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Mr. McKIE. Yes; because he is the only one to file in so many of those cases, but it does not affect only the person who is a junior one to file, but it affects even the person who gets the patent today because that person will be encouraged to file early before his invention is fully developed.

Mr. FUCHS. And it is also true, isn't it, that the principle of rewarding the first-to-invent is not really abandoned by the bill, but that what is proposed is actually an objective test for determining priority of invention by resort to a presumption in favor of the first filer, in the interest of administrative convenience. This is true, isn't it?

Mr. McKIE. I dont' really think so.

Mr. FUCHS. Would you say why it isn't?

Mr. McKIE. I don't believe that the first-to-invent principle is retained by the bill at all, but rather a first-to-file principle, no matter who is the first to invent.

Mr. FUCHS. The presumption is that the person who filed first is the inventor. That it seems to me is what the bill would do.

Mr. McKIE. This is a conclusive presumption, if you want to put it in that term; yes.

Mr. FUCHS. Aren't there many fields in law in which a man's right depends upon priority of notice or priority of recordation of some fact of claim, or mortgage, or lien?

Mr. MCKIE. Indeed.

Mr. FUCHS. It is quite common. But the ABA believes that it is not possible that the substitution of a readily determinable event; namely, the date on which the inventor discloses his invention to the Patent Office, for such a nebulous and sometimes subjective test as conception or reduction to practice would be advantageous?

Mr. MCKIE. No; because there are so many correlary disadvantages that go with that that affect the entire 99 percent in addition to the 1 percent that get into the interference.

Mr. FUCHS. The adoption of the system would eliminate interference proceedings in the relatively few cases in which they do occur and would also eliminate the uncertainty that affects every invention with respect to whether an interference is likely to be provoked; isn't that so?

Mr. MCKIE. Yes; certainly if you eliminate interference you eliminate the interference proceedings that would be created.

Mr. FUCHS. Mr. Fulwider, who is the chairman of the section, I believe, told the Senate last week that under the bill there would be a lot of litigation as to whether the preliminary application is adequate. Mr. McKIE. Yes; I think that is right.

Mr. FUCHS. Of course, this could only occur where disputes as to priority arise. Is that not so?

Mr. McKIE. Priorities between the reference and the filing date of the patent, the complete application; that is correct.

Mr. FUCHS. It could only occur in cases of disputes over effective filing dates.

Mr. McKIE. Yes; which involves validity.

Mr. FUCHS. That is right. Is there any reason to believe that priority disputes will be more affected under the bill than interferences are today?

Mr. McKIE. Oh, very much so, Mr. Fuchs. I don't see how you could conclude otherwise. There are many, many cases today that never get into interference in which there is a question of priority between the reference date and the development by the inventor.

These arise every day. They have new patents issued because technology is going forward and it is going forward for everybody, not just for one person at a time. There is a theory that inventions tend to arise when their need arises and when technology gets to the point where they can arise.

This tendency exerts itself on a number of people around the country at somewhat the same time and frequently for that reason they come up with the invention. Many of these people don't file patent applications. Many of these people are foreigners and they issue patents, they issue publications, which never come into the United States as patent applications so we don't get into priority conflicts of the interference type but we very definitely get into problems all the time as to whether we can get back of the date of reference.

This is rule 131 practice that is quite common, and you would do the same thing in the courts.

Mr. FUCHS. Thank you, Mr. McKie. Thank you, Mr. Chairman. Mr. KASTEN MEIER. One point Mr. Hutchinson brought up relating to the section, your own section, that two members of the Commission were members of your section. How large is your section?

Mr. MCKIE. The section contains about 3,200 members, 3,200 members. The two people who were referred to who are members of the section; namely, Mr. Neuman and Mr. Clement, have not been to my knowledge active members of the section. They are members of the section, and there are many of this kind, of course, that never come to a meeting.

Mr. KASTENMEIER. How many active members do you have in the section?

Mr. MCKIE. It is difficult to measure activity. Let me put it in these terms. If you are interested in the affairs of the section you will probably want to get on a committee. I think Mr. Schuyler's experience has been, and mine is at the present time, that somewhere around 1,500 to 2,000 members of the section are interested in participating in committee work. That is a substantial amount I think and that indicates activity.

At our annual meeting in particular we will have 300 to 400 people. At this meeting that we had here in Washington we had 400 people. Mr. KASTENMEIER. I take it the positions, while agreed to as a matter of consensus, are not unanimously agreed to, are they?

Mr. McKIE. That is certainly true. The positions that we espouse here today were very, very strongly adopted; that is, there was a minority against, of course, and there are patent attorneys-I don't want to create the impression otherwise who believe that the first-tofile system is the best. I think most of them do so because we do have substantial problems without present interference practice and they think the only way to get rid of those problems is to eliminate the system, but they are in the minority.

I think most of us feel that the problems that we do have can be resolved or at least ameliorated.

Mr. KASTENMEIER. Thank you, Mr. McKie. Mr. Fuchs, do you have another question?

Mr. FUCHS. May I, Mr. Chairman? Mr. McKie, it has been suggested to the subcommittee that the patent section would favor overruling the decisions of the Supreme Court in Brenner v. Manson and that of the Court of Customs and Patent Appeals in in re Jolly concerning the disclosure of utility, with the result that chemical compounds would be considered useful per se, and I wonder if you would discuss that.

Mr. McKIE. If I might defer to Mr. Schuyler I would prefer to because his activity is the one in which this point came up during the section meeting and I am sure you are referring to the debate during the meeting in Washington in April.

Mr. SCHUYLER. An effort has been made and will come up in which the section would put into the law a different rule of utility as applied to chemical compounds in particular and relax somewhat the strictness of the present decisions you mentioned because inventions sometimes have utility only as research tools to lead to others because an invention to satisfy the present rule as I understand it-this is what I obtained from chemists; I am not a chemist-as I understand it, you first invent the compound, then, to satisfy the requirement of the Manson decision, you must make another invention which is a process using that compound. So in order to obtain a patent in that area the inventor must make successively two inventions rather than just one and to satisfy that one hardship it will be I think our recommendation to relax the rule of utility in the chemical compound area.

Mr. FUCHS. Under that would a compound be patentable even though it had no known beneficial use?

Mr. SCHUYLER. Yes; I think that our proposal would be that a new chemical compound need not disclose utility at the time the application is filed. The feeling is that this absence, if it turns out to have no utility, the patent will be valueless, too.

Mr. FUCHS. Thank you.

Mr. KASTEN MEIER. Mr. McKie and Mr. Schuyler, the subcommittee appreciates your appearance here today.

Mr. McKIE. It is our pleasure, Mr. Chairman.

Mr. SCHUYLER. It is a pleasure to be here, sir.

Mr. KASTEN MEIER. This concludes the hearing this morning and the Chair would like to announce that on next Thursday, June 1, at 10 o'clock in this room, we will resume. The Honorable Claude Pepper of Florida, and the Honorable Robert Giaimo of Connecticut, and Mr. Anthony DeLio of New Haven, Conn., will be witnesses. Until that time the subcommittee stands adjourned.

(Whereupon, at 11:55 a.m., the subcommittee recessed to reconvene at 10 a.m., Thursday, June 1, 1967.)

GENERAL REVISION OF THE PATENT LAWS

THURSDAY, JUNE 1, 1967

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE No. 3 OF THE
COMMITTEE ON THE JUDICIARY,
Washington, D.C.

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, Poff, Hutchinson, and Roth.

Also present: Herbert Fuchs, counsel.

Mr. KASTENMEIER. The subcommittee will come to order for further hearings on H.R. 5924, the Patent Reform Act of 1967.

The committee is very pleased to have as its first witness this morning our colleague, the Honorable Claude D. Pepper of Florida, who has, himself, introduced a bill, H.R. 6043, on the subject of patent law revision.

STATEMENT OF HON. CLAUDE D. PEPPER, A REPRESENTATIVE IN CONGRESS FROM THE STATE OF FLORIDA; ACCOMPANIED BY WILLIAM ARTHUR ROBERTS, LEGISLATIVE ASSISTANT

Mr. PEPPER. Thank you very much, Mr. Chairman and members of the committee.

Appearing here before your distinguished committee on this subject of patents brings back to my mind a number of interesting years that I spent as chairman of the Patents Committee of the other body. I didn't profess to know a lot about it, but I heard a lot about it from many able people. I think a bill was passed through the Congress making some improvements in the patent laws during that period.

To some people, the connection between the State of Florida and the U.S. patent system might seem somewhat remote. Florida is seen by some as the land of sunshine, vacations, and retirement. It is all of that. It is true that more than one-third of the State's economy is based on tourism. But it is equally true that about one-third of our economy comes from manufacturing. In fact, Miami is considered part of the Gold Coast and has more industry than any other part of the State. In fact, during the past 10 years, manufacturing in Florida has grown more than 400 percent-far above the national growth rate.

The growth in manufacturing industries is reflected in the continuing increase in the number of patents issued to individuals and companies in Florida. From 1963 through 1966 the number of patents rose in this fashion : 573, 643, 769, and 851 for last year.

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