obligated to seek process patent protection in all foreign countries where such protection is available. This provision is of extremely limited value and would discriminate severely against American applicants. No reason is seen why an American inventor should be compelled to incur the substantial costs involved in obtaining widespread foreign patent protection and enforcement unless he wishes to do so for reasons other than for the protection of his invention in the United States. It must be understood that it will not be sufficient to obtain a foreign patent in the major foreign countries, but an inventor must obtain protention in very foreign country where protection is available in order to prevent a would-be infringer from setting up operations in any one single county where protection is not obtained. Thus, particularly in view of maintenance fees in most foreign countries, an intolerable burden would be placed on American inventors, particularly on those not strong financially.

If a process patented in the United States is to be protected against importation of products, such protection should be available regardless of the country from which the product is imported so that less affluent and less knowledgeable United States patentees are not deprived of this protection. Small businesses and independent inventors can rarely afford the high cost of multiple filings, prosecutions, and maintenance of foreign patents in even the major countries of the world. The discrimination against claims in process form should be removed. Note also that the President's Commission, in its Recommendation XXI, made no requirement that process patent protection not be available in the exporting country.

EXTENSION OF TERM

§ 154 (c) of H.R. 5924 provides for the extension of the term of the patent if the application had been ordered maintained in secrecy. In such cases the extension would be for a period equal to the delay in issuance of the patent. This appears to be a desirable change needed to compensate for the portion of the term which otherwise would be lost from the twenty-year patent term proposed in § 154(b) and should be added to § 154 of H.R. 13951.

There are other situations where the commercial value of a patent will be limited by reason of Government action or failure of Government action. Regulatory activities of a number of agencies, including Food and Drug, Federal Aviation and the U.S. Coast Guard, prevent commercialization or otherwise affect the public use of many products until a license or other form of approval is obtained. We believe it appropriate to extend patent protection in a similar way to that granted in connection with secrecy orders.

CORRECTION OF NAMED INVENTOR

This section adopts the recommendation of the President's Commission (Recommendation V, paragraph 3) and results in a beneficial revision of old § 256 so that patents having improperly named sole inventors may be corrected as well as correction of improperly joined or failure to include a joint inventor now provided in old § 256. To be sure that sole inventors are included, we urge insertion in line 3, after "time", the words-by adding, deleting or substituting—.

FIELD-OF-USE LICENSING

Among recommendations of the President's Commission was one relating to field-of-use licensing under Recommendation XXII. It is understood that H.R. 5924 omitted legislative recognition of this recommendation because of the views of the Department of Justice. Assistant Attorney General Donald F. Turner, in testifying before Subcommittee No. 3 of the House Judiciary Committee on April 20, 1967, indicated that Department's views. It is incontestable that the public should be protected from abuse flowing from the possible use of patents to restrict competition. This aspect of the public interest, however, is balanced to some extent by the public interest in the appropriate licensing of inventions. It seems to us that encouragement of licensing to the maximum is very much to be preferred. It seems quite appropriate that the Congress determine the dominant national policy between the desirability of maximizing the use of inventions and the possible use of licensing to limit competition. Field-of-use licensing as proposed by the Commission is not incompatible with relief in situations where such licensing unreasonably hinders competition.

In support of the Commission's Recommendation XXII, there are very practical reasons for field-of-use licensing. These are:

1. There cannot be a meeting of the minds unless all relevant factors are known and understood. These include:

(a) Anticipated or existing volume of sales

(b) Profit margin

(c) Fair royalty

(d) Availability of substitutes

(e) Degree of utility

(f) Extent of demand

(g) Breadth of invention

(1) Generic vs. species or improvement

(2) Entire product vs. component

(h) Expected saving

(i) Necessity for further technical development

(j) Necessity for market development

(k) Necessity for further investment

2. Even when a number of different applications are apparent, the same terms and conditions are not necessarily equally appropriate.

(a) The royalty base may be different. It is not possible to define the royalty base until one knows what the device is.

(b) If royalty is a fixed sum per device (rather than per cent of sales), the fixed sum could reasonably be different for different devices.

(c) If there is more than one patent licensed, the list of patents may not include all of those necessary for a different device and may include some which could not be used in the other field. That is, one field may require patents A, B and C; another field, patents A, B, D and E, and another field, patent A only. The agreements should not force on the licensee patents that he does not want.

(d) An agreement in one field may include manufacturing information, but the licensor may not have information to give in another field.

(e) The royalty might be a percentage of selling price in one field where the patented device is sold per se, but so many cents per device or on some other basis in another field where the patented device is sold only in combination with something else not covered by the patent.

3. It is not always to a licensee's advantage to take the broadest possible license.

(a) Avoids acknowledgment of validity in some areas (limit license to scope and term).

(b) One design may be clear infringement; another may not.

(c) A limited license enables him to limit approvals and negotiations to only a particular division of multi-division company.

(d) Wants to be free to negotiate each situation.

(e) Wants to commit himself only for a particular product or product line and wants to eliminate any commitment on speculative areas.

(f) May be able to get a lower royalty rate in a field where licensor is not using the patent since it will not reduce the licensor's business.

(g) May be able to get a lower paid-up lump sum for a license for a limited field, whereas a much larger lump sum would be required for all fields, and licensee might not be able or wish to pay the larger sum for all fields, especially if he has no use for the rights in the other fields.

(h) May be able to get, for a limited license, a low annual ceiling or a low ceiling on total royalty to be paid, but the ceilings for a license for all fields would be so high the licensee would never reach the ceiling to get any benefit from it if he operates in only one field.

(i) Might be able to get a sliding scale reduction in royalty rate, i.e., 5% first $100,000, 4% next $100,000, etc., with small brackets for a limited field, but the brackets for all fields would be so large as to give the licensee no benefit if operates within less than all fields.

(j) May want separate licenses for each field so that he may terminate separately. He may want to design around the patent in one field and then cancel, but not be able to do so in another field. If there is a minimum royalty in each agreement, he can save the minimum by cancelling in the field where he stops selling.

(k) May want separate licenses for each field so that he may assign the licenses with his business in each field, whereas one license is indivisible. 4. It is not always to the advantage of licensor to give broadest license. (a) Wants freedom to negotiate each situation.

(b) Enables limiting approvals and negotiation to each situation. (c) Patent may apply to entirely different products and/or industries and agreements in each would have entirely different terms due to unique problems and differences in structures.

5. A patent owner is not required to grant licenses, and frequently does not license single use patents; however, the right to license fields-of-use outside his own field encourages the patent owner to make the patented invention available to a greater segment of the public through field-of-use licenses.

FIRST-TO-FILE

The Administration's compromise on this issue is commendable and presents a generally acceptable position. We believe, however, that one aspect justifies further consideration. Under the compromise, an applicant can only carry his invention date back one year prior to his filing date. Jumping from an unlimited carrying-back to only one year may be too great a change. No statistical necessity has been offered in support.

We would endorse a two-year limitation. Our reason is that technology is becoming more complex and one year is probably insufficient time reasonably to determine the desirability of filing an application in a significant number of cases. Commissioner Brenner in testifying before this committee on February 28, 1968 modified previous Administration positions by proposing to allow proof of earlier dates but to permit obtaining benefit of a date of invention no earlier than one year prior to his earliest public act or earliest effective filing date, whichever came first This is a very desirable improvement because this would permit a use, sale, or publication followed a year later by an application, thus approximating a two-year period.

The Commissioner coupled his proposal with a requirement for continued diligence. We oppose this condition because the two-year period is reasonable and equitable and no statistical support is offered for a shorter term.

BURDEN OF PERSUASION

We urge the logic and desirability of omitting the standard whereby the burden of persuasion is on the applicant. If it were not for the instruction of the Commissioner to the Examining Corps, we would not oppose. However, that instruction is to make the burden absolute and not a reasonable one. The basis of the instruction is said to be recent Supreme Court decisions and the President's Commission recommendation. These antecedents did not, however, make the burden absolute.

For example, the Supreme Court has recognized the pertinence of factors such as commercial success, licensing, and solution of a problem as indicative of unobviousness. Often, these factors are not evident until long after issuance of a patent and could not have been considered in the Patent Office. We would find acceptable an amendment to H.R. 5924 whereby the burden was made a reasonable one so that inventors might receive the benefit of reasonable possibilities of proving unobviousness.

Attention: Mr. Herbert Fuchs, Counsel SubCommittee No. 3.

Reference: H.R. 5924 and H.R. 13951 (Changes to the U.S. Patent System). SIR: Over the past 27 years I have invented and acquired Patent grants on seven inventions. In the course of those years I conducted an engineering R&D business. I prepared and prosecuted my own applications, participated as a litigant in several Patent cases and as an observer in many more and have been an interested and serious student of the U.S. and foreign systems for Patenting. Since I intend to continue these pursuits, changes proposed in the referenced Bills are of particular intereest. As a typical hitherto non affiliated inventor-engineer,

I respectfully submit herewith some observations which may not herebefore have been brought to light.

There is no doubt that procedural implementations of the 1952 Patent Act and its amending statutes should be improved. Improvements however, should be strictly limited to the mechanics of processing applications and to issue of valid patents. These are the major areas that account for any deficiencies in the U.S. system. Those deficiencies cannot and should not be corrected by altering or completely eliminating basic philosophies of property rights and the right to contract which rights are the unique cornerstones of American jurisprudence particularly in relation to Patents. Whereas methods for handling applications needs new systems concepts, those basic rights need no change. Expropriation by law, expropriation by superior forces are hallmarks of European systems. Those hallmarks, which the referenced bills propose establishing in the U.S. have worked to discourage disclosure in the Convention and Common Market countries. They have polarized ownership of innovation and inventions and the means for production thereof in cartels, monopolies and trusts, and in some cases, the State. Statistics describing European invention show almost complete extinction of individual initiative, invention, and urge to disclose. The U.S. system does not need this. There are enough roadblocks there now, in the way of excessively high costs and fees, long delay, adequate, rather inadequate policing capabilities, ambiguous and purely opinionated decisions. Yet, in spite of those plainly visible roadblocks, the U.S. system works. It has successfully encouraged disclosure of about 88% of the world's scientific inventions and authoritatively accounts for more than 90% of the U.S. GNP. It is those plainly visible roadblocks and similar ones, that should be the target of frontal assault.

Proponents of change, since 1930 and here now, claim declines in individual independent invention, advanced Technology and their capture by corporate collectives as justification for the presently proposed expropriation or compulsory licensing measures. They claim that this Technology is no longer the arena that is susceptible to one, single man's inventive challenges. They use euphemestic phrases and carefully manufactured statistics to support that claim-all the while overlooking the unalterable facts that invention is the output of one or more human brains, a muscular and mental effort and an effort that inherently requires more than mere glory as its reward. They fail in their constructions simply because they do not seem to understand prime motivations which, stated briefly are; first, to acquire a healthy bank account; second, some kind of social recognition and last of all-altruism running, understandably a very poor third. A careful look at some of the major proposals in referenced Bills will show (regardless of the motivations of the experts) that they will have the effect of completely killing "the goose that lays the golden egg," which whether we like it or not is still the one man, one shop individual, the individual inventor. Whether he's the young engineer member of a team still imbued with the "fullbacks" mentality and concept of loyalty, invention will out and this is what they call "recalcitrance."

Our system of priority requiring specific proof of conception date, due diligence and reduction to practice may be temporarily cumbersome and unique, but it has withstood the test since 1794. Almost every test case contains a modicum of improvement. Present Bills propose we dump this 174 year painful path towards what I believe will be eventual systems concept improvement. This is like discarding the book of knowledge merely to start a new compendimum. This is one of the handling areas I speak of. From my engineering knowledge this is the area that is perhaps most susceptible to numerical systems, that European engineers and Patent experts have yet to understand. (96% of the world's computers and retrieval systems are stamped "Made in the U.S.A.") If pre-disclosure, or compulsory invitations to opposition are adopted here as the present Bills propose, the individual or team member inventor would be more stupid than ever to disclose especially when, as the Bills further propose, that opposition can be held secret and out of view. Pre-disclosure is being done every day in this country purely on a complete voluntary basis and at the risk of any inventor stupid enough to do so without adequate confidential disclosures. Let's keep it that way. Let's keep the right to contract.

What the President's Commission regards as a "recalcitrant" employee we're gone over before. It's nothing more than Joe American standing up for what's his. Expropriation is as un-American as Kerensky's first speech before the first Soviet. Right now, Uncle Sam can expropriate atomic or nuclear inventions and he can keep trying to grab inventions produced under government contract. It's my bet that the only ones he is getting are those disclosed by accident or those

arbitrarily ruled as patentable merely as means for discouraging competition. No law can make an inventor invent, nor can it make him disclose. That's not a judicial conclusion, that's merely the wisdom of living. Tell any engineer that his right to work, his right to own property of his own creation and to contract for it are to be mortgaged to his employer merely as an employment condition and you pretty damn well start right off the bat with a "recalcitrant" employee. If he doesn't, you can bet your boots his wife gets pretty recalcitrant when he signs away her half of his invention. The theory of "implied license" or "Shop Rights" is still the best the world has ever seen-it's even an improvement over the Venetian Act of 1474.

This proposed legislation, giving "owners" the right to acquire Patents might assuage the stockholders and assure Patent Attorneys a more visible marketplace for their wares; and it might satisfy the social planners. It most assuredly will duplicate the European patent environment and could possibly result in the "no system at all" of the Soviet Union because it will completely destroy the will to invent, the urge to disclose. No matter what the President's Commission of corporation presidents, endowed cloud nine college professors and Patent Attorneys say, the average inventor isn't looking for the glorious results of teamwork merely to watch the leader walk away with the swag. I'm one, I ought to know. Add ten bucks to my pension and yearly pay for every Patent I can get pal, and make it a statutory requirement. The Patent Office will have to move to the plains of Kansas to get the room it needs-especially if every "Joint Inventor" gets the same deal.

Regarding "Joint Inventor" provisions in the present Bills. Here is a veritable Pandora's Box. This throws whatever illogical justification that barely exists supporting the "Joint" concept right out the window. When read in light of other provisions, this provision calls for a new field of law just for re-defining what is or what is not a "dependent" or "independent" claim and their interrelation regarding property rights.

Patent Agents serve a useful function and should not be eliminated, nor should an applicant be denied the right to file his own application. Considering that more than 25% of all issued Patents that are contested are declared invalid, and that qualified, supposedly competent Patent Attorneys dominate the field, it appears that a purely legal background is something less than a qualifying background when it comes to preparing drawings and applications. Most Patent, Agents are fully experienced in their professions, and take the Agent Examination just because of the Rules requiring certification and whatever social distinction may accrue therefrom. That's why I took the examination. The Commissioner has adequate control over the number of Patent Agents simply due to the discretionary powers he has with regard to the means for certification. The number of newly issued Agent licenses (or the lack thereof) is mute testimony as to how that power is dispensed. We need no Federal Statute (and I wonder if it would be constitutional to begin with) that discriminates because of a previous condition of servitude, as serving time in a school under a master.

Although much of the foregoing may involve areas declared by the "experts" to be beyond the average inventors "ken" it is those areas being invaded by the proposed Bills that disturb me. For the reasons stated, I believe that the Bills should be set aside. I do think however that the idea of an advisory commission is excellent, provided that is, that it be given the authority to do, as well as the responsibility to advise. A micro dot (the size of this period.) for example, could contain the entire contents of a single page or an entire Patent. If the Commission recommended and the Commissioner rejected-what's the sense for

the Commission?

Thank you for permitting me to air my views. I apologize for late submission.