Comments from A Fiedler and V Castiglione

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FROM RESPONDENT 015:
     NAME: A Fiedler and V Castiglione
     COMPANY: Becton, Dickinson and Company 
     ADDR-1: 1 Becton Drive 
     CITY, STATE ZIP: Franklin Lakes, New Jersey 07417
     TELEPHONE: 
     FAX: 
     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:
     INTRODUCTION
     
     We should all agree, that in our current worldwide economy
     harmonization of patent laws is very important and that all we do to
     harmonize these laws will be a major benefit. However, our concern is
     that if changes are only made in a piecemeal fashion, harmonization
     will be delayed and many applicants and patent owners may be unfairly
     harmed. In fact, the current proposed changes to implement a 20-year
     patent term have the potential to cause harm, since they do not provide
     the same enforceability period for each patent issued and some form of
     provisional remedy or retroactive enforceabili ty from a predetermined
     date prior to the issuance of the patent. In addition, they cause a
     fundamental change to U.S. patent law since they measure a patent's
     effective term of enforceability from the first effective date of
     filing. Historically, a patent's

     1 A. Fiedler and V. Castiglione are patent attorneys at Becton,
     Dickinson and Company, 1 Becton Drive, Franklin Lakes, New Jersey
     07417.

     enforceable duration in this country has been measured in a fixed
     manner from the date of the patent's issue. As a result, the current
     proposed changes may be unconstitutional and may also be accuse d of
     not making patents available "without discrimination as to the place of
     invention" as required by Article 27(1) of the GATT-TRIPs Agreement and
     "without discrimination . . . as to the territory of the party where
     the invention was made" as required by Article 1709(7) of NAFTA. The
     key phraseology in both the quoted NAFTA and GATT-TRIPs provisions is
     that patents shall be available without discrimination. The inherent
     inconsistency as to terms of enforceability will result in per se
     discrimination to some patentees, who will not enjoy an equal term of
     enforceability in return for the ir disclosing to the public the
     subject matter forming their invention

     PROBLEM
     
     The new laws and proposed rules change the term of a patent to a term
     that begins on the arbitrary date the patent issues and ends 20 years
     from the earliest U.S. filing date claimed by the patent.  As currently
     implemented, 3 5 U.S.C. s. 154(a)(2) has been amended such that the
     grant of the patent shall be for a term beginning on the date on which
     the patent issues and ending twenty years from the date on which the
     application for the patent was filed in the United States or if the
     application contains a specific reference to an earlier filed
     application all applications under s. 120, 12 1 or 365(c) of this
     title, from the date on which the earliest such application was filed.

     Likewise, s. 271 of 35 U.S.C., which sets forth the acts constituting
     actionable infringement, was amended to include as infringing acts
     "offers to sell" or "imports into the United States of any pa tented
     invention." However, the portion of the statute defining when the
     patent right will be enforceable was untouched: it remains "during the
     term of the patent." While the term of a patent will n ow be measured
     from the earliest effective application filing date, the portion of the
     overall term specifically directed to enforceability of patent rights
     continues to remain measured from the dat e in which the patent issues. 
     Unlike the practice in the major world industrialized economies such as
     the EPC and Japan, no provisions have been made for interim protection
     of patent rights pending final issuance of the granted patent. Hence,
     it is inevitable that patentees will receive unequal terms of
     enforceability for their respective patents. This evidences a lack of
     due process controls and equal protection under the law. The
     Constitution, at Article I, Section 8, cl. 8, guarantees to all
     patentees "for limited times the exclusive right to their respective
     writings and discoveries" in return for their reciprocal disclosure to
     the public of the sub ject matter of their inventions. If patent terms
     -- the "limited times" -- cannot be measured with some degree of
     specificity and consistency for the entire public at large, it is
     likely that the la w in its current form may face creditable
     constitutional challenges, i.e., under due process and equal protection
     grounds. Can it be equitable to measure one patentee's contractual
     disclosure to the public vis--vis another patentee's in a way that
     would account for inevitable discrepancies in patentee's abilities to
     reap reward for their respective "discoveries", particularly where
     substantia lly similar technology or developments are at issue? The
     lack of interim protection, coupled with the potential for unequal
     terms of enforceability, is inconsistent with patent protection as has
     bee n historically granted to inventors in this country.
     
     In addition, without providing the same enforceability period for each
     patent issued or some form of provisional remedy or enforceability from
     a predetermined date prior to issuance of the patent, s uch a term will
     arbitrarily harm and discriminate against some applicants and make the
     valuation of pending patent applications impossible. We do not find any
     justification why some patents should h ave a longer enforceability
     period than others merely because of the inexperience of a pro se
     applicant, the type of technology being examined, or any other factor
     influencing the period of pendency of applications. Furthermore, it is
     inequitable to impose on patentees varying terms of enforceability
     because of factors not in their control. Oftentimes it is the case that
     the length of patent p rosecution will vary due tocircumstances not
     directly controllable by a patentee. For instance, the workload of
     given art groups in the USPTO may vary, such that terms of prosecution
     will be unequal depending on the art area of concern. The experience
     and workload of the individual Examiners will also factor into the
     speed with which patent applications are examined and finally disposed
     of. La stly and perhaps most importantly, the workloads and talents of
     individual patent attorneys and agents are not the same, the skills and
     experience level of individuals prosecuting applications will be a
     major deciding factor in finally determining what term of
     enforceability a patentee will enjoy.

     For example, if two applicants separately submit patent applications
     claiming equally technical inventions, but one pro se applicant is
     experienced in prosecution and fortunately has the application examined
     by an experienced examiner and the other pro se applicant has never
     prosecuted an application and unfortunately is assigned an
     inexperienced examiner, it is very likely that the more exper ienced
     applicant's application will proceed through the USPTO more quickly and
     thus issue long before the latter applicant. If patent attorneys or
     agents are involved, the prosecution period can bec ome even more
     unpredictable. As a result, there is a strong likelihood that patents
     of equally challenging technology will have different enforceability
     periods, with those issuing later losing valu able enforceability
     rights.

     A similar problem may occur if the technology involved is complex or
     the invention is a pioneer invention. If one application involves
     biotechnology and the other application is directed to a simple
     mechanical device, the biotechnology patent will more than likely issue
     long after the simple mechanical device. Therefore, the applicant with
     the more difficult technology or the pioneer invention may be unfairly
     discriminated against.

     An arbitrary delay in enforceability also makes it impossible to place
     a value on a pending patent application since the longer the patent
     application is prosecuted the more its enforcement value de preciates.
     Moreover, the depreciation in enforcement value occurs while the
     applicant continues to invest more and more money in the unpredictable
     asset. All of this ultimately causes the return on investment to
     progressively deteriorate the longer prosecution extends. If
     prosecution continues too long, the time will come when it is advisable
     to abandon the application rather than allow a pate nt to issue with
     too short of an enforceability period to recoup the investment. If this
     occurs, many valuable pioneer inventions may never be shared with the
     public due to the abandonment and conti nued secrecy of such
     applications, defeating the basic purpose of the patent system

     CURRENT T PROPOSED REMEDIES
     
     We believe that the USPTO recognizes problems caused by delays in the
     issuance of a patent, since the proposed rules provide for extensions
     up to five years if applications are involved in an interf erence,
     subject to a secrecy order, or issued after a Board of Appeals or the
     Federal Circuit reverses a lower adverse decision. In addition,
     extensions are also provided to compensate for delays fo r FDA approval
     if necessary However, we believe that these are not the only situations
     where extensions are necessary. Further, extensions of patent life do
     not automatically correct for the arbitrariness in the enforceability
     period of the new law. Instead of trying to identify all of the
     situations in which it would be advisable to have an extension, we
     believe that there is the need to publish applications and provide for
     provisional remedies from publication. In fact, such a procedure has
     been used and appears to have worked well for years in the EPC,
     Australia and Japan.

     We are encouraged that H.R. 359 introduced on January 4, 1995, seeks to
     amend the patent term .section to provide for a term of 17 years from
     the date of grant or 20 years from filing, whichever is longer. Such an
     approach would solve the problem of discrimination in the
     enforceability between issued patents. However, H.R. 359 also calls for
     the publication of a parent and its continuation app lication five
     years after the application's priority date, without providing for any
     provisional enforceability rights upon publication. As explained above,
     we favor the publication of applications and believe that publication,
     in serving to address the problem of "submarine" patents, would also
     help to provide a much needed prior art database for certain areas of
     technology in which prior art patents and publications are not as
     widely available, i.e., software and biotechnology. However, forcing an
     applicant to give away valuable trade secrets or proprietary
     information prior to the iss uance of a patent, without some form of
     compensation, is not fair and is probably unconstitutional. Therefore,
     we are not in favor of H.R. 359 in its current form

     In response to the USPTO request for comments on the 18-month
     publication of patent applications, we apologize for not responding
     earlier to the "general issue" but believe that the above remarks sh
     ould be considered. Concerning Questions 3 and 10, we believe that if
     publication is used it should be administered in a similar fashion to
     the EPO's publication management procedure. If such a syst em is not
     possible in the USPTO, at a minimum, it would be desirable to have the
     abstract and an applicant selected claim and drawing published with the
     complete application being available for phot ocopying at the USPTO
     and/or on Internet. In addition, if the USPTO can manage the system, we
     are in favor of having the entire filewrapper open to the public after
     the application has been publishe d.

     CONCLUSION
     
     As further legislation and rule changes are considered involving the
     implementation of GATT- TRIPs, we encourage the USPTO and Congress to
     consider publishing applications at 18-months, but also gra nting
     applicants and patent owners some form of provisional protection and
     remedy after the patent issues, covering the period starting on the
     publication date of the application.

Last Modified: March 1995