By Kevin E. Noonan —

Rep.
Dana Rohrabacher (R-CA46) has written regarding our discussion of his remarks
regarding H.R. 6621 (see "Congressional Misunderstandings (Apparently) Motivate H.R. 6621").  In his own
words (as sent to us by his Communications Director, Ms. Tara Olivia Setmayer):

Mr. Rohrabacher would like the opportunity to
respond to your blog posting today criticizing his opposition to H.R.
6621.

"The information in patent
applications has always been held confidential unless the applicant takes
action to make it public.

"Pre-GATT applicants expected the information
in their applications would remain confidential until a patent was
granted.  It is my understanding that the PTO has never released any
identifying information on any pre-GATT patent application in our nation's
history.  H.R. 6621 will require the PTO to release identifying
information from these applications.

"Current law, under the compromise agreement
of the American Inventors Protection Act of 1999, which I supported,
establishes that applications "shall be kept in confidence by the Patent
and Trademark Office and no information concerning any such application shall
be given without authority of the applicant or owner unless necessary to carry
out the provisions of an Act of Congress or in such special circumstances as
may be determined by the Director."  That legislation then detailed
other circumstances under which an applicant can allow the publishing of patent
application information, such as in the case of an inventor wishing to file
internationally.

"Perhaps I was guilty of a
rhetorical flourish or two on the House floor, and maybe I used a
generalization when I should have been precise, but I believe these facts
support my contention that information in patent applications is, and has
always been, held confidential unless the applicant takes action to make it
public."

We
thank the Congressman for contacting us, and admit that Rep. Rohrabacher is
correct:  "pre-GATT" applications were filed at a time when the U.S.
Patent and Trademark Office kept pending U.S. patent applications secret, and
publishing information about them will detract from their confidentiality
interests, with the deleterious consequences mentioned by the Congressman.

However,
it is more than a quibble that the vast majority of applications filed after
enactment of the American Inventors' Protection Act (AIPA) are published, and not only that the entire prosecution history is
made public post-publication.  The
Congressman is wrong in asserting that "information in patent applications
is, and has always been, held confidential unless the applicant takes action to
make it public."  Since passage of
the AIPA, patent information is public
~18 months after the earliest priority date unless
the applicant "take action" to keep it private.  That is a policy decision made long ago, in
keeping with the belief that harmonizing U.S. and rest-of-the-world patent practice would be
generally beneficial and that there was an advantage to encouraging applicants
to speed their applications to allowance in light of the disclosure by
publication 18 months after filing.

Rep.
Rohrabacher obviously understands more about patent law than many of his
colleagues, especially those like Rep. Smith who believe applicant culpability
is the cause of these delayed patents.