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. ROTH. 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 KASTEN MEIER. 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, 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 KASTEN MEIER. 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 degree of self-preservation involved in my statement. I do not expect that I shall be able to answer questions which are designed to deal with the technicalities of this branch of the law. That is not my field. I would suppose that on the Commission, the President's Commission for Patent Revision, I served as a kind of lay-juror in the midst of a great many people who were, of course, peculiarly gifted and experienced in this field. Indeed, it was only after some sessions that I became an Acting Chairman and then Cochairman of this Commission by the reason of the illness of the Chairman designated by the President. But let me say to you gentlemen, that having had some experience in chairing one group or another in the course of my life, never before have I encountered a group of men who were such rugged individualists as this particular group over which it was my privilege to preside. Indeed so much so, that in the beginning I experienced a considerable sense of alarm about our capacity ever to arrive at a common result because of the very ruggedness and individualism of the members of this Commission. Among them of course were some of the captains of those industries which are at the very growing tip of our new technology. Men like Mr. Thornton of Litton Industries, men like Mr. Birkenstock of IBM, are right at the bit point of the penetration into the area of the unknown, as far as the developing and exploding technology is concerned. We had genius inventors on this Commission; a man like Dr. Bardeen, the inventor of the transistor. There were on this Commission persons who were peculiarly qualified because they were very active leading members of the patent bar like Mr. Neuman and Mr. Clement. And then we had educators, who of course, were very much alive to the peculiar requirements of the patent system as it affected people in the academic world; men like Guy Stever, the head of Carnegie University and of course, Mr. Ranson, the chancellor of the University of Texas, our first chairman. Then we had specialists in the field of research and development, in the practical sense: men like Howard Nason, president of the Monsanto Research Corp. and Bernard Oliver of Hewlitt-Packard, both men in charge of vast research programs for these were important corporations. And of course we had a whole group of Government people around us from State, Defense, the scientific agencies, and the Small Business Administration, a group which was not at all restrained in the expression of its special interests, and naturally, the Commission of Patents. Let me say at the very outset that if anybody is under the impression that this was a group of VIP's, assembled by the President, who turned over the task of working out a proposal for the revision of the patent system to a staff and then, having read the staff's proposal, subscribed the rather standard "We concur," then that person is violently mistaken as to the history of this Commission. No such thing occurred. We were briefed at an opening session by Dr. Holloman. I hope Dr. Holloman doesn't mind if he hears me say that the scope of our assignment as he exhibited it to us left me, at least, with a sense of complete dissatisfaction in that it seemed to me that the task assigned to us was of much too modest a scale to warrant our effort and concern. I was not interested in changing some commas or dotting some i's in the patent statute. Either we were going to do something that was going to make a difference to the patent system of the United States or we ought to go home and let some clerks handle it. Well it did not take very long before this Commission took hold and produced what I suppose is a rather major revision of the patent structure of the United States. There were many discussions, many debates. At first they seemed to be going in every possible direction; but out of the collision of the minds of these peculiarly gifted people there finally emerged a pattern of constructive ideas which began to take shape as a series of provocative recommendations. I will boldly suggest that this is one case where the deliberations were of such a character that the end product generated by this group of people was superior, in my opinion, to that which any one of them could have created by his own efforts. I have had some experience with what happens when groups try to write something. Generally it gets diluted down to the lowest common denominator. Such was not the experience, in my opinion, of this body which prepared this report. I think that out of the very accommodation which was made necessary by the colliding views of the different interests that were represented, there emerged solutions to a number of problems which are superior, and indeed more conducive, to the attainment of the objectives of the patent statute, than if the greatest and wisest of the members were available to write this report alone. One of the heart-warming aspects of the discussions, which left a very deep impression upon my mind, was that despite the fact that a great many of these members represented so-called large, vested interests, and I refer to the vested interests in both ends of the spectrum, very large and very small, their thinking was suffused and colored by a very deep sense of the public purpose we were serving and the public welfare we were supposed to advance. We were dealing with a a group of gentlemen who could surmount their particular, parochial interests and achieve a result which they regarded as a patriotic contribution to the welfare of their country. Now in the actual operation of the Commission's work, our first assignment was to mark out the boundaries of a doable task. By a “doable task” I mean something that could be accomplished within the space of a year, which was the period of time made available to us by the President, and which could be achieved by the talents of the men available to us. There was no use our undertaking to do something which was either beyond our time limits or beyond our capacity. We did not stop to cogitate unduly about the ultimate philosophical consequences of having a patent system or not having one. We did subscribe to some generalizations about it, but this was no seminar conducted by philosophers at a university. We made a literature search, as you would expect, and we collected a catalog of all kinds of suggestions, gripes, criticisms, squawks that had been poured into the literature over a period of a generation. That ranged all the way from such grand matters as a reexamination of the philosophy underlying the patent system to such petty matters as to whether the drawings which normally accompany a patent should be on the first page of the instrument issued by the Patent Office or on the back page of the instrument and whether the patent should be printed in double column or single column. It ranged all the way. But of course our report or the report of this Commission does not attempt to run this whole gamut. We constricted it, confined it to a limited and stated number of objectives. Against the philosophical foundations which underlie the Constitution's grant of the patent power, nobody was willing to mount a challenge. We were spared the necessity of that long deliberation. I will confess that we accepted it as a "given" that the patent system has in the past performed well its constitutional mandate; namely, to promote the progress of useful arts. In answer to the question, does a patent system have utility today? the Commission unanimously agreed on the following proposition. It agreed that the patent system today is capable of continuing to provide an incentive to research development and innovation, provided it is modernized to meet the new facts of modern technology. We did consider a number of possible alternatives or supplements but they did not survive scrutiny. Those of you who have read the President's letter of transmittal to the Speaker accompanying the bill which is under consideration by this committee will perhaps have noted that the President is even more bullish on the patent system than your Commission. Now I will again make a confession, speaking for myself alone. I have a suspicion, built on nothing but hunch, that the really great breakthroughs in technology which have benefited mankind over the ages would have happened, patent system or no patent system. The really great, creative geniuses of this world would have contributed their inventions even if there were a jail penalty for doing so. But that in itself would not have been sufficient. The patent system is more essential to getting together the risk capital which is required to exploit and to develop and to apply the contributions of the genius inventor than to provide a stimulus for the actual mental contribution. It is to the former that the economic motivation is indispensable. The money will not be risked unless there is some sense of assurance that a benefit will be obtained. Moreover, a great many of the lesser inventions which are useful to fill out and flush out the technology have, of course, been motivated by the prospect of economic return or reward. There is one important area of the patent problem which might have received Commission attention but did not and that is the Government patent policy. Especially is that important at a time when the Government is the promoter and financier of a vast amount of research and development. We abstained by decision of the Commission for the simple reason that we came to the conclusion that the committees of the Congress had already invested a vast and grand effort in the analysis of that problem and in the formulation of solutions thereto, that we would simply have been repeating less ably what others had already done. We have marked out a half dozen areas of concern and all of those are reflected in some part of the bill which is before you. The first was how to improve the quality of the U.S. patent. In a few minutes I will state just what I mean by quality and what I mean by improving. How to reduce the period of pendency between the time of filing of an application for a patent and the time of the disposition of that application by grant or rejection. How to accelerate disclosure of new technology to the world at large and thereby stimulate further exploration and invention. How to ease the burden of cost in the procurement of a patent and in the litigation for its enforcement or invalidation. |