further determining whether the preliminary application filed constitutes a sufficiently complete disclosure of the invention to warrant granting of a patent when and if the complete application is finally filed. Mr. BRENNER. Well, sir, we believe that the use of the preliminary would actually simplify and expedite our work. I would like to point out that we would not examine these preliminary applications in all cases. It would only arise in a limited number of cases where two inventors had close filing dates, or there was some prior art that came into the picture between the filing of the preliminary and the filing of the complete. It would be simpler for our examiners to operate with these preliminaries because they would know then, precisely what the dates were and what the disclosure was. At the present time, because we are not operating this way, the applicant has an opportunity to file an affidavit "swearing back" of some of these interim publications. This complicates the work of the examiner, because he never knows in his searching just when there might be a possibility to do this; so in effect, in these cases, he has to do the job twice. He examines it first, without knowing if there is any earlier date; and, then if it turns out that there is an earlier date, then he has to reexamine the situation. So at least, as we see it, the use of preliminary applications would simplify and expedite our work. Mr. POFF. Do you think it would serve any useful function if section 120 were to spell out a presumption of correctness in the Patent Office's determination of the breadth of the disclosure of the preliminary application? Mr. BRENNER. Well, I think, Mr. Congressman, the preliminary application would speak for itself. It would be good for all that it disclosed and I don't know whether you could really give a presumption over and above what might be disclosed in the preliminary. This, I think, is an important part of the bill and we will be interested in hearing any testimony that would indicate how to improve the operation of the preliminary. Mr. POFF. Now, if I may direct your attention to section 123 under paragraph-subparagraph A-of that section, may I ask if complete applications ultimately to be abandoned, will nevertheless be published? Mr. BRENNER. If the prosecution on the application were not concluded within 18 to 24 months, then the application would be published, and then perhaps the abandonment would come later; but, if the application were examined before this time for publication, the applicant could abandon the case in secrecy. Also, I believe the law provides that at the option of the applicant, if he would like to have his application published, this would be possible and there are certain applicants in certain situations that would desire to do this. Mr. PoFF. Now, if I may go to section 136, which has to do with reexamination after publication. Would it perhaps be appropriate to specify in this section of the bill that the first person who makes citations be made known to the patentee, so that he can take into account who the informant is, and his relationship to the situation. Dr. HOLLOMON. No. In our view, Mr. Congressman, I think it would discourage it. The purpose of the citation period is not an adversary proceeding. Let me go back to the question. We have a couple of thousand-how many examiners do we have in the office? Mr. BRENNER. About 1,050. Dr. HOLLOMON. 1,050 examiners in the Office. The rate of growth of the technical literature of the world, is 8 to 10 percent a year. It is simply becoming impossible for the examiner to know thoroughly all of the pertinent art. He is pretty well up on the patent art, but the technical art is just very difficult. Now, the whole purpose of the Commission's recommendation in this section is not to have an adversary proceeding, but simply to have a means whereby somebody with incentive can bring to the attention of the examiner pertinent art that he may have overlooked. It is not a question of saying, you know, "I have a case against your patent." He then goes back, just as if that were a literature reference in the literature, and then reexamines the case to see whether or not it is valid. In our view, this is not a question of knowing who did it. This is a question, simply, of extending the eyes and arms, if you will, of the patent examiner. If it were an adversary proceeding, I would quite agree with you. If it were truly an adversary proceeding, as some other countries have, then he ought to know who his adversaries are. Mr. POFF. Parenthetically, may I disabuse you of any feeling that I may have formed an opinion? Dr. HOLLOMON. I don't think so. Mr. POFF. My questions should not be interpreted as reflecting any philosophical conviction. When you say you are agreeing with me, you are not properly stating the proposition. I am asking you to respond only for informational purposes. Dr. HOLLOMON. I apologize. I did not mean to imply that, Mr. Congressman. Mr. POFF. Yes, I am sure you did not. Now, I ask further in that context, however, if you do not think that the informant might have the opportunity to inspect the file history either before or after he has filed the patent or application, which he is to rely upon? Mr. BRENNER. I believe I understand the question. The way the procedure would operate, would be that after a case had been allowed by the examiner, which means he feels that it is patentable, it would be published, and then during this period of 3 to 6 months, the public would have an opportunity to send in to the Patent Office, any pertinent information or prior art. Now, this would be an ex parte procedure in the Patent Office-these third parties would not get involved in this. This information would be reviewed by the Patent Office, and if it was felt not to be pertinent, then we would immediately grant the patent. However, if we felt that this information were pertinent and would decide that this invention was not patentable, then we would open up the case for reexamination, in which case we would advise the applicant of what was this information, and why we thought his invention was unpatentable. He would have an opportunity to reply. In effect, you would reexamine it and give the applicant a full opportunity to present his position, and if the Patent Office still refused, and he felt he had an invention, he could appeal to our Board of Appeals; then into courts. So all of the applicant's rights would be fully protected, I believe, Mr. Congress man. Mr. POFF. I have a series of questions, which time will not permit me to ask. I want to defer to my learned colleague from Delaware, but one final question. I wonder if you feel that the Congress or the Commissioner of Patents would be the one who determines whether or not this experimental system of deferred examination procedure should be installed? Mr. BRENNER. Well, Mr. Congressman, the proposal of course, is that this be part of the legislation. This would be one of the matters that the Congress would have to consider, whether this should be included or not. In effect, they would not be approving the institution of the deferred examination procedure at this point, but rather, the possibility that it would be in the future. It would mean, by putting it on a standby basis, that if the Patent Office could not maintain a high quality, immediate type of examination system, that then, this system could be instituted for a period of time in order to relieve some of the problems that result from the backlog. Mr. POFF. I don't want to register an attitude about the merits or demerits of the procedure, yet I call attention to the fact that what is involved here is a little more than just deferral. We are making something of a substantive decision when we decide that we will empower the executive agency to make the decision-possibly properly, we should make that decision ourselves. Mr. BRENNER. Well, Mr. Congressman, of course, the final decision on this rests with Congress as a result of the hearings and your deliberations. Dr. HOLLOMON. I think the Congressman is asking whether he should delegate that responsibility. Mr. POFF. Precisely. Dr. HOLLOMON. I think there is a safeguard in the matter. I think that the view of the President's Commission was that you might want to try it for a while, for a very narrow section of the art, to see whether or not it works or what difficulties you get into, rather than to go whole hog for such a conversion. Certainly, knowing some of its deliberations, some members of the Commission felt we ought to go right now to a deferred system. Others felt we should not at all. I think we ought to watch the Dutch experience, and also, that the Commissioner under appropriate safeguards, should be able to institute at least on a narrow basis, without coming back to Congress-to answer your question. Mr. POFF. Do you anticipate that it would be impractical to watch the Dutch experiment, and then come back to the Congress and ask for a statute on the subject at that time? Dr. HOLLOMON. You see, one of the things you like to do, Mr. Congressman, is you like to try this-if you decide to try it on only a section of the art. I would not recommend at this stage of the game-even if the Dutch experiment were satisfactory and we were still further behindthe wholehearted conversion to the whole system. I would want to try it for a while. I think such a trial allows the Commissioner an appro priate safeguard. I think the Congress can write in enough safeguards to allow him to undertake such a trial. Mr. POFF. I thank you. I yield to the gentleman from Delaware. Mr. ROTH. I will limit my question to just one today. As I understand the purpose of the patent system, it is to devote itself to the progress of useful arts. One question I have of you, Mr. Hollomon is, I was curious as to why that purpose was not included in the list of purposes of the bill on page 11 of your statement? Dr. HOLLOMON. Yes I say this, the reason is that the whole purpose of the bill in itself, is to maintain that purpose of the patent system, and these statements on page 11 were the explicit purposes of this particular piece of legislation. The whole fact that we come forward with legislation to strengthen the system is only for the fact that we believe that the patent system does in fact, contribute to the spread of science and the development of the useful arts. That is at present, the function of the whole system itself. This may be just a semantic difficulty. We see, as the particular objective of this bill, the statement on page 11. Mr. ROTH. It just strikes me that it is sufficiently important that it is well worth being included, as you start out by saying, "These are the broad purposes of the bill." It seems to me this would be the most important one. Dr. HOLLOMON. These are the broad purposes of the bill insofar as they change the present legislation. I think that would be a fair statement. Mr. ROTH. That is all, Mr. Chairman. Mr. KASTENMEIER. Thank you. Counsel has one last question. Mr. FUCHS. Mr. Chairman, I would like to ask Commissioner Brenner whether he is familiar with S. 1377 introduced in the Senate by Senator Nelson? Mr. BRENNER. Yes, sir. We are familiar with that particular bill. Mr. FUCHS. This bill would authorize the Commissioner to establish search centers, would it not? Mr. BRENNER. Yes, sir. That is at least one of the main purposes of that bill. Mr. FUCHS. Do you approve of that? Mr. BRENNER. Well, we believe that this proposal, by Senator Nelson, has considerable merit and we are presently taking certain steps to place our patented files on microfilm, which when accomplished, would make quite possible an opportunity like Senator Nelson is proposing. We would be very happy to give serious consideration to this, and perhaps, it might be something to be considered as an addition to the proposed legislation we are talking about here today. Mr. FUCHS. Thank you. Mr. KASTENMEIER. The Chair would like to thank both witnesses, Dr. Hollomon and Commissioner Brenner for this testimony this morning. The Chair would like to announce that the next committee meeting will be on April 20 at 10 o'clock in this room, room 2226. The witnesses will be Donald S. Turner, the Assistant Attorney General, and Donald F. Hornig, Director of the Office of Science and Technology. Until that time then, the committee stands adjourned. (Whereupon, at 12:30 p.m., the committee adjourned until Thursday, April 20, 1967, at 10 a.m.) GENERAL REVISION OF THE PATENT LAWS THURSDAY, APRIL 20, 1967 HOUSE OF REPRESENTATIVES, The subcommittee met, pursuant to adjournment, at 10 a.m., in room 2226, Rayburn House Office Building, Hon. Robert W. Kastenmeier presiding. Present: Representatives Kastenmeier, Edwards, Poff, Hutchinson, and Roth. Also present: Herbert Fuchs, counsel; and Donald G. Benn, associate counsel. Chairman KASTEN MEIER. The subcommittee will come to order for the further consideration of H.R. 5924, the patent law revision bill. The subcommittee is pleased to have as our first witness this morning the Honorable Donald F. Turner, Assistant Attorney General in Charge of the Antitrust Division, Department of Justice. Mr. Turner, welcome to the committee. You may proceed, sir. STATEMENT OF HON. DONALD F. TURNER, ASSISTANT ATTORNEY GENERAL IN CHARGE OF THE ANTITRUST DIVISION Mr. TURNER. Thank you, Mr. Chairman. I am accompanied by Mr. Richard H. Stern, my colleague from the Antitrust Division. I appreciate the opportunity to discuss with you a bill now being considered by this committee, H.R. 5924. This bill is the first complete revision of the Patent Act since 1836. As you know, the bill is based primarily on the recommendations of a Commission of leading American citizens, appointed by the President in July 1965, to study ways "to insure that the patent system will be more effective in serving the public interest." When the President received the Commission's report last December, he directed the Commerce Department, the Justice Department, and his Science Adviser to consider it and to develop legislative proposals to carry out its objectives to the extent deemed appropriate. The patent reform bill of 1967 is the result of that review. The bill, therefore, is the result of a committee effort. There has been agreement among us that the main thrust of the Commission's report should be incorporated in a Patent Code revision, as it is in this bill. The Department of Justice strongly supports the objectives of the bill-(1) to improve the quality and reliability of U.S. patents; (2) to reduce the time and expense of obtaining patents; (3) to speed public disclosure of scientific and technological information; and (4) to move |