GENERAL REVISION OF THE PATENT LAWS MONDAY, APRIL 17, 1967 HOUSE OF REPRESENTATIVES, SUBCOMMITTEE No. 3 OF THE The subcommittee met, pursuant to notice, at 10 a.m., in room 2226, Rayburn House Office Building, the Honorable Robert W. Kastenmeier presiding. Present: Representatives Kastenmeier, Edwards, Poff, and Roth. Also present: Herbert Fuchs, counsel to the subcommittee; and John W. Dean III, associate counsel. Mr. KASTENMEIER. The subcommittee will come to order. The subcommittee meets today to begin its hearing on H.R. 5924, submitted by the President of the United States, for the general revision of the patent laws. (H.R. 5924 is as follows:) [H.R. 5924, 90th Cong., first sess.] A BILL For 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. "I. PATENT OFFICE. 1 "II. PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS. "III. PATENTS AND PROTECTION OF PATENT RIGHTS_. 100 251 "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. "8. Library. "9. Classification of patents. "10. Certified copies of records. "11. Publications. "12. Research and studies. "15. Advisory Council on the patent system. Sec. "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) There shall be in the Patent Office a Commissioner of Patents, one first assistant commissioner, two other assistant commissioners, and not more than twenty-four examiners-in-chief. 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 Commissioner of Patents shall be appointed by the President, by and with the advice and consent of the Senate. 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 may vest in himself the functions of the Patent Office and its officers and employees specified in this title and may from time to time authorize their performance by any other officer or employee. "(e) 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. Restrictions 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 Commissioner, 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. "§ 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. Such regulations and all other regulations issued pursuant to this title shall be subject to the approval of the Secretary of Commerce. "§ 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 examinersin-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed under the classified Civil Service. "(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 257 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 rebearings. "(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 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 designated 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 designated examiner-in-chief shall be adjusted, at the close of the period for which he was designated to act as examiner-inchief, 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. 8. Library "The Commisioner 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 may revise and maintain the 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 readines and accuracy the novelty of inventions for which applications for patent are filed. 10. Certified copies of records "The Commissioner may, upon payment of the prescribed fee, furnish certified copies of records of the Patent Office to persons entitled thereto. 11. Publications "(a) The Commissioner may print, or cause to be printed, 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 registration, including statements and drawings, together with copies 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. 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, in consultation with the Advisory Council established pursuant to section 15 of this title, shall conduct and sponsor studies to aid in analyzing the contemporary needs of the patent system and in evaluating the effectivenes of the patent system in serving the public interest. " 15. Advisory Council on the patent system "(a) There is hereby established an Advisory Council on the Patent System (referred to in this section as the ‘Council') of not less than twelve nor more than twenty-four members to be appointed by the Secretary of Commerce from the general public, without regard to the civil service laws, and to consist of persons representing sectors affected by the patent system. The Secretary of Commerce shall designate the Chairman of the Council and set the term of the members. "(b) It shall be the duty of the Council, on a continuing basis, to evaluate the effectiveness of the patent system in serving the public interest; to analyze the contemporary conditions and needs of the patent system; to study and appraise the methods and operations of the United States Patent Office including the quality of United States patents, the procedures and timing of publication of pending applications and the need for and scope of any deferred examination system; and to report to the Secretary of Commerce its conclusions and recommendations. "(c) The Secretary of Commerce shall furnish to the Council an executive secretary and such professional, secretarial, clerical, and other services and facilities as are deemed necessary to the conduct of its business. "Chapter 2.-PROCEEDINGS IN THE PATENT OFFICE "Sec. "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. Oath and 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 Saturday, 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 require papers filed in the Patent Office to be printed or typewritten. ❝g 23. Testimony in Patent Office cases "The Commisioner 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 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 and 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. "§ 26. Effect of defective execution "Any document to be filed in the Patent Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Commissioner despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed. "Sec. "Chapter 3.-PRACTICE BEFORE PATENT OFFICE "31. Regulations for agents and attorneys. "31. Regulations for agents and attorneys "The Commissioner, subject to the approval of the Secretary of Commerce, may prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office. "S32. Suspension or exclusion from practice "The Commissioner may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 31 of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Commissioner upon the petition of the person so refused recognition or so suspended or excluded. "§ 33. Unauthorized representation as practitioner "Whoever, not being recognized to practice before the Patent Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense. "Sec. "41. Patent fees. "Chapter 4.-PATENT FEES "42. Payment of patent fees; return of excess amounts. "8 41. Patent fees "(a) The Commissioner shall prescribe by regulations the fees to be paid in connection with the filing and examination of patent applications, the issuance of patents, and other matters set forth in this title as requiring a fee and for copies of records, publications or other services furnished by the Patent Office, designed to effect an overall recovery in the range of 65 to 75 per centum of the costs of operation of the Patent Office. |