the inventor has previously solicited a patent by regularly making application therefor, in which event the application may be made by the assignee of record of the entire interest, if any; and in all cases of an application for a reissue of any patent the application (must be made and the corrected specification signed by the inventor or discoverer, if he is living, unless the patent was issued and the assignment made before the eighth day of July, eighteen hundred and seventy) may be made and sworn to by the inventor or discoverer but only with the written approval of the assignee of record of the entire interest, if any; or such application may be made and sworn to by the assignee of record of the entire interest, if any: Provided, That the matter claimed in the reissue application is matter for which the inventor solicited a patent in his application for the patent originally issued to him; and when the application is made by such assignee of record, the statements required to be made in the application shall be so varied in form that it can be made by such assignee."

Mr. Bailey being the first witness again, I will ask him if he has any statement to make in regard to that.

FURTHER STATEMENT OF JENNINGS BAILEY, JR.

Mr. BAILEY. This also is an American Bar Association bill. Its purpose is to increase the value of patent applications by making it easier for the assignee to obtain full protection for his invention. In this country, as compared to most foreign countries, a patent must be filed by the inventor and he must swear to an oath saying that he believes that he invented the subject matter for which he applies for patent. In most foreign countries corporations can apply for patents. They do not have to make any oaths.

Now, there is no attempt in this bill to set aside that requirement for an oath, but we have two types of applications which are, in a sense, supplemental applications. The Patent Office only grants a patent on a single invention or a group of related inventions. The question of whether an invention or two inventions are so interdependent that they can be included in a single patent is often a very technical one and difficult to decide. Therefore, an application is usually filed on several different inventions, and, if the Patent Office requires that it be divided, then so-called divisional applications are filed to cover the individual parts of the invention, leaving only one of the inventions in the original application. Those divisional applications, as well as the original application, have to be sworn to by the inventor under the present law.

Then, the second type of application is the application for a reissue of the patent, if a patent for some reason is insufficient or inadequate. It may be that its claims are too broad, or that its claims are too narrow, or that its description is insufficient in some respect, and the patent law permits the inventor to ask for the reissue of that patent. That reissue does not extend the original 17-year period, but it is granted merely for whatever remainder of the 17-year period there may be. In other words, it expires 17 years from the date of the issuance of the original patent. Now, in both of those cases, both the divisional applications and the reissue applications, the inventor, in making his original application for a patent has already sworn that he believes himself to be the first original and sole inventor of the subject matter and that he believes that there are no statutory bars against the granting of a patent to him, so that the primary requirement that the inventor should have made an oath has been satisfied. This bill permits the assignee of record, that is, someone to whom assignment of the whole right, title and interest in the patent or the applica

tion has been made, and who has recorded that assignment in the Patent Office, to make divisional and reissue applications in his own name without the oath of the inventor, providing that the application is based entirely on matters for which the inventor has previously solicited a patent by regularly making application therefor.

Now, this situation often arises: An inventor sells an invention to a company and the company files an application on it. The Patent Office requires division, and by the time division has been required and that question has been settled, and the company decides to file a divisional application, the inventor may be dead; or he may be in Brazil, or he may be utterly unavailable. Under those circumstances the present law does not permit the assignee in any way to protect those parts of his invention which he cannot cover in his one original application. Also, an inventor may assign an application, and a patent may issue, and after it issues it may turn out to be insufficient, and again, if the inventor is not available the assignee cannot correct that error.

Now, the value of the application or of the patent, and, therefore, presumably the price which the inventor will be able to obtain for his invention, will certainly be increased by a provision giving the assignee the right to make the supplemental applications. The purpose of the law that the inventor shall make oath to his invention will not be lost, because he will have made oath in his original application that he believes it to be his invention. So, we see much in favor of the bill, in increasing the value of the application, and the bill seems to do no harm.

The CHAIRMAN. Is it the wish of the members of the committee to proceed for a few moments and hear from the other witnesses, or shall we adjourn to answer the roll call?

Mr. LUCE. We will get a second call all right.

The CHAIRMAN. Then we will proceed with Mr. Haynes. If you will, be as brief as you can.

FURTHER STATEMENT OF DELOS G. HAYNES

Mr. HAYNES. I will take only a moment, Mr. Chairman. The inequity of these situations obviously deserves some remedy. Where a man has assigned and presumably has been paid an agreed price for an invention as contained in a patent application, the purchaser, we think, has a right to the patent or patents to be granted on that application, without having to go to the inventor for future signatures in order to have that right effective. Unless this law is passed in its present or equivalent form, the present injustice will keep on in force, that if the inventor a year or two years after the original transaction is asked to sign a divisional application, if he cannot be found, or if he is found and says, "No, I won't sign it," the man who bought the invention from him is helpless and cannot but lose the issue of a patent on that fraction of what was originally bought.

I have heard some objection to the phrase at the top of page 2 of this bill, H. R. 8444, "inventor has previously solicited a patent by regularly making application therefor." Our intention is using that phrase was to say that the thing must be comprised in what the inventor originally swore was his invention. Now, the swearing to what the man thinks his invention is, is accomplished by signing the

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oath on the usual form and that oath refers to the claims then in the application and presumably to claims which could be added to it under the rules that have been in force for many years. I will admit that that phrase "solicited a patent" is not as crystal clear as we would like to have it. You may hear within the next few minutes some recommendations or suggestions in wording that define accurately the thing which the assignee buys when he buys the invention, within the spirit of our American Bar Association suggestion that this handicap be removed by passage of a suitably worded bill. If there is a better way to say it than by the phrase "solicited a patent," let us adopt the better wording.

The CHAIRMAN. Mr. Graves.

Mr. GRAVES. I have nothing to say on this.
The CHAIRMAN. Mr. Jackson.

FURTHER STATEMENT OF JOSEPH GRAY JACKSON

Mr. JACKSON. Our Philadelphia committee is strongly in favor of this bill, and we believe the language "solicited a patent" is sufficiently clear so that no one could possibly misunderstand what is intended. The absence of legislation of this sort has resulted in a series of practically hold-ups by some men who have assigned the subject matter of patents as employees to a company and then have left the company, and they tried to use the same formal requirement regarding the signing of an application as a lever to get some special advantage for themselves.

The CHAIRMAN. Mr. Semmes.

FURTHER STATEMENT OF HARRY H. SEMMES

Mr. SEMMES. I think the bill is a good bill. I think it cures five things that are now bad in the present law. It takes care of the situation where the inventor is unfriendly. That is one thing. You do not have to go to court now to get an injunction to cause him to sign the application. Secondly, it also takes care of cases where the inventor is hard to locate or is out of the country and where the assignee is put to great expense to get him to sign. Third, it takes care of the situation where it is impossible to locate the inventor, but you cannot prove he is dead; and in that case nobody can sign. Fourth, it takes care of the situation where the inventor is dead and you have to go through a great deal of red tape with courts to get the administrator or the executor of the estate to sign. Fifth, it takes care of the situation where the inventor is of unsound mind and you have to go through the court and a lot of red tape again to get the application signed.

The CHAIRMAN. Mr. Fenning, I think you did say something about this.

Mr. FENNING. Not yet; no, sir.

The CHAIRMAN. All right.

FURTHER STATEMENT OF KARL FENNING

Mr. FENNING. The advisory council approves in general of this particular idea, and the words which the advisory council are interested in are included in the bill which you introduced, H. R.

9386. Section 4 of that bill covers the same field as this bill, H. R. 8444. H. R. 9386 uses words which, to my mind, and the minds of the council, are more satisfactory than "has previously solicited a patent." If a man previously solicited a patent it may possibly be assumed that he has put in his application which he assigned the claims specifically of the particular thing. The council suggests instead of "has previously solicited a patent" the term be used "when the application is based entirely on matters disclosed as a part of the invention." In other words, to transfer the disclosure and not limit it to the specific claims. Those words appear in section 4 of the latter bill.

The statement has been made here that the new application is to be filed without further oath because oath has already been filed in the original application. This bill, 8444, does not specifically say, "without further oath." Section of H. R. 9386 has in it those words, "without further oath," and I think that is a preferable expression. Now, there is one defect which I think is probably a typographical defect in H. R. 9386, and that is that there is no provision that the assignee must be the assignee of record.

The CHAIRMAN. That is coming up in the bill we have set for hearings on next Thursday.

Mr. FENNING. You are going to have hearings on this particular subject?

The CHAIRMAN. Yes, sir; we will have a hearing on those other bills.

Mr. FENNING. On this same subject?

The CHAIRMAN. Yes; on this same subject.

Mr. FENNING. In H. R. 9386, line 14, page 3, after the word "assignee" there should be inserted "of record," so that it will be in all cases an assignee of record for the issue of a patent.

The CHAIRMAN. All right. If there are no other witnesses who desire to make any statements we will adjourn.

STATEMENT OF EDWARD R. WALTON, JR., MEMBER OF THE PATENT COMMITTEE OF THE DISTRICT OF COLUMBIA BAR ASSOCIATION

Mr. WALTON. I would like to endorse the amendment Mr. Fenning has offered and approve all that has been said with respect to the other bills.

The CHAIRMAN. We will adjourn the hearing, the House being in session, and we will take all of these bills up together in executive session at a later date, subsequent to the hearing which is scheduled for next Thursday at 10:30 on H. R. 9384, H. R. 9386, and H. R. 9388.

(Thereupon, at 11:25 a. m., the committee adjourned until Thursday, May 16, 1940, at 10:30 a. m.)