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Miscellaneous

There are a very few other modifications of a minor editorial nature. They are believed to be self-explanatory.

APPENDIX TO STATEMENT OF EDWARD F. McKie, JR.

AMEXDMENTS TO S. 2597 AVD H.R. 13951 PROPOSED AT HONOLULU BY ABA SECTION

OF PATENT, TRADEMARK AND COPYRIGHT LAW

Section 100. Definitions (pp. 10-11)

Commencing with subsection (g), the balance of the section should be changed to read as follows:

(g) The term “actual filing date in the United States" means the earliest date of filing an application in the United States to which an applicant is entitled.

(h) The term “useful" shall include, but shall not be limited to, utility in agriculture, commerce, industry, health, or research. (i) The term “prior art” means :

(1) A published United States patent application or United States patent of another which has an actual filing date in the United States before the invention by the inventor named in the applicant's application; or

(2) Subject matter known or used by others in this country before the invention by the inventor named in the applicant's application; or

(3) A patent or publication in this or a foreign country reasonably available before the invention by the inventor named in the applicant's application, or more than one year prior to the effective filing date of the application for patent in the United States; or

(4) Subject matter on sale or in public use in this country more than one year prior to the effective filing date of the application for patent in the United States; or

(5) Subject matter for which the applicant has no right to secure a patent because the inventor named in the application did not himself invent it or because before his invention thereof, the invention was made in this country

by another who had not abandoned, supressed or concealed it. Section 107. Abandonment of invention (p. 12)

Subsection (b) should be changed to read as follows:

(b) Publication of an application under the provisions of section 123 or 151 of this title negates any inference that an invention disclosed therein was aban. doned within the meaning of section 102(e), 136 or 137 of this title. Section 119. Benefit of earlier filing date in foreign country; right of priority

(p. 15) In line 31, delete "by the same inventor". Section 120. Benefit of earlier filing date in the United States (p. 16)

In subsection (b), line 30, after “prior" insert "copending”. Section 131. Examination of application (p. 17)

At the end of the section (line 31) change the period to a comma and add "except that applications may be examined out of turn under special circumstances established by the Commissioner by regulation." Section 136. Reexamination after publication (pp. 18-19)

In subsection (d) (1) (page 19, line 1] change “sold" to "on sale". Section 137. Priority of invention (pp. 19-20)

In subsection (a), page 19, line 1, after "allowable" insert "pending"; line 34, after "said" insert "pending".

At the end of subsection (a), page 19, add "A final judgment adverse to a patentee from which no appeal has been or can be taken shall constitute cancellation of the claims involved from the patent and notice thereof shall be endorsed on copies of the patent thereafter distributed by the Patent Office."

Section 141. Appeal to Court of Customs and Patent Appeals (p. 20)

In subsection (a), line 1, delete "or his successor in title,".

In subsection (b), line 11, delete“, or his successor in title," and substitute therefor “or patentee,". Section 184. Filing of application in foreign country (pp. 26–27) Revise entire section to read as follows:

(a) Except when authorized by a license obtained from, or a general license established by, the Commissioner, a person shall not file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design or model in respect of an invention made in this country, prior to six months after filing an application for patent on the same invention under section 111 of this title, or prior to four months after filing an application for patent on the same ornamental design under section 171 of this title. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner pursuant to section 181 of this title without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. Upon compliance with regulations established by the Commissioner, a license shall be granted retroactively where an application has been filed abroad and the application does not disclose an invention within the scope of section 181 of this title.

(b) The Patent Office is hereby established as the sole governmental agency to grant a license or establish a general license.

(c) The term "application" when used in this Chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.

(d) No license shall be required, subsequent to the filing of a foreign application, for any modifications, amendments or supplements to that foreign application, or divisions thereof, which do not alter the nature of the invention originally disclosed, which are within the scope of the invention originally disclosed, and where the filing of the foreign application originally complied with the provisions of this section.

(e) A retroactive license may be granted at any time notwithstanding the fact that a corresponding United States application has matured into a patent. Such license shall have the same force and effect as if granted during the pendency of the application. Section 251. Reissue of defective patents (pp. 28-29)

Revise entire section to read as follows:

(a) Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

(b) The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue of each of such reissued patents.

(c) The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent.

(a) No reissued patent shall be granted enlarging the scope of the claims of the original patent, unless applied for within one year from the grant of the original patent, except to claim the same subject matter as a claim of an issued patent pursuant to section 137 of this title. Section 271. Infringement of patent (pp. 32–33)

Revise entire section to read as follows:

(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.

(b) Whoever, without authority of the patentee, imports into the United States a product made in another country by a process patented in the United States shall be liable as an infringer.

(c) Whoever actively induces infringement of a patent shall be liable as an infringer.

(d) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as an infringer.

(e) No patent owner otherwise entitled to relief for infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute infringement of the patent; (3) sought to enforce his patent rights against infringeinent.

(f) Whoever, during the interim period after publication of an application and before grant of a patent, performs an act which would make him liable for infringement of a valid claim of the patent shall be liable as an infringer if a like claim appears in the application for the patent.

In the section table of contents under "Chapter 29.—Remedies for Infringement of Patent and Other Actions”, page 33, insert between “290" and "292" the following: "291, Interfering patents.” Section 284. Damages (pp. 34-35)

In subsection (a), page 34, lines 39-40, delete "less than the infringer's profits attributable to the infringement, or”.

In subsection (a), page 35, line 1, delete "whichever shall be greater,".

In subsection (b), page 35, line 5, delete "how his" and substitute therefor "what".

Page 36, after line 33, add a new section as follows: Section 291. Interfering Patents

(a) The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved from the patent, and notice thereof shall be endorsed on copies of the patent thereafter distributed by the Patent Office.

(b) A civil action under subsection (a) may be instituted against the party in interest as shown by the records of the Patent Office, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which the adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Commissioner shall not be a necessary party but he shall be notified of the filing of the civil action by the clerk of the court in which it is filed and shall have the right to intervene. Section 4 (p. 42)

Delete subsection (d) and substitute therefor the following:

(d) For purposes of considering appeals involving applications specified in subsections (b) and (c) of this section, the jurisdiction of the Court of Customs and Patent Appeals shall be governed by the provisions of section 1512 of title 28, United States Code, in effect immediately prior to the effective date of this Act.

(e) The amendment of title 35, United States Code, by this Act, shall not affect any rights or liabilities existing under title 35 in effect immediately prior to the effective date of this Act.

Mr. KASTENMEIER. Thank you, Mr. McKie, for a very informative statement.

We are going to proceed with the next witness in the interest of expedition and because of the division of labor which you described at the outset; namely, that you were going to describe differences still

existing and that Mr. Graves would discuss areas of compromise and reconciliation.

At this time, the committee is very pleased to welcome to the committee Mr. Eben M. Graves, president of the American Patent Law Association. You have accompanying you today Mr. Frank Pugsley, who is immediate past president of your association.

You gentlemen are both welcome before the committee. You may proceed, sir, if you will. Your statement is somewhat less lengthy than the preceding one. Do you care to offer it for the record ?

STATEMENT OF EBEN M. GRAVES, PRESIDENT, AMERICAN PATENT

LAW ASSOCIATION, ACCOMPANIED BY FRANK B. PUGSLEY, FORMER PRESIDENT, AMERICAN PATENT LAW ASSOCIATION

Mr. GRAVES. I do offer it for the record. May I make a comment or two, Mr. Chairman?

It is shorter because I have relied, of course, on the earlier testimony of Mr. Pugsley, and also have had the benefit of Mr. McKie's statement. Our views generally parallel those of the American Bar Association with regard to the two pending bills and the Poff bill and H.R. 5921.

If I may, I will proceed.

I am Eben M. Graves, a partner of the firm of Brumbaugh, Free, Graves & Donohue in New York City. I have been practicing patent law for over 30 years.

As president of the American Patent Law Association, I appreciate this opportunity to testify with regard to the pending bills relating to the revision of the patent statutes. I am accompanied by Mr. Frank B. Pugsley, immediate past president of the American Patent Law Association, who testified before you on June 8, 1967, with regard to II.R. 5924.

NATURE AND DELIBERATIONS OF THE AMERICAN PATENT LAW ASSOCIATION

Mr. Pugsley, in his testimony before you on June 8, 1967, set forth in some detail the background and composition of our American Patent Law Association organization as well as the details of the extensive amount of time which our organization, through its committee procedures, questionnaires, and meetings has spent in considering, reviewing, and revising, over the past 3 years, the suggestions of the President's Commission and, later, the proposed statutory changes in title 35 of the United States Code.

I mention this because I believe it provides a solid basis for you to weigh the expressed position of APLA.

PRIOR STATEMENTS

Mr. Pugsley, in his statement before you on June 8, 1967, considered in some detail the provisions of the administration bill, H.R. 5924.

Mr. Edward McKie, in speaking for the American Bar Association, has reaffirmed generally similar positions with respect to H.R. 5924. Mr. McKie has also directed his statement to the Poff bill, H.R. 13951, which is the counterpart of the Dirksen Senate bill, S. 2597.

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He has pointed out that there have been further amendments proposed with regard to the Poff bill, H.R. 13951, growing out of the resolutions approved at the Honolulu conference of the American Bar Association.

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The position of the American Patent Law Association is expressed in the 53 resolutions which were approved at its May 1967 meeting in Boston. Inasmuch as these resolutions conform most completely, with one major exception, with the Poff bill, the American Patent Law Association strongly urges the adoption of H.R. 13951.

The important change that the American Patent Law Association urges in H.R. 13951 is the elimination of section 136(d) (3) which permits an interference between pending applications. It is the position of the American Patent Law Association that an interference should be provoked only by an applicant and with respect to an issued patent.

This change not only would eliminate interferences between pending applications but would expedite the availability of the patent disclosure to the public. This change also, we believe, would bring H.R. 13951 into line with the recently modified administration position.

The association's suggested interference procedure was set forth in our letter to Mr. Kastenmeier of January 26, 1968, in response to a request made to Mr. Pugsley at the time of his testimony before this committee.

THE IMPORTANCE OF OUR PRESENT FIRST-TO-INVENT SYSTEM

The President's Commission and the administration have reaffirmed that our present patent system plays an integral and critical part in the success of our economic system. It is also recognized that it is unique in many ways from all other patent systems throughout the world. It is these unique features which make it the critical factor it is in our economy..

The President, in his letter of transmittal of the Patent Reform Act of 1967 to the House, H.R. 5924 (S. 1042), outlines the threefold purposes which, if achieved, would meet most of the criticisms that have been leveled at the Patent Act of 1952.

Its purposes are threefold :
(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 public disclosure of scientific and technological information.

The first purpose listed involves quality and the other two involve essentially time.

The inventor should receive a patent upon which he can rely. The public should have the benefit of prompt disclosures for technological growth and a manufacturer should know as soon as possible what his problems may be with regard to infringement.

The present procedures to determine the first inventor between interfering applications are particularly charged with preventing the prompt disclosure and issuance of patentable subject matter. Interferences have been a problem and are strenuously contested because they often involve most important subject matter.

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