GENERAL REVISION OF THE PATENT LAWS THURSDAY, MAY 25, 1967 HOUSE OF REPRESENTATIVES, The subcommittee met at 10 a.m., pursuant to recess, in room 2226, Rayburn House Office Building, Hon. Robert W. Kastenmeier, acting chairman, presiding. Present: Representatives Kastenmeier, Edwards, Hutchinson, and Roth. Also present: Herbert Fuchs, counsel, and John W. Dean III, associate counsel. Mr. KASTENMEIER. The subcommittee will come to order for further hearings on H.R. 5924, the Patent Reform Act of 1967. The subcommittee is pleased to welcome as its witness this morning Mr. Edward F. McKie, Jr., chairman-Elect of the American Bar Association's. Section of Patent, Trademark, and Copyright Law. Mr. McKie, we welcome you. You may proceed as you wish. Perhaps you would like to identify your colleague. STATEMENT OF EDWARD F. McKIE, JR., CHAIRMAN-ELECT OF PATENT, TRADEMARK, AND COPYRIGHT LAW SECTION, AMERICAN BAR ASSOCIATION, ACCOMPANIED BY WILLIAM E. SCHUYLER, JR., CHAIRMAN OF THE SECTION'S COMMITTEE ON PATENT SYSTEM POLICY PLANNING Mr. MCKIE. Yes, please. Thank you, Mr. Chairman. This is Mr! William E. Schuyler, Jr., of this city who is chairman of the section's committee on Patent System Policy Planning. Mr. Chairman, I have been employed in the patent field since 1949 when I began work as a patent searcher and trainee with the Washington office of a New York law firm, while attending evening law school at Georgetown University. Since 1952, I have been engaged in the private practice of law, specializing in patents, in Washington. My firm and I have engaged in every area of patent practice, from novelty, infringement and validity investigation, to patent application preparation and prosecution, to patent litigation and to general patent advising. At the present time about 75 percent of our billing is in patent litigation in which we represent some of the largest firms in the country, but we also represent a large number of individuals and small companies. We also represent large foreign companies with substantial U.S. patent interests, and we have for years guided the foreign patent interests of a number of domestic companies. Mr. Schuyler has a similar but even more extensive background. Both he and I are adjunct professors at Georgetown Law Center. Both of us have devoted a great deal of time to Bar Association activities. Mr. Schuyler is a past chairman of the Patent section and is currently a member of the Council, while I have been a member of the Board of Managers of the American Patent Law Association for the past 6 years. I tell you all this so that you may judge what we have to say in the light of the experience we have had and the amount of time we have devoted to work in and study of the Patent system. In that connection, I of course have in mind Mr. Neuman's suggestion that you give our testimony the weight it deserves. In that regard, I would like to express my own admiration for the amount of time devoted by the members of the President's Commission to their studies. However, I must also add that the organized patent bar has also devoted a considerable amount of time to the same subject, as my partners will attest at billing time. Authority for Testimony: Our authority for speaking on behalf of the American Bar Association is expressed in the following resolutions which set forth the official position of the association: Resolved, that the American Bar Association is opposed in principle to: (a) Elimination of the grace period within which application may be made for a patent after the public use or sale of the invention or the patenting or publication of the invention, and (b) Any change in the law which would have the effect to awarding the patent only to the applicant who is the first to file his application, and is opposed therefore to Sections 102 (a) and 102 (b) of S. 1042 and H.R. 5924, 90th Congress. 2. Resolved, that the American Bar Association favors in principle permitting the owner of an invention, whether or not he be the inventor, to file a patent application covering that invention provided that the inventor or inventors be named in the application. 3. Resolved, that the American Bar Association appeals to the subcommittees of the Senate and the House, to which S. 1042 and H.R. 5924 have been committed, to defer the submission of their respective reports on said bills to their respective full committees until such time as the American Bar Association and other interested parties shall have had reasonable opportunity to fully consider S. 1042 and H.R. 5924 and any proposed substitute bills, except that such deferment is not requested to extend beyond May 1, 1968. Deliberations by the American Bar Association: The American Bar Association has a membership of over 120,000 lawyers drawn from all parts of the country and representing clients in all walks of life. Much of the work of the Association is carried on by "sections" representing specialities in the law, such as taxation, corporations and banking, antitrust, patent, trademark and copyright, and the like. The Section of Patent, Trademark, and Copyright Law, which I will for brevity call the Patent Section, is the oldest of all the specialty sections, having been established in 1894. Most of the 3,200 members of the section confine their activities strictly to one or more of these branches of the law. For many years, and in fact since its inception, the Patent Section has worked continuously to improve the American patent system. That work is carried out through a number of committees, whose recom mendations are debated in annual section meetings of several days duration. In such fashion the section has recommended many constructive changes in the patent law. For example, nearly 30 years ago, in 1939, the American Bar Association, upon the recommendation of the Patent Section, adopted a resolution recommending that the term of a patent extend 20 years from the filing date of the application. Even though our recommendation was made almost 30 years ago, we are pleased to cite it in support of section 154 of H.R. 5924, 6043, and 6975. Since these bills are identical, I will refer only to the first-introduced from hence forward. In 1951, the American Bar Association recommended a relaxation of the rules for filing applications on inventions made by more than one inventor. Section 116(b) of H.R. 5924 follows that recommendation and we are pleased to support it. Prior to the report of the President's Commission, the American Bar Association recommended that the owner of an invention be permitted to file the patent application, provided the inventor is named. This principle is now embodied in section 111 of H.R. 5924 but is restricted by section 115 which requires the owner to obtain both an assignment and an oath of invention signed by the inventor. Thus, H.R. 5924 does not relax the rigid requirements of the present statute, but merely changes the timing. Members of our association and section were extremely active in the revision and codification of the patent laws into the 1952 Patent Act which is currently in effect. That Act was the result of a cooperative effort by the patent bar, and representatives of the Patent Office, with the Congress and its committees. I mention these things, not to seek credit for our ideas, but to show that we as lawyers are not always opposed to change. Nevertheless, we are opposed to change solely for the sake of change, and to unjustified change that will eliminate some of the basic features of a system that has been so important to the technological development of this country to the preeminent position it enjoys today. That is the reason for our opposition to some of the drastic changes that would be made by H.R. 5924. About 4 years ago, the council of the ABA patent section created a special, long-range planning committee which was given the title of Patent Policy Planning Committee. It was directed to anticipate the needs of the patent system and develop solutions for problems that might occur in the future. We gave particular attention to the problems of better claim drafting, streamlining interference practice, overcoming delays in the Patent Office and increasing the reliability of patents. When, about a year later, the President's Commission was established, we sought from the Commission and were given a list of topics or areas of the law that they planned to explore. These topics were considered by the committee at great length. As part of that consideration and to aid the Commission in its studies, the section put on a debate in February of 1966, on each of 15 topics, including most notably the elimination of the grace period, and the first-to-file system. 90-355-68-pt. 1—20 Mr. Neuman and a number of other members of the Commission attended that session and interrogated the debaters on the topics treated. A number of the Commission members were kind enough to express their thanks for the help those debates were to their understanding of the proposals they were considering. The transcript of the debate was also circulated to the entire section membership. This, gentlemen, is a copy of the transcript which was circulated, and to the Commission of course. Mr. Schuyler's committee then had a number of other meetings and numerous recommendations by that and other committees were debated and voted upon at our annual meeting in Montreal in August 1966. Further action on most of these resolutions was deferred, pending publication of the report of the President's Commission. Following the publication of the report in December 1966, we reviewed our previous actions, and since February 21 we have, of course, been concentrating on the expression of most of these recommendations in H.R. 5924. The section's Patent Law Revision Committee (45 members, under chairmanship of Donald W. Banner, of Chicago) immediately began intensive consideration of the recommended changes, and Mr. Schuyler's Patent System Policy Planning Committee began drafting alternative recommendations, all in preparation for an extraordinary meeting of the section scheduled for April 27 to 29 in Washington. Incidentally, I understand that this is the first such special meeting since the act of 1952. (I was interested to note Mr. Neuman's reference to approval by the committee of certain of the Commission's recommendations. He did not mention that "first to file" was opposed by 93 percent of the committee and elimination of the grace period by 91 percent.) Over 400 members of the section attended the meeting in Washington, which lasted 3 days. Full consideration was given to the committee reports expressing positions on the many changes proposed by H.R. 5924, and a tentative draft bill based upon previously established positions of the section. The results of that consideration are in part expressed in a number of resolutions which will be recommended to the house of delegates of ABA for consideration at its August meeting in Honolulu. Knowing that this committee, as well as the comparable Senate committee, were holding hearings on H.R. 5924, the board of governors on May 15 gave emergency approval of the section's opposition to complete elimination of the grace period and the first to invent system, which are two of the most significant features of that bill. The association positions on other provisions of the bill and on constructive alternatives to them must await the house of delegates meeting. However, Mr. Schuyler's committee is continuing with preparation of a draft bill and it is expected that this work will shortly be completed, in preparation for final consideration by the section in Honolulu August 5 to 9. It is hoped that this continued effort by the American Bar Association will come to fruition in a proposed revision of the Patent Code which will go far to accomplish the objectives set forth by the President's Commission report and by the President in his letter of transmittal to Congress. |