GENERAL REVISION OF THE PATENT LAWS WEDNESDAY, FEBRUARY 21, 1968 HOUSE OF REPRESENTATIVES, SUBCOMMITTEE No. 3 OF THE The subcommittee met at 10 a.m., pursuant to notice, in room 2226, Rayburn House Office Building, Hon. Robert W. Kastenmeier presiding. Present: Representatives Kastenmeier, Tenzer, Poff, Hutchinson, and Roth. Staff member present: Herbert Fuchs, counsel. Mr. KASTENMEIER. The meeting will come to order. The Patent Subcommittee has reconvened this morning to resume its hearings on pending legislation for the general revision of the U.S. patent laws. In the first session of the present Congress, the subcommittee held 10 days of hearings on H.R. 5924, titled "The Patent Reform Act of 1967," proposed by the administration, and on related patent law revision measures. The subcommittee suspended its hearings, pending the activities of the patent bar, and specifically the American Bar Association, designed to bring before Congress their own proposals for revision legislation. Subsequently, our subcommittee colleague, the gentleman from Virginia, Mr. Poff, introduced H.R. 13951, which, it is understood, reflects the views of the American Bar Association. Without objection, H.R. 13951 will be made a part of the record at this point. (H.R. 13951 follows:) [H.R. 13951, 90th Cong., first sess.] A BILL For the promotion of the progress of the useful arts by the general revision of the Patent Laws, title 35 of the United States Code, and for other purposes Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That title 35 of the United States Code, entitled "Patents", is hereby amended in its entirety to read as follows: "TITLE 35-PATENTS "PART Sec. 1 "I. PATENT OFFICE. "II. PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS. "III. PATENTS AND PROTECTION OF PATENT RIGHTS_. 100 251 "Sec. "Chapter 1.-ESTABLISHMENT, OFFICERS, FUNCTIONS "1. Establishment. "2. Seal. "3. Officers and employees. "4. Restrictions on officers and employees as to interest in patents. "5. Bond of Commissioner and other officers. "6. Duties of Commissioner. "7. Board of Appeals. "S. Library. "9. Classification of patents. "10. Certified copies of records. "11. Publications. "12. Research and studies. "S 1. Establishment "The Patent Office shall be an Office in the Department of Commerce, where records, books, drawings, specifications, and other papers and things pertaining to patents and to trademark registrations shall be kept and preserved, except as otherwise provided by law. "§ 2. Seal "The Patent Office shall have a seal with which letters patent, certificates of trademark registrations, and papers issued from the Office shall be authenticated. "§ 3. Officers and employees "(a) A Commissioner of Patents, one first assistant commissioner, two other assistant commissioners, and not more than twenty-four examiners-in-chief shall be appointed by the President, by and with the advice and consent of the Senate. The assistant commissioners shall perform the duties pertaining to the office of Commissioner assigned to them by the Commissioner. The first assistant commissioner, or, in the event of a vacancy in that office, the assistant commissioner senior in date of appointment, shall fill the office of Commissioner during a vacancy in that office until a Commissioner is appointed and takes office. The Secretary of Commerce, upon the nomination of the Commissioner in accordance with law, shall appoint all other officers and employees. "(b) The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each examiner-in-chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 17 of the General Schedule of positions referred to in section 5104 of title 5, United States Code, and of the assistant commissioners at not in excess of the rate provided for positions in grade 18. "§ 4. Restriction on officers and employees as to interest in patents "Officers and employees of the Patent Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter, they shall not be entitled to any priority date earlier than one year after the termination of their appointment. "§ 5. Bond of Commissioner and other officers "The Commissioner and such other officers as he designates. before entering upon their duties, shall severally give bond, with sureties, the former in the sum of $10,000, and the latter in sums prescribed by the Commission, conditioned for the faithful discharge of their respective duties and that they shall render to the proper officers of the Treasury a true account of all money received by virtue of their offices. "S 6. Duties of Commissioner "The Commissioner, under the direction of the Secretary of Commerce, shall superintend or perform all duties required by law respecting the granting and issuing of patents and the registration of trademarks; and he shall have charge of property belonging to the Patent Office. He may establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. "§ 7. Board of Appeals "(a) The Commissioner, the assistant commissioners, and the examiners-inchief shall constitute a Board of Appeals in the Patent Office. The examiners-inchief shall be persons of competent legal knowledge and scientific ability. "(b) The Board of Appeals shall: "(1) Review adverse decisions of the examiners upon applications for patents as provided in section 134 of this title. "(2) Review or consider actions arising under sections 136 and 137 of this title in accordance with regulations established for such purpose. “(3) Perform the functions specified as being performed by a Board of Patent Interferences in Public Law 593, Eighty-second Congress (ch. 950, 66 Stat. 792, section 1), and in other Acts of Congress and when performing said function shall constitute a Board of Patent Interferences. "(c) Each appeal or other action shall be heard or considered by at least three members of the Board of Appeals. The Board of Appeals has sole power to grant rehearings. "(d) Whenever the Commissioner considers it necessary to maintain the work of the Board of Appeals current, he may designate any patent examiner of the primary examiner grade or higher having the requisite ability, to serve as acting examiner-in-chief for periods not exceeding six months each. An examiner so designated shall be qualified to act as a member of the Board of Appeals. Not more than one acting examiner-in-chief shall be a member of the Board of Appeals hearing an appeal or considering a case. The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each acting examiner-in-chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 16 of the General Schedule of positions referred to in section 5104 of title 5, United States Code. The per annum rate of basic compensation of each acting examiner-in-chief shall be adjusted, at the close of the period for which he was designated to act as examiner-in-chief, to the per annum rate of basic compensation which he would have been receiving at the close of such period if such designation had not been made. "S 8. Library "The Commissioner shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent Office to aid the officers in the discharge of their duties. " 9. Classification of patents "The Commissioner shall maintain a classification by subject matter of published specifications of United States patents and applications and of such other patents and applications and other scientific and technical information as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed. " 10. Certified copies of record "The Commissioner may, upon payment of the prescribed fee, furnish certified copies of records of the Patent Office to persons entitled thereto. "S 11. Publications "(a) The Commissioner may publish, or cause to be published, in such format as he shall determine to be suitable under applicable laws and regulations, the following: "(1) Patent applications and parts thereof, subject to the provisions of this title, patent abstracts and patents, including specifications and drawings, together with copies of the same. "(2) Certificates of trademark registrations, including statements and drawings, together with copies of the same. "(3) The Official Gazette of the United States Patent Office. "(4) Annual indices of patents and patentees, published applications and applicants, and of trademarks and registrants. "(5) Annual volumes of decisions in patent and trademark cases. "(6) Classification manuals and indices of the classifications of patents. "(7) Pamphlet copies of the patent laws and rules of practice, laws and rules relating to trademarks and circulars or other publications relating to the business of the Office. "(b) The Patent Office may print the headings of the drawings for patents for the purpose of photolithography. "S 12. Research and studies "(a) The Commissioner shall conduct a program of research and development to improve and expedite the handling, classification, storage and retrieval of patents and other scientific and technical information. "(b) The Commissioner shall conduct and sponsor studies to aid in analyzing the contemporary needs of the patent system and in evaluating the effectiveness of the patent system in serving the public interest. "Sec. "Chapter 2.-PROCEEDINGS IN THE PATENT OFFICE "21. Day for taking action falling on Saturday, Sunday, or holiday. "22. Printing of papers filed. "23. Testimony in Patent Office cases. "24. Subpenas, witnesses. "25. Oaths; declaration in lieu of oath. "26. Effect of defective execution. "§ 21. Day for taking action falling on Saturday, Sunday, or holiday "When the day, or the last day, for taking any action or paying any fee in the United States Patent Office falls on Satuardy, Sunday, or a holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day. "§ 22. Printing of papers filed "The Commissioner may by regulation prescribe the form, and manner of reproduction, of papers filed in the Patent Office. " 23. Testimony in Patent Office cases "The Commissioner may establish rules for taking affidavits and depositions required in cases in the Patent Office. Any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where he resides, may take such affidavits and depositions. "S 24. Subpenas, witnesses "The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent Office, shall, upon the application of any party thereto, issue a subpena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office. "Every witness subpenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts. "A judge of a court whose clerk issued a subpena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpena unless his fees and traveling expenses in going to, and returning from, and one day's attendance at the place of examination, are paid or tendered to him at the time of the service of the subpena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpena. "§ 25. Oath; declaration in lieu of oath "(a) An oath to be filed in the Patent Office may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by certificate of a diplomatic or consular officer of the United States, and such oath shall be valid if it complies with the laws of the state or country where made. "(b) The Commissioner may by rule prescribe that any document to be filed in the Patent Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Commissioner may prescribe, such declaration to be in lieu of the oath otherwise required. "(c) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are subject to punishment including fine or imprisonment, or both. |