into the prior art and has not the slightest idea as to the economic impact of the disclosure, before him, on industry.

The standard of invention is notoriously low, in view of the statistics relating to the invalidating of patents by the courts. Now, an invalid patent is analogous to weeds in the presence of a nice lawn. An effort to grow a lawn and an effort to encourage worthwhile inventions are handicapped by the presence of weeds and by the presence of marginal patents. In agriculture, growth is often achieved by judicious pruning, and the same would be applicable to the U.S. Patent Office.

We are not going to get any radical improvement in the quality of the examination by simple duplication of effort. The problem is to enlist the affirmative aid of industry and enlist the affirmative aid of the knowledgeable attorneys in the examination process. Let us bring to bear the aggregate of knowledge, pertaining to prior art, to a reasonable extent on the examination, not of every tidbit invention, but on every worthwhile advance. Let us concentrate selectively on the advances.

Now, then, how are we going to do this? First, we have to make up our minds that this is an objective that we seek. I have yet to see the Patent Office or the patent bar direct itself, as a primary objective, to the aim of the elimination of the chaff that exists in the work product of the Patent Office. The rationalization seems to be: I have to file this patent application because the client wants it. If I do not file the patent application, some other patent attorney will.

The analogue is somewhat related to domestic relations cases. Some lawyers justify taking a domestic relations case without investigation on the basis that if they do not, another attorney will.

Now, some patent applications are filed because, if the filer does not take the case, some other patent attorney will; some are filed to humor superior executives, senior engineers; some are filed for purely defensive purposes. That is widesprad in the military. I daresay the primary motive for the thousands of patent applications that are filed on behalf of the military establishment each year, at least hundreds-I daresay that the primary motive is to safeguard latitude to make and use and otherwise practice an invention. The military establishment does not care what the scope of the received claims might be; any old claim will do.

We patent lawyers are tuned to understand each other. And when we look at the Gazette and see a one-claim patent in the Gazette, we often say to ourselves: From much coming, the examiner doth weary, and he issueth a patent with one claim and a red button that does nobody any harm.

That is a far cry from an incentive that we are offering to an inventor to promote, to induce, to persuade him to put his good ideas on the table, to come up with good ideas, to come up with great innovations, to help put our country on top technologically. It is a far cry from that ideal and is down to the bottom of the scale, when we say that this one-claim patent is not going to hurt anybody.

So that we need to dedicate ourselves to the objective of putting the best ideas on the table, getting them into the Patent Office, and

discouraging the chaff, discouraging the weeds, and doing the right amount of pruning.

Now, stage 1, the patent bar can do some pruning on its own. At this point, the Public Counsel principle is an excellent one. I would suggest that the Office of Public Counsel be treated as separate and distinct from the Office of Solicitor. The usual procedure now is for the Solicitor of the Patent Office to appear before the courts to oppose the issuance of patents that he considers to lack invention.

Now, these cases generally involve the issue of invention vel nonbased on the prior art on the record. Now, the Solicitor's office is eminently competent to perform that function, and it should be maintained.

But the issue of invention vel non, which is a give and take issue, is not the only one that is before the Patent Office. Many issues are before the Patent Office, but they are really hidden. Is the best art on the record? Is this patent application affected by public use? Is this patent application affected by some other bar?

These things prompt inquiry on behalf of the public. Who is going to perform that function? That is the job of the Public Counsel. There is no need whatsoever to double the examining corps of the Patent Office. The Public Counsel can have the same type of influence on the administration of patents in general as a lovely, charming lady in the classroom does. She keeps the boys on their good manners; they dress up and behave themselves.

By the same token, the presence of the Public Counsel making an occasional spot check, looking into cases of complaint, looking into cases that have obviously a great impact on the economy, looking into suspicious cases, making spot checks-his very presence is going to greatly elevate the candor with which patent applications are prosecuted.

That is particularly the case when, in addition to the charming young lady in the classroom, statutory standards of conduct are coupled with the existence of the Public Counsel, with the requirement of a citation of art and the requirement of a brief of patentability, and the probability is that most of the pertinent facts will come before the Patent Office is much higher than in this climate of unilateral prosecution that we classicially have.

Senator HART. At that point, Mr. Hogan, let me get over for another vote. I will be back in about 10 minutes.

[A brief recess was taken.]

Senator HART. We can proceed.

Mr. HOGAN. Senator Hart and counsel, I will be brief because we are waiting to hear from Mr. Pederson. We need to take heed of the fact that at one time our statute said that "the Commissioner of Patents shall issue a patent on the disclosure if it be sufficiently important." It is regrettable that those words "sufficiently important" were taken out of the statute.

The German patent office has an attitude that we American patent attorneys occasionally run into. One of the gentleman before this committee made the statement-I believe it was Mr. Irons-that if anything were novel a patent attorney can get a patent on it in this country.

That statement might be modified slightly, but it is pretty generally the case. The statutory requirements are novelty and nonobviousness or inventiveness; but it comes pretty close to being the fact that the prospects of an able advocate obtaining a patent on a disclosure that is characterized by novelty only are pretty inviting. I would be willing to put my money on the patent attorney to succeed rather than to fail-to succeed many more times than to fail. The German patent office confronts that approach with their reaction: "Everything that you say, counsel, about the red button and the remarkable accomplishments, and this thing being painted blue, might be true, but we are not going to give you a patent on it. It is beneath our standards." We can profit by emulating the attitude of the German patent office in that respect.

Now then, the public adversary hearing is going to bring out the views of industry on the patentability of certain patent applications. I would advocate that a patent application not be laid open for any kind of opposition or any kind of public adversary hearings until it is in an allowed state. I would advocate that the patent application not be published until it is in an allowed state, and that a considerable time elapse between the filing and the publication.

I would advocate that the reexamination be confined to simply the reference material and the arguments that were turned up on the applicant's prosecution without giving the adversary or the opponent an opportunity to appear, make a trial out of it, or make arguments.

I think that if we are going to make trials in the Patent Office, it would be too much of a burden on the inventor in the ordinary case. An exception might be made if, in the opinion of the public counsel, irregularities are appearing, or the importance of the case is such as to justify calling in the adversary and opening up a wholly adversary proceeding.

Now then, on this matter it is a serious defect of opposition proceedings that they are often brought as a matter of course in foreign countries. Some companies know that every time they file an application in certain foreign countries, the competitor will automatically oppose, whether in good faith or not. Certainly, it is not desirable to open up to that type of opposition.

The opportunity for the public to be heard, to submit data, to be considered ex parte by the examiner, that is fine. In an exceptional case, to have a public counsel call in the adversary to participate, so much the better.

Now then, the case for deferred examination has been argued against on the theory that we do not need it here. There is no need to defer anything. We are up to date. Well, what are we up to date with? We are up to date with a poor, with an inadequate quality of examination.

The foreign art has not adequately been looked into. It is not adequately classified. I was a patent examiner. I did not know the first thing about making a literature search until I got a Master's degree in history, years after I finished working in the Patent Office. The average examiner does not make a literature search; he does not

know how. So that the quality of the search in the Patent Office is not adequate.

Why is it inadequate? It is inadequate because the examiner is overburdened, and he is on a quota system, because he is examining the chaff as well as the wheat.

The value of deferred examination would be that it would put the wheat before the examiner for examination, and it would temporarily put the chaff in storage where it belongs.

As to maintenance fees I am afraid, gentlemen, I am dated; Congressional Medal of Honor winners do not pay costs of administration; Nobel Prize winners do not pay costs of administration. 'Even if the patent system is not serving its real objectives in an entirely approved way, it is serving them generally. A patent of real benefit to the economy justly deserves an award or prize. This country badly needs the Patent Office, whatever it costs. The costs are a drop in the bucket compared to the advantages that the patent system, even as it is now, is bringing.

Now, with a proper scheme of examination and a minimizing of the chaff that is cluttering up the courts in patent litigation and constituting a briar patch for productive industry, the cost of the Patent Office would be a very minute consideration compared to the benefits.

I would advocate, if money has to be derived any place, that it be derived from final fees because at that time the man has the prize in front of him, he has run the race; a few hundred dollars does not hurt him so badly.

The Patent Office should be an independent agency. Its function is one of those specifically enumerated in the Constitution. We have, I believe Commissioner Watson stated that we had something like 40 independent agencies.

Certainly the patent function in this day and age when we are being seriously threatened as to economic supremacy and technical leadership by the Soviets, and by Japan, and by West Germany, and others certainly, the performance of this function is one of the very highest dignity.

The Patent Office is not a place for a social experiment. It is not a place for pushing treaties before getting the patent system improved domestically. It is no place for rapid turnover. The patent system ought to be separated out from the Department of Commerce and put on its own. Certainly, the specifically enumerated constitutional function, from the very beginning, deserves no less.

Thank you very much, Senator Hart and the committee.

Senator HART. Thank you, Mr. Hogan. That was very interesting. One of the items that was not enumerated in the list of five-and I am probably breaking the rule by asking about it. I should have remembered this morning to ask others about it when we talked about reforming the patent system, the need for which you very effectively underscored.

What is your reaction to specifying antitrust ground rules for licensing patents as part of patent reform? Forget for a minute the political problems that this creates. Think of it as a question that asks for an answer based on the question alone, and without any

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consideration as to whether it hangs up the forum here or does not hang it up ideally.

Do you see the relationship between reforming the patent system with respect to issuing patents and spelling out the antitrust rules for the licensing of patents as one and the same?

Mr. HOGAN. No, sir. I cannot see any relationship between the two problems whatsoever. It seems to me that our problem now is to get good inventions, better inventions technologically and work our way out of a mess with the ecology, out of a lack of adequate growth, out of our inflation. It is to get these inventions now. I do not know anybody with a good invention who has a present antitrust problem.

Senator HART. This morning we played around with figures, and certain witnesses suggested 100,000 patents are issued, 70-odd percent of those challenged are found to be faulty, but only one percent of the 100,000 are challenged. What is the conclusion?

Do you want to put any figure on how much of the 99 percent would be weeds if litigated?

Mr. HOGAN. Senator, I would venture that-it would be difficult to say. I would venture that most of the 99 percent are not used. The patent that is challenged in court is likely to be-well, not necessarily. I was going to say that it was likely to be weaker than the mean. I am not so sure of that because the patent that is challenged in court may involve large sums, and when large sums are at stake it is worth the defendant's while to resist and to subject it as it were to the ordeal by experts that some patent cases are becoming.

I would find it difficult to project that average, the statistical average of patents held invalid, over into the mass of patents, as far as validity is concerned.

Now, I daresay that the mass of patents are not used, so that the question of validity is not likely to come up. Many are obsolete; sometimes they are abandoned. Sometimes the inventor does not have the business acumen to develop them. For a variety of reasons they simply die.

I am inclined to think that most of them lack an adequate citation of prior art, and most of them are vulnerable to attack in the courts. So vulnerable that defendants I daresay in most cases can make a bona fide case. I will go that far. I say most of them are vulnerable; probably the majority are vulnerable to a bona fide attack in the

courts.

Senator HART. Mr. Brennan.

Mr. BRENNAN. I would like to pursue the chairman's first question, which makes us both guilty of going outside of the ground rules.

The current exercise in reforming the patent system began with the report of President Johnson's Commission on the Patent System. Is it not correct that the proposal to clarify the law with respect to patent licensing was contained in the report of the President's Commission?

Mr. HOGAN. I am not certain of that. I think it was, Counselor Brennan. I am not sure whether that is the case or not.

Are you saying that the subject matter-the amendments were in the recommendations of the Commission?