right to get a patent without any fee if there was no intention to use it for the Government. I wanted to find out what percentage of these inventions by men in the service are made with the intention that they shall be used in the service.

Mr. REID. I think some governmental agency should certify the $40 fee.

Mr. BLOOM. That is the amount of the fee?

Mr. ROACH. There are services that have appropriations from which they can pay the fees?

Mr. REID. Should not somebody in the Government take the responsibility for saying this may be used for the Government service?

Mr. ROACH. I have been taking that responsibility on myself.

Mr. REID. So it is only a matter of $40. It is not a matter of $4.000 or $4,000,000. If you do it, you are protected.

Mr. ROACH. Yes.

Mr. REID. It is only $40 that you are taking out of the Patent Office, is it not, so I can not see the cause for the great deliberation that must come. The patents come up, and the man at the head of the department says it can be used. He is only taking $40 of the Government's money. If it was $4000 or $4,000,000 that would be different.

Mr. ROACH. At the same time you might have to go to the head of the Department to get a certificate. I do not know how long the Comissioner of Patents will allow that. If I had to go to the present Chief of Ordnance, he might take that view. He might think that called for present knowledge of the fact that the thing is going to be rsed.

Mr. REID. That is up to that individual.

Mr. ROACH. Yes, sir.

Mr. REID. We cannot legislate brains into all of the other Government departments. It is hard enough to get them in Congress.

Mr. ROACH. So far as you are asking about inventions in the Department, the vast majority of them are things strictly for Government service. Once in a while we will run into something that has more or less commercial value. For instance, we are attempting to motorize our heavy guns. Necessarily we are getting up things intended entirely for them that may have some use in the ordinary tractor, farm tractor, for instance, our steering gear or some of our particular driving mechanisms, gotten up with the design that they may have some commercial use.

Mr. LANHAM. The primary thing that has to do with making inventions is that they will be used for Government service. Mr. ROACH. All of our stuff, yes.

Mr. REID. That is what I want to talk to these gentlemen later about, when we get into the subject of the way they treat inventors. I move that a subcommittee of three, Mr. Lanham as chairman, be appointed to redraft this bill in accordance with the sentiments expressed.

COMMITTEE ON PATENTS,
HOUSE OF REPRESENTATIVES,

Tuesday, January 13, 1925.

The committee met at 10 o'clock a. m., Hon. Albert H. Vestal presiding.

Mr. VESTAL. The chairman of the committee has to attend another meeting this morning and he has asked me to preside at this hearing.

Mr. Lanham has asked for further hearing on H. R. 11403. I understand that Colonel McMullen is here and desires to be heard upon this bill as to some amendments.

Mr. LANHAM. May I say just a word by way of preface? This bill H. R. 11403 is the substance of a bill formerly before this committee, as modified and reintroduced, after a redrafting of the bill by a subcommittee. There are one or two provisions in here with reference to this redrafted bill concerning which Colonel McMullen wants to make a suggestion or two. I understand it will take him just a few minutes, and I suggest he make them at this time.

H. R. 11403, Sixty-eighth Congress, second session

A BILL To amend an act entitled "An act making appropriations for sundry civil expenses of the Government for fiscal year ending June 30, 1884, and for other purposes"

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That so much of chapter 143 of the act of Congress approved March 3, 1883 (Twenty-second Statutes at Large, page 625), as relates to issue of patents without payment of any fee be, and the same is hereby, amended to read as follows:

"The Commissioner of Patents is authorized to grant, subject to existing law, to any officer, enlisted man, or employee of the Government, except officers and employees of the Patent Office, a patent for any invention of the classes mentioned in section 4886 of the Revised Statutes, without the payment of any fee: Provided, That the applicant in his application shall state that the invention described therein, if patented, may be manufactured and used by or for the Government for governmental purposes, without the payment to him of any royalty thereon, which stipulation shall be included in the patent: Provided further, That the head of a department or independent bureau certifies that the invention is used or likely to be used by or for the Government for governmental purposes: Provided further, That the patent shall be void unless the inventor or his licensee or his assignee pays the usual fees for obtaining a patent to the Commissioner of Patents within thirty days after any royalties are collected, or any use of the invention not by or for the Government is authorized under the patent."

Mr. VESTAL. Colonel McMullen, you may proc ed. Give your full name to the stenographer.

STATEMENT OF LIEUT. COL. JOSEPH I. M'MULLEN, JUDGE ADVOCATE, UNITED STATES ARMY

Colonel MCMULLEN. My name is Lieut. Col. Joseph I. McMullen, Judge Advocate, United States Army.

In the next to the last proviso, page 2, line 9, after the word "invention," I suggest that is used" be deleted; and after the word "invention may be" inserted; and after the word "or," immediately following, "is" be inserted, so as to read :

99 66

That the head of a department or independent bureau certifies that the invention may be or is likely to be used by or for the Government for governmental purposes.

My reason for recommending that change is that in the various research bur aus many inventions are devised which it is impossible to foresee with certainty whether they are to be used or likely to be used, though somewhat desirable to be able to have the departmental head certify that they may be used.

Now, I would like to give a couple of cases in point:

In 1920 and 1921 we developed and patented a large number of inventions for the production of phosphates and fertilizers and things of that kind. We at that time did not have any idea that the Government would ever think of using those patents, but it has developed now, after five years, that we will probably use every one of them and, consequently, we could not certify that they would be used by the Government under the requirement of the other bill, and we had to have those more or less underpaid Government employees pay it out of their own pocket. Of course, they can never collect that back from the Government; it is lost to them-those fees.

In another instance (I do not recall exactly the details) some people got up some sort of an invention for developing the muscles in the hand. Nobody could c rtify that that would be used by the Government, but, as a matter of fact, within a year it was taken up by the Veterans' Bureau and used throughout the service for the fixing up of these veterans. I think possibly the Commissioner of Patents told me about that, though I do not remember.

Commissioner ROBERTSON. It was someone else.

Colonel MCMULLEN. But that is merely an example of the impossibility of foreseeing what is to be used or likely to be used by the Government. You can not foretell. So that with the second proviso here which is the next proviso, which I have changed so as to read:

That the patent shall be void unless the inventor or licensee pays the usual fees for obtaining a patent from the Commissioner of Patents within 30 days after any use of the invention not by or for the Government is authorized under the patent for which any royalty or other valuable consideration is received.

Mr. LANHAM. In other words, line 14 you would strike put "any royalties are collected, or "?

Colonel McMULLEN. Yes, sir.

Mr. LANHAM. And then line 16, after the word "patent," you would insert "for which any royalty or other valuable consideration is "received"?

Colonel MCMULLEN. Yes, sir. The reason for that is that to prevent Government employees or officials who have supervision over Government employees using this bil for the purpose of getting free patents, from which they could trade on commercially, we would put this proviso in, yet at the same time save to the Government in these various research bureaus, like the Bureau of Standards and the yarious bureaus in the Department of Agriculture, Commerce, and the other departments-save to them the right of granting exclusive licenses to manufacturers whom we want to produce articles or inventions for the public use, or like the Bureau of Mines where if we get up a gas mask for use in mines for saving lives, we grant a license under patents of that kind free of charge to the manufac turer, with a contract providing that he is not to charge any royalties to people who buy them; that is, he is to charge nothing more than the amortization of his capital investment and a fair profit.

We do that on occasions with patents that the employees themselves have paid the license fees on.

Mr. LANHAM. That same charge would not exceed a fair profit. I can see it would protect the patentee by payment of fees, for the reason that he gets nothing out of it.

Colonel MCMULLEN. So far, we have agreed on that. They give us their costs and capital investment, and figure it, and in one instance I know that we agreed that the price should not exceed a certain sum. Manufacturers as a rule are very fair on that sort of thing.

Mr. LANHAM. Is there any likelihood of objection on the ground that the Government may give preference in that way to certain manufacturers, and thereby prevent others from manufacturing?

Colonel McMULLEN. No; I do not think so. The difficulty is not in competition to get this. The difficulty is in getting somebody to put up the investment with which to manufacture. We have a number of patents now that we are taking out under that act of 1883 and it would be to the public interest to operate under them. But we can not get anybody to do it; they won't put up the invest

ment.

Mr. LANHAM. In these assignments do you reserve your right of revoking the license?

Colonel McMULLEN. Oh, yes, always; in fact, that is the limit of our authority in the case of a revokable license, where the Government owns the patent.

Mr. VESTAL. Will you read that part just as you submitted it?
Colonel McMULLEN (reading):

That the patent shall be void unless the inventor or his licensee or his assignee pays the usual fees for obtaining a patent to the Commissioner of Patents within 30 days after any use of the invention not by or for the Government is authorized under the patent for which any royalty or other valuable consideration is received.

Mr. LANHAM. Of course that would give a pretty substantial opportunity on the part of the Government to throw favors to manufacturers. I do not assume that it operates that way at all.

Colonel McMULLEN. No; I do not think so. As a matter of fact, this is just a guess, but I should say there is only about one patent out of a thousand that is really commercially valuable; maybe not that high-I don't know. But so far as I have been able to observe in patents of Government employees, I am sure they do not run any higher than that. But when we do strike a patent that we want operated under in the public good-and those are really the patents that we are particularly interested in-we want to be in a position so that we can have them operated under. We have a number of those patents now, as I have stated, that ought to be operated under for the public good, and we can not do it because capital won't touch them, that is all.

Mr. VESTAL. Does any other member of the committee desire to ask Colonel McMullen any questions relative to this bill? Commissioner Robertson, do you desire to ask any questions of Colonel McMullen?

Commissioner ROBERTSON. I should like to ask what would happen in the event that an inventor patentee received $50,000 for his patent,

and then it was not manufactured under it; does this bill provide he shall pay the $50 fees as suggested by you?

Colonel MCMULLEN. It says "any use of the invention not by or for the Government is authorized." They don't have to manufacture if they authorize.

Commissioner ROBERTSON. Suppose he does not authorize; suppose he sells the patent outright to a corporation for $50,000, and no use is made of that patent, although he receives $50,000. Does he have to pay fees under your amendment?

Colonel MCMULLEN. Absolutely, he has got to pay the fees; somebody has got to pay the fees or the patent is invalid. You see it says if the use is authorized. If he sells the patent for $50,000 he certainly authorizes the use, and if he does that it becomes invalid if they don't pay the fees.

Commissioner ROBERTSON. It seems to me this bill was very liberal as it was. Under the bill a Government employee can have his application filed in the Patent Office on payment of the fees. He does not have to employ any counsel to take care of his case; that is all done by the department, and if there is the slightest chance of anyone being able to certify that it may possibly be used for Government use, he not only relieves himself of paying fees, but he also relieves himself of counsel fees, because the Government prosecutes his case for him; and it does not seem to me if there is any chance of that man selling he should be willing to pay the fees. If the committee considers this amendment-I have not had a chance to thoroughly consider it-protects the Government sufficiently, I have nothing more to say.

Colonel MCMULLEN. I would like to say, Mr. Chairman, that we are not here trying to get this bill for the employees of the Government; we are trying to get it for the Government and the public interest, and this in my opinion thoroughly protects the Government and gives the Government the authority to do what it is trying to do-that is, to operate certain patents for the public interest-and if as a result of these patents that are obtained without the payment of fee the patentee gets some return or authorizes some use for which he gets some valuable consideration, then the fees have got to be paid or the patent is not valid. We do not want the patent. The way this bill was written before it invalidated the patent not in use but authorized whether he got anything for it or not. That is particularly what we do not want.

Mr. LANHAM. Of the Government?

Colonel MCMULLEN. But these uses are not by or for the Government; they are in the public interest, not for the Government. There is a distinction there between the Government's interest and the public's interest.

Take these patents developed in the Bureau of Standards and in the Department of Agriculture particularly. Those patents are evolved in the public interest, but not in the Government interest. The Government never operates under them; the public interest operates under them. Their duty is to try to get some manufacturer to manufacture under those patents in the public interest.

As far as royalties are concerned, they get the use of the patent free, but they get a monopoly, so that the public will be guaranteed