2. In H.R.4462: a) In proposed Section 7 of Title 35, USC, strike out "and patentability" in the third sentence. b) In proposed Section 135 (a) of Title 35, USC, strike out "and patentability" in the second sentence. Protecting Applicants From Prolonged Prosecution The H.R.2610's proposed modification of Section 134 is intended to provide a remedy for an applicant who receives a second rejection from an examiner with partial signatory authority. remedy is an appeal to the Board of Appeals, a time consuming and expensive procedure for both the applicant and the PTO. Our recommendation, to require that all second rejections be issued by a primary examiner, is a better remedy. A primary examiner is more likely to avoid an unnecessary appeal than an examiner with lesser signatory authority. Furthermore, since a primary examiner is responsibile for an examiner's answer on appeal, the primary should also control that which is being appealed. Lastly, since most second rejections already require the attention of a primary, extending this attention to all second rejections would not be an undue burden. It is obviously more cost effective to prevent, rather than to prosecute, an appeal. Patentability Decisions In Interferences Current practice requires that patentability issues which arise during the course of an interference proceeding be remanded to the primary examiner for decision. Our recommendation is to retain this practice. As presently written, H.R.4462 proposes not only to merge the existing functions of the Board of Appeals and the Board of Patent Interferences, but also to add the function of initially deciding matters of patentability which arise during the course of an interference. To assign the primary examiner's job of generating an initial decision to an appeals body has two drawbacks. First, by eliminating the primary's role in the proceeding, the technological expertise of that primary is also abandoned. Because of the vast array of arts they are required to consider, members of the combined Board must be generalists. Primary examiners, by comparision, are experts due to their daily contact with applications in a narrow specialization. While a generalist may be competent to review the decision of an expert, the generalist will not be in as good a position to generate an initial analysis. Secondly, eliminating the primary's role also eliminates the opportunity for an independent administrative review. Traditionally, an applicant has been afforded at least one administrative appeal prior to final agency action. We hope these recommendations will assist you in your deliberations on these bills. Thank you for giving us this opportunity to present our views. Respectfully submitted, Ronald J Stern Ronald J. Stern, President We request the opportunity to testify, on the recommendations on these pending patent bills in our letter to you of 17 April 1984, and answer any questions the subcommittee may have. We hope our letter has been helpful and that our testimony would further assist the subcommittee in its deliberations on H.R. 2610 and H.R.4462. Very truly yours, Renally It Ronald J. Stern Telephone: 557-2975 RS: blp Professional Representation for Patent Professionals Stauffer Stauffer Chemical Company Westport, Connecticut 06881 / Tel. (203) 222-3000 / Cable "Staufchem" April 6, 1984 Michael Remington, Esq. Counsel Courts, Civil Liberties and Administration of Justice 2137 Rayburn House Office Building Washington, D.C. 20515 Dear Mike: I want to thank you very much for the time you spent with Allan Noe and myself on Tuesday, April 3. I enjoyed it very much and your suggestions were very helpful. In accordance with your recommendation, I am enclosing herewith my comments on H.R. 4524. While I have similar comments in respect to retroactivity to the other House bills which are counter-parts to S. 1535, I have not addressed these. I would greatly appreciate it if you would see that my comments are placed in hearing record of H.R. 4524. I have copied Gerald Mossinghoff, Mike Kirk, Tom Mooney and Ralph Oman on this letter. I am also enclosing, for your information, a copy of the comments I sent to Ralph Oman in respect to S. 1535. Sincerely, Bob Salhinn Robert C. Sullivan Patent Department RCS/rj Stauffer CHEMICALS Stauffer Chemical Company Westport, Connecticut 06881/ Tel. (203) 222-3000 / Cable "Staufchem" April 6, 1984 Michael Remington, Esq. Counsel Courts, Civil Liberties and Administration of Justice 2137 Rayburn House Office Bldg. Washington, D.C. 20515 Subject: Opposition to H.R. 4524 Dear Mr. Remington: As Director of the Patent Department at Stauffer Chemical Company, I am sending this letter on behalf of my company with the request that it be placed in the record of the hearing for H.R. 4524 for review by the subcommittee. H.R. 4524 is retroactive legislation and, consequently, can result in far-reaching unforeseeable effects well beyond what it purports to accomplish. For this reason, it is potentially unfair. To the extent that it is retroactive in nature, we believe that it fails the test of John Stedman that it must benefit the public. It is not believed to stimulate innovation to the extent that it applies to past inventions beyond hope of stimulation. If this bill were amended to make it only prospective in nature, we could support it, as our objections are not to the concepts expressed, but only to its retroactive application. However, there is a question that even prospectively this bill might encourage repeated carelessness in respect to foreign patent practice vis-a-vis 35USC 184 et seq. My company is party to patent litigation filed more than a year ago. The history of the patent involved appears to have many facts in common with the Gaertner case 202 USPQ 714 (1979). We have claimed a defense under 35 USC 184 and 185. If H.R. 4524 becomes law in its present form, this defense might well be eliminated. This will possibly benefit our opponent. It could damage us. It cannot be said to benefit the public or stimulate innovation. It is not known how many other such cases exist, or where else it will affect the rights of U.S. companies. This legislation will change the standards or tests by which the sanctions of 35 USC 184 et seq. can be avoided. The standards should be changed prospectively. The results of retroactive legislation are unpredictable and, worse, will be unintended. |