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GENERAL REVISION OF THE PATENT LAWS

THURSDAY, MAY 11, 1967

HOUSE OF REPRESENTATIVES,
SUBCOMMITTEE No. 3 OF THE
COMMITTEE ON THE JUDICIARY,

Washington, D.C. The subcommittee met, pursuant to recess, at 10:10 a.m., in room 2226, 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.

Mr. KASTEN METER. The subcommittee will come to order for the further consideration of H.R. 5924, the Patent Reform Act of 1967. We are very pleased to have as the first

witness this morning Prof. John Bardeen, Department of Physics, University of Illinois, who was a member of the President's Commission on the Patent System.

Professor Bardeen, if you will come forward, we would like to hear

from you.

STATEMENT OF PROF. JOHN BARDEEN, DEPARTMENT OF PHYSICS,

UNIVERSITY OF ILLINOIS

Mr. BARDEEN. Mr. Chairman and members of the subcommittee, I appreciate the opportunity to present my views on the Patent Reform Act of 1967.

As you just stated, I am professor of physics and electrical engineering at the University of Illinois, Urbana,

and have served as a member of the President's Commission on the Patent System.

I have had experience in industrial and government laboratories as well as universities. While I have been involved in a few inventions, one of which turned out to be quite important, my main activities have been in science and I speak primarily as a scientist rather than as an inventor.

The patent system, I believe, has played an essential role in the development of science and technology in this country in promoting free exchange of scientific and technical information, in rewarding innovation, and in giving protection to permit investment for development and marketing of inventions.

Patented products of our technology have been an important part of our exports and balance of payments. The revisions of the patent laws proposed in the patent reform bill should help strengthen the patent system in both this country and abroad. I fully support them.

The advantages of going to a first-to-file system have been discussed by several witnesses before this committee and I will not repeat them here.

It has been my good fortune to be able to follow rather closely two areas that have had a remarkable development during the past 15 or 20 years. One is solid state electronics following the invention of the transistor and the other is xerography.

Since 1952, I have served as a consultant to the Xerox Corp. and more recently have served as a member of its board of directors. Thus, I have been able to see at first hand how the patent system serves to promote the introduction of new technology.

My activities at the University of Illinois during the past decade have been mainly in the physics of very low temperature phenomena in which I have been concerned with basic science rather than applications.

The views I express here are entirely my own and do not necessarily reflect those of any organization with which I am connected.

I would like to discuss briefly a few aspects of the patent system which I believe are particularly important for the scientific community:

(1) Role of patents in promoting exchange of scientific and technical information.

(2) Patents themselves as a source of technical information. (3) Grace period and preliminary application.

To illustrate how diffusion of technical information is promoted by the patent system, it may be of interest to review the case of solid state electronics. In this area, the United States has maintained world leadership important for military and space as well as commercial markets and exports.

The invention of the transistor was done at the Bell Telephone Laboratories jointly with W. H. Brattain and W. Shockley in December 1947. Although it was obvious that a new field of enormous potential was being opened up, the management wisely decided to file patent applications and to publish promptly in the scientific literature rather than to hold it secret. The first publication in June 1948 occurred within 6 months after the invention.

The science of semiconductors, on which the invention was based, was then a small field in which only a small number of industrial and university laboratories was engaged. Licenses were soon given to about 40 companies, now increased by many more. Educational programs were set up for licensees as well as engineers and scientists from Government and industry.

I was in charge of one such school in the summer of 1953 at the University of Illinois where we had people attending from all over the country, New research programs were started at many laboratories, both industrial and university. In a few years, semiconductors became one of the most popular fields of physics. Many students trained at our graduate schools have gone on to carry out further important developments. All of this activity has given a broad base for exploitation of the field.

Once patents have been applied for, new innovations are freely discussed in the technical literature and at scientific meetings. Scientists and engineers from many companies contribute importantly to the progress made. It has been the protection afforded by the patent system that has allowed this free exchange of information instead of secrecy. This exchange has been essential for the rapid exploitation of this important new technology.

The Xerox Co. illustrates how the patent system allows a small company to grow big and strong. Without the protection of the patent system, the company would not have spent the large sums required to derelop and market the process. The company has continued to plow a great deal of its earnings back into research and development of new products.

The relatively rapid disclosure of scientific and technical information of the sort we have discussed applies in some but not all areas of our technology. For example, in chemical process technology, considerable art may be involved and broad patent protection is difficult so that secrecy may be relied on or if patented, there are no publications aside from the patents themselves. The advance of such fields is handicapped if publication of patents is unduly delayed.

Much can be done to make the patent literature itself more available as a source of scientific and technical information. Required are classified patent libraries in areas other than Washington, improved classification, better duplicating facilities.

An abstract written in technical language and to be used for reference purposes only, as recently instituted by the Patent Office, should be a great help. Mechanized search methods now being used in some chemical areas may be expected to expand in the future and be of aid both to the examiners and the general public in retrieval of patent information.

The most important innovation in the patent reform bili under discussion is to go over to a first-to-file system and to eliminate the 1-year-grace period. This last provision has been of concern to academic scientists. The bulk of research in universities is supported by Government contract.

There may be minor patent implications in papers written to describe advances in science. At present, publication goes ahead without delay and the agency sponsoring the research has the year of grace to decide whether or not to follow up on the patent.

Of course, if there is really an important invention for which foreign filing may be desired, publication is withheld until an application is filed. But this latter situation is exceptional, so that ordinarily publication proceeds without delay.

There is concern that if the grace period is eliminated, the agencies would require prior clearance, with consequent delays. While a delay of, say, 6 months may not seem serious, actually it is because such delays are cumulative. The pace of science is such that research done in one place today may depend on the results obtained in a different laboratory in another part of the world only months before. Anything that hampers free exchange of scientific information tends to slow the whole pace of scientific discovery.

Another group that now makes use of the grace period is the independent inventor or small businessman who wants to market test his invention before proceeding to the expense of getting a patent.

The Commission felt that a grace period is inconsistent with a firstto-file system and recommended instead a preliminary application

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that could be filed easily and inexpensively, to be followed later if desired by a complete application. While the preliminary applications may cause some problems, I believe that with experience the Patent Office can work out forms and procedures to make it an important and useful adjunct to a first-to-file system.

I am told that provisional applications have been used successfully in Great Britain. If the preliminary application is not retained in the legislation, I would recommend some sort of personal grace period to take care of the needs of the academic scientist and the small independent inventor.

In my experience, most scientists and engineers familiar with the operation of the patent system feel that there have been far too many patents issued for trivial improvements or modifications well within the state of the art. Many of these are later thrown out by the courts, others may be enforced because no one wants to go to the expense

of challenging them.

Many marginal patents are now filed by industrial companies largely for defense purposes; if a patent is to be issued on a given innovation the company wants to have it. Otherwise, it may be faced with royalty payments or expense litigations to have the patent declared invalid.

With a first-to-file system and the elimination of the year of grace, publications and public use will be more effective ways of obtaining defensive protection than is now the case.

One would hope that companies would tend to file only on the more significant inventions, thus raising the overall quality. The preliminary application could be used in marginal cases where more time is desired to decide whether or not to file a complete. Some feel that prior user rights would help, since a company would not be barred from using its own invention by issuance of a later filed patent to another party. The Commission felt, however, that patent rights should not be diluted by a prior user who failed to file, and that publication and public use should be sufficient protection.

The proposed legislation contains several provisions for raising the quality of issued patents. Perhaps most important is to maintain and raise the quality of the examining staff. Examiners are highly trained professional people, doing a difficult job, and should be treated as such in both salary and working conditions.

Compared with the vast sums spent by the U.S. Government on research and development, the cost of operating the Patent Office is minuscule.

I hope that whatever features are adopted in the final legislation the budget will be adequate for carrying out its ever-increasing tasks so important to our economy.

That is the prepared statement.
Mr. KASTEN MEIER. Thank you, Mr. Bardeen.
I have only two or three questions.

I assume that you support not only your Commission's report but the bill that grew out of it.

Mr. BARDEEN. Yes.

Mr. KASTENMEIER. One area I was not quite clear on is whether you feel that preliminary application and a personal grace period are compatible; that is, that you could have both in the same bill.

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