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We have a highly professional and dedicated staff working under a large backlog and under environmental conditions that make its performance all the more impressive.

If we are to maintain a patent system of the highest quality, as befits the world's foremost industrial nation, we must work to bring recognition and rewards to the unusually qualified professionals in the Patent Office commensurate with the high order of their responsibilities as the custodians of the U.S. patent system.

Mr. Chairman, I will be very pleased to answer any questions.
Chairman KASTEN MEIER. Thank you, Dr. Hornig.

You are, of course, in touch with the Nation's scientific community, the engineers and scientists. Have they or any associations or groups of them and they are not directly involved in the practice of patent law itself-in recent years come to you and talked to you about patent law and its inadequacies as they see it?

Dr. HORNIG. Not at great length. I think most of the individuals. among them have been concerned about the expense and complexity of the patent procedure and have expressed this often. Specifically, I have received a communication from the American Chemical Society and an expression of views by the Chairman of the Committee on Science and Public Policy of the National Academy of Sciences.

Chairman KASTEN MEIER. On the last page of your statement you mentioned section 106 of the bill as it relates to data processing and computers and prescribes what shall not be patentable. You are aware, of course, that there is a corollary problem of copyright and we have had to wrestle with that.

I am not going into copyright law at this time; but do you think that the two problems may be considered relative to one another? Dr. HORNIG. There are certain points of contact between the two problems, but I think the essential problems are a little different in copyright law and in patent law.

The problem here, which is one of great concern, is whether to consider computer programs as simply a set of operating instructions, as some information. This is one point of view.

The other point of view is that the general purpose computer in a sense is nothing until it has the program in it; and that the program, therefore, determines not what it should do but what it is. I think this is the essence of the argument.

The argument that is made for the patentability of computer programs would, in effect, say that in any mechanical or electrical device there are information-transmitting systems. There are either rods which push or electrical signals which pass from one part to another to tell the device what to do. There is no essential difference between whether the device has built into it a rod which pushes or a signal which passes, or whether it carries in it a punched card or tape which says push the rod or transmit the signal.

So, these question are indeed subtle and difficult. The Patent Office, of course, has given them very careful consideration and come to the conclusion that they should not be patentable.

Chairman KASTENMEIER. Do you think we understand enough about this relatively dynamic field to define precisely what it is we want to cover, or exclude? You seem to call for a more precise definition.

Dr. HORNIG. Yes, I do, because the problem is that if one has the section which bars the patentability of computer programs, then one needs a precise boundary line between what is patentable and what is not patentable.

I think this would be my main point. This whole problem may be of considerable import.

I have with me, for example, some examples of inventions that might be made, but haven't as yet, that might involve a computer.

It is quite conceivable, for instance, that someone might invent a device which can recognize a human voice which, by comparing what I say now with what I have said in the past, could identify me, as

human listeners do.

This would be of considerable import for many purposes. It would be a very worthwhile invention, and the most likely route by which this may happen is probably through a suitable program for a general purpose computer.

Is this, or is this not an invention? I can multiply examples of that sort. I think-and this is my highly personal view, let me say-this problem is sufficiently complex so that perhaps it ought to be further examined and that a decision shouldn't be made in the legislation. Perhaps this matter ought to be put aside and treated separately. I don't know.

Chairman KASTENMEIER. That would not be a novel approach, I might add.

Dr. HORNIG. I don't think this is an issue over which the consideration of this legislation should be delayed in any way whatever, because I don't think it is in any way central to the quality of the Patent Reform Act.

Chairman KASTENMEIER. I appreciate your comment, Dr. Hornig. The gentleman from Virginia.

Mr. POFF. Thank you, Mr. Chairman. I believe the distinguished witness was an observer to the Commission representing the President?

Dr. HORNIG. That is correct.

Mr. POFF. In your testimony you indicate that you support the suggestion of a personal grace period. Do you care to say how long you think that period should be?

Dr. HORNIG. I, first, would like to clarify my comment. I didn't quite say I support the suggestion of personal grace period; I said it would not give me any problems.

Mr. POFF. I didn't intend to put words in the witness' mouth. I assumed, however, he had no unkind predisposition in that direction.

Dr. HORNIG. Not to a short personal grace period, periods like 3 months or 6 months.

Mr. POFF. I am sure the gentleman shares the feelings expressed by the Commission concerning the desirability of increasing patent validity and by pursuing the goal which now may be unattainable of a universal patent? Is this correct?

Dr. HORNIG. I think that if we could arrive at a universal patent system which would meet all of our domestic requirements in the process, I would certainly support it.

Mr. POFF. And as one of the steps in that direction, I assume you feel that there should be improvement in the Paris Convention and adherence to its mandates?

Dr. HORNIG. I think so.

Mr. POFF. In light of that, I wonder why the Commission neglected to include rather, the bill neglected to include one of the proposals of the Commission, namely, that displays and international exhibits should be excluded from the definition of prior art.

I am sure you would have a continuing concern in that field. Dr. HORNIG. I think the simple preliminary application procedure really eliminates in a large measure the need for that protection.

Mr. POFF. Another question: Your area of concern is with every aspect of the scientific endeavor, and the Government is involved rather heavily in scientific reasearch, and lets many contracts and invests many dollars every year in that effort.

Do you have an opinion as to why the Commission did not venture a recommendation about patent rights in this area?

Dr. HORNIG. As you know, sir, this is a very difficult and complicated area in itself, and I think that the Commission quite properly took the position that this might represent the next year's work of another Commission.

Mr. POFF. As a matter of fact, the very subject is under consideration in the executive establishment now; isn't it?

Dr. HORNIG. Well, it is under consideration before the Congress right

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Mr. POFF. I believe in the executive establishment, as well.

Dr. HORNIG. Of course, there has been a patent policy statement on that question, which was issued by President Kennedy in 1963 and which has been subsequently endorsed by President Johnson. It is currently under review by the Patent Policy Committee of the Federal Council for Science and Technology.

Mr. POFF. I am not sure that this question should be put to this witness, Mr. Chairman, and I will simply propound it with the hope I can get the answer in some way for inclusion in the record. I think it is important.

Section 111 deals with the application. Subsection (c) provides that the preliminary application shall contain a written description of the invention and shall otherwise comply with the requirement of paragraph (a). Those requirements are that the application be signed, that it include the name of each person believed to have made an inventive contribution, and that it contain a statement of the facts supporting the allegation of ownership if the application is filed by a person who is not the inventor and shall be accompanied by the required fee.

This leads me to wonder as to what would be the scope of the preliminary application if it is not more than what is described in subsection (a), then it has one dimension.

It has entirely a different dimension, however, if I properly interpret section 120, subparagraph (a) (2), which reads in pertinent part as follows:

A complete application * * shall have the same effect * filed on the date a preliminary application was filed, if:

as though

(2) the invention sought to be patented, including every feature recited in the claims therefor—

And I underscore that clause including every feature cited in the claims therefor

is disclosed in the preliminary application so as to enable any person skilled in the art *** to make and use the same.

Now, it seems to me that there is an inconsistency of definitions here. I don't know how the patent attorney could properly advise his client as to what needed to be disclosed in the preliminary application.

Presumably, forms will be printed by the Patent Office to expedite this procedure, but I think someone now needs to be a little more careful in explaining just what the scope of the preliminary application would be.

Chairman KASTEN MEIER. Does the witness feel he can answer that type of question?

Dr. HORNIG. Yes. Would you like to take a crack at it, Dave?

Mr. BECKLER. The requirement for the preliminary application would be a written description of the invention, which, presumably, would be a complete description of that invention.

Mr. POFF. You mean including every feature of every claim?

Mr. BECKLER. Of course, the claims wouldn't be developed until the filing of the full application, but it would be important that the inventor fully describe the scope and detail of his invention so that it would support the later inclusion of claims.

There is a requirement that the invention be fully described, but not in the same formal terms as the complete application.

Mr. POFF. Who is to decide where the requirement is met and where it is not met? Is the Patent Office in each case to make a decision with respect to each application, or is the bar to have some certainty of knowledge about the extent to which each feature of each claim must be described in writing?

Dr. HORNIG. Each feature of the invention recited in the claims must be recited in the preliminary application.

What this calls for, I think, is that the preliminary application recite all the details on which claims are going to be based, which does not, it seems to me

Mr. POFF. You mean all the details of the invention itself?

Dr. HORNIG. All the details of the invention on which claims are to be based. I think this is what it states, which I think is reasonable. Mr. POFF. Would that not be rather extensive?

Dr. HORNIG. I think this is the statement that there is an invention. Mr. POFF. I beg your pardon?

Dr. HORNIG. This is simply the requirement that I be able to describe an invention that I have made and not be merely speculative. I think that Mr. Roth, in questioning

Mr. POFF. I appreciate the answers, and I think they are responsive and, yet, may I request that the record be held open on this question in the event a more complete answer is available?

Chairman KASTEN MEIER. Yes. Perhaps the question might be better put to the Commissioner of Patents.

Let the record show the question, and the question can be answered by Dr. Hornig or his office at another date, or also be referred to any other appropriate person for a complete, definitive answer to the question propounded by the gentleman from Virginia.

Dr. HORNIG. I will be happy to elaborate all I can, sir.

Mr. POFF. I am through.

Chairman KASTEN MEIER. The gentleman from Michigan.

Mr. HUTCHINSON. Dr. Hornig, on page 8 of your statement, speaking about the terms of patents and so forth, did I understand this bill would call for a patent term of 20 years, and the present law provides 17 years? Also how long does it normally take to process a patent application through the Patent Office? About 3 years?

Dr. HORNIG. I think at the present time about 212 to 3 years.

Mr. HUTCHINSON. So that simply adding 3 years to the terms of the patent would really provide no extension of it. The effective time. would be about the same as it is now-about 17 years.

The question I have in my mind raised by your statement is this: it is highly suggestive here that this arrangement would encourage patent applicants to hurry on in the process, to get it through as quickly as possible, because if they don't it will be counting against their time. It occurs to me that there might also be an increased amount of pressure on the Patent Office, and perhaps on the Congress and so on to enlarge the Patent Office, because they might claim that the delay is on the part of the Patent Office rather than the applicant? Is this likely?

Dr. HORNIG. I don't think so. The Patent Office does have a problem now in its backlog, but the procedures provided in the bill would not complicate the work of the Patent Office.

There would undoubtedly be a heavy load of preliminary applications, but that is simply a filing operation, and it does not require work of an examiner.

The provisions for publishing and introducing into the examination period prior art cited from outside the Patent Office should expedite the work of the examiners.

Mr. HUTCHINSON. What all this suggests to me, though, is that there is going to be a lot more pressure for increasing the number of examiners and enlarging the staff of the Patent Office in order to get going on these things, because every day counts against the effective

term.

Dr. HORNIG. I think there is an incentive to move things properly, but I don't think that there is necessarily any proper reason for a delay in the Patent Office in the issuance of patents, so I think that the matter you raise is really independent of what patent law we operate under.

Mr. HUTCHINSON. Except that as the system now works the 17-year term commences as the time the patent is issued, doesn't it?

Dr. HORNIG. I think you are quite correct that, from the standpoint of the inventor, delay extends his term, but from the standpoint of the public interest, from the standpoint of those the patent may affect, there is every reason now why we should bring patents into full force and effect at the earliest possible date.

Mr. HUTCHINSON. That is the only question that I have, sir.

Chairman KASTEN MEIER. The gentleman from Delaware, Mr. Roth. Mr. ROTH. I would like to go back again to this problem of the preliminary application, as I am concerned that it could still be provocative of litigation.

To your knowledge are there any foreign countries that currently have this system of the preliminary application?

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