organized patent bar do almost all of the drafting, but the drafts were circulated among all the prominent patent lawyers and revised to conform to their desires.

Political scientists have often pointed out that it is incorrect to view congressional lawmaking as necessarily occurring in the context of various pressure groups fighting it out against one another. Very frequently there is only one pressure group in the field at a time, and it fights for what it wants but not against any particular interest-group opposition. While patent lawyers of course represent infringers as well as patent lawyers in court, the bulk of their services to clients consists of helping them obtain and defend the validity of patents. Quite naturally then they tend to identify the good with more patents rather than fewer, just as does the Patent Office for a different but parallel set of reasons. Thus the Patent Office and the patent bar comprise a powerful, "propatent" pressure group.

Because no group of lawyers and no government agency specializes in fighting against patents, and no particular segment of the business community is uniformly harmed by patents, there is no "antipatent" pressure group. The "antipatent" interest in this country is not specialized or concentrated, but consists only of the general interest shared by all citizens that their government not make a bad bargain for them when selling its stock of limited monopolies. Such amorphous interests are notoriously underrepresented in American politics precisely because no organized group and no specialized government agency speaks for them." Indeed, it makes considerable sense to view the Supreme Court's role in this area, as in some others," representation of widespread but unorganized public interests that are not adequately represented in the executive or legislative branches. This may be the major special reason justifying court intervention in this area of policy making.

as the

In any event the propatent forces had a free hand in writing the legislation unopposed by any countervailing group. Of course the congressman on the subcommittee, and then those on the full Judiciary Committee, all of them lawyers, but none particularly expert on patent matters, did review the draft. But they made few changes, and the Committee's report and "Revisor's Notes," which accompanied and explained the bill, were written by Frederico, either independently or in cooperation with the representatives of the patent bar. One of those representatives has proudly answered the question: "Who wrote the patent laws of 1952? We did."

The bill then had to proceed to the floor of the House where theoretically the whole membership considers it before exercising their legislative will. It was brought up on the unanimous-consent calendar, no one objected, and it was passed without debate; the whole proceedings taking perhaps thirty seconds. It then went to the Senate, where the Senate Judiciary Committee made only a few minor changes. The bill failed of unanimous consent on the floor of the Senate, one senator asking the chairman of the Judiciary Committe whether the bill was simply a new codification or made changes in the law, the chairman replying that it was simply a codification. The bill subsequently passed with no further debate.

There is little question that the general membership of Congress had no idea what it had enacted and was left with the impression that it didn't matter anyway, since the bill was simply a recodification of the previously existing law. The peculiar coincidence which started the whole process off had much to do with this. In a normal year, if a patent bill had been brought to the floor everyone would have assumed it meant some change in the existing law. Committees don't devote energy to bringing in new bills that do nothing. But in the year that Congress was re-enacting the whole U.S. Code, and from the subcommittee that was doing all the re-enactment, this bill must have appeared to most congressmen to be simply another in the stream of re-enactments. It would have taken an alert congressman indeed to remember, if he had even known such a minor thing in the first

The nearest approach in the patent field is the Antitrust Division of the Justice Department which is concerned with patents insofar as their manipulation contributes to violation of the antitrust laws, and quite significantly this agency is the only "antipatent" voice in Washington, besides the Supreme Court itself.

32 See Shapiro, Freedom of Speech, the Supreme Court and Judicial Review (1965).

place, that the subcommittee handling recodification of the whole body of law just happened to also be the subcommittee which had special jurisdiction over patents, and then put two and two together to conclude that this particular recodification might not therefore simply be a recodification but a new law. And even if such a congressman had existed, and he had then bothered to get a copy of the bill and read it carefully line by line, another minor miracle in and of itself since few congressmen have time to do this sort of thing, there are so few hints in the language of the statute that it is anything but a recodification. So much of it is precisely that, that only a superalert congressman, fully briefed by someone on what to look for, would have spotted any changes. There was no someone, because there was no antipatent interest group fighting the bill, and there was no superalert congressman.

LEGISLATIVE INTENT

I have not gone into all this just to illustrate the vagaries of Congress but rather to provide some concrete data on which to base a discussion of "legislative intent" which is frequently a key problem in administrativejudicial conflicts, and also because the specific question of whether Congress intended simply to codify previous law or pass new law becomes the principal vehicle for policy debate in the post 1952 period.

It is one of the small ironies of political studies that the principal source of information for our story of the writing of the patent law by an interest group composed of propatent lawyers and bureaucrats, and its consequent passage by a Congress totally unaware of what it was doing, is the reports of one of the drafters, a noted patent lawyer and leader of the propatent forces. And he makes his revelations in order to prove that the legislative intent of the 1952 laws is to liberalize the standard of invention not codify the old law. What he actually proves is that Congress in passing the legislation thought it was passing a simple codification.

33

Why then does this distinguished lawyer and judge think he is proving the opposite? The answer lies in the several different approaches to legislative intent that typically lead to conflict in the administrative-judicial sphere.

The lawyer almost instinctively treats a statute as a legal document like a contract. Its meaning is to be derived from its plain words, no matter what those who signed it actually intended. When its words are not entirely clear, one looks to the meaning that those who wrote the words intended them to have. The argument in the patent area then becomes clear. Precisely because Congress did not know what it was doing when it passed the statute, and precisely because the words of the statute are not themselves absolutely clear, the statute means whatever those who drafted it wanted it to mean. Since those who drafted it meant its words to reduce the standard of invention below that used by the Supreme Court, that is the meaning, i.e., the legislative intent, of the statute.

The legal conventions that grew up around the interpretation of contracts are based on a set of circumstances and considerations that are not necessarily applicable to the reading of statutes. Many administrators and judges today prefer not to pretend that a statute is like a contract, but, shifting to direct and realistic political analysis, to ask what did the Congress really want? This question leads to its own difficulties.

Frequently a statute consists of a set of verbal devices used to compromise between various conflicting interests and purposes rather than specifically furthering one interest. Congress in effect avoids choosing between the interests by using words that each can interpret as favorable to it. Indeed different congressmen may have voted for the bill for entirely different reasons, some taking the words one way and some another. Realistic political analysis lies not in trying to discover the "true" meaning of such a law, but in taking it as a command by the statute maker to its administrative and judicial subordinates to work out on their own initiative a compromise satisfactory to the interests at play.

Alternatively it may be discovered that Congress as a whole had no intention, in the sense that it was simply approving what one of its

33 See Rich, "Congressional Intent- -Or. Who Wrote the Patent Act of 1952?" in Patent Procurement and Exploitation 61-78 (1963).

committees had done, trusting its committee to have done the right thing. Most congressmen rely heavily on the judgment of the committees and their votes on a bill frequently mean: whatever the committee wanted, it should get. Where this is true judges and administrators will turn heavily to committee reports and statements of committee members as evidence of what the statute meant.

Even when congressmen wish to exercise an independent judgment, they will often make committee reports and committee members' statements the principal basis for those judgments. So here again realistic analysis will rely heavily on such materials to determine what the congressmen thought they were doing when they voted yes. For example when a committee report explains that a bill will do X, there is strong reason to believe that most of the congressmen voting for it wanted X done. The more technical and remote from their major concerns a given bill is, of course, the more reliance congressmen will place on committee information and consequently the more that information reveals what they thought they were getting when they voted aye.

Thus administrators and judges in determining legislative intent are likely to attempt to trace the actual process of decision making in Congress, giving great weight to those materials which give evidence of what the congressmen actually thought they were doing. Frequently such analysis will lead to the conclusion that Congress collectively had no single purpose and that a law was passed by a coalition of congressmen each wanting different things. Since there is no unified legislative intent in such instances, the administrator or judge is free to do indeed has to do what he pleases within the broad limits set by the coalition. He will, of course, then pick and choose among the materials of the legislative history to support his own decision. Such picking and choosing, emphasizing one senator's statement, ignoring another's, etc., will often appear to be an artificial and hypocritical game, but the game does not alter the fact that where different elements of a winning congressional coalition wanted different things out of a bill, or did not know what they wanted, judges and administrators are not only entitled but forced to choose one thing or another when it comes to specific enforcement.

The patent laws of 1952, however, offer a relatively rare, clear situation that neatly dramatizes many of these problems. We know what the drafters wanted-to undercut the Supreme Court. Here and there in the committee reports and other committee publications there are hints, quite obviously put there precisely so that they could later be used as "legislative history", that the bill did more than codify existing law. But it is absolutely clear, and indeed no one has questioned the fact, that, when the Congress voted, what it thought it was voting on and, therefore, what it said it wanted, was a simple codification. Only the most fantastically legalistic and artificial analysis, devoid of all commitment to political reality, could conclude that the legislative intent was what the drafters secretly wanted and, as we shall see shortly, expressed in deliberately ambiguous language, rather than what the Congress clearly thought it was doing.

What then did the new statute accomplish? The propatent forces had done what many interest groups do when they lose with one set of politicians; they tried another, Congress. But the propatent forces anticipated that if they tried to get Congress to explicitly reverse the Supreme Court's opinions of the late 1930s and 1940s, they might run into substantial opposition. Posing the real issue openly might have provided the stimulus, time and opportunity for antipatent forces to rally and counterpressure Congress. Instead the propatent forces exploited a tactical advantage to slip by an unaware Congress a statute too ambiguous to inspire opposition but one that might subsequently be used to help lever the Supreme Court out of its position. In adopting this tactic, however, the propatent forces paid a very high price to avoid opposition in Congress. They ended up with a statute that did not clearly show a congressional intent to reverse the Supreme Court and thus one that could not be a very effective instrument in forcing the Court out of its position.

For not only did the actual circumstances of the act's passage make it clear that Congress as a whole had simply intended to codify in 1952 whatever

the law had been in 1951, without even being aware of a difference between the Patent Office and the Supreme Court, let alone settling it on the side of the Office, but the wording of the statute itself was meaningless as far as the court-agency dispute was concerned. The key passage reads:

"A patent may not be obtained though the invention is not identically disclosed or described... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." "

This is simply a legislative restatement of the Hotchkiss test. The Supreme Court had consistently said that it was following the Hotchkiss test in reaching the results it did. The statute does not say that Cuno and A.&P. were misapplications of the test. If a statute repeats a judicially created test that has been used continuously, it is normally taken to incorporate into the statutory law the case law that has grown up under the test. Thus the statute of 1952 in this sense actually approves and confirms the Supreme Court opinions in Cuno and A.&P. In short if a statute says we affirm the test that the Supreme Court says it has been using, without specifically condemning he Supreme Court's results in applying the test, Congress is declaring its approval of whatever the Supreme Court has been doing.

On the other hand, it can be argued that the Supreme Court had really abandoned the good old test of Hotchkiss for a strongly antipatent position, so that when Congress writes the Hotchkiss test into the statute, it is really telling the Court to go back to the old propatent position. Aside from the fact that Congress wasn't telling the Court anything because it didn't even know what was going on, the difficulty with this argument is that it simply assumes what is to be proven, that the Court has really abandoned an old propatent policy embodied in Hotchkiss and that when anyone says the Hotchkiss words they really mean a low standard of invention.

Mr. BRENNAN. We have another former Commissioner, Mr. Chairman, former Commissioner Edward J. Brenner.

Senator HART. Before you start, I have a feeling we are going to be interrupted by a vote. You may begin.

Mr. BRENNAN. Mr. Brenner, you have a prepared statement. I assume you wish to have it printed in full at this point in the record? Mr. BRENNER. Yes, I would propose that it be printed in the record and for me to highlight the different points in my prepared state

ment.

Mr. BRENNAN. Fine.

[The prepared statement of Mr. Brenner follows:]

STATEMENT OF EDWARD J. BRENNER

I appreciate very much being afforded the opportunity to testify before this Subcommittee on the subject of the general revision of the patent law, Title 35. My testimony today is based upon my overall experience in the fields of invention, innovation and patents including in particular the five years I served as United States Commissioner of Patents. However, my testimony also reflects my experience in corporate patent work in a very large company and a medium sized company and my experience in the private practice of patent law working with independent inventors and small companies as well as my experience of serving as Executive Director of the Association for the Advancement of Invention and Innovation.

As you know, the subject of general revision of the patent laws of the United States has been under active consideration now for nearly a decade. I hope that it will be possible to enact a meaningful revision of these laws during this Congress, which will strengthen the patent system, preserve the exclusive nature of the patent grant and increase the incentives for carrying out invention and innovation in our country. My comments today will be made in light of these objectives which are essential to achieving the

34 35 U.S.C. Sec. 103 (1964).

Constitutional objective of the patent system, namely to promote the progress of the useful arts for the public benefit. In accordance with the notice published in connection with these hearings my remarks will be confined to the five specific subjects listed in this notice.

PUBLIC ADVERSARY HEARINGS

As a member of the President's Commission on the Patent System during 1965-1966, I can report that the Commission gave long and careful consideration to the subject of public adversary hearings, such as the opposition or revocation proceedings which are provided in certain foreign countries. The Commission in its final report, however, recommended, in effect, against adopting such full scale adversary proceedings based on experience in other countries which resulted in harrassment of applicants and patentees, long delays in the issuance of patents and costly and time-consuming proceedings for all parties concerned. Rather, the Commission recommended in Recommendation XI a procedure which they believed would produce the same substantive results for improving the validity of patents, but which would eliminate the abuses and problems experienced in the adversary proceedings in certain foreign countries. The recommended procedure involved placing the Patent Office in the position where it could review the prior art called to the attention of the Office by third parties so that they could decide whether there was sufficient merit in the third party's case that examination of the patent application should be re-opened.

Thus. I support the approach set forth in S. 643 (Committee Print) approved by this Subcommittee in the last Congress since I believe the procedure set forth in Sections 191 and 192 thereof would produce essentially the same advantage as would be obtained under Section 135 of S. 1321, and at the same time eliminate the disadvantages of adversary proceedings as experienced in certain foreign countries.

As I recall the situation, the Administration's patent revision bill in 1967 adopted the basic approach of the Commission on this subject, but with several administrative changes. For example, the procedure was changed so that the re-examination would be given to patents rather than applications as a result of a cost study carried out by the Patent Office. This study showed that millions of dollars involved in printing, filing, classifying and searching, in effect. two separate sets of patent documents could be saved by applying the procedure to patents rather than applications. Further, it was felt that there would be little, if any, substantive change in the effectiveness of the basic proceeding if it were applied only to patents.

S. 1321 provides that the Primary Examiner would handle the examination or re-examination of patent application under Section 135. I would strongly recommend that any legislation directed to this objective give the Commissioner of Patents the authority and flexibility of deciding upon the optimum procedure for such proceeding. Thus, there is one point of view that it might be better to have a qualified person other than the Primary Examiner who originally handled the case, review the new information to decide whether examination of the case should be re-opened since the original Primary Examiner might have a subconscious bias against reversing his original decision.

Hence, the Patent Office has considered the possibility of establishing a separate office for re-examination review. Another possibility considered was to have a three person panel review the new information which would include the original Primary Examiner and two other qualified people. In addition, the type of procedure employed might depend upon the number of requests for re-examination. Thus, the procedure established might be different if 1%, or alternatively 10%, of the cases were to become involved in the procedure. The optimum administrative procedure could however, only be determined by actual experience. Therefore, it is believed it would be best to leave these matters to the Commissioner to determine on an administrative basis.

OFFICE OF PUBLIC COUNSEL

I am opposed to the proposal of establishing a position of Public Counsel in the Patent Office for a number of reasons, although I strongly support