range solution to the problem. It was clear when the Commission was established, and it is clear today, that more must be done that basic revisions of the system are essential for it to serve effectively to stimulate the development and public disclosure of new technology and to provide incentives, rather than barriers, to international trade.

By Executive Order No. 11215 issued April 8, 1965, which is attached to the testimony, which established the Commission, the President charged this Commission with a duty:

To ascertain "the degree to which our patent system currently serves cur national needs and international goals"; and

To recommend to the President "steps to insure that the patent system will be more effective in serving the public interest in view of the complex and rapidly changing technology of our time."

Ten of this Nation's leading citizens representing the business, scientific, and academic communities and the bar served on the Commission together with representatives of the Secretary of Commerce, the Secretary of Defense, the Administrator of the Small Business Administration, and the Director of the National Science Foundation. The Secretary of State and the President's Science Adviser were observers and they were also represented on the Commission.

Dr. Harry Huntt Ransom, chancellor of the University of Texas, and Simon H. Rifkind, a retired Federal judge and noted trial attorney, served as Cochairmen of the Commission.

The list of public members of the Commission is included in the testimony.

The Commission invited comments on the patent system from bar and patent law associations, business and trade associations, universities, scientific and engineering societies, and the public at large. Prior to the establishment of the Commission, Senator McClellan of the Subcommittee on Patents, Trademarks, and Copyrights of the Senate Judiciary Committee, had solicited the views and evaluations of the patent system from our Nation's leading corporations, inventors, economists, and the patent bar, and these were made available to the Commission.

A special committee of the American Patent Law Association, established to study the U.S. patent system, submitted a comprehensive report to the Commission containing a number of recommendations which were considered and some ultimately adopted by the Commission. A similar special committee of the American Bar Association Patent Section, as well as many local patent law associations, supplied much useful information to the Commission and its staff.

All of the comments received were carefully considered by the Commission both in making its choice of areas to be studied, and in later deliberations in these areas.

After more than a year of intensive study, the Commission submitted its report to the President. This report is available to the com

mittee.

The members of the Commission were unanimous in their conclusions that "a patent system today is capable of continuing to provide an incentive to research, development, and innovation" and that there is "no practical substitute for the unique service it renders."

After identifying broad areas where improvement was necessary, the Commission formulated an integrated plan of 35 recommendations,

most of which are closely interrelated, to bring about what it decided was a long-overdue modernization of the patent system.

In releasing the report of the Commission last December, the President referred it to the Department of Commerce, the Department of Justice, and to his Science Adviser to consider it carefully and to develop legislative proposals to carry out its objectives. The Patent Reform Act of 1967 is the result of this review, and it incorporates most of the Commission's recommendations, but not all of the Commission's recommendations.

A sectional analysis of how H.R. 5924 would change present law was forwarded by the President with the bill and appears in House Document No. 59. Commissioner Brenner will discuss in some detail the major provisions of the bill, how these provisions will be implemented, and how they will contribute to the Commission's report and the bill.

Broadly stated, the purposes of the bill are:

(1) To raise the quality and reliability of U.S. patents;

(2) To reduce the time and expense of obtaining and protecting a patent;

(3) To speed the public disclosure of scientific and technological advances; and

(4) To bring the U.S. patent system more closely into harmony with those of other nations, whenever consistent with the objectives of the U.S. patent system, as an indispensable step toward closer international cooperation in the protection of intellectual property.

I would like to say now, and I would like to emphasize later, that it is our belief that an international system can be developed which would reduce in substantial degree this obvious costly duplication, if we can have a system which is more compatible with other nations' systems. We can have this while not giving up the strength of our own system. I think that this committee should give the most careful consideration to this matter.

Each of the recommendations of the Commission adopted in the bill contributes to one or more of these objectives; and a number of the provisions of the bill contribute directly to achieving all of the goals. Let me illustrate this point in the context of what is perhaps the most significant and far reaching, and perhaps most controversial, of the Commission's recommendations and that is the recommendation that the United States adopt a first-to-file system of priority.

Under present law, patents are theoretically issued to the first person to "complete" an invention, in the legal sense of the term, and in cases where there are competing claims to an invention, the issue of who invented first is resolved in what is called an "interference procedure." The issue turns substantively on an interplay of a number of technical legal criteria involving "conception" of the invention, "actual reduction to practice" and "constructive reduction to practice" of the invention, "diligence" of the parties, and "abandonment, suppression, or concealment" of the invention by the parties. The parties to an interference attempt to prove their case through oral testimony and whatever supporting documents and physical exhibits may be available. The procedural complexities and the strict requirements of proof imposed reflect a legitimate concern that where dates are not officially recorded, there may be a tendency for a self-serving interpretation of past events by the parties to an interference.

Interference proceedings can be, and typically are, long and drawn out. In one celebrated case, the interference proceeding consumed over 20 of the 23 years an application was pending in the Patent Office. While this, of course, was unusual, a study of 647 interference proceedings indicated an average delay of 534 days.

More serious than the delays in the Patent Office, however, is the fact that under the present system, an inventor who has "completed" an invention may have no sense of urgency at all in filing a patent application. Instead, he may delay filing an application until someone else either publishes the invention or in good faith obtains a patent on the invention. The "first" inventor then has a 1-year period in which to file an application claiming that he, and not the one who took active steps to make the invention available to the public-which is the quid pro quo for which we grant the monopoly-is the "first" inventor, and therefore, entitled to the patent. Under present law, he may succeed in his claim.

These factors led the Commission to conclude that where there are competing claims to the same invention it would be far more equitable to award the limited monpoly which a patent confers to the inventor "who first appreciated the worth of the invention and promptly acted to make the invention available to the public." Since the first step in making the invention available to the public under the patent system is the filing of a patent application, the Commission recommended, and H.R. 5924 would establish, a system which gives a patent to the first to file the application.

To provide inventors with a reasonable period of time in which to develop and test their inventions, inventors would be permitted to file an informal technical disclosure of an invention for a nominal fee, for example $10, to establish an early legal filing date. As will be explained by the Commissioner, this preliminary application could then be perfected within 1 year by the filing of a formally prepared patent application which would date back to the date of the "preliminary application."

Now, this particular "preliminary application" then establishes the date to which the invention is entitled. A foreigner, relying on the date of his foreign filed case, would be treated in exactly the same way as the domestic applicant. Further, the application would not have to be filed through a complex legal proceeding.

The first-to-file system proposed would increase the quality and reliability of U.S. patents and thereby contribute to the first objective of the bill. It would accomplish this, first, by removing the uncertainties which necessarily arise when events and dates prior to filing an application are proved by oral testimony or affidavits, and secondly, by removing the defense of "prior inventorship" which can now be urged by someone who took no active steps to make his invention available to the public. Of course, as an overriding consideration, the person who is awarded a patent must be a true inventor or originator and not a copier of the invention.

The point is here, under the present system, a patent may be granted and the person has no idea whatsoever whether or not the patent has any reliability at all. It may be challenged by anyone else who believes himself to be the first inventor of the patented invention but who has not divulged the invention to the public.

In terms of the constitutional thrust of the patent system, this is, I say, inherently unfair.

As a practical matter, only a small permentage of applications actually become involved in these interferences currently approximately 2,400 of the 204,000 applications pending in the Office, or less than 2 percent, are in interference proceedings-but the fact that we now operate on a "first to invent" basis casts a cloud of invalidity over every single patent that is issued, since an infringer may always contend that he or someone else was the first inventor. This reduces the worth of a patent to businessmen who should be able to place reliance on it being sustained in court.

The first-to-file system complemented by the preliminary application approach, will also achieve the second of the bill's objectives by reducing the time and expense of obtaining and protecting a patent. In addition to eliminating the burdensome interference practice, such a system will obviate the necessity for the elaborate recordkeeping now employed by knowledgeable or sophisticated companies either to support their own patents or to use as a defense against the patents of their competitors. A corollary of this is that the proposed system will remove the presently existing bias against individuals and small companies who are unfamiliar with the "ground rules" as to which records will be effective in proving prior inventorship and which will not meet the required procedural standards.

Once in my earlier life, before coming to the Government, I was in charge of a large research laboratory and the amount of records that had to be kept in order to prove at some future date that somebody was the inventor was simply enormous. These kinds of records, and the legal counsel that we had available to us, were certainly not available to the small inventor and the small businessman who was operating in the same area.

The prelimnary application technique, of course, will be of obvious advantage to small businesses and individual inventors who may wish to establish an early filing date, but who are not ready to pay the substantial fees for the preparation and filing of a formal patent application.

The recommended system of priority, coupled with the publication of patent applications within 24 months after filing-Commissioner Brenner will discuss this latter point in more detail-will achieve the third of the bill's purposes by accelerating the public disclosure of scientific and technological advances. As I noted earlier, under the present law, there is no requirement that an inventor promptly file a patent application on a "completed" invention so long as he has not actually "abandoned, suppressed, or concealed it." Moreover, patent applications are now maintained in secrecy by the Patent Office until a patent is issued, and this can, and frequently does, occur many years after the filing of an application. In the more leisurely days of yesterday, these delays may not have been critical; in today's fast-moving scientific world, they are intolerable.

Those who have expressed opposition to the Commission's recommendations base their opposition in part on the premise that the patent system was intended under the Constitution to secure an inventor's natural or moral rights to his invention. Those who take this position either overlook or ignore the fact that the Supreme Court has empha

sized the Constitution makes no provision for the moral or inherent rights of the inventor. In tracing the history of the U.S. patent system, Mr. Justice Clark, speaking for a unanimous Supreme Court in Graham v. John Deere Corp., was clear and precise in the conclusion that "the patent monopoly was not designed to secure the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge." The patent system was indeed intended to serve the interests of scientists and inventors; but overriding this, the system was intended to serve the interests of the public; the interests of the public being served by the publication of the results of the invention and the present system makes inordinate delays of such publication.

The proposed revisions of the patent system-and especially those provisions which I have mentioned-will by design necessitate prompt filing of patent applications by inventors, and it will require publication of these applications by the Patent Office within 24 months. By so doing, it will better serve an overriding constitutional objective of the patent system.

This brings me to the final objective of H.R. 5924, and that is to bring the U.S. patent law and practice more closely into harmony with those of other nations as an indispensable step toward closer international cooperation in protecting intellectual property.

Before discussing this objective, I would like to emphasize that each of the major provisions of H.R. 5924 is intended to improve the U.S. patent system and would be actively supported if this were the only country in the world. They take on an added dimension, however, in the context of international patent practice.

As I mentioned earlier, 60,000 of the estimated 100,000 applications which will be filed in the United States in 1972 will have one or more duplicate applications filed in other countries. Under current international practice, each of these applications will be searched and examined in each country which requires a search or examination, individually, as if no search or examination were being performed in other countries on the same invention.

This multiple filing and examination has clogged the dockets of the patent offices of the world; it causes wholly unnecessary expense for inventors and businessmen engaged in international trade; and it has created what has been referred to as the international patent crisis.

There is an International Convention for the Protection of Industrial Property, referred to as the Paris Union, which affords to citizens of the member countries the right to file patent applications in the other countries and to be treated the same as nationals. It also affords citizens of member countries the right to rely for priority purposes, under certain circumstances, upon the date of the first filing in any member country. The United States, along with 76 other countries, is an adherent to the Paris Union.

In contrast to the international protection afforded in the copyright area under the Universal Copyright Convention, the Paris Union does not provide for the international recognition of patents issued by member countries; nor does it provide for a single filing, search and examination of applications filed internationally.

Active steps are now being taken by the Secretariat of the Paris Union, with the active support and cooperation of the United States