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.