Problematic patent legislation

From: Marshall Burns (
Date: Thu May 28 1998 - 03:02:50 EEST

Dear Colleagues,

    Attached is an e-mail received from an associate about some current
legislation pending in congress regarding patents. My patent attorney
has in the past voiced strong concern about this legislation. I have
taken the for-me unusual step of sending the recommended letter to my
senators and now I also invite you to do the same. This does seem, from
all I have read and heard, to be pernicious legislation.

    I apologize to non-US members of mailing lists to whom I am sending
this, but actually you may also find it interesting to know about this
legislation pending here.

    This subject is on-topic for the mailing lists I am sending it to
because it relates to the economic viability of all small high-tech

    If anyone disagrees that this is bad legislation, I would like to
hear why.

    Thank you.

Best regards,
Marshall Burns

***** Fabbing the Future(TM)
***** 10911 Weyburn Avenue, Suite 332, Los Angeles, U.S.A. 90024
***** Phone: +1 (310) 824-8700. Fax: +1 (310) 824-5185
***** E-mail: Web site:

attached mail follows:


Dear Friends,

I am writing to ask your help in defeating an extremely damaging bill now
pending in the senate, a bill which I strongly believe is unconstitutional
and would, if passed, lead to serious damage of the future U.S. economy.

I hope that you can take a few minutes to write the two senators in your
state, as I have, and ask them to vote against passage of the bill, known as
S. 507. To make this as easy as possible, I have included a letter that you
can use as-is if you desire (or shorten or change it as you wish) by filling
in a few blanks, as well as the names and addresses of your senators. The
letter is reproduced below, and is also being sent as attachments in Word 95
for PC and Word 5.0 for Mac.

I have never become involved with anything political before, but I am
compelled to do so now because of the serious consequences that passage of
this bill would have. Rather than try to paraphrase here what S.507 is and
the damage it would do, I ask that you read the attached letter.

There is a lot of lobbying in Washington to vote on S. 507 in a matter of
days or weeks. So if you agree to help the fight, I urge you to mail your
letter AS SOON AS POSSIBLE, so that your senators here your voice as a
constituent and are more aware of the issues before they vote.

Please feel free to pass this on to your colleagues, friends, and family,
and encourage them to write their senators too. This is a David and Goliath
fight, and the other side has spent a great deal on lobbying and propaganda.
Yet we can win by making our voices heard: senators count the number of
letters they get, whether pro or con, and in principle will vote according
to the general will of their constituents.

Incidentally, although I have included e-mail addresses and fax numbers for
some of the senators, a letter (especially if on your organization's
letterhead) is most likely to be read, followed by fax, followed by e-mail.

If you're interested in learning more about S. 507 and have Web access, a
reasonable place to start is You can also
find the complete bill by searching for "s. 507" at

Your comments would be appreciated. Thanks for your help.

Sincerely yours,


Letter to senators:

The Honorable <first name, last name>

Dear Senator <name>,

As a <fill in your state here> voter and <name your profession if you wish>,
I am writing to urge you to vote NO on S. 507, "The Omnibus Patent Act of
1997", a bill vehemently opposed by many, including some 20 Nobel laureates.

S. 507 contains three major changes that unjustly favor rich, powerful
corporations, allowing them to legally steal the inventions made by
universities, small companies, and individual inventors, including women and
minorities. If passed in its present form, S. 507 would make possible
unfair, unjust, and dishonest business practices, and severely compromise
equal opportunity for all Americans. S. 507 attempts to eradicate 200 years
of U.S. old patent law-which has demonstrated its success in helping to
provide Americans with probably the world's highest standard of living,
quality health care, and jobs for American workers.

S.507 would provide powerful corporations unprecedented tools to litigate
into bankruptcy small businesses and individuals they would prefer not to
pay for new ideas.

The most damaging of the changes is Title IV: Prior Domestic Commercial Use.
This would in effect eliminate the "first-to-invent" principle of the US
patent system, making the filing date the only date of significance.
Fundamental new advances can take years from conception to the development
of a device, process, or substance for which an application can be filed.
All the time and money invested in development by the original inventor
might be for nothing if a corporation can come along and either re-invent
the invention later (this is almost always much easier), or hearing about
the invention, pirate it and put it into commercial use. Indeed, the
corporation need not even have really put it into commercial use; it can
simply assert that it has, since it would be hugely expensive for the
original inventor to prove otherwise in litigation.
Title IV is in clear violation of our Constitution (Article 1, Section 8)
which secures "for limited Times to…Inventors…the exclusive Right to
their…Discoveries". There is nothing "exclusive" about the rights to an
invention which can be freely used by many others. Without exclusivity,
small technology companies, which depend heavily on patents, would be
severely handicapped. Many of these companies would never be formed,
denying our economy new jobs, and consumers valuable new products.

Independent inventors, who often derive their entire income from royalties,
would almost certainly become extinct under S. 507. That would be both
completely unjust and a huge detriment to society, since 20th century
America would be without many of the goods and services it has come to
depend on were it not for the efforts of independents. Meanwhile,
Universities, for whom royalties are an important source of revenue, would
be seriously impaired in their ability, for example, to provide an education
to financially-needy students.

S. 507 can be expected to greatly slow the progress of science and
technology, for example, new drugs). Why is that? University researchers
working in areas with commercial potential will become reluctant to publish
their results, knowing that this would invite corporate infringement with S.
507 serving as a shield to avoid paying for what is appropriated.
S. 507 is unconstitutional in a second way, as it would reward inventors for
keeping their inventions secret. Yet a major purpose of the patent system
("to Promote the Progress of Science and useful Arts") is to benefit society
by the disclosure of inventions. Large companies in particular would not opt
to file for patents on inventions that could be adequately protected as
trade secrets if S. 507 makes them immune from patent infringement.

The second damaging change in S. 507 is Title II, "Early Publication of
Patent Applications". This would enable a competitor to gain market share by
pirating an invention that has been published before patent protection is
available to the inventor. By the time the patent issues, stopping the
infringement may be moot--especially today, when product life cycles can be
very short. The 1995 White House Conference on Small Business stated, "We
further recommend that Congress protect international patent rights in a way
that takes into account the needs of small business, including…that patent
applications remain unpublished the patent is granted".

For inventors wishing to patent overseas, S. 507 would force disclosure of
inventions as much as one year before they would be published under current
law. Early publication is not, as is claimed, required to remedy those few
alleged cases of "submarine" patents (which are claimed to be intentionally
delayed in issuance): With the recent change that makes a patent's term
begin with the application, no inventor can have an incentive to delay
issuance, since there would then be a shorter period in which to enforce the

S. 507's devastating combination of prior user rights--which encourages
early filing--and early publication--which encourages late filing--squeezes
inventors in a vise: Both early and late filing would greatly increase the
risk that an invention will be stolen. Pursuing an invention is already
tremendously risky: with S. 507, the risk would be so great that virtually
no university, small-company, or individual inventor will take it, thus
denying society the tremendous benefits of new ideas.

Finally, Title V of S. 507 would allow a third party requestor to appeal a
decision by the PTO to reinstate patent claims that had been reviewed in a
reexamination. Patents cannot be enforced during the reexamination period
or, presumably, during an appeal. The legal fees associated with such
appeals can heavily stress the resources of small entities. And, even if
the patent eventually emerges intact, appeal creates a window of opportunity
for the requesting party to continue its infringement and gain market share
with impunity. This could be catastrophic, for example, for small companies
seeking investment.

To conclude, S. 507, in its present form, would produce clear winners and
losers if passed. The winners would be rich and powerful corporations, among
them many foreign corporations interested in learning what American
inventors are doing as soon as possible. The losers, meanwhile, would be
universities, small companies, individual inventors, society, economic
growth, technology transfer, and the causes of justice and fairness and

Sincerely yours,

<your signature>

<your printed name>


The Honorable Barbara Boxer
United States Senate
112 Hart Senate Office Building
Washington, DC 20510

The Honorable Dianne Feinstein
United States Senate
112 Hart Senate Office Building
Washington, DC 20510


The Honorable Chuck Grassley
135 Hart Senate Office Building
Washington, DC 20510-1501

The Honorable Tom Harkin
U.S. Senator from Iowa
United States Senate
Washington, DC 20510-2202
(202)224-3254 -- phone
 (202)224-9369 -- fax


The Honorable Edward M. Kennedy
315 Russell Senate Office Building
United States Senate
Washington, DC 20510
Telephone: (202) 224-4543

The Honorable John Kerry
United States Senate
Washington, DC 20510-2102
tel:(202) 224-2742
fax:(202) 224-8525


The Honorable Paul Sarbanes
Washington D.C.
309 Senate Hart Office Building
Washington, D.C. 20510
 (202) 224-4524

The Honorable Barbara Mikulski
709 Hart Senate Office Building
Washington, D.C. 20510-6133
202-224-4654 (phone)
202-224-8858 (fax)


The Honorable Carol Mosely-Braun
Hart Senate Office Building
Washington, DC 20510-1303
PHONE 202 224 2854

The Honorable Dick Durbin
364 Russell Senate Office Bldg.
Washington, DC 20510


The Honorable Daniel Patrick Moynihan
United States Senate
Washington, DC 20510-3201
(202) 224-4451
(202) 228-0406 FAX

The Honorable Alfonse D'Amato
520 Hart Senate Office Building
Washington, DC 20510
Telephone: (202) 224 - 6542

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