If the end product of this cooperative effort is to bring the laws of the United States into closer harmony with the laws of some other countries whose economic, political, and social policies and objectives are consistent with ours, no harm would be done.

We must not, however, yield on any matter of principle or succumb to the temptation of doing something for the sake of expediency, even if it means moving in a direction opposite that of harmonization.

It is true, as the President has stated in his letter transmitting this proposed legislation to the Speaker of the House:

As the world's library of scientific and engineering information increases and as inventions become more complex, conventional information retrieval systems are becoming roadblocks to rapid and effective patent searches. These roadblocks must be eliminated through expanded research and development and increased international cooperation.

Much of this objective could, of course, be obtained by starting with our own system and improving its administration and operation.

Since we, as a nation, are probably the largest contributor to the worldwide fund of technical information, we have the greatest incentive to overcome any roadblocks in the way of our technological and economic progress.

We should carefully consider the results of the long and intensive studies of the patent system made under the McClellan committee and its predecessor, the O'Mahoney committee.

Neither should we overlook the writings, both critical and complimentary, of patent experts throughout the world.

In particular, I hope that there will be suflicient time before this subcommittee acts on the proposed legislation to communicate to you a summary of the comments which I expect to receive from my correspondents abroad during the next few months.

One last footnote: That is, I have actually had a note from one of my correspondents abroad who wondered whether it would be impertinent if he asked for permission to appear before this committee or a corresponding committee of the Senate to give his views on the proposed legislation.

I talked with the counsel of the committee and communicated to this gentleman that he should address such request to the committee, and personally, I did not think it would be at all impertinent.

I think we might learn something if we would hear from what some of the people in the foreign countries have to say about the effect of proposed legislation of this nature on their actions in the United States. I wish to thank the chairman and the members of the subcommittee for the invitation to appear, and I would be pleased to answer any questions you may have, if I am in a position to answer them. Mr. KASTEN MEIER. Thank you, Mr. Browne, for your appearance here this morning.

I appreciate the difficulty that your and other associations may have in reaching conclusions as of an early date.

Without making any prediction about where this subcommittee will be, procedurally, in August or in January of next year, assuming our hearing record is still open, we will be pleased to have a further statement from your organization for the record, or, if it is indicated, to hear from you further on this at an appropriate date.

And I think it is worth considering that we might perhaps have persons from abroad representing various interests submit their points of view to this subcommittee.

I might, however, observe at the same time that from the correspondence I have had in the last 6 weeks there have been a great many patent attorneys who have not deferred examination of this bill, and their point of view is quite well expressed as of the present date. Might I ask: Has your own organization, the International Patent and Trademark Association, in the past, before the President's Commission acted, taken a position as to what reforms in the present system might be desirable?

Mr. BROWNE. The major function of the international association with which we are affiliated, and to a great extent our own association, has been to analyze and consider the provisions of the Paris Convention itself, and naturally, as an American group, any proposed revisions were looked at from the standpoint of their effect on the U.S. situation.

Therefore, we have not really looked at anything by way of a fundamental change in the U.S. law with a view to coming up with any position recommending either for or against the changes in the law as it now exists.

We are highly conscious, however, of the fact that there are fundamental differences between our law and the law of other countries, but actually our organization ordinarily has been meeting only about twice a year. The international association has its congresses once every 3 years, so generally speaking, there has not been much attention directed to domestic matters, but rather to considering treaty matters. Mr. KASTENMEIER. You indicated that in the United States we do not treat foreigners, or even our own nationals, as well as certain foreign countries do. Implicit in that remark, I gather, is the hope that perhaps we would treat our own nationals and foreigners as well as other countries do.

Or do I misunderstand you?

Mr. BROWNE. Well, if I may express my personal view, I think our own Patent Office is hypertechnical too often.

I have heard that same criticism, in much stronger terms, from foreign associates.

Mr. KASTEN MEIER. As far as the President's Commission on the Patent System is concerned, did you find represented on the Commission the international point of view that your association generally has?

Mr. BROWNE. There is no question that people like Mr. Birkenstock and some of the others, whose connections are naturally of an international character, I am sure injected some international thought into it, and the Commission's report itself, of course, recommendation No. XXXV, clearly was aimed in the international direction.

And that is why I said in my prepared statement that I believe that the Commission report, as well as this legislation, is intended to pave the way for much broader and more intricate international cooperation in the field of issuing patents.

As far as enforcement of patent rights, or what happens to the technology after the patents expire, I must say I was disappointed that the Commission report did not go more into depth in those regards, and the legislation obviously falls short in that same respect.

Mr. KASTEN MEIER. In what respect, for example, does the report or the legislation fall short in enforcement?

Mr. BROWNE. With regard to the enforcement, the whole problem of patent litigation is so complex that I don't think it would be fair to expect a Commission such as the President's Commission, within the short time that it came up with its recommendation, to have gone into all the aspects and to have come up with any meaningful changes in the manner of handling complex patent litigation.

Now, they have proposed here this idea of establishing commissioners. Well, that is not too far afield from what is already permitted under the Federal rules-the appointment of masters-and it is just a question of who is going to bear the cost.

Is the Government going to bear the cost of litigation by furnishing Government-salaried commissioners, or are the parties going to have to bear the cost by agreeing on the appointment of a master?

So it does not really get to the real heart of: What is it that you are going to litigate about?

Right now, most of the litigation centers around the claim structure, the semantics, the prior art, which may not have been cited by the Patent Office during the prosecution.

The statute says the patent is prima facie valid, but the courts throw over the Patent Office ruling with impunity whenever they see fit. But if the Patent Office refuses to issue a patent, and you go to the district court in an action de novo to try and get the patent issued, they attach a presumption of correctness to the Patent Office ruling— that the Patent Office was correct in refusing to issue a patent.

But once the Patent Office issues a patent, they throw aside that presumption, notwithstanding the statutory provision that a patent is prima facie valid.

So there is a whole area, it seems to me, that, when you get into the courts, whether it is with regard to the obtaining of a patent which you think you are rightfully entitled to, or enforcing a patent which you think you have, and only wake up to find that you don't have what you thought you have that is a whole area that needs to be developed much more extensively than either the Commission report or the legislation has developed it.

And last, I think there have been discussions in years past about some way of, you might say, reviving what appears to be obsolete technology.

Now, there is a lot of technology in the expired patented art, which nobody is going to invest money in and try and set up a business, even though the product or process may not be available to the public today, but they are not going to invest in it unless they have some assurance of exclusivity at least for a limited time.

And that is particularly a problem in the developing nations on the international scale, and that is why some of them don't want a patent system now, because they say, after all, this technology is so far advanced that it is not likely to be utilized in our economy, but there is a lot of expired patented art which could be utilized in our economy, if there were some sort of exclusive franchise provided for a limited time, to encourage investment.

So those are the three aspects which I think need to be explored further, and I certainly hope that the Congress, in fulfilling its role, would be the one to do it.

Mr. KASTEN MEIER. Are these three areas on which you might expect your own association to comment more fully at a later date?

Mr. BROWNE. I would expect them to do so; yes.

Mr. KASTENMEIER. Thank you very much, Mr. Browne.

Mr. Poff?

Mr. POFF. Thank you, Mr. Chairman.

Would you say section 102 in the bill moves in the international direction?

Mr. BROWNE. I am used to the old numbers.

Mr. PoFF. This would be compared really to the old law, which has a similar No. 102.

Mr. BROWNE. Now, if I may hear your question again?

Mr. POFF. My question was: Do you think that section 102 in the bill moves in the international direction?

Mr. BROWNE. Yes; to the extent that it certainly eliminates the grace period, that is more nearly like more of the foreign countries, although they do provide exceptions.

We still adhere, under 102 and under our present patent law, to the constitutional provision that Congress may secure to inventors the exclusive rights to their discoveries for limited times.

We still adhere to the idea that the inventor is the key man here, whereas in most foreign countries very little importance is attached to who the inventor is. They are interested in the technology that is embodied in the patent.

Mr. POFF. My question really was keyed to the question of prior art. In that particular, do you think section 102 moves in the international direction?

Mr. BROWNE. Well, as far as the examining countries are concerned, of course, that is what you are concerned with; is it not? In registration countries, it is of no consequence.

In the examining countries I cannot see much difference between our present law and this proposal and what the examining countries are doing, such as Germany and Holland and Japan and England, for example.

Mr. POFF. But as you said in your testimony, the United States is an examining country.

Mr. BROWNE. That is right.

Mr. POFF. And under the present law, section 102 does not define a device which is known or used abroad as prior art unless it has been published.

Mr. BROWNE. This is the so-called universal novelty versus national novelty.

That is quite a subject for debate from country to country. It is not settled among the countries themselves, although the predominant rule in that knowledge anywhere will bar patenting in that country.

Now, our citizens themselves are somewhat up against it in foreign countries, because we may go ahead and put an invention into public use in this country before we file, because we have the grace period.

There are certain countries of the world where that action will bar you from subsequently obtaining the patent in the other country, even

though you do file your U.S. application within the terms of the U.S. law, and you file within a year, under the Paris Convention.

Mr. POFF. Let me see if I understand you.

Did you say that although the matter might have novelty in this country, if an inventor in this country makes an application for a patent, and there is no novelty, we will say, in some foreign country, the patent will not issue?

Mr. BROWNE. If he has made a public use in the United States before he files his U.S. application, he would be barred.

Mr. POFF. But let us assume that he has not. The patent would is sue, would it not?

Mr. BROWNE. If he has not made public use or publication prior to his filing, then he looks to the Paris Convention for his protection for 1 year in which to file abroad.

Public use or publication during that period would not bar the issuance of the foreign patent.

Mr. POFF. I am not asking about the foreign patent.

I am afraid I am not making myself very plain.

The law today in section 102 would not foreclose the right of an American inventor to a patent simply because his idea has been known or used in a foreign country. Is that true, or correct?

Mr. BROWNE. That is correct.

Mr. POFF. Now, is the same thing true with respect to section 102 of the bill?

Mr. BROWNE. Section 102 of the bill says that there is a bar if, prior to the effective filing date of the application, the subject matter sought to be patented was known to the public.

Now, that I believe is construed as meaning the public in the United States.

Mr. POFF. I believe you are mistaken.

Mr. BROWNE. I don't have the text of 102 under the present statute with me, to compare the language. I believe the word "known" is the

same.

Mr. POFF. I may be mistaken. I have been before, and will be again, but I believe that the sweep of section 102(a) is worldwide.

Mr. BROWNE. I would have to compare the text of the two sections, first, to be able to answer your question.

Does anyone have a copy?

Mr. POFF. I am sorry. Here [handing document to the witness].

Mr. BROWNE. Yes, 102 of the present act has the qualification: "The invention was known or used by others in this country."

Mr. Poff. Yes, or published abroad.

Mr. BROWNE. In this or a foreign country.

Now, those words have been omitted.

Mr. POFF. They have, and would not a court, in construing that provision and that change give significance to it as indicating a purpose to remove geographical limitation?

Mr. BROWNE. I think the Patent Office would argue that it did permit a showing of knowledge elsewhere in the world to be a bar. Mr. POFF. Yes, sir.

Thank you.

Mr. KASTEN MEIER. The gentleman from Michigan?

Mr. HUTCHINSON. Mr. Browne, I was interested in your remarks about patented ideas which have fallen into the public domain, where