Mr. FENNING. That report is based on H. R. 8442, which is the first section of this bill H. R. 9616.

The CHAIRMAN. Yes.

(The report above referred to will be found elsewhere in this record in the appendix.)

Mr. FENNING. They take up this specific question of the retroactive effect, and I am inclined to think that they are justified in doing so. This section 2 provides that the act shall take effect immediately and it shall apply to all pending applications and issued patents, but shall not apply to patents which have already been adjudicated. It seems to me that it is highly probable that by applying to patents which have not been adjudicated and by applying to pending applications it may take away a right which has already vested in a patent which is issued but has not yet been adjudicated.

The CHAIRMAN. In other words, you cannot make it retroactive to the extent that it affects something in being?

Mr. FENNING. It seems to me it is unconstitutional if it does that. The CHAIRMAN. Does it do that?

Mr. FENNING. It affects the patents which have already issued if they have not been adjudicated.

The CHAIRMAN. But while litigation is still pending?

Mr. FENNING. Not where they have actually been litigated. If the litigation is still pending, it will affect them, according to this. It is only where there has been a finding of validity that it will not affect them. In fact, it certainly would save a great deal of difficulty if we had this act take effect immediately anda pply it to all applications for patents hereafter filed or patents granted thereon.

The CHAIRMAN. Would you say if an action had been brought and there had been a decision in an inferior court from which there had not been an appeal that it would affect that case?

Mr. FENNING. It shall not affect any judicial finding of the validity if it be definite and final.

The CHAIRMAN. Then we ought to say "final."

Mr. FENNING. You should not make it apply to all pending applications and equally to existing patents.

The CHAIRMAN. If there were an action pending, or if there were an action on which there had been a decision of the lower court, and on which an appeal is pending, that decision in the lower court is not a final decision.

Mr. FENNING. No.

The CHAIRMAN. It is still going on to a court of higher jurisdiction. Mr. FENNING. It may or it may not be final, depending on whether an appeal is taken.

The CHAIRMAN. It could be final if the party is satisfied to stop there.

Mr. FENNING. All of that can be avoided by saying that any application filed hereafter shall go by this present law, but any application now pending shall not have any right taken away by this particular bill. I would say:

This act shall take effect immediately and apply to all applications for patents filed after the passage of this act and to all patents issued thereon.

Mr. CAMP. Why would it be necessary to say anything? Because all laws take effect immediately.

Mr. FENNING. It may be necessary because someone would say that this applies to patents which have already been issued. They would say that there is a new rule that the court must apply immediately, and if you specify what it does apply to then you eliminate the other feature. That is the only reason for saying that at all. I would say if the second section read this way:

This act shall take effect immediately and apply to all applications for patents filed after the passage of this act and to all patents issued thereon

it would be safe and probably carry out what you want to have carried

out.

The CHAIRMAN. Would you not say to all applications for patents pending?

Mr. FENNING. No; we do not want those pending, because they may already have a right to a patent granted as of the date they filed their application. That has been generally the patent law, when a man files an application he begins to form his inchoative right to a patent. For instance, as was said awhile ago, patents are usually for 20 years from the date of filing the application. That was to apply not to pending applications, but to applications filed hereafter. The CHAIRMAN. Are there any other witnesses on this bill? Mr. Jackson, do you desire to be heard?

STATEMENT OF JOSEPH GRAY JACKSON, CHAIRMAN, LEGISLATIVE AND JUDICIAL COMMITTEE, PHILADELPHIA PATENT LAW ASSOCIATION, PHILADELPHIA, PA.

Mr. JACKSON. Mr. Chairman and gentlemen of the committee, my name is Joseph Gray Jackson. I am chairman of the legislative and judicial committee of the Philadelphia Patent Law Association. We are strongly in favor of this bill and believe it is necessary legislation, and agree with the suggestion made by Mr. Fenning as to amendment of section 2.

The CHAIRMAN. Are there any questions?

Mr. Graves.

STATEMENT OF JAMES M. GRAVES, REPRESENTING THE AMERICAN PATENT LAW ASSOCIATION, WASHINGTON, D. C.

Mr. GRAVES. Mr. Chairman, my name is James M. Graves, and I represent the American Patent Law Association, Washington, D. C. The committee on laws and rules of the American Patent Law Association has indicated its approval of those three bills, but we are now holding a referendum and the results of the referendum should be in by the 21st, and when they are in we will let you have the results. The CHAIRMAN. All right; we will be glad to have them. Mr. Semmes.

STATEMENT OF HARRY H. SEMMES, MEMBER OF LEGISLATIVE COMMITTEE, AMERICAN BAR ASSOCIATION, WASHINGTON, D. C.

Mr. SEMMES. Mr. Chairman, my name is Harry H. Semmes. I am on the American Bar Association legislative committee in the patent section, and all I have to say is what Mr. Bailey said. We

are in favor of the bill, and believe the amendment is an acceptable amendment.

Mr. FENNING. I am a member of the advisory council of the Committee on Patents of the House of Representatives. They have made a report, a copy of which you have, with respect to this particular bill, and they approved this particular bill.

The CHAIRMAN. We will accept that report and include it in the record, together with the report from the Patent Office and the communication which came from Los Angeles.

(The communications referred to will be found elsewhere in the appendix to this record.)

The CHAIRMAN. We will take up Mr. Arends' bill next, H. R. 8441. (H. R. 8441 is as follows:)

[H. R. 8441, 76th Cong., 3d sess.]

A BILL To afford greater protection to the purchaser of patent rights

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That section 4898 of the Revised Statutes (35 U. S. C. 47) be, and the same is hereby, amended to read as follows:

"SEC. 4898. Every application for patent or patent or any interest therein shall be assignable in law by an instrument in writing, and the applicant or patentee or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent or patent to the whole or any specified part of the United States. An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice unless it is recorded in the Patent Office within three months from the date thereof or prior to such subsequent purchase or mortgage. "If any such assignment, grant, or conveyance of any application for patent or patent shall be acknowledged before any notary public of the several States or Territories or the District of Columbia, or any commissioner of any court of the United States for any district or Territory, or before any secretary of legation or consular officer authorized to administer oaths or perform notarial acts under section 1750 of the Revised Statutes (U. S. C., title 22, sec. 131) the certificate of such acknowledgment, under the hand and official seal of such notary or other officer, shall be prima facie evidence of the execution of such assignment, grant, or conveyance."

The CHAIRMAN. Mr. Arends, do you want to make any preliminary statement on that?

Mr. ARENDS. No, Mr. Chairman.

The CHAIRMAN. We are crowded for time this morning, so we will have to proceed as rapidly as possible.

Mr. Bailey, have you any suggestions to offer with reference to H. R. 8441?

FURTHER STATEMENT OF JENNINGS BAILEY, JR.

Mr. BAILEY. H. R. 8441 is also introduced on behalf of the American Bar Association. It is a recording bill for the recording of assignments of patent applications. The present statute provides that if an assignment of a patent that has issued as a patent is recorded within 90 days from the date on which it is made, such recording constitutes notice, and no one thereafter, even though purchasing in good faith, may obtain title. It is much like a recording of title to real property. The Patent Office for many years has recognized the right of an applicant to assign his application before it matures into a patent, and, in fact, grants patents to the assignees of the application. However, this rule of notice is not applied to applications for patents. In other words, if an inventor assigns an application for a patent that

assignment of the application is recorded in the Patent Office, which is all that can be done within 90 days. That recording is still not notice as it is in the case of the assignment of a patent. The present bill merely makes the same rules apply to the recording of assignments of applications as apply to the assignment of granted patents, and the position is that there is no reason for their being any difference. The law has worked out well as far as patents are concerned, and it would be more consistent to have it apply to applications as well.

The CHAIRMAN. Have you concluded?

Mr. BAILEY. Yes, sir.

The CHAIRMAN. Are there any questions?

Mr. Arends?

Mr. ARENDS. I have no questions, Mr. Chairman.
The CHAIRMAN. Mr. Luce?

Mr. LUCE. No, sir.

The CHAIRMAN. Mr. Camp?

Mr. CAME. No; I have no questions, Mr. Chairman.

The CHAIRMAN. Mr. Jonkman, do you want to ask any questions? Mr. JONKMAN. I have no questions.

The CHAIRMAN. Now we will hear the next witness. Mr. Haynes.

FURTHER STATEMENT OF DELOS G. HAYNES

Mr. HAYNES. Again, Mr. Chairman, I will take only a minute of your time in view of the brevity of the hearing. The only objection that has reached me is that the time of 3 months for recording could now well be reduced to 1 month, since we are in the days of railway trains, airplanes, and automobiles. This 3 months is left over from a rather ancient statute. Our American Bar Association did not specifically pass on that point.

I earnestly hope that you will find your way clear to pass this bill at the present session and put into effect what should have been the law all along, namely, that the recording of an assignment of a patent application in the official files of the Patent Office procures the same benefits of protection as would the assignment of an issued patent. The CHAIRMAN. If there are no questions, we will hear Mr. Jackson.

FURTHER STATEMENT OF JOSEPH GRAY JACKSON

Mr. JACKSON. The legislative committee in Philadelphia of the Patent Law Association is strongly in favor of this bill. There has been a good deal of shock created from time to time when people have suddenly awakened to the fact that they could not buy a patent application with assurance that the inventor had not sold the subject matter once, twice, or three times before, where they had always assumed that the situation regarding patents applied to patent applications also.

I may say also that the trade-mark statute is in the same form in which this will be after amendment. In other words, we are merely assuring that the law regarding patents and trademarks will be the same. Some respectable authorities, including Mr. Ridsdale Ellis, who has written a recent book on assignments, are of the opinion that, if properly interpreted, the law as a present would be as we are expressly making it. In other words, we are merely avoiding the implications and uncertainties which exist in the present law.

The CHAIRMAN. Mr. Graves?

Mr. GRAVES. I have no further comments.

The CHAIRMAN. Mr. Semmes.

Mr. SEMMES. I have nothing further on this.
The CHAIRMAN. Mr. Fenning.

FURTHER STATEMENT OF KARL FENNING

Mr. FENNING. I would like to say one thing about the period of time. The Advisory Council in this report to you states that they have taken a vote among the council and they recommend that the period be reduced to 30 days. Let me say just a word on that.

The CHAIRMAN. In other words, you do not believe in one month, but you do believe in 30 days?

Mr. FENNING. They happen to have picked those particular words, and ordinarily if you have less than one month they generally would say 30 days, and I think the statute generally says that rather than 1 month. In February it gives you an extra day sometimes, and in some of the other months it takes a day away from you. The difficulty at the present time is this, even with respect to a patent after it is issued, a patent is purchased, and a careful attorney will not allow his client to make payment for the patent for 3 months, and he will not allow his client to proceed to operate under that patent for 3 months, because he must wait to see whether a fraudulent assignment is recorded in the meantime. Three months is an awful long time to wait at the present time. We can reach California in a couple of days by air mail now.

The CHAIRMAN. You can reach it overnight.

Mr. FENNING. Yes. It seems to me, and it has seemed to a good many of the profession for a good many years that 30 days is sufficiently long and the Council recommends that on page 2, line 3, "3 months" be changed to "30 days."

The CHAIRMAN. You recommend that it be changed to read "30 days" instead of "3 months."

Mr. FENNING. Yes, sir.

Mr. JACKSON. We are in favor of that, and that is also in line with the new amendments in most States in the land recording acts where the time period has been taken away entirely.

The CHAIRMAN. Mr. Church, do you have any questions?

Mr. CHURCH. No, sir.

(Thereupon the committee proceeded to the consideration of other business.)

The CHAIRMAN. We will proceed with the consideration of H. R. 8444.

(H. R. 8444 is as follows:)

[H. R. 8444, 76th Cong; 3d sess.]

A BILL To permit the assignee of an application for letters patent to make certain supplemental applications

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That section 4895 of the Revised Statutes (35 U. S. C. 44) be, and the same is hereby, amended to read as follows:

"Patents may be granted and issued or reissued to the assignee of the inventor or discoverer, but the assignment must first be entered of record in the Patent Office. And in all cases of an application by an assignee of record for the issue of a patent, the application shall be made and the specification sworn to by the inventor or discoverer unless the application is based entirely on matters for which