Mr. HUTCHINSON. Would that suit go into the Court of Claims? Mr. MALLOY. I understand it could, if the administrative payment was not satisfactory.

Mr. HUTCHINSON. Thank you, Mr. Malloy.

Mr. KASTEN MEIER. The gentleman from Delaware, Mr. Roth.
Mr. ROTH. I have one question.

Is there in your opinion an inconsistency between your proposal of the grace period and the right to have a secrecy order insofar as the preliminary application is concerned?

The reason I raise this question: You say that the purpose of the grace period is to promote the free disclosure. Are you not running the danger that possibly potentially valuable information to our Military Establishment might be disclosed at the first stage?

Mr. MALLOY. The question of imposing a secrecy order cannot be carried to hundred percent lengths. By that I mean we don't impose under our present system universal censorship, you might say, to review everything for security.

We have security rules, and it is only the man who proceeds inadvertently, or does not understand or know that it is sensitive, that would be publishing something that relates to security.

At some time the matter comes into the possession of the Government, and the only practical way to do it is at that point in time.

I suppose you might say that to the extent that there is a publication of something that we subsequently determined was sensitive, it would be a cat that got out of the bag, but we don't have a foolproof system that handles everything.

And I don't really think that the grace period is in any way inconsistent with the security requirements. As you well know, we have a 1-year grace period much broader than we are suggesting today. I don't think this would be a problem.

Mr. ROTH. Thank you.

Mr. KASTENMEIER. Thank you, Mr. Malloy, for your very valuable contribution, and that of your colleagues, as well.

Mr. MALLOY. Thank you, Mr. Chairman.

Mr. KASTENMEIER. Next the Chair would like to call Mr. Francis C. Browne, president of the International Patent & Trademark Association.

Welcome to the committee, Mr. Browne.

You may proceed, sir. I see you have a prepared statement.

STATEMENT OF FRANCIS C. BROWNE, PRESIDENT, INTERNATIONAL PATENT & TRADEMARK ASSOCIATION

Mr. BROWNE. Mr. Chairman and honorable members of the committee, my name is Francis C. Browne. I am a partner in the law firm of Browne, Schuyler & Beveridge in Washington, D.C. I am appearing before the committee, however, in my capacity as president of the International Patent & Trademark Association, at the invitation of the chairman of the subcommittee.

The association which I represent is made up of corporations, lawyers, and other individuals residing in the United States who are interested in promoting cooperation in patent and trademark matters on an international basis in the national interest of the patent and

trademark system, as provided by the Constitution of the United States of America, and as implemented by the Congress.

Our association is an autonomous body, but is affiliated with and cooperates with international organizations concerned with patent and trademark or what is sometimes called industrial property-matters on an international scale.

In this respect we are sometimes referred to as the American Group of AIPPI, the letters AIPPI being an abbreviation of the French name of the International Association for the Protection of Industrial Property.

The international body was formed in 1897 primarily for the purpose of studying and making recommendations for the revision of the Paris Convention of 1883, the International Convention for the Protection of Industrial Property.

Individuals and corporate representatives from the United States participated in the activities of the international body from 1897 to 1930. Since 1930 our association has been organized and accredited as the American spokesman or the American Group of the international body.

We now have about 110 corporate members and about 480 individual members in our association.

The members of our association are apprised of the release of the "Report of the President's Commission on the Patent System" on November 17, 1966; and most, if not all, are aware of the introduction of H.R. 5924 by Mr. Kastenmeier on February 21, 1967, and S. 1042 by Mr. McClellan on the same date.

The scope and effect of the proposed revisions of the patent law as embodied in the report of the President's Commission and the aforementioned legislation are such that there has not been sufficient time for our association to formulate a position which would be sufficiently well developed to warrant presentation to Congress.

H.R. 5924 and S. 1042 had not been introduced at the time of our meeting in January of this year, and the matter is not yet ripe for debate and discussion at our forthcoming meeting in Boston next Tuesday, May 9, 1967.

We hope, however, to be able to submit the position of our association to your committee after our meetings in August and October of this year, but it is more likely that our position will not be established until our annual meeting in January 1968.

We respectfully request, therefore, that we be granted permission to submit our formal position for the record as soon as it has been formulated.

Meanwhile, I have been in communication with presidents of other national groups of the AIPPI, as well as the executive committee of our own association.

On the basis of these communications, I wish to make certain remarks for the record regarding the international implications of the proposed revision of our patent law.

You will understand, of course, that in limiting our comments to the international aspects of the matter we do not overlook, nor do we take a position with respect to the purely domestic aspects of the proposed revision of the law.

The President's Commission prefaced its report with the comment that its recommendations are intended, among other things:

To make U.S. patent practice more compatible with that of major countries, wherever consistent with the objectives of the U.S. patent system.

The cover letter by which the Commission transmitted its report to the President stated that, to the extent that its recommendations. would promote the attainment of this objective, they would assist in furthering the U.S. patent system "and contribute toward world peace and tranquility."

Some people may question, of course, whether or not patents contribute "peace and tranquility" to the industrial system.

We feel that the objectives of the Commission and the results of implementing those objectives by way of drastic changes in our domestic legislation can only be evaluated properly by careful and more extensive investigation of the facts concerning the harmony or lack of harmony which exists in the patent laws among the rest of the countries of the world.

The lack of harmony exists, first of all, in the distinction between the "examining" countries and the "registration" countries. Germany, Holland, England, and Japan, to mention a few, are examples of "examining" countries. France and Italy are examples of "registration" countries.

We are an "examining" country. So far as we can see, there is no tendency for us to depart from the examining system, yet chapter 18, sections 191 to 194, of H.R. 5924 moves in the direction of “registration" by providing for a "deferred examination" system. It even provides for filing a preliminary or informal application under chapter 11, section 111 (c).

Another respect in which there is lack of harmony in the patent laws among different countries is whether a patent should issue to the first to invent, the first to import the invention into the country, or the first to file a patent application, or a combination of two or more of these criteria.

Since the proposed legislation moves in the direction of giving the advantage to the first to file, it moves in the direction of the principle in effect in a preponderance of the countries of the world.

It must be borne in mind, however, that there are exceptions to both the "first to file" and the "first inventor" systems.

The first inventor may obtain the patent in the United States under our present law only if he has met certain requirements and has sustained certain burdens of proof, if he is the juniormost in filing date. In certain other countries the patent right granted to the first to file may have certain limitations, thus making his patent rights something less than exclusive.

In other words, no matter which system is adopted, there must be exceptions in the public interest, as well as the interest of those who possess a superior right in contemplation of the law.

The Paris Convention of 1883, to which reference has been made before, was intended to bring about international cooperation in the patent field, but it has really served to provide only two advantages. Under its terms, the treaty requires the subscribing nations, first, to accord to nationals of the other subscribing nations the same treatment accorded its own nationals under its domestic patent laws, and

second, to allow its own nationals and the nationals of other subscribing nations a period of 1 year from the date of filing a patent application in one of the member countries to file corresponding applications in other member countries, and to give priority rights to such later filed applications as of the date of the first filed application. If I may interject a footnote, here: Actually, our own requirements, as far as patent applications are concerned, are so strict that it is actually more difficult for a foreigner to apply for and obtain a patent in the United States than it is for the U.S. citizen to obtain one in a foreign country, because the requirements in most of the foreign countries, if not all, are less strict as far as the content of the specifications and formalities and that sort of thing are concerned than is our own Patent Office.

So, therefore, we are not violating the concept of the Paris Treaty by treating foreigners the same as we treat our own nationals, but foreigners treat our nationals better than we treat our own nationals and foreigners here.

These advantages, of course, could be provided unilaterally. In fact, some countries, such as Argentina, did not adhere to the Paris Convention for many years, on the ground that they already accorded to foreigners the same priority rights they accorded their own citizens. Since their own citizens did not file many applications abroad, they did not feel that the priority right was sufficiently important to their citizens to warrant adherence to the treaty.

Just within the past year, however, Argentina has adhered to the Paris Convention, and other Latin American countries have adhered, or are considering adhering to the treaty.

The layman who has never been exposed to patent matters is often surprised to learn that there is no such thing as an "international patent." He is even more surprised to learn that the cost of filing patent applications and maintaining patents in force, country by country, constitutes a substantial initial and continuing outlay of funds over and above the cost of filing and obtaining a patent on an application filed in his own country.

There is no doubt that the President's Commission Report and H.R. 5924 are intended to pave the way for some form of "international patent," or at least an international filing system, as a means of improving the administration of the patent system internationally.

I would like to interject another footnote at this point: That is that there are three things that are currently underway on an international scale, in the direction of international cooperation, international patents, and the like.

In the first instance, the Secretariat which administers the Paris Convention has undertaken a proposal which was initiated actually by the U.S. delegation to the Paris Convention, to provide a system for filing a single international application, which then would be fanned out to the countries in which the applicant elected to have protection. That is under active consideration at the present time. It would probably require a protocol or perhaps a revision of the Paris Convention for all of the member countries to adopt this type of international filing system, so it is still in its formative stages.

Another respect in which there is international cooperation and an effort to bring people into the fold, so to speak, of the industrial prop

erty system, who are not presently in the fold, is the establishment, under the auspices of the Paris Convention and Berne Convention Secretariat, of an international patent organization.

It would be sort of a general forum in which all of the countries of the world would be invited to participate, whether they adhered to any international treaty relating to the patents or not.

There are arguments pro and con on that particular topic, but that is going to be the subject of one of the items on the agenda of the Diplomatic Conference which will take place in Stockholm in June and July of this year, so it may be a reality before the end of the year, if the Goverments decide that that sort of plan should be adopted.

The third thing included under my footnote of things that are already underway, that are of concern to us, is the efforts that have been made in the European countries, particularly the Common Market countries, to come up with a Common Market patent.

And since adherents to the Paris Convention are obligated to give nationals of member countries the same treatment they give to their own, they are encountering difficulty in adopting a Common Market patent which would be limited to nationals of the Common Market countries.

So we in the United States have been strongly arguing that almost any Common Market patent, any regional patent arrangement, must provide for accessibility by U.S. nationals, otherwise we would contend that it is in violation of the undertakings of the Paris Convention. That is all my footnote. That was a rather large one.

Now, whether or not the international system that we are talking about is in our long-range national interest can be determined only after we have had full opportunity to compile a record based on the experience of patentees, businessmen, lawyers, and Government representatives in the international patent field.

This information, taken together with the experience and observations of their counterparts in foreign countries, will afford a sound basis upon which to make a judgment as to the direction the changes, any, in our present law should take.

if

Almost everyone agrees that it would be unwise for us to harmonize our laws with the laws of the rest of the world just for the sake of harmonization.

It should not be forgotten that our patent system has been compatible with the patent systems of the other countries of the world at least since 1836, which was about 50 years before the Paris Convention was adopted by the various nations and adhered to by the United States.

Canada has fashioned its patent system after ours, and, to a great extent, so has Japan.

On the other hand, it appears that the efforts of the Scandinavian countries, the European Common Market countries, and the Council of Europe have been unable to come up with a mutually acceptable patent law on a regional international basis.

As laudable as the intent of the U.S. Government may be to reach a patent utopia, it is not likely that anything approaching that objective may be attained without the benefit of the advice and experience of those who work with the patent system outside the Government as well as within.