To The Honorable Barbara Boxer U.S. Senate Washington, D.C.
Re: S. 507, The Omnibus Patent Act of 1997
August 25, 1997
Dear Senator Boxer:
The undersigned is a patent attorney and author fom the state of California and is writing to you to express our great concern about S. 507, the Omnibus Patent Act of 1997.
The Judiciary Committee report on the hearings which were held on S. 507 intensified my concerns that the repercussions of this seriously flawed bill will hinder the very existence of our business and inventive activities.
While S. 507 has many harmful aspects, I respectfully present to you our concerns about the provisions related specifically to Prior User Rights.
If an infringer can claim Prior User Rights as a defense, then: the incentive to use the patent system is removed in our first-to-invent system; the value of a patent as an exclusive licensable property is diminished. Small entities and universities that license their patented technologies can no longer guarantee the licensee an exclusive monopoly; difficult questions will be raised as to whether the patent applicant is truly the first to invent and whether the patent is valid. Granting rights to prior users submarines the diligent applicant who has filed and received their patent in good faith only to have its very validity, and certainly its value, threatened by those individuals who chose to forego the patent system; all risks associated with employing Trade Secrets as an alternative to sharing one's innovations with the rest of the United States for a limited exclusive monopoly are removed. Trade Secrets do not expire, but under our system one of the risks associated with trade secrets is the loss of rights if someone else claims them. By granting prior user rights, those who chose trade secrets get all the rewards for foregoing the patent system but take none of the risks; the infringer can ramp up production with impunity; the rewards will go to the secret keeper which is the antithesis of the reason our patent system was created. In the Constitution, the Founding Fathers sought to promote the disclosure of innovation by granting a monopoly for a limited time. They knew trade secrets did nothing to further the general knowledge or to reward the innovators, the only remedy left to the patent holder is litigation. The prior user rights provision tilts the playing field to the large multinational corporations and other deep pockets. Imagine the devastating effect that protracted litigation will have on a small business that must defend its patented technology against an infringer who claims prior user rights.
We have focused on the problems which will be created by forcing patent holders to grant FREE licenses to prior secret users, but understand that we are opposed to the enactment of S. 507. As a whole, S. 507 is a bill that favors the interests of large multinational corporations at the expense of budding, developing small businesses.
On the issue of corporatizing the U.S. Patent and Trademark Office, for example, the PTO is the one government agency that has remained scandal free during its entire history. The examination of patent applications is a quasi-judicial function which, to date, has been performed by civil service employees who are free from undue influence. If the PTO is turned into a government corporation, patent examiners will lose their civil service status and their jobs and their careers will be exposed to the vagaries of those in power.
If enacted, S. 507 will be extremely injurious to the future of America's small businesses and independent inventors. We ask that you consider these problems which will be created for America's small businesses and independent inventors and vote against S. 507. Thank you very much.
/s David Pressman
David Pressman 1070 Green St., #1402 San Francisco, CA 94133-3677 Tel. 415-776-3960David Pressman, Patent Lawyer Author, Patent It Yourself (book and interactive software) the world's best selling patent guide. E-mail: DavidP@PatentItYourself.com Web: http://www.PatentItYourself.com
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