Now, one fundamental difficulty, in my judgment, is that this bill imposes upon the Commissioner of Patents a very unnatural burden, which is foreign to the normal duties of the Patent Office, and would involve a tremendous expense in its administration; for the merits of a cause or a defense can only in rare cases be determined without a trial of the issues.

Suppose, Mr. Chairman, for example, an indigent patentee files a suit charging infringement of the claims of his patent. I suppose we must all agree that legal infringement cannot exist unless the patent is valid, and so it would seem that the Commissioner would be called upon to make a validity search. Now, if a prior patent should be discovered, which in the opinion of the Commissioner rendered the claims invalid, an expression of that opinion would rob the patent of that prima facie presumption of validity which a patent is entitled to possess before the court.

Moreover, a patent cause cannot be considered meritorious, I take it, unless there is a colorable infringement. To ascertain this fact, it would be necessary for the Commissioner to study the infringing device, which of course could not be done in Washington without enormous expense.

A further point that I wish to make is that the bill seems to me to give to an indigent patentee greater rights and privileges than to a patentee who is slightly above the "indigent" class. He may not be exactly a pauper, but still he might be in a very serious financial condition.

The bill would enable the pauper patentee to obtain an ex parte opinion upon the merits of his case from the Commissioner of Patents. If this is a fair and equitable thing in the case of an indigent patentee, it seems to me a similar privilege might well be asked by other patentees, certainly all those who are just slightly above the "indigent" class. I also believe that the bill would inevitably encourage litigation and, Mr. Chairman, I personally feel that the present law is sufficient to meet the situation.

The CHAIRMAN. Mr. Commissioner, would you be kind enough to state for the benefit of the record, so that my colleagues may read it, what is the present law regarding indigent patentees? What are their rights under the present law?

Mr. CoE. The present law covering this subject is found in the United States Code, title 28, sections 832 to 836. Section 832 is entitled "Suits, and so forth, by poor persons; prepayment of fees and costs." It is not restricted to any class of people, but refers to paupers generally. For the record, Mr. Chairman, I have a brief digest of these sections of the present law if you would like me to give that to the clerk.

The CHAIRMAN. Yes; give that to the clerk, but if you will, tell us the high spots.

Mr. COE. Generally, the present law provides that the court can appoint an attorney to defend an indigent person.

The CHAIRMAN. Who pays the attorney?

Mr. COE. The present law makes no provision for that, but I assume that on the theory that all attorneys are officers of the court, when so designated they must perform these duties without compensation. It is common practice for a court to designate an attorney to defend a criminal in an indigent case.

The CHAIRMAN. The attorneys get paid in the State of New York for doing that. In other words, if an indigent patentee came before one of the courts in the District of Columbia, and made the allegation that he has no money and that he has received letters patent regarding some invention of his, which he feels are infringed, and he has no money to hire an attorney to defend it, the court has the right, according to the present law, to appoint some member of the bar to defend his rights?

Mr. COE. That is my understanding of the present law, certainly insofar as defense counsel is concerned.

The CHAIRMAN. For which he may or may not receive a fee. I mean, if he wins his case, of course, the judge can then deicde an equitable fee for his services, but if he loses the case there is no question of compensation, is that correct?

Mr. COE. That is correct. However, the present law does provide that the expenses of printing the record on appeal, and other necessary expenses, shall be paid by the United States.

The CHAIRMAN. So, based upon the fact that this would give an unfair advantage to the indigent patentee over other patentees and because of the tremendous burden it would place upon the Commissioner of Patents, the Patent Office disapproves this bill, is that right? Mr. CoE. Yes; Mr. Chairman.

The CHAIRMAN. All right. What is the number of that bill?
Mr. COE. H. R. 173.

H. R. 4985

Mr. COE. H. R. 4985 provides a single signature in patent applications, to validate a joint patent for a sole invention. The bill is an attempt to simplify the current practice of requiring three signatures to a patent application. If the bill is passed, a single signature will thereafter suffice.

It further provides that if a patent is taken out by two or more persons who believe themselves to be joint inventors, and it is later determined that only one made the invention, the patent shall remain good and valid in law.

The last provision relates to obtaining patents after the death or insanity of the inventor.

This bill has the approval of the officials of the Patent Office, and is regarded as being free from objection. It is intended to simplify the current practice in several respects, and it has the support, I understand, of the patent section of the American Bar Association and other kindred legal associations.

The CHAIRMAN. Whose bill is this?

Mr. COE. This is Mr. McLeod's bill.

The CHAIRMAN. It meets with the approval of the Department? Mr. COE. Yes, sir.

H. R. 4986

Mr. COE. H. R. 4986 limits the life of the patent to a term commencing with the date of the application. It provides that every patent shall expire 20 years from the date of application, provided that in certain situations the Commissioner of Patents may have the right to extend the term for a period not to exceed 2 years.

Mr. Chairman, at present certain movements are under foot in the Patent Office to accomplish with greater expedience and convenience,

the defect that this bill is intended to cure. Therefore, I recommend to the committee that no action be taken on this bill at this time in order that the Patent Office may be given an opportunity to carry out its present plans.

Rule 68 of the Patent Office Rules of Practice now reads as follows:

The applicant has a right to amend before or after the first rejection or action, and he may amend as often as the examiner presents new references or reasons for rejection.

That is the first sentence of the present rule. Our specific proposal is that this rule be amended by changing the period after that first sentence to a comma, and adding these words:

Provided, That after an application has been prosecuted before the primary examiner for three years, in his next action the examiner may notify the applicant that, unless the next amendment shows good and sufficient cause, final action will be taken.

The bill, H. R. 4986, seems to recognize that a 3-year period is reasonable for the prosecution of a patent application. The amendment to the Rules of Practice which we propose also recognizes this general principle. The difference in result is that under the bill the law will be inflexible, and because of its inflexibility it would in many instances be extremely harsh.

The procedure we have suggested would tend to accomplish the same result as the bill, but, by permitting an applicant to show cause in certain cases, would tend, in our judgment, to do greater equity in individual cases.

If the actual results sought by this bill cannot be accomplished by the proposed change in our office practice, I shall be very glad to report this fact to the committee in support of the bill at a future session. I do not wish to be understood as opposing the principle of the bill. I am quite as anxious as anyone to curb the undesirable practice of keeping cases pending in the Patent Office indefinitely. The CHAIRMAN. What would be the length of time that you could have cases in the Patent Office, indefinitely, if your program were put into operation?

Mr. COE. The length of time would approach, I believe, the time contemplated by the bill itself.

The CHAIRMAN. Do you think you could dispose of all the claims and amendments that come, within a 3-year period, where they are offered in good faith?

Mr. COE. I think we can, sir, except in certain cases where in fairness and equity, an exception should be recognized. For example, suppose a case can be completely closed in 3 years and 2 months, and there is some persuasive reason advanced by the applicant that 2 months more is necessary to properly complete that particular case. Our proposal leaves us free to recognize these exceptional cases and to administer equity and justice when a case merits such treatment. The CHAIRMAN. Now, in order to accomplish the object of your memorandum, do you need congressional legislation, or can you amend your own rule?

Mr. COE. We can amend the Rules of Practice; Mr. Chairman, it is purely an administrative matter which we have authority do do in the Patent Office subject to the approval of the Secretary of Commerce.

The CHAIRMAN. In other words, you could put into operation the very amendments that you are suggesting now, in the operation of

your own office, subject to the approval of the Secretary of Commerce?

Mr. COE. Yes.

The CHAIRMAN. And, once that is approved, you could expedite applications that would come into your office, and prevent them from laying there 5 years, 10 years, 15 years, and in one instance or two, I think, Commissioner Robertson told us, under his past administration, they had one there for 25 years.

Mr. COE. Mr. Chairman, I feel confident that we can accomplish the ultimate objects of this bill by administrative action in the Patent Office, and I repeat, that if I am disappointed in this hope, I shall be glad to report that fact to this committee.

The CHAIRMAN. How much time do you need to expedite these things?

Mr. CoE. I do not quite understand your question.

The CHAIRMAN. In other words, suppose we asked you to prepare for the record, so that before it goes to print, the number of applications that are in the Patent Office longer than 3 years, today, how long they have been there, 5 years, 10 years, 15 years, 20 years, and suppose we wait until next year, January or February, that gives you 6 or 7 months to see how quickly you can get rid of a lot of these things, and let us see what will be accomplished under your procedure. Mr. COE. I should say that we should be able to reach some very satisfactory conclusions within a year, Mr. Chairman.

The CHAIRMAN. Very well. Then we will have the record show that, so far as I am concerned, I am willing to cooperate with you 100 percent, and you can change the rules of procedure of your department, with the purpose of eliminating what I consider one of the greatest evils in the Patent Office, that has given us more headaches and more heartaches and complaints to Members of Congress and racketeers who are running a peculiar sort of an industry, through the application of patents, where they keep on prolonging it in the Patent Office, so as to embarrass big business and other industries, by being constantly blackjacked by applications that are in there for 5, 10, and 15 years.

On that basis, I shall be very pleased not to bring up this bill before our executive committee, but wait until next year, to see what you will do. Is that agreeable?

Mr. COE. Mr. Chairman, in appreciation of that willingness on your part to cooperate with us, I will strive to install the new rule in the Patent Office by the first of this July.

The CHAIRMAN. When we have our next meetings, in January, February, and March of this year, we can see just what you have accomplished, how many of these long applications that have been pending have been disposed of and brought to a complete action, and if the thing will be working well, we will go along with you, but if the thing is not working well, I think the demand contained in letters that are coming in to me from the greatest manufacturing and industrial enterprises will make it necessary for us to put through the legislation.

Mr. CoE. If we fail in our administrative efforts in the Patent Office, Mr. Chairman, I will certainly be in favor of this bill.

The CHAIRMAN. Does that meet with your approval, then?
Mr. COE. Yes, sir.

144912-35- 2

H. R. 5805 AND H. R. 5806

Mr. COE. H. R. 5805 and H. R. 5806 are bills designed to effectuate certain provisions of the International Convention for the Protection of Industrial Property, as revised at The Hague in 1925. The revised convention has been ratified by the Senate and proclaimed by the President of the United States.

The United States has been a member of this convention since 1887. The convention represents the efforts of some 30 nations to secure for the citizens of each country the same rights and privileges with respect to patents, trade marks, and unfair competition, as are accorded the nationals of each of the member countries.

The CHAIRMAN. Does that include design patents, too, Mr. Commissioner?

Mr. CoE. Yes, sir; it does. The convention was further modified, in London, last summer, at which time I had the honor to attend as the chairman of the American delegation. However, the London revision has not come up before the Senate for ratification, although I hope this will be done during the current session.

The CHAIRMAN. Are there any differences in the London revisions than in the 1886 or 1887 convention?

Mr. COE. There are a number of changes, Mr. Chairman, but I do not believe that there are any that will require an amendment to our law, because, in general, the London provisions have a tendency to bring the convention into conformity with American law, and do not appear to require amendments to the domestic laws.

The CHAIRMAN. It requires no amendments whatsoever by Congress to meet any situations that have developed over there?

Mr. COE. That is my belief, sir. Under The Hague revision, the convention fixes a so-called "period of priority" in which an applicant for patent or an application for registration of a trade mark may be filed in this country by a citizen of a foreign country after the filing of a corresponding application in the foreign country.

The period as fixed by the convention is 6 months for designs and 6 months for trade marks. Section 4887 of our law in its present form was enacted prior to The Hague revisions of the convention, which enlarged the priority period from 4 months to 6 months.

In H. R. 5806, the priority period is changed from 4 months to 6 months, so that it may agree with the convention. This bill makes no other change in this section of this law.

In H. R. 5805, a similar change in the priority period is made with respect to trade-marks, and for the same reason; that is, to bring the domestic law into conformity with the priority period of the Convention. This bill, H. R. 5805, also contains a provision which carries out Article 7-bis of the Convention, providing for the registration of collective marks belonging to associations, even though these associations do not possess an industrial or commercial establishment. The CHAIRMAN. Have we got that in this bill?

Mr. COE. That is in H. R. 5805. The present trade-mark law is not deemed sufficient to permit the registration of such marks. Article 7-bis was first introduced into the international convention at the Washington revision in 1911, which revision was duly ratified by our Senate and proclaimed by the President.