REMARKS OF EUGENE M. BRADERMAN, DEPUTY ASSISTANT SECRETARY FOR COMMERCIAL 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. BRENNER, 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

permit 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.

HIGHLIGHTS OF THE PATENT COOPERATION TREATY

PRESENT PRACTICE

1. Applicant prepares and files separate national patent applications for each country in which he desires protection.

2. Each country establishes its own application requirements and these differ widely from country to country.

3. The national filing date of each application is the date on which each is actually filed in the countries in which protection is desired.

4. Applications must usually be filed in the national language of each country to be acceptable as national filings.

5. Each country processes applications individually. Where a search is required, each country conducts its own search whether or not searches are being made on the same invention in one or more other countries.

6. Applications are examined separately and these examinations are subject to varying standards of patentability.

7. Publication of applications be governed by national law which varies widely from country to country.

TREATY

1. Applicant would prepare and file a single international application which could be used by each designated country as a basis for issuing a national patent.

2. A standard application format would be established as acceptable for all member countries.

3. A properly filed international application would establish a single filing date effective in all of the member countries in which protection is desired.

4. An international application filed in one of the four official languages of the treaty is accepted as an effective filing in all member countries. Other national language translations could be required only after the applicant has had an opportunity to review the search of the invention.

5. A single world-wide search would be conducted by a qualified search facility in order to determine whether or not the invention is really new.

6. Applicants could obtain a "Certificate of Patentability" which would certify, on the basis of an international search and examination, that the invention is patentable. Communication of this certificate to designated member countries would provide the basis for issuance of national patents provided requirements of national law are satisfied.

7. The international application, together with the search report, would be published eighteen to twenty-four months after the effective filing date.

SUMMARY OF PATENT COOPERATION TREATY

Under the First Phase of the treaty applicant files an international application either directly with the International Bureau or through the medium of his national Office. After a formal check of the application a search report is issued by a qualified searching facility. Applicant is given a reasonable opportunity to amend his claims. The international application, together with a search report, is then published and communicated to the member countries designated by applicant. This international application and search report has the effect of a regular national filing in each designated country unless this effect is denied within a prescribed period of time. Moreover, the international application and search report could immediately form the basis for member countries (e.g. "registration countries") to grant national patents.

Under the Second Phase applicant can request the issuance of a "Certificate of Patentability" on the basis of a standard examination of the international application by a qualified examining facility. If issued, the "Certificate of Patentability" is published and communicated to the countries elected by the applicant. This certificate could immediately form the basis for issuance of a patent, and in most cases, a patent would be granted thereon unless this effect is denied

within a prescribed period of time. Sovereignty in all cases remains with each national Office.

Mr. KASTENMEIER. We would like to hear today as our witness, Mr. Frank B. Pugsley, president of the American Patent Law Association.

Mr. Pugsley, you are, indeed, welcome to the committee. If you will kindly identify your colleague, the committee will be very pleased to hear you. You may proceed.

STATEMENT OF FRANK B. PUGSLEY, PRESIDENT OF THE AMERICAN PATENT LAW ASSOCIATION, ACCOMPANIED BY LEONARD B. MACKEY, CHAIRMAN, COMMITTEE ON PATENT LAW, AMERICAN PATENT LAW ASSOCIATION

Mr. PUGSLEY. Thank you, Mr. Chairman, members of the subcommittee, and counsel, my colleague is Leonard Mackey, a patent attorney from New York. To further identify myself, I am from Houston, Tex. Mr. Mackey and I each have practiced patent law for 17 years, although he is a somewhat younger man than I, or appears to be. Mr. KASTEN MEIER. Your first patents that you filed are now expiring.

Mr. PUGSLEY. It happens that we both are at the magic number of years under present law. One of the changes that we will bring out that our association supports is to measure the terms of patents from the filing instead of from the issue dates, so that we support the 20year term, and 3 years from now we will have another anniversary.

May I briefly explain the makeup of the American Patent Law Association? We are a national association having a membership of about 3,000 lawyers. The practice of some 2,800 of our members is primarily in the field of patent law.

Both geographically and from the viewpoint of economic interest involved our membership represents a broad cross section. We have members in 40 States, and in all major cities of the country. A recent questionnaire revealed that of the members responding 52 percent are engaged in private practice, 46 percent are employed by corporations, and 2 percent are employed by the Federal Government agencies. Those of our members who are engaged in private practice appear on both sides of the docket in that they sometimes represent patent owners seeking to enforce their patent rights and at other times they represent defendants accused of patent infringement. Moreover, their clients include individual inventors, universities, private research foundations, and both large corporations and small corporations.

I would like to take a moment to go over the deliberations by our association so that the committee will understand how we arrived at the recommended changes and the positions of opposition with respect to H.R. 5924.

We feel we have given the subject of patent law revision more study and more intensive work than any other group. May I read from my statement some of the deliberations of the last 2 or 3 years?

Mr. KASTENMEIER. You may proceed, sir.

Mr. PUGSLEY. The association has for many years had special and standing committees investigating and working with Congress and

the Patent Office in a continual program of improving the patent and copyright systems. This program contributed substantially to the drafting and ultimate enactment of the Patent Act of 1952.

More recently, our standing Committee on Copyright Law has worked closely with the Register of Copyrights and with this committee in connection with copyright law revision, and in studying the interrelationship of the copyright and patent laws. Several years ago we established a special committee on reform of interference practice to study ways of reducing the expense and delay of priority contests in the Patent Office.

The association also has a standing committee on relations with the Patent Office which has cooperated with the Patent Office in efforts to simplify and improve its procedures. Our committee on government patent policy made a careful study which has resulted in the introduction of an association-sponsored bill directed to the problems in that field.

Our standing committee on patent law, of which Mr. Mackey, with me today, is chairman, has made studies leading to the introduction of several bills and has been making long-range studies with the basic objectives as those announced by the President's Commission To Study the Patent System.

Upon the appointment of the President's Commission, the American Patent Law Association established a Special Committee to Study the Patent System, with instructions to consider all possible improvements. The membership of this Committee was limited to 17 carefully selected members of the association who were willing and able to devote substantial time to this effort during 1965 and 1966. Among its members were the immediate past Commissioner of Patents and immediate past Assistant Commissioner of Patents, specialists in foreign patent practice, chemical practice, and interference practice, the heads of several corporate patent departments, and attorneys specializing in patent litigation.

The special committee held its first meeting on September 8, 1965, and met every few weeks thereafter until it was able to issue a preliminary report on November 24, 1965. This report was debated by the association in January in Washington, at which time serious objections were raised with respect to several of the recommendations. Mr. POFF. Is that January of this year or last year? Mr. PUGSLEY. Of last year, 1966.

Because of the objections raised and in view of a request by the President's Commission for recommendations on several topics which had not been studied by the special committee, it resumed its deliberations with monthly meetings until July 14, 1966, when it made a final report to the association's board of managers. This report was printed and sent to the membership in August together with a questionnaire respecting the committee's recommendations. Over 1,000 replies were received to the questionnaire, which were tabulated and published.

Meanwhile, in order to furnish those suggestions to the President's Commission as early as possible the final report of this Association's special committee was forwarded to the Commission in September of 1966. Thereafter the results of the membership questionnaire were sent to the Commission in October. Thus during the deliberations of the President's Commission it had the benefit of a large number of sug