WILLIAM STEELL JACKSON & SON, Re H. R. 8444. COMMITTEE ON PATENTS, House of Representatives, Washington, D. C. GENTLEMEN: The legislative and judicial committee of the Philadelphia Patent Law Association has considered this bill dealing with the right of an assignee of an application to make certain supplemental applications. We have gone on record as favorable to this bill. There are some cases where an inventor arbitrarily or dishonestly attempts to prevent obtaining of proper protection on an invention which he has assigned by declining to execute a necessary continuation or reissue application. We accordingly urge you to report favorably on this bill. Very truly, JOSEPH GRAY JACKSON, Legislative and Judicial Committee, Philadelphia Patent Law Association. WILLIAM STEELL JACKSON & SON, Re H. R. 9616, to prohibit proof of acts done by an inventor in foreign countries, Hon. CHARLES KRAMER, Chairman, Committee on Patents, House of Representatives, Washington, D. C. ` DEAR REPRESENTATIVE KRAMER: The legislative committee of the Philadelphia Patent Law Association has given careful consideration to H. R. 9616. We are unanimously in favor of this bill and urge that it be passed. Heretofore, an anomalous situation has existed, by which acts done in a foreign country might be proved in some cases and not in other cases. It is desirable that the practice be uniform and that the complexity, expense, and possibility of fraud incident to proof of acts done in foreign countries, be avoided. Respectfully submitted. HON. CHARLES KRAMER, Chairman, Committee on Patents, JOSEPH GRAY JACKSON, Chairman Legislative Committee, Philadelphia Patent Law Association. GLEASON Works, Rochester, N. Y., May 4, 1940. House of Representatives, Washington, D. C. MY DEAR CONGRESSMAN KRAMER: I have your letter of April 27 and appreciate very much your informing me about the hearing to be held on May 9 on H. R. 8441, H. R. 8442, and H. R. 8444. I do not desire to testify on these measures. I have taken the various bills up, however, with our Rochester patent group, and we have discussed them at a special meeting called for the purpose. I have been asked to convey to you the sentiments of our meeting. We are not opposed to enactment of H. R. 8441, which proposes to apply to the recording of assignments of patent applications, the 3-month rule which now applies to the recording of assignments of patents. We are not opposed to enactment of H. R. 8442, which prohibits proof of acts done by an inventor in foreign countries. We favor enactment of H. R. 8444, which permits the assignee of record to file divisional and reissue applications for patent. Yours very truly, ROCHESTER PATENT GROUP, Raymond E. Bohrer, Edward H. Cumpston, Gerhard A. Ellestad, By B. E. SHLESINGER, Chairman. WESTERN PRECIPITATION CORPORATION, CHARLES KRamer, Committee on Patents, Washington, D. C. MY DEAR MR. KRAMER: I acknowledge with thanks your letter of April 27, advising me of the hearing to be held on May 9 on bills H. R. 8441, H. R. 8442, and H. R. 8444. Your, of course, have the recommendations from the National Advisory Council, with reference to these three bills, and I prefer not to make any statement as an individual member of that council. As chairman of the patent committee of the American Chemical Society, I have submitted these three bills to all members of the committee, and this committed is sending its recommendations to Dr. Charles L. Parsons, secretary of the society, Mills Building, Washington, D. C., who will probably communicate these recommendations to you. Strictly as an individual, I express my personal opinion, which is in favor of the passage of all three bills with the amendment of H. R. 8441 suggested by the National Advisory Council, namely, that the period for recording assignments be reduced to 30 days instead of the suggested 3 months. I believe that all three bills, if enacted into law, will constitute constructive improvement to our patent statutes. As I will be in Los Angeles next week, it will be impossible to attend the hearing on April 9. Very sincerely, WALTER A. SCHMIDT. SOANS, POND & ANDERSON, Mr. CHARLES KRAMER, Chairman, Patents Committee, House of Representatives, Washington, D. C. DEAR MR. KRAMER: I am informed that, through your kind offices, there have been introduced into Congress certain bills relating to patents, identified as H. R. 8441, 2, 3, and 4. As I take a great interest in the affairs and acts of the American Bar Association pertaining to patents, and make it a point to attend all of the sessions of the patent section, I am quite familiar with the subject matter of these bills. In my opinion all four bills, if passed, will prove to be of substantial benefit to inventors and those having to do with patents. I trust that your committee will report favorably upon all of them. With best wishes, I am Yours very truly, Hon. CHARLES KRAMER, Chairman, Patent Committee, C. A. SOANS. WILLIAMSON & WALTON, Washington, D. C., April 11, 1940. House Office Building, Washington, D. C. DEAR SIR: We are informed that hearings set for April 10 and 11 on four bills affecting the patent laws of the United States initiated by the American Bar Association have been indefinitely postponed. One of these bills is H. R. 8442, amending section 4886 of the Revised Statutes of the United States. It appears that the entire patent bar is interested in this bill because of the decision of the Supreme Court of the United States in the Shimaduz case.1 This decision points out a defect in our patent laws which gives foreign inventors, who are patentees of United States patents or who are applicants before the United States Patent Office, greater rights than those enjoyed by domestic inventors or citizens of the United States under our own patent laws. Therefore, consideration and ultimate passage of H. R. 8442 should not be delayed as there are a great number of pending cases which are affected by the present status of the law. It is believed that there is no bona fide objection to 1 Electric Storage Battery Co. v. Shimadzu (307 U. S. 5). the present bill and that most patent lawyers are anxiously awaiting its passage. Therefore, it is respectfully requested that your committee give as early consideration to the matter as may be possible. Very truly yours, EDW. R. WALTON, Jr. WATSON, COLE, GRINDLE & WATSON, Re proposed amendments to Patent Laws H. R. 8441, H. R. 8442, and H. R. 8444. United States House of Representatives, Washington, D. C. MY DEAR MR. KRAMER: I thank you for your letter of April 27, advising that the Committee on Patents of the House of Representatives would conduct a hearing Thursday, May 9, for the purpose of receiving testimony in support of or against the several bills, the numbers of which are set forth above. These three bills, as you undoubtedly know, originated in the patent section of the American Bar Association and express the desire of that group to more fully safeguard the rights of inventors, patentees, and purchasers and exploiters of patent rights. Probably the great majority of those actively interested in patents are in favor of the enactment of these bills, or other bills of the same import, into law. At least I have heard no criticism of H. R. 8441 and H. R. 8442, and hope that these two bills will eventually be passed without amendment. * With respect to H. R. 8444. This bill may possibly be criticized because of certain language used to define the inventive subject matter which an assignee may patent without the cooperation of the inventor. Thus, in accordance with the terms of the bill as written, the assignee may, in any application which he may himself file, claim only matters "for which the inventor has previously solicited a patent." The phrase quoted was extracted bodily from section 4892, which requires the inventor himself upon filing an application to make oath that he believes himself to be "* * * the original and first inventor or discoverer of the art, machine, manufacture, composition, or improvement, or of the variety of plant, for which he solicits a patent; * * "" Therefore, the assignee, if the bill becomes law, will be authorized to apply for a patent for matter which the inventor originally swore to be his own invention, but for no other matter (such, for instance, as matter which might have been included in the disclosure of an application or patent merely for the purpose of more clearly indicating the exact nature of the invention which the inventor is really seeking to protect). Perhaps, for the quoted phrase, other and simpler language may be substituted, but it would appear to be desirable, if this be done, to at the same time amend section 4892 to include the same language in order to make it quite clear that the assignee has stepped into the inventor's shoes and has no greater, or no less, right to apply for a patent than had the inventor. I hope that the bill will be found acceptable, if not as written, in such amended form that its objectives will be realized. I will nor testify at the hearing. ROBERT C. WATSON. Re Bills set for Hearing on May 9. COMMITTEE ON PATENTS, WASHINGTON, D. C., May 6, 1940. House of Representatives, Washington, D. C. (Attention Chairman of the Committee.) GENTLEMEN: In connection with the three bills on which hearings are scheduled to be held about May 9, I desire to record my approval of these bills in writing, inasmuch as I will be unable to be present and urge their adoption in person. H. R. 8442, I understand, has been superseded by H. R. 9616 and the substitute bill adds a second section which prevents the act, if passed, becoming retroactive. I heartily approve bill 9616 and urge its adoption. These bills-8442 and the substitute bill 9616-are of course introduced as a result of the recent Supreme Court decision in what is known as the "Shimadzu That decision was strictly in accordance with the Patent Statutes, but I see no reason why we should, in this country, give any weight to acts done by an inventor in a foreign country. The foreign countries pay no attention to acts case. done outside of their own borders and it is merely enacting reciprocal legislation to pass this measure. H. R. 8441 also should be adopted, and as speedily as possible. This bill corrects an apparent oversight in the patent statutes (sec. 4898) as they now stand. The trade-mark statute, it will be noted, specifies that if an instrument affecting the title to a trade-mark is acknowledged, then such acknowledged instrument is prima facie evidence of its execution. The present bill proposes to make the same provision with regard to instruments affecting titles to patents and, therefore, should also be speedily enacted into law. I am in favor of H. R. 8444 because, frankly, I see no reason why an assignee should not be permitted to secure complete patent protection on any invention which the inventor has already previously assigned to him in toto. Under the present practice, an inventor makes an assignment of his entire right, title, and interest and later when the assignee finds it necessary to secure complete protection-that a divisional application or reissue becomes desirable-the inventor in person must sign the new papers and before doing so, usually demands additional compensation before executing the necessary document. Respectfully, E. F. WENDEROTH. WHEELER, WHEELER & WHEELER, Mr. CHARLES KRAMER, United States House of Representatives, Washington, D. C. DEAR MR. KRAMER: I very much appreciate your courtesy in notifying me of the hearings to be held by your committee April 10 and 11, and particularly appreciate the receipt of copies of H. R. 8441-8444. I regret that I shall not be able to be present, as I have a case to try at that time. You may be interested to know that the Milwaukee Patent Law Association is an active organization, which takes a serious interest in pending litigation affecting patents and trade-marks and copyrights, and that at our last meeting we considered these bills, with a report on each bill followed by discussion and a vote. I believe that the action of the association is to be communicated to you by the secretary. For myself I wish to state that I approve H. R. 8441 and H. R. 8442; I disapprove H. R. 8443; and approve H. R. 8444 in principle, provided the subject matter in parentheses on the second page, lines 5 to 9, be deleted. There would be no advantage in permitting an assignee to make application for reissue if the inventor would still be obliged to sign the corrected specification. Thank you for this opportunity to express my opinion. Cordially, S. L. WHEELER. WILLIAMS, RICH & MORSE, Hon. CHARLES KRAMER, Chairman, Committee on Patents, House Office Building, Washington, D. C. DEAR MR. KRAMER: I thank you for the notice of the hearings before your committee on bills H. R. 8441, 8442, 8443, 8444. I have given careful consideration to these bills. H. R. 8441 amends section 4898 of the Revised Statutes (35 U. S. C. 47) by providing that a certificate of acknowledgment of an assignment of a patent or application for a patent shall be prima facie evidence of execution of such assignment. The important amendment here is to include an application for a patent as well as a patent as the proper subject for an assignment. In one respect, however, the law should be amended. Section 4892 of the Revised Statutes provides that the oath required in an application for a patent “may be made before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any minister, charge d'affaires, consul, or commercial agent holding commission under the Government of the United States, or before any notary public, judge, or magistrate having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by certificate of a diplomatic or consular officer of the United States." The applicant frequently signs an assignment at the same time that he signs and swears to his patent application. Therefore, the acknowledgment of the assignment should be made before the same officer and should be prima facie evidence of the execution of such assignment. The proposed amendment follows the present law as to the acknowledgment of an assignment and excludes "any.notary public, judge, or magistrate having an official seal and authorized to administer oaths in the foreign country in which the applicant may be." There should be uniformity in the provisions for the oath of an applicant and the acknowledgment of the assignment of the application. This inconsistency has existed for some time and has frequently resulted in the acknowledgment of an assignment before a foreign notary public which does not have the effect of presumptive evidence of execution of the assignment. H. R. 8442 excludes evidence of conception and reduction of practice abroad as available to an applicant for a patent, except in the case where under the provisions of the international convention an application for a patent for the same invention or discovery abroad is entitled to have the same force and effect as it would have had if filed in this country on the date on which it was filed in such foreign country. This is made necessary by decision of the United States Supreme Court in Electric Storage Battery Co. v. Shimadzu, which held that, although in an interference between applicants, the domestic applicant shall have priority despite earlier foreign knowledge and use of the invention, nevertheless in a proceeding in court the foreign inventor is entitled to prove knowledge and use of the invention abroad as anticipative of the American inventor. The bill is satisfactory and cures an error in the patent laws. H. R. 8443 amends the present law under section 487 of the Revised Statutes (35 U. S. C. 11) by giving the Commissioner of Patents the power to prescribe rules and regulations as to the professional conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office, and also amends the present law by inserting the word "unjustifiably" on page 2, line 14. This is a desirable amendment to the law. H. R. 8444 provides in harmony with the proposed amendment of H. R. 9386, that an application based entirely on matters for which the inventor has previously solicited a patent may be made by the assignee of record of the entire interest, and that an application for reissue may be sworn to by the inventor only with written approval of the assignee or such application may be made and sworn to by the assignee. There is inserted in parentheses in this bill on page 2, lines 5 to 9, a part of the original law which should be omitted. Except for this error the bill is satisfactory. I shall not be able to attend the hearing tomorrow. I am therefore sending you this brief outline of my attitude on these bills. Sincerely yours, HENRY D. WILLIAMS. Hon. CHARLES KRAMER, THE BOSTON PATENT LAW ASSOCIATION, Chairman, Committee on Patents, House of Representatives, Washington, D. C. MY DEAR MR. KRAMER: I have received from you notice that the Committee on Patents of which you are chairman will hold a hearing on Thursday, May 16, 1940, on H. R. bills 9384, 9386, and 9388. The executive committee of our association has considered each of these bills and approves and supports them. H. R. 9384 is generally similar to a bill approved by the American Bar Association at its annual meeting in Cleveland, Ohio, in 1938 upon the recommendation of the patent section. The only valid reason for the existence in the patent law of disclaimer provisions was because the courts have held that if even one claim of a patent is invalid, the entire patent becomes invalid. The present bill removes the need for a disclaimer by abolishing this rule of law. The present statutes provide ample means for amending a patent after its issuance whenever necessary by application for reissue. Under the provisions of the present disclaimer statutes, the practice has grown up of amending patents which is unfair to the public and often to competitors of the inventor. If a patent is to be amended after it is granted, it should only so be amended after the careful consideration thereof provided by a reissue application. |