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tion on part of a great many of the critics of the first-to-file system. From the letters I have received, I get the impression that these writers think that this Commission has recommended that anybody who first walked into the patent office with a piece of paper on which a new idea is presented gets the patent even though he may have picked it up at the corner drugstore from a friend of his or a stranger. Of course, there is nothing to that at all. The first-to-file system deals with inventors. It is the first among inventors that we are talking about. It answers the question, as between two inventors who shall
get the patent. Each of them must be the inventor of the newly disclosed product or process. If you think that is a rare occasion where there is simultaneous or closely time-related invention in several places, you are in error. There is a great deal of that. But we subscribe to the notion that the Constitution meant to reward not the man who cerebrates an idea, but the man who cerebrates an idea and then makes it available to the public. Quite logically he who has conceived an idea and is also the first to make it available to the public should get the prize.
I have heard described all kinds of injustices that would flow from a first-to-file system: how one man rushes to the post office, but being in the city, the post office is around the corner, but the other fellow is in the country and he has to get into his Ford and drive 12 miles to the post office. That is a lot of nonsense, if I may respectfully say so. The same kinds of problems, of course, prevail under the present system. I have heard of a situation where a fellow made his journal entry at 9 o'clock in the morning in San Francisco and another has made it at 9 o'clock in New York and then the argument is made that 9 o'clock in San Francisco is, in fact, later than 9 o'clock in New York. All this does is to show apparent injustices; inequities prevail under any rigid system; our patent law is rigid because it says that only one man can get the prize. There is no second prize in the patent system. Perhaps we should have it, but that would be a different system.
People have told me that a first-to-file system cannot work. I am not persuaded, because I am told that, in almost every country in the world except two or three, the first-to-file system operates. What it would do in the way of expediting the entire operation is beyond measure. There is nothing more wasteful of time than an interference proceeding between two inventors who try to prove which one of them first conceived and first reduced to practice an idea. They keep records. And I don't want to say anything unkind about anybody; but there have been times when I was sitting as a judge and had to look at the file wrappers; sometimes I had doubts about the integrity of the entry. One can keep a diary which is a day early or a day late and one can stop his clock; one can do all sorts of things in the privacy of his closet. A system which depends upon notebooks privately kept by inventors does not appeal to me as a very sensible system. And there again the little fellow gets in trouble. The big corporations of course, are very much alive to the requirements to the law. And they ride herd on their inventors and they see to it that they maintain their notebooks carefully, that they punch clocks and have witnesses to support the entries; they set it up in apple pie shape. It is the little man, who suddenly seems to have acquired many zealous spokesmen, who overlooks these technical requirements. He doesn't do it quite right. And he runs into trouble whenever one of these conflicts comes up.
In a first-to-file system there is no argument about priority. There is the record, all in the Patent Office. You know exactly who got there first. And to the extent that it constitutes motivation for acceleration so that the invention is disclosed promptly, you are promoting the ultimate objective of the patent system. All this, of course, is at section 102 of your proposed bill.
The next recommendation productive of acceleration-I will be through in a little while—is No. 18, which is reflected in section 154 of the bill.
This measures the duration of a patent from the date of filing instead of from the date of issuance. That change looks like a rather simple gadget and yet it is of great importance.
Under the present system you can file a patent application in 1950 and, if your patent doesn't emerge until 1960, you then have 17 years in which to enjoy a monopoly. Of course, many ideas are not fully ripe for actual commercial exploitation; the inventor likes to sit with it. So the patent bar, and I hope none of them will take offense at what I say-develops a leisurely pace in the prosecution of patent applications in the Patent Office. You always take the maximum amount of time the rules permit, for filing the next piece of paper. You always file amendments and more amendments and you engage in more and more correspondence and more and more conversation, and meanwhile the years drag on. It isn't until the patent is actually issued that the patent term begins. If you change that rule and declare that your monopoly will expire 20 years from the date of the filing of the application, which is 3 more years than we have now, then everything changes. The motivation is all in the interest of expedition, because every day you lose while the application is under consideration shrinks the time dimension of your monopoly. So here you have an engine which is going to make the patent bar move in quick time instead of the slow time which is now the recommended course of procedure.
The bill has one more scheme for speed which was the subject of the greatest amount of debate in the Commission. It provides that if all of these systems that we have suggested for acceleration do not succeed we should adopt a system of deferred examination. I should like to elaborate on that. There were some members of the Commission who advocated the immediate installation of the deferred system of examination, on the ground that that would immediately withdraw from the pipeline a large number of worthless patents or dubious patents which the inventors are not really eager to have processed at this time. Others were opposed.. We have reached an accommodation on the recommendation which is reflected in the bill that upon recommendation of the advisory council the deferred system can be installed. Perhaps that is as good a method as can be suggested to deal with the contingency of continued buildup in the number of applications.
Now I go to the question of how to accelerate disclosure. The second recommendation, which is reflected in the bill, I don't remember now what section, which eliminates the grace period and substitutes the temporary application, is the greatest contribution in that field. A preliminary application is an informal piece of paper that can be filed by the inventor himself, which gives the substance
of his idea and does not require the help of lawyers. It gives him a year within which to file his formal application. There is not anything that the grace period enables him to do for which this preliminary application would not be equally satisfactory, as I understand it. In any event this was much desired by the academic fraternity. Academic people want to feel free to deliver papers before professional societies and learned societies. By this method they can file the proposed address or a summary and they would receive all the necessary protection. They would escape the risk of a premature disclosure. By this means you can accelerate the period in which a new contribution is made available to the public.
The second means of acceleration is set forth in sections 123 and 151 which reflect recommendation No. 7. Not later than 24 months after filing, and earlier under certain circumstances, there is to be a publication of the information disclosed in the patent application. I cannot tell you how important that is. The reason is this. When an application goes into the Patent Office pipeline, under the present system it is kept in the dark. It might be lying in that pipeline in the dark for 1, 2, 3, 4, 5, or 10 years; and all the time that thing is in that pipeline it is a boobytrap for somebody. You, not knowing that there is such a patent application in the pipeline, go ahead and start a business on some idea which doesn't seem to you to be of such moment or magnitude, to warrant a patent. And then 5 years later, 3 years later, out comes this patent which has been buried in the pipeline all this time; you find that your business has to be dismantled and destroyed because it infringes the newly issued patent. To me that is not a sensible system. The shorter you make the time when the application is kept in the dark, the smaller is the scope of the risk that you are walking onto a landmine while you are running a business. T'he bill provides protection to the inventor for early disclosure but of modest character; it seems to me it ought to make a real contribution in the direction of protecting the public against this kind of risk.
The next item is how to reduce the expense of obtaining and litigating the patent. We have a number of recommendations in that field. One is recommendation No. 5, reflected in sections 111 and 116, which enables for instance, the assignee of the invention to file. Thus, you don't have to go searching for the inventor before you can file. Before the patent issues it is straightened out; but you don't have that initial delay and expense and sometimes the holdup. Then, of course, the public citation period to which I have already referred, makes it possible to bring to the surface prior art of which the examiner was unaware. That enables the inventor to revise his claim and to bring it into line with the prior art and perhaps save his patent and surely reduce the expense which would otherwise be involved in a full-scale infringement or declaratory judgment litigation.
Recommendation No. 15, reflected in section 257, provides a kind of low-cost declaratory judgment action inside the Patent Office. Under defined circumstances it permits a cancellation of a patent if there is brought to the attention of the Patent Office within a short period of time, I think 3 years, prior art which shows that the patent was issued when it should not have been. And, here too, the advantage to the inventor is that it gives him another chance of revising and
retaining a narrower claim; whereas if it had to be done in the courts it would be too late and surely more expensive.
Recommendation No. 23, which is reflected in section 294, provides that once a patent is found invalid in one action it is then invalid everywhere. There has been some criticism of that. At the present time, of course, you can sue in the first circuit, you can sue another defendant in the second circuit, and you can go through every circuit in the country. Why that should be permitted is rather difficult to explain, except that it gives the inventor 10 chances. The real defendant is always the same fellow; he is the fellow who is manufacturing the accused product; but the patent owner can sue for infringement of his patent every store or user in each of the several circuits. Each time, of course, the manufacturer of the product has to pick up the tab for defending. Under the bill all this is changed. Once a patentee has been licked, he stays licked. It would be nice if we could also declare that once declared valid it is beyond challenge but the Constitution would stand in the way. You cannot deprive a litigant of his day in court.
Now about the international aspects of the bill. I said that one of the questions we considered was, What can we do with the patent system to advance our international goals? On that subject I want to say one preliminary thing. We did, in the report, recommend a number of changes where we thought it would be good practice to harmonize American practice with predominant world practice. I do not think we ever did it in any case where we thought that we would be accepting the poorer method in place of the superior method. Harmonization is good in and of itself but not so great a good as to justify abandoning a superior practice. When there are choices that are even-steven, when there is no advantage in one over the other, for instance, whether traffic shall move to the right or traffic shall move to the left, as it does in some countries, then I think most people would agree that a harmonious system is better than a dis-harmonious one.
Now, what do I think are the international goals of the United States in the patent field? I would state them this way. I think the ultimate international goal of the United States is universal peace and therefore anything that contributes to that, furthers the international goal of the United States. And, therefore, in the patent field, it ought to stimulate inventive capacity around the globe, and to promote the widespread dissemination of technology for the enrichment of human life everywhere, facilitate investment and exploitation of technology throughout the world and thereby to lift the standard of living of people everywhere, and to contribute to world peace by improving cooperative relationships and constructing new ones that will serve not only international economic needs but also mutual understanding among nations.
I spoke about the so-called universal patent. Maybe I am being an idealist in this respect. It seems to me a perfectly appropriate time for us to say that the long-range target of all international action should be the establishment of a universal patent, valid and recognized throughout the world, issued in the light of, and as inventive over the known art of the whole world, and obtained on a single application, quickly and inexpensive in return for a genuine contribution to the useful arts.
My thought on this whole subject, if I may respectfully submit it, is this. The major premises which underlie our social arrangements, that is, the unspoken consensi of our constitutional system are incompatible with private monopolies. The common law which is part of the legal heritage of our country is allergic to private monopoly. A small segment of the patent fraternity, judging from some of the mail I have received, has, from preoccupation with patents, become unconscious of the exceptional character of patents. To survive in a hostile environment, this system of patent monopolies must justify and rejustify itself. Each patent must justify itself as the quid pro quo, as the reward by the community given in return for a contribution to the community; and the system itself must rejustify itself as a source of motivation for a constantly growing effort to expand and enlarge our technology, to explore new fields and to bring in ever growing abundance of God's bounty for the enhancement of the life of all the people of the earth.
Chairman KASTENMEIER. Thank you Judge Rifkind, for a very enlightening, comprehensive discussion of the Commission's work and views and of your own views.
I just have one or two questions, looking at patents as a nonpractitioner. You stated that there were several areas that the Commission did not go into. You did not go into the issue of Government patent policy; you assumed that the patent system up to the present time, has been faithful to the constitutional mandate; you didn't go into a great deal of detail in your report on certain detailed practices of the Patent Office. What are the areas affecting patents that you really did not consider?
Mr. RIFKIND. There were really quite a number. My memory is not as keen on it now as it should be but we had among the papers available to the Commission and I assume available to you, a long list of problems which—from which we withheld any attention. We abandoned them, either at the first glance or because we could not arrive at any sensible solution or contribution in the area. The whole subject of the relationship of the patent system to the antitrust field, we touched on, but we did not really go into depth in this very important area. There are a number of others of that kind, I am sorry my memory is not very vivid on it right now. I dealt with some other problems in the interval but I think that it can be very readily found.
Chairman KASTENMEIER. As far as Government patent policy is concerned, the commission appropriately suggested that the Congress had already undertaken an evaluation of this. Did the commission consider whether it would be easier or more difficult to tie in any new determination of Government patent policy with the revised patent systems such as you were advocating!
Mr. RIFKIND. I see no reason why the two cannot be meshed very comfortably, no matter which solution the Congress finally adopts. After all, the patent policy problem, the Government patent problem concerns itself with who shall own the patent rights. This bill deals with when patents shall or shall not be granted and how they shall be enforced. The two can be zippered together in almost any system. As to your previous question I want to say, for example, we were unhappy that the patent system should deal with design patents but we did not recommend or explore what alternative protection should be afforded