent Convention, Articles 54(3) and 56.  See also
     "European Patents", Manual of Industrial Property, Supplement No. 61,
     page 5 (Octoibureau, March 1990) which states:

         The contents of such prior applications are to be considered
         in determining the novelty of the invention but not in deciding
         whether the invention involves an inventive step ... .

[43]  See Japanese Patent Law Article 29 bis.

[44]  It should be noted, however, that this additional year of prior art
     applies only as to unclaimed disclosure, because under the current
     U.S. system, priority can be claimed in an interference for claimed
     subject matter, and an interference is likely to be set up where
     two applicants are claiming patentably indistinct subject matter.
--
**************************************************************************
Greg Aharonian
Source Translation & Optimiztion
P.O. Box 404, Belmont, MA 02178

You are viewing proxied material from gopher.quux.org. The copyright of proxied material belongs to its original authors. Any comments or complaints in relation to proxied material should be directed to the original authors of the content concerned. Please see the disclaimer for more details.