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You do comment on Patent Office fees. For our record, would you give us your reaction to a system of nominal filing and issue fees?
Dr. Nixon. Well, I think we are in favor of that, that is of those sort of fees, Senator. We are not questioning that at all.
Senator Hart. Well let me give you the four elements and ask your reaction which we would like. It may make it easier and more understandable if we have that in the record : a system of nominal filing and issue fees; maintenance fees, every 3 years, starting in the fifth year at a rate decided by the Patent Office Commissioner designed to recoup the 65 to 75 percent of the Patent Office costs; with power vested in the Commissioner to grant special exemptions to individuals and small businessmen and so on. Now, have you any feeling as to that matter?
Dr. Nixon. Well, just offhand, Senator, it sounds like a better proposal than what is here present. The foreign countries do have a maintenance fee system but they are much more modest than what is proposed here, which would total something over $100,000 for a complete patent that ran through to exhaustion. And the general principle we support is that the government try to recover a substantial proportion of the Patent Office costs, Senator.
Senator Hart, Mr. Brennan?
Senator Hart. Doctor, before you leave, do any of your colleagues care to make any comments or give any further remarks?
Dr. Nixon. Well, they are very modest people, but they might be persuaded to.
Dr. Cairns. The only thing I might say, since I have testified here before relative to the prior legislation, Senator, of course the bill was quite different when we testified in 1968 so naturally our comments and our views would be differentiatable. And this general comment here, Senator, did not indicate too significant a reversal except perhaps on the question of deferred examination. We are still very anxious to see a high quality job done and to support the Patent Office in any way that we can.
Senator Hart. Thank you, Doctor. It was indeed the position on deferred examination that I had particularly in mind when I made the comment.
Gentlemen, thank you very much.
[The material requested earlier appears as follows:]
AMERICAN CHEMICAL SOCIETY
BOARD OF DIRECTORS-1973
Dr. Herman S. Bloch (Chairman)
Dr. Alan C. Nixon
JOINT BOARD-COUNCIL-COMMITTEE ON PATENT MATTERS AND RELATED
Dr. John T. Maynard (Chairman)
Dr. Frederick C. Nachod
STAFF LIAISON, ACS Dr. Stephen T. Quigley Director, Department of Chemistry
and Public Affairs
Senator HART. Mr. Brennan.
Senator HART. Mr. Clark, would you identify yourself for the record ?
STATEMENT OF STANLEY M. CLARK
Mr. CLARK. My name is Stanley Clark and I am presently Patent Counsel for the Firestone Tire and Rubber Co., but I am expressing my own personal views here. I am not speaking for the company:
Senator Hart. I assume you wish to have your statement printed in full in the record ?
Mr. CLARK. Yes, I have submitted that statement and would like it to be printed in full in the record.
Senator Hart. It will be at the appropriate place.
Mr. CLARK. I had occasion to testify 2 years go in connection with the proposed Anti-Trust and Licensing Provisions known as the Scott Amendments and in the course of my testimony I had a colloquy with Senator McClellan in response to a question that he had asked and that question has come up here repeatedly; namely, why there seems to be a different standard of invention between the courts and the Patent Office and why are 70 percent or so of the patents declared invalid when they reach the courts. If I may, Senator, I would like to read just a portion of that colloquy from pages 325 and 326 of my testimony. It won't take very long and I apologize for reading it.
Mr. CLARK. *** The inventor, more particularly his patent counsel, has the time and the opportunity and the incentive far beyond the overworked patent examiner does not have; and when you add all this together it is an unfair struggle and this is why I would lend support to the Department of Justice position that the oath of the inventor ought to be restored to the proposed patent bill and that the burden should be upon the applicant to be fully candid with the Patent Office.
Senator MCCLELLAX. You think the law does not require that now?
Senator McCLELLAN. If it is intended to it has a lot of loopholes in it, is that correct?
Mr. CLARK. That is correct. I would suggest that the burden also be placed not only upon the inventor but upon the lawyer that is representing him. At present the burden is only upon the inventor.
Senator McCLELLAN. Why upon the lawyer?
Mr. CLARK. Because often the lawyer knows more about the prior art and is the only contact with the Patent Office. Once the inventor signs an oath, which he doesn't understand, to a patent application which he usually can't interpret, then he is through with the whole procedure and you never hear from him again.
Senator McCLELLAN. But if the applicant testifies or signs a false oath knowing it is false, maybe his attorney doesn't know that.
Mr. CLARK. That may be true. That may be true.
Senator MCCLELLAN. I don't think the attorney should be held responsible for that.
Mr. Clark. No; but I think perhaps the attorney ought to be required on his own to make a full statement of the prior art as he knows it to the Patent Office.
Senator MCCLELLAX. In other words, you would put a burden on the attorney not to rely upon the information supplied him by his client?
Mr. CLARK, I would say if that is the only information he has he is entitled to rely upon it, but if an attorney has additional information, which he often has, sometimes these attorneys are as expert as the inventors in the art and as knowledgeable as the inventor in the art, he should disclose that information to the Patent Office.
Senator MCCLELLAN. If he has additional information maybe he should rely on it or shouldn't, I don't know. But I wonder how far we are going and I am
not arguing against it at the moment, I am just trying to clarify what you are recommending with respect to placing an additional burden upon attorness. Attorneys should not be permitted to permit fraud or to mislead, willfully mislead the court or in this instance the Patent Office, but I know that attornes are often misled by their clients and how much a burden you put upon them or you are attempting to put upon them, they have to check the veracity and reliability of their own clients. Would you go that much farther now?
Mr. CLARK. I am not suggesting that. I am saying he is entitled to rely upon what his client tells him. I suggest if he has additional information he should volunteer it himself.
Senator McCLELLAN. Yes; if he has additional information and the client has not submitted it he shouldn't withhold that from the Patent Office.
Mr. CLARK. That is correct.
Senator MCCLELLAN. I think that is not unreasonable at all. It might be proper.
Now the reason why I bring that before the Senators this morning is because several questions have been asked, all of which bear upon what I was suggesting 2 years ago and that is that the burden of the Patent Office will be lightened and the effectiveness of the Patent Office will be markedly improved if there is a fair and candid communication between the Patent Office and the applicants and the applicants' attorneys. I think that is in the public interest because stronger and better patents will issue and there will be fewer of them, I hope, declared invalid by the courts.
Let me say that this bill, S. 1321 seems to be marked by a more express concern for the public interest and to a far greater extent than our present ent law and for that matter than any other patent bill which I have ever seen presented.
I would like to refer to some of those provisions, which are present in 1321, which are in the public interest and I would like to speak a few words in support of them. In doing so I would like to answer some of the questions which have come up in the hearings in the last day or 2. To repeat, Senator, what I would like to say is that the applicant has the duty to be fully candid with the Patent Office, and, if he discharges that duty, then the burden on the Patent Office, will, in great part, also be relieved. An examiner will have more time and better patents will issue. And again, all of this is in the public interest.
Let us look at some of these mechanisms which are in 1321 which require and encourage that duty of responsibility and candor to be discharged by the applicant. First of all, I would like to refer to section 115 which provides that there be an oath by the applicant and by the attorney and by the agents acting on behalf of the applicant to lay before the Patent Office the prior art of which they are aware. Well, this is not a new view or a view peculiar to me. In the American Patent Law Association Bulletin for October of 1972, Mr. Rabinov--and I hope that is pronounced properly-he is a successful independent inventor-in that bulletin he made this statement and I quote him: “I think that the patent attorney should telland so on, and so on, in other words, he should help the Patent Office, and he shouldn't play games.
I will skip a little bit of what he says but he concludes by saying We always felt we should tell them-he is referring to the Patent Office -ererything we know and in saying what the prior art was, you should say what it really was because, if you don't do it you are really cheating the Patent Office.
That brings me to a second point in S.1321, which is the patentability brief. I highly support that provision. I think Mr. Rabinow's words, which I just quoted, which say that you should not play games with the Patent Office, that you should tell them what you think the invention is and why it distinguishes over the prior art in my opinion is recommending a patentability brief, for such a brief enables this function of candid communication with the Patent Office to be performed. It will not be performed absent such a brief; well, let me say it this way, it has not been performed fully in the past by applicants.
In that same "American Patent Law Association Bulletin," Mr. Dunner-and I believe I am pronouncing his name correctly—said and I will quote from page 635 of that bulletin:
I think there should be an explicit rule which requires an attorney at some appropriate stage in the application, certainly well ahead of the allowance, to file a written statement of the best public prior art he knows of.
Again that seems to me to be in support of the principle of the attorney's oath and of patentability brief.
There is one other point which may be a minor point and hasn't been brought up here and this appears in section 112 which prescribes the form of patent claim which is to be used, a form which the American Patent lawyers call a Jepson form of claim and which really follows the German form of claim prescribed by the laws of Germany. I think everybody agrees that Germany has a very good patent system.
Again in the bulletin of the American Patent Law Association for November-December of 1932, page 76, there is a quote, and I do quote.
A good many of the holdings that patents are invalid stem from the discovery on the part of a district judge that the invention which the Examiner thought was a substantial forward step was in fact the tiniest little pipsqueak of change from a product that had been in public use for years and which the Examiner had no way of learning about.
Now that is true; and, if you do not have a proper form of claim, it is often very difficult for the courts to determine what the inventive step was because that "little pipsqueak sort of change" is buried in a mass of obscure words, in very long and very difficult language. And that is the reason why I support the Jepson form of claim which is prescribed by section 112 of this bill, because if you have that form of claim and if the applicant has been candid with the Patent Office, that claim would have read in this manner. The claim would have read as follows:
(1) In a product that has been in public use for years,