the second to file would come out first. Nothing in the bill prevents the second to file from getting the patent. If the first-to-file application has not yet been published it cannot be cited as prior art. This can later be corrected in court but I think the law should certainly be clear about what the authors meant it to do. My attorney went over this section very carefully and there is nothing to prevent two people from getting patents essentially on the same thing, with the second to file getting the first patent issued. You will notice that section (b) says the subject matter has to be disclosed and published in U.S. applications. Suppose it has not yet been published, and the first man's patent has not been issued. The second man has nothing against him, he gets the patent issued. I think this can be cleared up.

The first-to-file system has the very basic fault in that it would lead to more secrecy. Because now, when we get an invention either from me or from one of the other engineers, we discuss it quite freely and know we run no risk. But if I am afraid that somebody overhearing us can get to the Patent Office quickly, we shall certainly be more careful as to how we speak. I think this would certainly lead to more secrecy.

I think that the business of injustice about the first to invent but not the first to file goes like this: I go to the Patent Office first, but you thought of it a year before me, so you would, therefore, be barred from using your own invention. The U.S. system does not give a patent to the first to invent, but to the first diligent inventor, which is quite another story. You are the first to invent but you didn't actually work on a day-to-day basis and you would probably lose the interference. anyway. But you may be the first to invent diligently and there is some injustice about not being barred from using your invention. I could argue that you should have gone to the Patent Office also, as I did. You should have protected yourself. There are many things one could do in connection with the first to invent. I would object to a provision. that the first inventor gets certain shop rights, as is done in some 20 countries. I think this could lead to more secrecy. Look at the technique that I could use in a computer invention. In a case like this I would like to be protected. I keep my mouth shut. I will use it, I'll say nothing, nobody will know about it. Somebody else files for a patent. That's wonderful. I don't really give a darn because I have my "first use." Nobody knew about it, I didn't tell the people of the world, and I am protected just by the fact that I used it. I think this is unfair. My daughter who sits behind me today listening to me (she had a wonderful excuse to stay out of school) suggests a way out. She has a patent pending, so she has a right to speak as an inventor.

She says that the way to get around this would be to arrange matters so that you should have "shop rights" only if you also file, and file within a year or perhaps 2 years. Then the first-to-file inventor would still get the patent, the international agreement would still hold, but the man who files second but invented first would be protected as to his invention for his own use. He would have essentially a free license. This means that you would force him to file also, and thus discourage secrecy. If he filed, say 3 or 6 months after the first filee, he would at least have shop rights. But you cannot permit him to have free license and encourage secrecy. I think this suggestion is a possible solution to the first-to-invent versus the first-to-file

question. It is fair and would_reduce those terrible pressures that people speak of to rush to the Patent Office.

I don't believe in this nonsense about pressures to get to the Patent Office. This is not the way attorneys work. It does take time to prepare an application. We do rush to the Patent Office as soon as we can, with a very hot invention. I asked Dr. Bardeen, who is a member of the Patent Advisory Commission who wrote this bill, "How soon did you file on the invention of the transistor?" He said, "Within 3 months it was in the Patent Office because when we get something that is hot, we know it." Every inventor knows when he has something good, when he has something medium, and when something is not quite so good. When it is a good basic invention, we work very hard at it. The attorneys get on the ball. They file quickly because it is important to be the first, even with the present laws. You want to be the senior party; you want to get in there and protect yourself. And so I think, as far as the matter of the first to file is concerned, he is usually the first inventor in 9912 percent of the cases anyway.

Now I mentioned the matter of interferences. They are not serious, they don't cost very much, and while I would like to eliminate them, if possible, some kind of interference would have to be provided for, because there would still be the question as to who owns which claim. You filed in January; I filed in February. In the middle of the year the Patent Office has to decide who is the first inventor of what; who is entitled to each claim. There would have to be some kind of interference proceedings set up by the Patent Office so that when you say "I am entitled to your claims" and I say "No; you are not," and there should be some open argument, which doesn't require a court case, but does require some opposition procedure between the two inventors as to who invented exactly what. This is obviously necessary. I was very interested in the fact that the antitrust recommendations of the Commission did not get into your bill. My scuttlebutt in Washington-I have been here 30 years-tells me that the Justice Department doesn't feel that it could trust you with such an important matter and that is why it was stricken from the bill. When the bill was drafted, the Commission very mildly pointed out that there is a conflict between the antitrust laws and a patent monopoly. There is, undoubtedly, a conflict. Perhaps Congress should have something to say about this. When it came to the bill, that part of the recommendations, recommendation XXII, was left out. I don't want to tell you your business, but I politely suggest that there is a conflict. I know that the Justice Department is afraid of patents because they are monopolies that can lead to abuses. As one inventor who likes to license others once in a while, I'd like to know what are my rights and if you don't tell me, nobody else can. I think it is your business whether the Justice Department likes it or not. I think you people have to clarify this matter. Either we do have an absolute monopoly, or we have a limited monopoly. Can I license different fields of industry with the same patent? The Justice Department can say I cannot. In other words, I think I would like to see this subject matter back in the bill, or to see a separate bill which clarifies this antitrust business with respect to what rights do I, in fact, have. I have asked good lawyers and they don't seem to know.

Gentlemen, I do favor publication before issue, but not the way it is outlined in the bill. The way it is here, gentlemen, is that 18 months after the filing date and not more than 24 (or perhaps some other date) the application shall be published. If you publish a patent application without allowed claims you are publishing a bunch of junk, because nobody can tell what the case contains. It is the claims that say what I have invented, and not the general disclosure, and one has to know the claims if one is going to oppose the patent. I recommend that you require the publication after the claims have been fought through and have been allowed, and after the case is complete. The publication should be done as the patent is published today in the Gazette. It should be published but not issued. This can be done, say, 6 months before issuance so that any third party who has anything to say because he knows of prior art, or he has some argument against issuance, or he knows of some use in Mexico where something was done similarly, can then send in this piece of information to the Commissioner of Patents. He can say, "I see that you have allowed claim 7 to Mr. Smith and I happen to know that this was practiced in Canada on such-and-such a date, or was published in such-and-such a paper, and here is a copy." This should be ex parte proceedings and the third party should not be legally involved. The name of the interfering party should not be disclosed, so as to protect him in future litigation.

All this should be done after the claims have been allowed so we all should know exactly what we are talking about.

If you don't do this, gentlemen, what will happen is this. An application will be published before the claims are allowed. As a third party, I don't know what the Patent Office will say or will not say. I don't know what they know or don't know. In order to prevent this man from getting the patent, since he may be a competitor, I'll send a tremendous amount of junk into the Patent Office, anything I can think of to prevent this application from issuing. For all I know the Patent Office might very well already have this information in their possession. I don't know what to weed out, which is the wheat and which is the chaff. So I say the only way to do it is to let the application mature (this should not take more than a year or two), let it be published in the regular way and, if nothing new comes up, it should be issued in 6 months. If something new and important does come up, the Patent Office should consider it, reject it, or modify the claims and the patent issued sometime later. In this way, when a third party speaks he speaks with substance. He knows what the patent describes and what is allowed.

I'd like to tell you about my experience with rushing into the Patent Office and with rushing the publication. This was a big invention which caused the formation of a whole new section in the Patent Office files. It was the magnetic particle clutch which is used today in planes, missiles, automobiles, computers, et cetera. It was invented when I worked for the Bureau of Standards. We filed very quickly and published very quickly because there was no commercial interest in it for the U.S. Government. What happened is that all the other interested parties immediately rushed in with improvement inventions. If this were my private patent, I certainly wouldn't have published quite so quickly. I had just gotten the basic idea filed when all sorts of wonderful improvements came into the Patent Office, improvements that we had thought of but didn't file fast enough.

I think this business of publishing too early does a great deal of injustice to the inventor. As a matter of fact, Mr. Smith, a senior attorney for Texas Instruments, speaking in Boston, said that they don't mind the pendency of 2 or 3 years. He doesn't think that this delay really makes much difference but it gives them time to get the improvement applications sent in. You know, a basic patent is not a complete entity by itself. You have to make improvements and modifications of the invention. These have to be patented so that a whole package of patents develop. I had 11 patents before I was through with the magnetic particle clutch. You do not invent one thing and quit. You have just begun. You open a Pandora's box and for the next 10 years you are up to your neck in improving and protecting the basic invention by the surrounding patents.

In the case of my watch regulator, which was my own patent, I did not publish too quickly. I did file on a half dozen improvements and some of them did get into interference. I won the interferences. And every automobile clock in the United States pays me about a cent and a half. If the clock doesn't run in your car, I'll give you back that cent and a half. Unfortunately, the clocks are still not very good, but when they run, they are regulated better than they were. It took me 9 years to sell that invention, with no legal problems. The invention makes the clocks cheaper and better, but it took 9 years. If there was deferred examination in effect, I would have abandoned the invention and lost a quarter of a million dollars.

I do not favor preliminary application. I think they are nonsense, with all due respect to the committee. If it is a computer patent you cannot prepare a preliminary application. It is too much of a job. It is page after page of description and drawings that you must use to make a sensible description that is going to support claims later. Even lousy claims, if you will forgive me, loose claims, take a great deal of work. So you might as well get an attorney and do it right. You cannot do a simple preliminary on a computer or on an elaborate engine. The only simple preliminary one can do is, perhaps, a simple thing like a venetian blind, or a window shade, or something like this. And if it is that simple, why not do it right and finish it? I think the trouble with a preliminary is that nobody, not even God could later tell whether the preliminary supports a particular claim or does not support the claim. We have trouble supporting a claim when the application is complete and carefully thought out. We still don't know, later, whether this claim is, in fact, supported by the specification. How in the world can you tell, when I wrote a quick description of an invention, what I was thinking of, and what I thought of a year later when I knew a great deal more? These preliminaries will have to be read and they are not going to be just filed. They will be used as prior art. They will have to be examined in case of any trouble.

My feeling is that the preliminaries are a waste of paper and a waste of time, and you might as well live with the fact that today the firstto-file wins 992 percent of the cases, anyway. In the new system this would be a hundred percent of the cases. So you file the application as soon as possible and if you do file second, but you are the first inventor, you get "shop rights." But file it and be done with it and do not burden the Patent Office, that is already overburdened, with a bunch of other nonsense papers.

90-355-68-pt. 1-15

One of the reasons for this bill is to help the Patent Office and you are not going to help them by filing three or four different papers supporting one set of claims, particularly when there are four or five preliminaries in one case and two people get into interference. Then you have to decide which of the many different dates support which of the different claims of the two inventors. One of the things that the Commission proposed is you can file half a dozen preliminary applications during the 1 year. Each one can support a different claim. Suppose another inventor files six others and they are intermeshed. I'd like to know how will the Patent Office straighten this mess out? I say "The heck with it. Let's file the complete case with the claims, and let's fight it out on the merits of the first application." Now about the grace period. A lot is being said about this today and yesterday. This is a straw man. No company today works on a grace period, because foreign filings prevent you from having grace periods. If you publish before you file in the United States, you cannot file in many countries of the world under the convention date because this is an absolute bar. So nobody does this except some small investor who just wants to file in the United States. Almost all commercial inventors, small or large businesses, even I when I work only for myself, file first in the United States and never publish before that. So this grace period before publication is a myth. A vice president of IBM recently said, "We all live under the present system of file first and talk later, we have to." Any company of any size must file abroad today in countries like Canada, Mexico, Germany, Japan. But if you file in six or seven countries you would have to file before publishing. So I say that the grace period only complicates things, it is not necessary, and the only case where it is justified is in unauthorized disclosure and that is taken care of in the bill. Where there is an authorized disclosure because somebody knows of my invention and shoots off his mouth, there is a grace period to protect me. I think a year would be a reasonable time but, outside of that, the inventor should not speak first and file later. In other words, we get into this messy question of why did I speak first and why did I file later and how all the other people got into the act. I think the more you legislate against all this complexity, the better the system will be.

I do not like the reissue provision that was written into the bill. The reissue section says that when the patent was issued improperly, I can ask for a reissue. The bill, for some peculiar reason, says I cannot broaden my claims. I do not understand why the Commission always simplifies matters by going against the inventor. Why shouldn't I broaden the claims? The Constitution of the United States does not say that I should be penalized for my mistakes. It says you shall give me the best patent to which I am entitled. There was a mistake made, I want the best patent no matter when it is issued. Somebody in the meantime, starts to manufacture the patented article and the present law takes care of this party by means of "intervening rights" so that the broadened patent is not held against them. These people are protected perfectly well. There is no reason to limit the rights of the inventor so that the patent can't be broadened. I think this is absolutely unfair to inventors.

I don't like the 20-year patent life from the date of the patent filing. The excuse given by the Commission, and I suppose that is why this