PATENTS COMMITTEE ON PATENTS, HOUSE OF REPRESENTATIVES, Washington, December 9, 1924. The committee met at 10.30 o'clock a. m., Hon. Florian Lampert presiding. The CHAIRMAN. This is a hearing on H. R. 3267. A BILL To amend an act entitled "An act making appropriations for sundry civil expenses of the Government for the 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 Secretary of the Interior and the Commissioner of Patents are authorized to grant 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, when such invention is used or to be used in the public service, 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 any article in the possession of the United States embodying a patent issued under the provisions of this act may, when no longer required for governmental purposes, be sold without the payment of any royalty to the patentee or his assignees." STATEMENT OF LIEUT. COL. JOSEPH I. M’MULLEN, JUDGE ADVOCATE GENERAL'S DEPARTMENT, CHIEF CENTRAL PATENT SECTION, WAR DEPARTMENT Mr. LANHAM. I suggest, Mr. Chairman, that Colonel McMullen explain to us the purpose of the proposed bill. Colonel MCMULLEN. The purpose of this proposed amendment to the Act of 1883, is to make that act clear, so as to make it,—or to give the services a clear understanding what their rights are when they take out a patent without the payment of fees. Heretofore, for the past 40 years, the services, generally, and I speak for other services, as well as the War Department, have shied at the bill, for the reason that it has this language in it: "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." Mr. LANHAM. That is not exactly the verbiage of the bill. Colonel MCMULLEN. I mean the present law. I am quoting the present law. The Commissioner of Patents in the early days after that bill was passed took that to mean that any patent taken out by an employee of the Government, who did not pay any fee, under this act, was dedicated to the public. The Judge Advocate General of the Army and the Attorney General held, on the other hand, that if that were true, there was no use taking out a patent. They could dedicate the invention to the public without going to the trouble of taking out a patent, by simply publishing it through the Commissioner of Patents. So the act went on, and the men in the service shied at it and would not take out a patent, where they did not have the money to take out a patent, they simply did not take out a patent. In the meantime Congress passed another act providing that employees of the ordnance department, where they got up a useful invention that the Government could use, received a certain compensation, running from $200 to $500, provided they did not take out a patent. The Government activities from the time of the passage of this act up to a certain time were not such as to require the Government to use many inventions, and we did not have many suits in courts for use of inventions. During the war, however, we used everything that anybody thought of, and now the Government is confronted with suits amounting to, in round figures, $1,000,000,000, for use of inventions. Mr. LANHAM. If I understand the purpose of this bill, it is this: In these various services men make certain inventions useful in those respective services. Colonel MCMULLEN. They may or may not be useful. They may not be useful at the time they are made, but we can not tell about the future. We have had many experiences of that kind. For instance, I would like to make a point of the machine gun Mr. LANHAM. Carrying out that idea a little further: Of course, these inventions that they make are kept largely secret for use in the service some of them, at least. Colonel MCMULLEN. A great many of them are; yes. Mr. LANHAM. As I understand it, the necessity for this bill arises from this fact: That inventions are made by men in these respective services; that patents are not taken out on them, and that subsequently patents are taken out on them by people not in the service. Colonel McMULLEN. Exactly. Mr. LANHAM. And, then, when the necessity arises for the Government to use those inventions, the Government makes itself liable to suits for infringement by people outside of the service on inventions which were made by people in the service. Colonel MCMULLEN. Exactly. Mr. REID. That would be a defense. Colonel MCMULLEN. No; I understand not. I understand, according to the act of 1910, that blanket authority is given Mr. LANHAM. I understand there has recently been judgment against the Government for more than a half million dollars for the infringement of a patent which originated in the service. Colonel McMULLEN. Exactly. Mr. REID. Do you mean the Government can not use as a defense to an action, either in the Court of Claims or any place else, that there was prior invention? Colonel MCMULLEN. Not unless they prove prior use. Mr. REID. That is what I said. Colonel McMULLEN. You misunderstand me. Lots of these inventions are made in an experimental way and laid aside and not used for years. The court holds them abandoned. They have not applied for patent and have not published it. Your defenses in a patent suit are prior publication or prior use, and where you can show a clear prior use or prior publication in some printed publication you then have a defense. Mr. LANHAM. Is it not true that some inventions are not made for present use but to be put aside for use in time of war? Colonel McMULLEN. Exactly; a great many of them are. Colonel MCMULLEN. Here is something I might mention here. In a great many of these instances they carry a patent along without publishing it. We have authority in law, under what we call the secrecy law, we have a statute which permits us to make a secret application and every three years to extend it, as long as there is no interference in the Patent Office, we can extend it from three years to three years without interference. Mr. LANHAM. That protects the patent? Colonel MCMULLEN. Yes, that protects the patent without revealing the subject matter of it. Mr. LANHAM. What sum of money do you suppose, in the aggregate, has ben obtained from the Government through judgments on inventions originating in the service? Colonel MCMULLEN. Through judgments, I should say it is pretty hard to estimate, I should say a minimum of $10,000,000. Mr. LANHAM. This Bill has the sanction of the heads of the various services it affects. Colonel MCMULLEN. Not only the services, but all departments of the Government have concurred in this bill, including the Department of Justice and the Commissioner of Patents. When I first started this movement, when I was put in charge of the preparation of technical evidence, preparing the defense of the Government in these cases, I prepared this bill. I found out a great many of these suits arose through just what we are talking about, and I saw right away that we had to have some bill where we could require that inventions made in the service be patented. Mr. BLOOM. If a man in the service should patent something would it belong to him or to the Government? Colonel MCMULLEN. It depends on circumstances. The Supreme Court said in the Williams case that the relation between an employee of the Government and the Government were the same as between an employee of a corporation and the corporation. Mr. BLOOM. Then, that would belong to him, personally? Mr. BLOOM. The courts have held that? Colonel MCMULLEN. I will explain that. If the man is employed to do a specific thing, the invention and patent growing out of it belongs to the employer; but, if the man does that outside of the line. of his regular work, in the evening, for instance, invent something on radio, the patent and the invention belongs to him. But by the statutes, the Acts of 1910, and July 1, 1918, giving the Government practically the right-that is, they preclude him from suing the Government for any infringement-where we have control of any of these inventions, to make it clear, we take a nonexclusive license, and in some cases we take the assignment of the patent if we want to keep it secret. We have no difficulty with employees in the Government. Mr. BLOOM. Is there any objection to this measure on the part of inventors? Mr. LANHAM. Or, prospective inventors? Colonel MCMULLEN. No; I think they would be tickled to death to have the act cleared up, and it would certainly be in the interest of the Government-I am here in the interest of the Government. Mr. LANHAM. Will you indicate, in order to have it in the record, what the difference is between this bill and the present law? In other words, this is an amendment-what does the amendment do? Colonel McMULLEN. This is the amendment: It cuts out the language, as I stated before, that the invention may be used by any other person in the United States without the payment of royalty. It cuts out the effect of dedicating it to the public, if Judge Knox is right in his decision. We do not agree that he is right, but that is the construction that everybody has put on the law for years— that it is dedicated to the public. Mr. REID. That is what it says in the law. Colonel MCMULLEN. It says any other person in the United States it may be used by any other person in the United States without the payment of royalties; but the Attorney General argued that there was no use of issuing a patent if it was intended to dedicate it to the public. Mr. REID. But that is what it says. Colonal MCMULLEN. Yes; that is what it says; but those words are actually left out. Mr. REID. Let me ask you: You say that in the suits for use of inventions by the United States, that in any such suits the United States may avail itself of any defense, general or special, that may be pleaded. Colonel MCMULLEN. Yes; that is the general rule. Mr. REID. The statute gives the list of defenses. Colonel McMULLEN. Yes. Mr. REID. The law states: "Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented." Isn't that right? Colonel McMULLEN. Yes; that is right. Mr. REID. Would not that be true? Colonel MCMULLEN. Yes; but in order to prove that, you have to have-you can not use the evidence of the man himself who claims to have invented it-it is not excepted as a defense. You must have some record proof. Mr. REID. That is in the third. That it has been patented or described in some printed publication prior to his supposed invention or discoveries thereof, or more than two years prior to his application for a patent therefor. Colonel MCMULLEN. You can prove prior use by witnesses, but you can not prove it by the inventor himself. Mr. REID. Your point was, you had no written evidence of the discovery. Colonel MCMULLEN. No, and no witnesses, and you cannot prove a thing without witnesses or written evidence. Mr. REID. You could not do it anyway. Colonel McMULLEN. If you have a publication you can. The Ordnance Department and other departments do not publish these things. They do not make any written record of them-it just disappears-it is wiped out. Sometimes we get a line on it, but we can not get it in the form of evidence that the court will accept. Mr. LANHAM. Will the phraseology of this bill meet all the requirements? Colonel MCMULLEN. Not quite; there are a few changes I would like to suggest in it. Mr. LANHAM. What are those changes? Colonel MCMULLEN. In line 8, on page 1 of the bill, after the word grant" I would like to put "subject to existing law, to". In lines 11 and 12, after the word "Statutes," delete "when such invention is used or to be used in the public service "-cut that out entirely. Mr. REID. What line is that? Colonel MCMULLEN. That is lines 11 and 12 on page 1, right after the word statutes, "when such invention is used or to be used in the public service ". Mr. LANHAM. You want that cut out? Colonel McMULLEN. Yes. The reason for that is this: We can not always tell whether it is used or is going to be used in the public service, as I cited that instance this morning with regard to the machine gun, you can not foresee, but that is an expense to the Government, and it will not amount to a drop in the bucket compared with the judgments had against the Government. Mr. REID. That is your only excuse for passing a law of this kind? Colonel McMULLEN. Yes. Mr. REID. Now, you want it cut out. Colonel McMULLEN. Here is the idea; that is a limitation Mr. REID. I understand that. Colonel MCMULLEN. I would be perfectly willing to leave that in there if it would give us some leeway. We can not tell at the time the invention is made whether it is going to be used or not. Mr. LANHAM. He gets his patent without fee. Colonel McMULLEN. Yes. Mr. LANHAM. The only excuse for letting him get it without fee is that his invention may be used by the Government service. Colonel MCMULLEN. Yes. Mr. REID. Well, you are taking yourself out of that class. Mr. LANHAM. If you have that out, how does the bill stand? In other words, do you not give the privilege to an officer or an enlisted man for an invention that may not be used in public service? Colonel MCMULLEN. I would be glad to put a limitation in there to tie our hands. I am trying to require the employee to take out a patent, to protect the Government. Mr. REID. You can not require him to do that. Colonel MCMULLEN. Well, if it is fair, to the employee, we can require him, all right. |