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ENERAL 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. KASTENMEIER. 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 bas 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.

90-355-68—pt. 1—26

REMARKS OF EUGENE M. BRADERMAN, DEPUTY ASSISTANT SECRETARY FOB Cox

MERCIAL AFFAIRS AND BUSINESS ACTIVITIES, DEPARTMENT OF STATE, AT NEWS BRIEFING ON JUNE 1, 1967, IN CONNECTION WITH THE RELEASE OF A PROPOSED INTERNATIONAL PATENT COOPERATION TREATY ON MAY 31

The Department of State strongly supports the efforts described by Dr. Hollomon toward achieving a solution of the serious patent problems facing applicants and patent offices around the world. This world-wide pattern of patent problems has aptly been described as "the international patent crisis" by the National Association of Manufacturers. We are convinced that action on an international scale is essential to preserve the full benefits of the patent system for inventors and businessmen at home and abroad.

For these reasons, we commend BIRPI for the work it has done in the development of the proposed Patent Cooperation Treaty, which will be of major benefit to the industrialized nations as well as to the developing countries of the world. This initiative is entirely consistent with the objective of this Government to increase international patent cooperation directed toward solving the problems of national patent offices and furthering the contribution that patents can make to the expansion of world trade.

The preparation of the proposed treaty was the result of a recommendation made by the United States to the Executive Committee of the Paris Union that "the Director of BIRPI undertake urgently a study on solutions tending to reduce the duplication of effort" in obtaining patent protection in several countries on the same invention. This recommendation was unanimously adopted by the Executive Committee on September 29, 1966. The unanimous vote is all the more important because the make-up of that Committee included countries from all parts of the world, confirming our belief that there is general support for a multilateral solution to these critical problems.

We believe it appropriate that the United States should give every encouragement for the development of a treaty of this nature since United States inventors and businessmen are among the most active in the world in seeking international patent filings and encouraging the diffusion of technology through these filings. A word should be added about the problems of developing countries, many of which are today unable to support or to staff adequate patent processing procedures in this complex technical field. The proposed system offers a clear and simple solution to this dilemma by enabling such countries to utilize a search and examination system developed through an international bureau. Thus, we believe that the developing countries would also benefit from the proposed system in being able to offer meaningful protection for inventors and businessmen, as well as for foreign investors who consider the effective protection of inventions as an important factor in the total climate for investment in these countries.

The draft treaty which is being released today here in Washington is also being released to other Paris Union countries and numerous private and intergovernmental organizations which have an important stake in the solution of pressing international patent problems. Following their study of the draft, a meeting of experts from these countries and groups will be held in Geneva, Switzerland, probably in October of this year to consider further the draft of the proposal and to make recommendations for action on the proposed treaty to the Executive Committee of the Paris Union, which will meet in December 1967.

REMARKS OF EDWARD J. BREN NER, COMMISSIONER OF PATENTS, AT News BRIEFING

ON JUNE 1,1967, IN CONNECTION WITH THE RELEASE OF A PROPOSED INTERNATIONAL PATENT COOPERATION TREATY MAY 31

As Dr. Hollomon has stated, the United International Bureau for the Protection of Intellectual Property (BIRPI) has released in Geneva a draft of a proposed Patent Cooperation Treaty designed to reduce substantially the duplication of effort in protecting new technology internationally.

This proposed treaty is of a major significance to the United States Patent Office and the patent offices of the world as well as to inventors and businessmen interested in international markets.

The principal feature of the proposed treaty is a single basic filing, search and examination of an international application which would provide the basis for the issuance of a patent in any member country designated by the applicant.

Under the proposed treaty, the member countries would agree upon uniform requirements for the international application. This would be in sharp contrast to present practice where each country sets its own requirements.

Under a first phase of the treaty, a world-wide search would be made to determine whether the invention is really new, and the application and the search results would then be sent to the countries designated by the applicant. This single search would take the place of the many duplicate searches now performed when a number of applications on the same invention are filed in individual countries.

Under a second phase of the proposed treaty, an inventor or businessman could request a full examination and obtain a “Certificate of Patentability" on the international application. This certificate would certify, on the basis of the search and examination conducted, that the invention was patentable.

The international application, the search and the examination results produced under the treaty plan would provide the basis for the issuance of national patents in countries designated by the applicant, providing the invention satisfied the requirements of national law. The proposed treaty 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

perinit a single examination resulting in the “Certificate of Patentability” which would be used by the member countries in issuing patents. As an overriding advantage, the treaty will form the basis for the buildup of mutual respect and confidence among the patent offices of the world as an indispensable step toward the ultimate goal of a universal patent system.

[There is a close relationship between the proposed Patent Cooperation Treaty and the Patent Reform Bill (H.R. 5924 and S. 1042) which President Johnson forwarded to the Congress on February 21. Many of the provisions of the bill are essential to the full participation by the United States in the proposed treaty plan. Among these are:

[The first-to-file provision under which patents are awarded to the first inventor to file a patent application on the invention.

[The standard of universal “prior art.”

[Filing of applications by the owners of inventions as well as inventors. [The release of the proposed Patent Cooperation Treaty, therefore, adds significance to the patent reforms proposed by President Johnson in the Patent Reform bill. We are convinced that the patent systems of the world must provide positive incentives internationally to be a truly meaningful instrument of progress in the decades ahead. These important measures—The Patent Reform bill and the proposed Patent Cooperation Treaty—are designed to increase these incentives.)

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

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