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now,

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

too. 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 * * * as though Bled on the date a preliminary application was filed, if :

(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 thereforis 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 KASTENMEIER. 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 KASTENMEIER. 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 KASTENMEIER. 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 21/2 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 KASTENMEIER. The gentleman from Delaware, Mr. Roth.

Mr. Rory. 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?

Dr. HORNIG. No. Most foreign countries, other than Canada, have a first-to-file system. I am not aware offhand-Mr. Beckler has informed me that the United Kingdom has a provisional application system which is related somewhat to this.

Mr. Roth. On page 8 of your testimony you make the statement that there is concern that the first-to-file system has a possible disadvantage of forcing premature filing of application before the breadth of the invention has been fully developed.

You state later in the same paragraph that you believe that the provision of the act for filing the preliminary application, with a year's time to refine it into a final application suitable for full examination can meet the concern of those who are worried about the problems of hasty filing of patent applications.

I am concerned as to whether it might not have the opposite effect. I just wondered if the right to file a preliminary application and perhaps the lack of clarity as to what that requires may not have the effect of causing premature filing?

Dr. HORNIG. This, of course, relates back to the question that Mr. Poff asked me. I would like to look into the matter a little further, but I would suggest that the requirement that sufficient detail be disclosed to support subsequent claims is a very considerable restraint on the filing of purely speculative preliminary applications.

Mr. Rotu. Just one final brief question : on the advisory committee to the Secretary of Commerce in the patent area, was any thought given to naming certain officials who should automatically be members of this committee or should complete discretion be given to the Secretary of Commerce?

Dr. HORNIG. I don't know how much thought was given, but both the members of the Commission and our Committee thought appointments should be made by the Secretary of Commerce.

I don't think any serious thought was given to naming statutory members.

Mr. Roth. Would you think there was any wisdom in, for example, naming such people as the head of the Patent Office?

Dr. HORNIG. My own experience with advisory committees is that they are the best advisors when they are free and independent. Since the head of the Patent Office would be one of the recipients of advice, it would seem to me he would certainly be in touch with the committee. It would be better not to have him as a member of the committee which is to advise the Department of Commerce.

Mr. Roth. Thank you.

Chairman KASTENMEIER. The committee thanks you, Dr. Hornig, for your contribution this morning.

The Chair would like to announce that this concludes the testimony that the subcommittee will receive this morning; that the next meeting of the committee is set for April 26, next Wednesday, at 10 a.m., in this room, at which time we will hear from Judge Simon H. Rifkind, Cochairman of the President's Commission on the Patent System. Also the Small Business Administration which will be represented by its general counsel, Mr. Zeidman, and its assistant general counsel, Mr. Davidson.

Until that time, the committee stands adjourned.

(Whereupon, at 12:35 o'clock p.m., Thursday, April 20, 1967, the subcommittee hearing in the above-entitled matter was adjourned.)

GENERAL REVISION OF THE PATENT LAWS

WEDNESDAY, APRIL 26, 1967

HOUSE OF REPRESENTATIVES,
SUBCOMMITTEE No. 3 OF THE
COMMITTEE ON THE JUDICIARY,

Washington, D.C. The subcommittee met, pursuant to adjournment, at 10 a.m., in room 2226, the Rayburn House Office Building, Hon. Robert W. Kastenmeier presiding.

Present: Representatives Kastenmeier, Edwards, Poff, Hutchinson, and Roth.

Also present: Herbert Fuchs, counsel; and John W. Dean III, associate counsel.

Chairman KASTENMEIER. The subcommittee will come to order for the further consideration of H.R. 5924, the so-called Patent Reform Act. Our first witness this morining will be Judge Simon H. Rifkind, who cochaired the President's Commission on the Patent System.

Judge Rifkind, you are most welcome to the committee. I understand you do not have a prepared text but you may proceed in any manner you wish.

STATEMENT OF JUDGE SIMON RIFKIND, COCHAIRMAN OF THE

PRESIDENT'S COMMISSION ON THE PATENT SYSTEM

Mr. RIFKIND. I was just about to apologize that I did not have a written text which I could hand in and have you peruse. I have not had the opportunity to prepare it. But I have prepared some notes which will at least prevent me from wandering too far afield. I hope that I shall make some small contribution.

For your record my name is Simon H. Rifkind. I am a practicing lawyer with offices in New York City.

Let me say at the very outset that I have to appraise my qualifications to be of assistance here to you rather modestly. I am not a patent lawyer, and I do not quite understand what series of misadventures brought me to this chair, before this very distinguished committee. I have had some small experience in the patent field and I don't want to understate it. It is not my purpose to overstate my lack of capacity. On the bench, as a Federal district judge, of course, I have had to try some patent cases and, at the bar I had patent cases, both at the trial and at the appellate level. But operating on the theory that a good patent lawyer can teach a trial lawyer to try a patent case, I have never mastered the patent law. Always some patent lawyer gave me sufficient of the substantive law I needed in order to enable me to try or argue the patent case. There is some

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