From: srctran@world.std.com (Gregory Aharonian)
Subject: Recent Patent Office policy developments
Organization: The World
Distribution: misc.legal.computing
Date: Wed, 8 Apr 1992 04:46:33 GMT

Here's some stuff concerning patent office activities.
Greg Aharonian

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#1992, Apr
    The US Court of Appeals for the Federal Circuit, which handles appeals of
patent litigation, rules that it is up to the alleged infringer to show that
a patent holder was unreasonably late in filing an infringement suit.  The
decision reverses the way courts have traditionally handled patent
infringement cases that are brought six years after the alleged violation.
In the past, it was up to the patent holder to prove that the delay was
reasonable.
    The patent holder "bears the burden only of coming forward with sufficient
evidence to raise a genuine factual issue respecting the reasonableness of its
conduct" in waiting more than six years to sue, the judges said in a rare
full-court decision.  Usually the Washinton, DC, court's decisions are made
by three-judge panels.
    The case involved a patent fight over a device used to form concrete
highway barriers.  The patent holder, A.C. Aukerman Company (Atlanta, GA) sued
R.L. Chaides Construction Company (Fremont, CA) in 1989, eight years after
Aukerman had last warned Chaides about the alleged infringement.  A San
Francisco federal judge had thrown out the case because of Aukerman's delay.
    Thomas Schatzel, an attorney (Santa Clara, CA) for Chaides, said he hadn't
seen the decision and couldn't comment.  Gerald Dodson, an attorney at
Townsend & Townsend (San Francisco, CA), said many infringement cases that
"had been presumed dead will be rejunevated by the court's action".
[Wall Street Journal 4/3/92, B6]
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    The United States is prepared to give up its traditional first-to-invent
method for awarding patents if other countries agree to make their patent
practices less obstructive to US applicants, US Patent Commissioner Harry
Manbeck said.  Mr. Manbeck said that such a tradeoff could ormm the basis
of a treaty to be signed by the US and other countries under the auspices of
the United Nations next year.  The US, Japan, and the European Community
are engaged in negotiations that could lead to anges in international
patent practices.
    The US is one of the few countries that still award patents to the
inventors of the products, rather than to the first parties to apply for
such patents.
    In return for its agreement to switch to a first-to-file system, the
US is asking other countries to give inventors a "grace period" during which
they could try to market their inventions or discuss them publicly, without
losing their rights to a patent, Mr. Manbeck said.
    The US also will insist that other countries change their laws to deter
large corporations from attempting to block the issuance of patents to other
parties through the use of orchestrated challenges.  A number of US companies
have complained that such procedural tactics have held up their applications
for Japanese patents.
    Mr. Manbeck is leaving his post to join the law firm of Morgan & Finnegan
at the end of April.  However, the strategy of trading first-to-invent for
patent reforms in other countries has broad support within the Bush
administration and the US patent bar.
[Wall Street Journal 4/6/92, B8]
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