Saturday, October 3, 2009

Federico's Commentary should be posted on uspto.gov

Today I sent a message to the Patent Office's webmaster asking that the website post Federico's Commentary to the 1952 Patent Act. Federico's Commentary (sometimes "Commentaries") is mentioned, but without a link to the text itself, in a 2007 document from the Official Gazette: http://www.uspto.gov/web/offices/com/sol/og/2007/week37/patchng.htm (the notorious final rules for continuing applications, the subject of the litigation brought by Tafas and GlaxoSmithKline against the Patent Office).

The Commentary, which provides important historical information about the drafting of the Patent Act of 1952, used to be included by West Publishing in the front of the printed volume of 35 USCA (back in the days when lawyers looked for statutes in books). At some point after West stopped doing this, the Journal of the Patent and Trademark Office Society (JPTOS) reprinted Federico's Commentary at 75 JPTOS 161 (1993). This is the citation in the 2007 Official Gazette article. Later JPTOS published a small booklet with both the Commentary and a speech by Judge Rich that also addressed the history of the 1952 Act.  I own a copy of this booklet, but I believe it went out of print long ago.

As far as I can tell, Federico's text is not available from Lexis or Westlaw. Only HeinOnline has 75 JPTOS 161.  A publicly available, word-searchable copy of Federico's Commentary ought to be on uspto.gov.

If you agree, please write the webmaster, too.

If you don't know what Federico's Commentaries are, or who P J Federico was, here is some information:
  • P J Federico was Examiner-in-Chief at the Patent Office at the time he helped draft the Patent Act of 1952 and when he wrote the Commentary. 
  • The 2007 Official Gazette document (linked above) described the Commentary as follows:
    Following enactment, Federico gave a series of lectures to teach the patent bar about the new law. Federico's lectures were transcribed, consolidated, and reprinted for many years in title 35, United States Code Annotated. See 35 U.S.C.A. sections 1 to 110 (1954). The Federal Circuit has considered Federico's Commentary to be "an invaluable insight into the intentions of the drafters of the Act." Symbol I [Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361, 161 U.S.P.Q.2d 1515(Fed. Cir. 2002)] , 277 F.3d at 1366, 61 U.S.P.Q.2d at 1519.

Federico is barely mentioned on upsto.gov. His title, Examiner-in-Chief, has also disappeared.  It had been a statutory Patent Office position mentioned in 35 USC 3 and 7 and associated with the Board of Appeals (later the Board of Patent Appeals and Interferences). It was eliminated in 1999 with the enactment of PL 106-113 which changed, among so many other things, the titles of positions at the PTO.

Besides the 2007 Official Gazette document above, uspto.gov provided a few other hits for "Federico's Commentaries", "P J Federico", and "Federico Examiner":
PS Federico also is cited in, e.g., Graham v. Deere, 383 US 1, 7 (1966), for that 1936 Journal of the Patent Office Society (18 JPOS 237) article about the Patent Act of 1790.  I have seen that article and my recollection is that Federico did not yet have the title Examiner-in-Chief. I believe I have also seen his obituary but was unable to find it today. I will post any additional information when I find it,  unless, of course, uspto.gov gets to it first.

No comments: