Comments from Paul A. Ragusa

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FROM RESPONDENT 007:
     NAME:     Paul A. Ragusa
     COMPANY:  BRUMBAUGH, GRAVES, DONOHUE & RAYMOND
     ADDR-1:   30 ROCKEFELLER PLAZA
     CITY, STATE ZIP:    NEW YORK, NEW YORK 10112-0228
     TELEPHONE:     (212) 408-2500
     FAX: (212) 765-2519
     REPRESENT:     self

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QUESTION 01:
     Should the PTO require that all Official application related
     materials be delivered to a central location? Specifically, what
     problems would a requirement that all official application-related
     materials be delivered to a central location cause?

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COMMENT ON QUESTION 01:
    No comments supplied
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QUESTION 02:
     Should the PTO adopt a standard application format? If so, what
     portions of the application papers should the PTO require be
     submitted in a standard size and/or format, and what sanction
     (e.g., surcharge) should be established for the failure to comply
     with these requirements?

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COMMENT ON QUESTION 02:
    No comments supplied
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QUESTION 03:
     If the entire application is not published, what information
     concerning the application should be published in the Gazette of
     Patent Application Notices?

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COMMENT ON QUESTION 03:
    No comments supplied
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QUESTION 04:
     Should the patent applicant receive a copy of the published
     application -- either published notice and/or application content
     at time of publication?

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COMMENT ON QUESTION 04:
    No comments supplied
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QUESTION 05:
     Should the PTO permit an accelerated examination? If so, under
     what conditions?

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COMMENT ON QUESTION 05:
    No comments supplied
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QUESTION 06:
     Since the cost for publishing applications must be recovered from
     fees, how should the cost of publication be allocated among the
     various fees, including the possibility of charging a separate
     publication fee?

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COMMENT ON QUESTION 06:
    No comments supplied
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QUESTION 07:
     Should the PTO require an affirmative communication from a patent
     applicant indicating that the applicant does not wish the
     application to be published, or should failure to timely submit a
     publication fee be taken as instruction not to publish the 
     application? That is, should an application be published unless
     the applicant affirmatively indicates that the application is not
     to be published, regardless of whether a publication fee has been
     submitted? What latitude should the PTO permit for late submission
     of a publication fee?

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COMMENT ON QUESTION 07:
    No comments supplied
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QUESTION 08:
     The delayed filing of either a claim for priority under 35 U.S.C.
     119 or 120 may result in the delayed publication of the
     application. Should priority or benefit be lost if not made
     within a reasonable time after filing? What latitude should the
     PTO permit for later claiming of priority or benefit?

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COMMENT ON QUESTION 08:
    No comments supplied
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QUESTION 09:
     Once the patent has issued, should the paper document containing
     information similar to that published in the Gazette of Patent
     Application Notice, i.e., the Patent Application Notice, be
     removed from the search files, and should publication information
     be included on the issued patent?

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COMMENT ON QUESTION 09:
    No comments supplied
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QUESTION 10:
     After publication, should access to the content of the
     application file be limited to the originally filed application
     papers? If not, what degree of access should be permilted? Should
     access be limited to the content before publication, or should it
     extend to materials added after publication?

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COMMENT ON QUESTION 10:
    No comments supplied
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QUESTION 11:
     11.  After publication, should assignment records of a published
          application also be made accessible to the public?

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COMMENT ON QUESTION 11:
    No comments supplied
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QUESTION 12:
     After publication, should access include the deposit of
     biological materials as set forth in 37 CFR 1.802 et seq.?

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COMMENT ON QUESTION 12:
    No comments supplied
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QUESTION 13:
     What types of problems will be encountered if all amendments must
     be made by (a) substitute paragraphs and claims, (b) substitute
     pages, or (c) replacement of the entire application?

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COMMENT ON QUESTION 13:
    No comments supplied
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QUESTION 14:
     Should protest procedures be modified to permit the third party
     submission of prior art only prior to a specific period after
     publication of the application?  What action should be taken with
     respect to untimely submissions by a third party?

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COMMENT ON QUESTION 14:
    No comments supplied
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GENERAL COMMENT:
     NOTE EIGHTEEN MONTHS TO PUBLICATION: SHOULD THE
          UNITED STATES JOIN EUROPE AND JAPAN BY
          PROMPTLY PUBLISHING PATENT
          APPLICATIONS?
          
                     I. INTRODUCTION
                     
               For over 130 years, it has been the practice of the United
     States Patent and Trademark Office (U.S. PTO) to maintain the confi-
     dentiality of patent applications until it decides whether to issue a
     patent.2 The underlying policy of this practice of confidentiality
     has been to ensure that an inventor is able to maintain rights in
     newly discovered technology, regardless of whether patent pro-
     tection is ever granted.3 United States patent law has remained
     generally unchanged,4 and, until recently, most foreign countries
     followed the standard of secrecy as currently employed in the
     
               1. The United States Patent and Trademark Office (U.S. PTO)
     was established in accordance with 35 U.S.C.  I (1988) and was
     empowered to grant and issue patentsunder 35 U.S.C. s. 6 (1988).  2.
     The current statute, 35 U.S.C.  122 (1988), provides that:   
     [a]pplications for patents shall be kept in confidence by the Patent
     and Trade
       mark Office and no information concerning the same given without
     authority of
       the applicant or owner unless necessary to carry out the provisions
     of any Act
       of Congress or in such special circumstances as may be determined
     by the
       Commissioner.
        Id; see also 37 C.F.R.  1.14(a)-(b) (1991) (providing for the
     secrecy of pending andabandoned patent applications). Section 122 was
     enacted in 1952 to codify the 90 yearold practice of the U.S. PTO of
     holding pending applications in secrecy. Sears v. Gott- schalk, 502
     F.2d 122, 129 (4th Cir. 1974), cert. denied, 425 U.S. 904 (1976); see
     also 3 DONALD S. CHISUM, PATENTS s. 11.02[4], at 11-43 (1992).
     Criminal sanctions for an unlawful disclosure are provided for in 35
     U.S.C. s. 186 (1988)
     
               The CURRENt statute permits the U.S. PTO to disclose
     information contained in a pend- ing application if "special
     circumstances" exist. See 35 U.S.C. s. 122 (1988). One such
     circumstance is disclosure to the parties of an interference action.
     See 37 C.F.R.  1.612 (1991). An interference is a "proceeding
     instituted in the Patent and Trademark Office . . . to determine any
     question of patentability and priority of invention between two or
     more parties claiming the same patentable invention." Id s.
     1.601(1); see 35 U.S.C.  135(a) (1988). Substantive interference law
     dealing with priority of invention involves a determination of which
     party first reduced the invention to practice, subject to several
     caveats. 6 PATENT PRACTICE 24-6 (Irving Kayton & Karyl S. Kaston
     eds., 4th ed. 1989).
     
       3. See infra text accompanying notes 29-36.
       
               4. HAROLD C. WEGNER, COMPARATIVE PATENT LAW  13.10, at 6
     (1991) (statingthat the Patent Act of 1836 has remained "remarkably
     unchanged").143144 Geo. Wash. J. Int'l L. & Econ. [Vol. 26United
     States.5          In the late 1 960s,6 however, most industrialized
     countriesbegan to abandon the standard of secrecy in favor of a
     systemrequiring the automatic publication of patent applications
     eight- een months after their effective filing dates, whether or not
     a pat- ent is ever issued.7 The policy behind this system of
     automatic publication is the desire to enhance domestic industrial
     develop
     
       5. Id s. 242, at 386-87.
       
       6. Id
       
               7. Id; see, e.g., Patent Act, R.S.C., ch. P-4,  10(2)
     (1985) (Can.) [hereinafter Cana- dian System], reprinted in 2 WORLD
     Intellectual PROPERTY ORGANIZATION, INDUSTRIAL PROPERTY LAWS AND
     TREATIES (Dec. 1990) Canada, Text 2-001, at 001, 008 (providing that
     Canadian applications are to be open to public inspection 18 months
     after their priority or filing dates); Law on Inventions, Industrial
     Designs and Rationalization Pro- posals, No. 527, s. 31(1) (1990)
     (Czech.), translated in 2 WORLD INTELLECTUAL PROPERTY ORGANIZATION,
     INDUSTRIAL PROPERTY LAWS AND TREATIES (Sept. 199l) Czechoslovakia,
     Text 1-002, at 001, 007 (providing that applications filed in
     Czechoslovakia are to be published 18 months from their priority
     dates); Law No. 77-683 of June 30, 1977, on the Application of the
     Convention on the Grant of European Patents, done Oct. 5, 1973, s.
     2 (FRG.), translated in 3 WORLD INTELLECTUAL PROPERTY ORGANIZATION
     INDUSTRIAL PROPERTY LAWS AND TREATIES (July/Aug. 199l) France, Text
     2-003, at 001 (providing that European applications which are not in
     French are to he published in French within three months of the
     European publication); Patent Law,  31(2) (1980) (E.R.G.), trans-
     lated in 3 WORLD INTELLECTUAL PROPERTY ORGANIZATION INDUSTRIAL
     PROPERTY LAWS AND TREATIES (May 1988) Germany, Federal Republic of,
     Text 2-002, at 001, 008 (allowing public inspection of German
     applications 18 months after their filing dates); Patent Law, Law No.
     121 of Apr. 13, 1959, 65bis Japan) [hereinafter Japanese Sys- tem],
     translated in 4 WORLD INTELLECTUAL PROPERTY ORGANIZATION INDUSTRIAL
     PROP- ERTY LAWS AND TREATIES (Oct. 1988) Japan, Text 2-001, at 001,
     020 (providing that applications are laid open for public inspection
     18 months from their filing dates); Pat- ents Act, Act No. 9 of Dec.
     15, 1967,  22 (Nor.), translated in 5 WORLD INTELLECTUAL PROPERTY
     ORGANIZATION, INDUSTRIAL PROPERTY LAWS AND TREATIES Jan. 1983)
     Norway, Text 2-001, at 001, 004 (providing that applications are made
     available to the public 18 months from their filing dates); Patent
     Law, No. 950 of Dec. 31, 1961,  83-2(1) (Korea),         translated
     in 5 WORLD INTELLECTUAL PROPERTY ORGANIZATION, INDUSTRIAL PROPERTY
     LAWS AND TREATIES (Mar. 1988) Republic of Korea, Text 2-001, at 001,
     022 (providing that previously unpublished applications are laid open
     in the Patent Gazette 18 months after their filing or priority
     dates); Law of the Union of Soviet Socialist Republics on Inventions
     in the USSR,  I 1-1 (1991) (U.S.S.R.), translated in 5 WORLD
     INTELLECTUAL PROPERTY ORGANIZATION, INDUSTRIAL PROPERTY LAWS AND
     TREATIES (Sept. 199l) Soviet Union, Text 2-001, at 001, 006
     (providing that the particulars of applications are pub- lished in
     the Official Gazette of the U.S.S.R. Patent Office 18 months from
     their priority dates); Law No. 11/1986 of Mar. 20, on Patents, 
     32-1 (Spain), translated in 6 WORLD INTELLECTUAL PROPERTY
     ORGANIZATION, industrial PROPERTY laws AND TREATIES July/Aug. 1986)
     Spain, Text 2-001, at 001, 007 (providing that 18 months from filing
     or priority, certain specified elements shall be published in the
     Official Bulletin of Industrial Property); Patents Act, 1977,  16(1)
     (U.K.), reprinted in 7 WORLD INTELLECTUAL PROPERTY ORGANIZATION
     INDUSTRIAL PROPERTY LAWS AND TREATIES (Sept. 1990) United King- dom,
     Text 2-001, at 001, 013 (providing for the mandatory publication of
     applications at the end of a prescribed period after filing; the
     prescribed period is set at 18 months by Rule 27. See The Patents
     Rules, 1978, rule 27 (U.K.), reprinted in 7 WORLD INTELLECTUAL
     
     1992] Eighteen Months to Publication 145 ment through the early
     disclosure of technology.8
               Although the confidentiality system has worked efficiently
     in the United  States in the past,9 both domestic and international
     pressures exist to alter  the system to conform with the
     international practice of automatic  publication.10 Most recently, a
     joint subcommittee of the U.S. Congress  held a hearing to debate
     whether the United States should enact legislation  implementing,
     among other changes, the automatic publication system."
               This Note examines the advantages and disadvantages of U.S.
     adoption  of an automatic publication system, as well as the
     implications for the U.S.  inventor. Part II discusses the current
     patent application systems in both  the United States and Japan.
     Next, this Note identifies the congressional  and industrial concerns
     regarding the inequalities produced by the use of  differing
     publication systems in the international arena. Parts III and IV 
     review both the domestic and international arguments favoring and 
     opposing a change in current U.S. patent law. Part V analyzes these
      conflicting arguments in light of congressional and industrial
     concerns.  Finally, this Note concludes that the adoption of the
     automatic publication  system is in the best interests of the United
     States and proposes that the  system be adopted irrespective of
     international developments. PROPERTY ORGANIZATION, INDUSTRIAL
     PROPERTY LAWS AND TREATIES (May 1979) United  Kingdom, Text 2-002, at
     001, 013.).
               The effective filing date, also known as the priority date,
     can be a date other than the actual filing date of  the patent
     application. 2 PATENT PRACTICE, supra note 2, at 7- 1. This is a
     result of multi-national and  bilateral reciprocal treaties which
     allow applicants to claim priority based on the date the inventor
     filed  domestically. Id
     
       8. See infra text accompanying notes 37-51.
     
       9. 137 CONG. REC. H2755-56 (daily ed. May 2, 1991) (statement of
     Rep. Bentley).
     
               10. Ronald Laurie, It's Time to Invent a New Patent Law,
     LEGAL TIMES, Oct. 15, 1990, at 25; see Address  of Commissioner Harry
     F Manbeck Jr. Before the ABA 's Section of Patent, Trademark and
     Copyright Law,  40 Pat. Trademark & Copyright J. (BNA) No. 995, at
     387, 390 (Aug. 30, 1990) [hereinafter Address of  Commissioner];
     First to File and Inequitable Conduct Dominate ABA-PTC ,Meeting in
     ,Atlanta, 42 Pat.  Trademark & Copyright J. (BNA) No. 1045, at 417,
     419 (Aug. 29, 1991); Charles R.B. Macedo, Note,  First-to-File: Is
     American Adoption of the International Standard in Patent Law Worth
     the Price?, 1988  COLUM. Bus. L. REV. 54344 (noting that technology
     is now commonly available worldwide, and that "a single 
     international standard of patentability" would be advantageous for a
     "patent exporting country like the United  States"); Brett Glass,
     Patently unfair?, INFOWORLD, Oct. 29, 1990, at 56, 58, 62 (noting
     that "the Patent Act,  last revised in 1952, may be due for an
     update") .
               11. The Patent System Harmonization Act of 1992 (S. 2605
     and H.R. 4978): Joint Hearings Before the  Subcomm. on Patents,
     Copyrights @ Trademarks of the Senate Comm. on the Judiciary and the
     Subcomm. on  Intellectual Property and Judicial Administration of the
     House Comm. on the Judiciary, 102d Cong., 2d Sess.  (1992)
     [hereinafter Patent System Harmonization Act Of 1992 Hearings]. 
     
     146 Geo. Wash. J. Int'l L. & Econ. [Vol. 26 II. THE CURRENT PATENT
     APPLICATION SYSTEMS IN THE 
                         UNITED
                    STATES AND JAPAN
                    A. The United States
               The U.S. patent application system is constitutionally
     based. The  Intellectual Property Clause12 gives Congress the power
     to grant inventors  the exclusive right to their inventions for a
     limited period of time.13 In  accordance with this power, Congress
     has set forth standards for patent  applications in Title 35 of the
     United States Code. 14 Under the Code, a  patent application must be
     made by the inventor,15 except in certain  specified circumstances.16
     An application must contain a specification  which describes the
     invention and concludes with at least one claim.17 The  claim must be
     directed to the subject matter of the invention and must 
     particularly point out the inventive subject matter.18 It is the
     claim, as it is  described in the application, which will define the
     scope and protection  offered by the patent, if and when the patent
     issues.19 The application  need only contain a drawing of the
     invention when such a drawing is  necessary to the understanding of
     the inventive concept.20 In addition, the  applicant is required to
     make an oath stating that the applicant believes  himself to be the
     original and first inventor of the subject matter.21 Finally,  the
     applicant must sign the patent application and pay the required
     fee.22
      In addition to these procedural filing requirements, the Code
               12. U.S. CONST. art. I, s. 8, cl. 8. Article I, Section 8,
     Clause 8 of the U.S. Constitution  states, "The Congress shall have
     Power . . . [t]o promote the Progress of Science and useful  Arts, by
     securing for limited Times to Authors and Inventors the exclusive
     Right to their  respective Writings and Discoveries." Id
     
               13. Id The U.S. Supreme Court has interpreted the
     Intellectual Property Clause as both ' a  grant of power and a
     limitation-' on Congress. Graham v. John Deere Co., 383 U.S. 1, 5 
     (1966). The Graham Court's interpretation of the Intellectual
     Property Clause was not  supported by precedent, however, and
     therefore its effect as a limitation on congressional  power to
     harmonize U.S. patent law with the international system is unknown.
     See Kenneth J.  Burchfiel, Revising the "Original" Patent Clause:
     Pseudohistory in Constitutional Construction,  2 HARv.J.L. & TECH.
     155, 168 (1989).
      14. See 35 U.S.C.  101-105 (1988 & Supp. 1990).15. Id  111.      
        16. See id  117 (death or incapacity of inventor), 118 (filing
     by other than inventor)  17. Id s. 112. 18. Id 19. Graver Tank & Mfg
     Co. v. Linde Air Prods. Co.. 336 U.S. 271, 277 (1949). 20. 35 U.S.C.
     s. 113 (1988). 21. Id s. 115.          22 Id 111.1992] Eighteen
     Months to Publication 147prescribes the minimum standards of
     patentability for an invention contained in a patent application. In
     order to be patentable, an invention  must be a "new and useful
     process, machine, manufacture, or composition  of matter,"23 and not
     merely an idea.24 In interpreting these standards,  the U.S. Supreme
     Court has held that "[p]henomena of nature, though  just discovered,
     mental processes, and abstract intellectual concepts are  not
     patentable, as they are the basic tools of scientific and
     technological  work."25 Accordingly, the U.S. Court of Appeals for
     the Federal Circuit  has held that an electronic circuit system
     employing a mathematical  algorithm is patentable,26 whereas a
     mathematical algorithm itself or a  method of doing business is
     ineligible for patent protection.27 Further,  U.S. patent law
     requires that an invention be a useful, novel, and  unobvious advance
     over the prior art.23
               A U.S. patent is "an agreement between an inventor and the
     public,  represented by the federal government," in which the
     inventor is granted  the sole right to "exclude others from making,
     using, or selling the defined  invention in the United States."29 The
     patent creates a legal monopoly for  the inventor over his invention
     for a limited period of time.30 In exchange  for this monopoly, the
     inventor agrees to fully disclose his invention so  that the public
     may make full use of the invention upon expiration of the 
     monopoly.31 Thus the patent system creates an incentive for the
     inventor  to disclose to the public what he has learned.32 Once
     information is  disclosed, others are f

Last Modified: March 1995