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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 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 nosition. 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.” 84

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 statement.

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 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.

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


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 emploved 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 horrever, only be determined by actual experience. Therefore, it is believed it would be best to leave these matters to the Commissioner to determine on administrative basis.



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


the basic objective of this proposal, namely, to enhance the validity of issued patents. My reasons for opposing this proposal are that I believe that it would create substantial administrative problems, that it would not accomplish its intended purpose and that there are alternative ways to spend the resources that would be involved which would better accomplish the objectives of this proposal.

In my judgment, the present Examiners in the Patent Office are in much better position, based on education and experience, to handle the examination of patent applications than would be any member of the staff of a Public Counsel. In addition, the present Primary Examiners are each a specialist in their particular field of technology and are much better trained to find and evaluate pertinent prior art than any generalist from any Public Counsel office. The present Examining Corps is dedicated to the twin principles that they are responsible for issuing patents on patentable inventions and refusing patents on unpatentable inventions which are the fundamental objectives of the patent laws of the United States. I firmly believe that it would be a grave mistake to delegate this important responsibility to less qualified individuals.

In my view, the key to improving the quality of examination in the United States Patent Office and narrowing the ga') with respect to the review in the Federal Courts in litigation is to brip : before the Examiner more pertinent information than is now available to him. At the present time, steps are underway to improve the Examiners' search files with respect to foreign patents and non-patent publications. In addition, the proposed re-examination procedure of patents should make available to the Patent Office prior art in unpublished form, such as public use or sale of an invention. Such prior art, if considered pertinent to the question of validity, would in fact be considered in an adversary proceeding. Thus, these new procedures should considerably enhance the validity of issued patents. In addition, it is recommended that the Patent Office should expand its efforts directed toward obtaining a better understanding of the quality of patent examination in order to aid it to evaluate steps that might be taken to further improve the effectiveness of their examination.



The Presidential Commission on the Patent System also considered in great detail the question of deferred examination of patent applications. The Commission concluded that it clearly favored a high quality examination system if it could be maintained without a constantly increasing backlog.

The subject of deferred examination systems arose in the early 1960's when the examination system in the Netherlands, Germany and the United States

struggling with increasing backlogs of unexamined patent applications and resultant delays in issuing patents. During this period, and under my direction, the United States Patent Office conducted studies directed toward evaluating the costs and benefits of various types of deferred examination systems in the United States. The general conclusions that were developed from these studies were the following: (1) The advantages and disadvantages of deferred examination were about a standoff in terms of the Patent Office budget; thus, although there would be savings in examination effort, these savings would be about off-set by increased printing costs and effort required to process, file, classify and search the increased number of patent documents, and (2) deferred examination would therefore only be justified if it were not otherwise possible to prevent increasing backlogs and delays in issuing patents. As a result of the streamlined examining program adopted in the 1960's and other related programs, the backlog of pending patent applications in the U.S. Patent Office has been substantially reduced. As a result, the period of pendency of patent applications has been substantially reduced toward the Patent Office goal of 18 months.

With regard to the cost impact of a deferred examination system on the private sector of the economy, I doubt that there would be any significant savings, if any, based upon my personal experience. Thus, the greatest share of the cost of obtaining a patent is involved in preparing and filing a patent

application. While it is true that the cost of prosecuting a certain percentage of filed applications could be saved, I believe that this would be perhaps more than off-set by (1) the greater cost of patent searching due to an increased volume of prior art to search (2) the greater volume of patent documents which would have to be processed and (3) the greater number of patent studies required to evaluate scope and validity of the large number of unexamined patent documents which would present current or future infringement questions.

Thus, in my opinion, a deferred examination system is distinctly a step backward with regard to trying to maintain a high degree of certainty with regard to validity and scope of patent protection. Thus, we should not overlook the great contribution the U.S. Patent Office makes to the effectiveness of operation of the system. More particularly, about 30% of the patent applications filed are not issued as patents because the inventions are not patentable. With regard to the remaining 70% of the applications, in most of them the original broad claims are limited during the examination to a more reasonable scope with respect to the patentable contribution involved.

Based on first hand experience with their deferred examination systems, it is understood that the European countries are recommending basically a full search and examination system for the proposed new European patent system. Therefore, in view of the European experience coupled with the fact that the U.S. patent examination system is rapidly approaching a pendency of 18 months, it is suggested that it would not be in the interest of the country to adopt a deferred examination system.

During my term as Commissioner, the Patent Office instituted a new program known as the Defensive Publication Program under which an applicant could elect to have the examination of his patent application, in effect, deferred for 24 years. It was anticipated that perhaps several thousand applicants per year would elect to enter the program and thus the Patent Office would save a corresponding examining effort. In practice, however, only a few hundred applicants elected to enter the program each Tear. Nevertheless, the program to the extent it has been utilized has been apparently highly successful from the standpoint of patent applicants and the Patent Office since, so far as is known, none of the applicants have requested examination of their applications. Therefore, perhaps the program should be strengthened such as, for example, by affording a patent application laid open to public inspection under the Defensive Publication Program the same status under Section 102(e) as in the case of a granted patent.


PATENT FEES—MAINTENANCE FEES During my term as Commissioner, the Patent Office also initiated detailed study of Patent Office operations in relation to Patent Office budgets and fees. Basically, this study concluded that: (1) certain Patent Office operations are conducted primarily for the benefit of the party requesting a particular service such the procedural handling involved in the filing of patent applications and issuance of patents; (2) certain Patent Office operations are conducted for the benefit of patent applicants and the public jointly such as the examination of patent applications ; (3) certain Patent Office operations are conducted primarily for the benefit of the public, such as the printing of patents and the maintenance of a Patent Search Center for the public; and (4) the Patent Office should be authorized to have a revolving fund for financing on a full cost recovery basis a variety of special user services. Overall the study indicated at the time of the study that such an approach to relating Patent Office fees to costs would recover about one-half of total costs. In my judgment, an approach to setting Patent Office fees along these lines is a better way to handle the matter as compared with “picking a number out of the hat" such as simply saying Patent Office fees should recover say 65 to 75% of costs.

On the basis of the aforementioned Patent Office study, perhaps only a relatively modest increase in Patent Office fees would be required. In this case, I would not propose instituting a system of maintenance fees. How

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