you realize the examiner is going to have to look at each preliminary, look at the final document and be assured that there were no deviations. Even with first-to-file you may file today a preliminary application and in 6 months your fifth preliminary application, and if someone files in between something which is more or less close to your fourth one, you are not going to avoid the problem of making the decision as to who was entitled to the invention. You have eliminated the interference proceeding per se, but not the problems. You are running into the same thing all over again. You can't seem to avoid it.

Mr. KASTEN MEIER. If the gentleman will yield, of course the same thing may be true under the first-to-invent system. You may have a refinement from the point of first invention to your application. You probably in some cases would have the same type of difficulty, if there be one.

Mr. DELIO. Except that each application under the present system has to stand on its own four feet. You can refer back to a previously filed application, but you don't get any benefit of the previous date unless it is disclosed there. I think with the 20-year change which is in the Giaimo bill also, the 20-year term running from the date of filing, you are going to cut out the bad practice of the filing of multitudinous continuations in part which I think most practitioners don't resort to.

Every time you file a continuation in part you are admitting that the previous document wasn't sufficient in and of itself so that there is a limit under the present laws of filing a continuation in part. Every time you file a reissue application, this is an estoppel on the record that your first document wasn't too good, and this is important, too. You have to note these considerations. You just don't willynilly file continuation in part applications and reissues without giving serious consideration to the Pandora's box that is opened. I would say that this is an important consideration.

Mr. POFF. You seem to imply, if you did not say directly, that probably the major problem that the patent system in this country has today could be solved by a mechanical or electronic device: namely, the installation of an information retrieval system. I am interested in that idea, and I wondered if you could explain what might be involved there in the way of difficulty and expense?

Mr. DELIO. I don't know if this can be done. If it can't be done, there is no substitute for examiners and the continuation of some classification system akin to the one that is being used now. The real problem that you have with this classification of patents is that you look at a patent and it might have four or five inventive ideas. You know computers are wonderful, but they are only as good as the people who program them. It is here that the ideas are going to have to develop. It is going to have to be done here in classification anyway. I think the steroids are very well classified in the Patent Office today, but they are going to have to get down and spend the time and it means manpower (first) to set up a system of classification and a system of retrieval. Then if the hardware is available-and this I don't know; people from IBM and other companies of that nature can tell you whether the hardware is available-you can carry this information retrieval and classification out on a mechanized basis. I think

(now) in the Patent Office very little is being done by the Classification Division. They have pulled examiners out of the Classification Division or they are not performing their tasks of classification as they did in the past. This is the problem. They are getting worse in the Patent Office on classification and information retrieval and will continue to get worse unless there is more money put in.

Mr. KASTENMEIER. If the gentleman will yield, is it not true that Congress appropriated money to the Patent Office a few years ago to go into this automation and classification system. I don't know what the present status is, but it is obviously not a new idea because the Patent Office has been continually concerned in recent years with these problems. You do concede that?

Mr. DELIO. Yes, but I don't have the exact figures, but I don't think that budget was realistic to really get into the problem. I think they are more concerned with keeping up the cost of living increases for examiners, trying to put on more examiners, and this is a problem, too, with the examiners. I think the grade structure needs overhauling in the Patent Office in order to attract and keep the people. Something has to be done. I think this is where the problems lie. A 20 or 25 percent turnover in examiners is something that is very difficult to live with, and I think our Patent Office is one of the highest, if not the highest, in the world in turnover of examiners. We have of course great mobility in our population; so that it is not fair to blame it on the Patent Office itself, but I think we have to face the problem that it is going to take more dollars to do the job in the Patent Office under an examination system or an examination plus third party system as envisaged by the administration bill. If the Congress feels that this is not worth spending, and you gentlemen know this better than anybody else (spending the needed money), then I say that as an alternative you must consider the registration system, that is, as an alternative only.

Mr. POFF. I have a good many more questions, but I feel I have taken too long. I yield to my colleague.

Mr. KASTEN MEIER. The gentleman from Michigan.

Mr. HUTCHINSON. I have no questions.

Mr. KASTENMEIER. The gentleman from Delaware.

Mr. ROTH. I have no questions. You may continue if you want. Mr. POFF. No, thank you. I am not often given this opportunity and I don't want to abuse it. I believe I have forgotten what I wanted to ask you now, so that I will not be able to do it after all.

Mr. KASTENMEIER. We do thank you, Mr. DeLio, and our colleague Mr. Giaimo, for appearing here this morning and giving us the benefit of your views.

Mr. GIAIMO. I want to thank you, Mr. Chairman and members of the committee, for the reception you have given Mr. DeLio and the length of time that you have allowed him. I appreciate it.

Mr. DELIO. I am much obliged, Mr. Chairman and members of the committee.

Mr. KASTENMEIER. The Chair would like to announce that next week, on June 8, a week from today, at 10 o'clock, in this room, we will hear from Mr. Frank Pugsley, president of the American Patent Law Association. Until that time this subcommittee stands adjourned.

(Whereupon, at 11:30 a.m., the subcommittee recessed, to reconvene at 10 a.m., Thursday, June 8, 1967.)

GENERAL REVISION OF THE PATENT LAWS

THURSDAY, JUNE 8, 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, and Franklin G. Polk, associate counsel.

Mr. KASTENMEIER. The subcommittee will come to order for the further consideration of H.R. 5924, the Patent Reform Act of 1967, and other bills on the same subject.

Before hearing from our distinguished witness this morning, the Chair wishes to take note of the joint release made last Thursday, June 1, by officials of the Commerce and State Departments concerning a proposed Patent Cooperation Treaty to be negotiated by the United States and 76 other members of the Paris Convention for the Protection of Intellectual Property.

The principal feature of the proposed treaty would be the single basic filing and processing of an international patent application which would provide the basis for the issuance of patents in any of the member countries.

The adoption of the treaty is expected to eliminate multiple filing of patent applications on the same invention and to establish a uniform application format, provide a single worldwide novelty search, and permit a single examination.

Meetings of experts from member countries are to be held in Geneva probably in October of this year to prepare recommendations to the Executive Committee of the Paris Union which will meet in December. Obviously, provisions of the Patent Reform Act, notably the first-tofile provision, relate directly to the proposed treaty.

In order that our hearings shall be complete, and without objection, counsel is directed to place in the record the following documents:. First, the release by the officials of the Commerce and State Departments dated June 1, 1967; second, remarks of Dr. J. Herbert Hollomon, Acting Under Secretary of Commerce in connection with the release of the proposed International Patent Cooperation Treaty; third, remarks of Eugene M. Braderman, Deputy Assistant Secretary for Commercial Affairs and Business Activities, Department of State, in connection with the release of the proposed International Patent Coopera

tion Treaty; fourth, remarks of Edward J. Brenner, Commissioner of Patents, in connection with the said treaty; and, fifth, statement of the highlights of the proposed treaty prepared by the Patent Office. Mr. POFF. Mr. Chairman.

Mr. KASTEN MEIER. Mr. Poff.

Mr. POFF. Mr. Chairman, I join in the suggestion you have just made. I think it would be entirely appropriate to include those documents in the transcript of the hearings. I suggest, too, that there may be those who have testified earlier who would have a particular interest in those documents and, if so, I am sure the subcommittee would want to make them available to those witnesses or, indeed, to any who might have a purpose to testify in these hearings.

I understand that the Commerce Department has a supply and will be glad to make them available on proper request.

Mr. KASTENMEIER. Yes, I think that is a very appropriate comment, and obviously witnesses themselves may later care to address themselves to this point.

(The documents referred to follow :)

U.S. DEPARTMENT OF COMMERCE,

OFFICE OF THE SECRETARY,
Washington, D.C., June 1, 1967.

PATENT COOPERATION TREATY

A proposed Patent Cooperation Treaty was released today by officials of the Commerce and State Departments. Characterized by Dr. J. Herbert Hollomon, Acting Under Secretary of Commerce, as a "major step toward the long-range goal of a universal patent system," the treaty would eliminate the multiple filing of patent applications now necessary to patent an invention in a number of countries. The proposed treaty was prepared by an international organization (United International Bureaux for the Protection of Intellectual Property, referred to as BIRPI) as a result of a resolution made by the United States last fall.

Eugene F. Braderman, Deputy Assistant Secretary of State, stated that the proposed treaty "will be of major benefit to the industrialized nations as well as to the developing countries of the world."

The principal feature of the proposed treaty is a single basic filing and processing of an international patent application which would provide the basis for the issuance of a patent in any member country. According to Edward J. Brenner, Commissioner of Patents, this would:

eliminate multiple filing of patent applications on the same invention which under today's practice must meet a variety of diverse requirements; establish a uniform application format which would be acceptable to each member country;

provide a single world-wide novelty search which would be available to the applicant at an early stage; and

permit a single examination resulting in a "Certificate of Patentability” which could be used by the member countries in issuing patents.

[The Commissioner added that many of the provisions of the Administration's Patent Reform Bill, now before the Congress, including the "first-to-file" provision, are essential to full participation by the United States in the proposed system.]

BIRPI is the Secretariat for the Convention of Paris for the Protection of Industrial Property to which the United States and seventy-six other countries adhere. Meetings are scheduled for the fall to develop the proposed treaty.

NOTE. The Subcommittee has been advised that the matter enclosed within brackets was deleted from the foregoing statement before its release to the public and that failure to remove it from the material earlier submitted to the Subcommittee was inadvertent.

REMARKS OF DR. J. HERBERT HOLLOMON, ACTING UNDER SECRETARY OF COMMERCE, AT NEWS BRIEFING ON JUNE 1, 1967, IN CONNECTION WITH THE RELEASE OF A PROPOSED INTERNATIONAL PATENT COOPERATION TREATY MAY 31

The United International Bureaux for the protection of Intellectual Property (known as BIRPI), yesterday released in Geneva a draft of a proposed Patent Cooperation Treaty designed to reduce substantially the burden of obtaining world-wide protection of inventions and innovations.

BIRPI is the Secretariat for the Convention of Paris for the Protection of Industrial Property to which the United States and seventy-six other countries adhere.

The preparation of this draft treaty is a major step toward the long-range goal of a universal patent system.

Today, in order to protect an invention internationally, an inventor or businessman must file a separate patent application in each foreign country. Each of these applications is then processed individually to determine whether the invention is patentable under the laws of the individual country. As a result of this practice there is an unnecessary and ever increasing duplication of effort which is swamping the patent offices of the world and imposing serious delays and excessive costs on applicants.

We estimate that more than 50 percent of the 650,000 patent applications filed world-wide are duplicates of other applications; and with the rapid acceleration of world trade, the situation will become worse. In 1972, for example, of the estimated 100,000 patent applications which will be filed in this country, 30,000 will originate abroad and be duplicates of foreign applications. In turn, 30,000 of the 70,000 inventions first applied for in this country will also be filed in an average of five foreign countries, giving rise to 150,000 additional applications worldwide.

The multiple filing and examining of patent applications has clogged the dockets of the patent offices of the world. It causes wholly unnecessary expenses and delays for inventors and businessmen engaged in international trade; and because of this, it has created an unnecessary barrier to the expansion of international trade. The draft treaty, if adopted by the countries of the world, will considerably reduce this duplication of time and expense. Under the proposed treaty, instead of filing multiple patent applications, a U.S. businessman or inventor could file a single application with the United States Patent Office and request that this application be treated as an international application. The plan does not provide for the issuance of an international patent. However, it would facilitiate a single search and examination of an application to determine whether an invention is really new, and then this search and examination could provide the basis for issuance of a patent in other countries designated by the applicant. We believe that this proposed treaty is a significant and indispensable step toward really meaningful cooperation in protecting new technology internationally and affording incentives for creativity on a world-wide basis.

With me today is Eugene Braderman, Deputy Assistant Secretary for Commercial Affairs and Business Activities, Department of State, and the Commissioner of Patents, Edward J. Brenner, who will discuss in some detail the major features of the treaty and the probable steps through which the proposed treaty will be developed.

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