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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