However, before I do that, I would like to take exception to three provisions of the bill; namely, Sections 263 and 273, and a portion of Section 112. Section 263. Rights of employee-inventors guaranteed Section 263 is, in my opinion, ill advised, mischievous and almost impossible to administer. It will breed discord and litigation. And I believe there are grave doubts as to its constitutionality. It should be realized that an invention or a development, by the time it reaches commercial practice, is the result of the contributions of a great many individuals, the relative contributions of which are almost impossible to evalu ate. Many individuals make vitally important contributions which lead to the final commercial success of an invention that it will be literally impossible to determine just how much of the profit or savings can be "attributed" to the patent. The section should be deleted. Its effect would, in my opinion, lead to inequitable and unjustified consequences. Section 273. Unauthorized practice of subject matter prior to issuance of patent Section 273 provides for what I call "interim infringement". This is objec tionable because it places the public in a position of uncertainty. There is no reason why the public should face the risk of infringing a patent whose claims are not yet certain and which may never be allowed. The section apparently has been inserted in the bill as a partial remedy for the shortened term of the patent from 17 to 12 years. It would be far better to delete Section 273 in its entirety and in lieu thereof reinstate the term of a patent to the present 17 years. Section 112. Specification Paragraph (a) of this Section requires a specification to include "all knowhow known to the inventor and applicant necessary or commercially requisite to make, use and work the same." This is burdensome, impractical and probably cannot be complied with. I urge that it be deleted. COMMENTS IN SUPPORT OF S. 1321 Having stated my criticisms of the sections of the bill to which I strongly object, I would like to devote my remarks to those sections which I strongly favor. On balance, S. 1321 is desirable, long overdue and should be enacted. It will protect the public interest, strengthen the patent system and effect its constitutional purpose of advancing the arts. First of all, the bill has several provisions which require the patentee and his counsel to play fair with the Patent Office and I favor all of these provisions. Section 3 (d) Public Counsel The concept of a Public Counsel having the power to intervene in the public interest, I believe, was suggested in the "Report of the President's Commission on the Patent System." As I understand it, the Public Counsel's role will be in the nature of an ombudsman and, hopefully, the Public Counsel would be able to perform such duties effectively. I should point out that the Public Counsel and his staff should be recruited at least in part from the patent litigation bar and in part from corporate patent counsel as well as from the public generally. Furthermore, there should be free and open communication between the Public Counsel and the patent bar and, of course, the public as well. To the extent the lines of communication are difficult or bogged down in bureaucratic red tape, then the Public Counsel will not only lose the confidence of the bar but will be denied its cooperation, and the Public Counsel will need such free and voluntary cooperation in order to function as effectively as he should. Section 41. Patent Office fees Section 41 (b) (1) has a concept stated as follows: "Fees shall be designed to effect an overall recovery in the range of 65 to 75 percentum of the costs of operation of the Patent Office." If the patent system serves its purpose, which is to inform the public of advances in the arts, then it seems undesirable to have a formal Congressional expression that the Patent Office shall be 65 to 75% self-supporting. Such an expression does not take into account the value of the information supplied to the public by patents. However, I see no objection to moderate maintenance fees because they would serve a useful purpose in weeding out patents which sometimes lurk in the background for years until an industry has been built up and which are then, to the surprise of the industry, asserted in "strike suits". The waiver of fees by the Commissioner is not set out in such clear terms as to protect an individual inventor or a small company to whom maintenance fees would be a burden. I would suggest that any individual person or corporation be allowed to designate each year five patents as to which maintenance fees would automatically be waived. Section 102. Conditions for patentability; novelty and bars to patent First, I endorse heartily the enlarged definition of prior art to include knowledge, public use and sale in a foreign country as being a proper recognition of the fact that the world is so much smaller in practical terms than it was more than 100 years ago when the present limited concept of “prior art” was adopted. It is easier to travel from New York to London today than it was to go from Philadelphia to New York a century ago. It is easier to learn what is going on commercially and technically in London or in Tokyo than it was 100 years ago for an inventor in Erie, Pennsylvania, to know what was occurring in New York City. Furthermore, American corporations have direct commercial contacts in most foreign countries. For example, the annual reports of four of the large tire companies, namely, Firestone, Goodyear, General Tire and B. F. Goodrich, show these companies, collectively, to have some 99 subsidiaries, affiliated companies, or companies having technical service agreements with them in at least 54 different foreign countries as shown in the attached table, which is attached hereto as Exhibit A. How can it be argued that these companies and others like them have no knowledge of what is going on in the rest of the world. Furthermore, the language of 102 which brings foreign public uses and sales into the prior art places an American inventor on more equal footing with his foreign competitors. Over 25% of the patent applications are filed by foreign nationals and these applications are likely to be of significant technological importance. It is grossly unfair for a foreign competitor to have a product suc cessfully tested in the market place in Europe, and (as long as a description is not published) be free to file a patent application in this country and escape having his own prior public use in his homeland being applied against him as prior art. A United States citizen has no such freedom to follow the same course of conduct in the United States. The second change in Section 102 which I approve is in connection with prior art which formerly was to be in “printed" form. In view of some courts giving a limited interpretation to the term “printed” the addition of the words "other tangible form" in defining prior art should enable all courts to hold that prior art includes, for example, typewritten descriptions, handwritten descriptions, blueprints, sketches, mimeograph copies, Xerox copies, photographic copies, including microfilms, computer storage systems, and the like. Section 112. Specification Paragraph (d) of Section 112 provides for a "Jepson" form of claim, a form of claim which I have advocated for many years. However, the preamble "where the nature of the case admits" should be deleted. It gives applicants and the Patent Office too much leeway in avoiding the mandate of this Section. I submit that a claim having the prescribed form can be drafted for any invention regardless of its nature. The prescribed form of claim is most useful and desirable because it will give little opportunity for the nature and extent of the invention to be obfuscated either in the Patent Office or in the courts should the patent become involved in litigation. The form of claim should be mandatory and not left to the discretion of the Patent Office which has had more than 100 years to require such a claim and has failed to do so. A Jepson claim follows the German practice of claiming and consists essentially of two parts in which the first part of the claim states what is old and the final portion sets out what is new. Let us see how this works. At Page 636 of the APLA Bulletin for November-December 1972, Mr. Dunner stated in connection with the disposition of courts to hold patents invalid, the following: at the very least, the examiner should have the benefit of the most relevant prior art of the published type that the applicant's attorney knows about." * 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 just the tiniest little pipsqueak sort of change from a product that had been in public use for years and which the examiner had no way of learning about." I agree wholeheartedly with the above remarks and would like to expand upon the last quotation. If a Jepson claim had been required in the cases referred to by Mr. Dunner, it would have read as follows: "(1) In a product that has been in public use for years, "(2) the improvement which consists of: “(3) just the tiniest little pipsqueak sort of change." If the Patent Office required a claim in this form, it would have been apparent to the patent examiner just what a "pipsqueak" the invention really was; the prosecution of the application would have been expedited and in all probability no patent would have issued. Even if the Patent Office had resolved doubts in favor of the applicant and had issued such a patent, then a claim in such form would have made the scope of the invention readily apparent to the court and it would have been able to dispose of the litigation with a minimum of expense and cost. Furthermore, in all likelihood, the court would justifiably hold that the "little pipsqueak of an invention" did not merit the protection of a patent. However, perhaps an added proviso should be included to the effect that if an applicant deliberately includes old and conventional elements in Part 3 of the claim, such inclusion would make the claim invalid. Section 115. Oath of invention For example, Section 115 requires each agent, attorney or other person who participated in the preparation or prosecution of the application to file a statement which requires him to be fully candid with the Patent Office. Such a provision was discussed in the hearings before this Subcommittee in connection with S. 643, S. 1253 and S. 1255 in 1971. I refer particularly to pages 325 and 326 of those Hearings which read, in part, as follows: “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 MCCLELLAN. You think the law does not require that now? "Mr. CLARK. I don't think it does now, no, sir. "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. 23-932-74 -24 "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 MCCLELLAN. 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 attorneys. 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 attorneys 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. That is what you are saying? "Mr. CLARK. Yes. "Senator MCCLELLAN. I think that is not unreasonable at all. It might be proper." In March of this year, the same views which I expressed in the hearings of two years ago were endorsed in different words by Mr. Milton Weissman, Editor-in-Chief of the "Journal of the Patent Office Society." I call attention to the statement which reads as follows: "Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long as they can obtain these patents (which may or may not be valid). Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware?" Mr. Weissman's remarks, which occur on pages 134 and 135 of the "Journal of the Patent Office Society," are attached hereto as Exhibit B, and I ask that they be incorporated in toto in these remarks. Also, the APLA Bulletin for October-November 1972 at pages 645-6 had the following comments by Mr. Rabinow, a successful, independent inventor: "I think the patent attorney should tell, in other words, he should help the Patent Office, he shouldn't play games *** we always felt that we should tell them (the Patent Office) everything 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." In the same bulletin on pages 635-6, and on the same point, Mr. Dunner, a patent lawyer, stated: "I think there should be an explicit rule which requires an attorney at some appropriate stage of the application, certainly well ahead of the allowance, to file a written statement of the best published prior art he knows of." There seems to be a unanimity of opinion that the time has come for all persons to "play fair" with the Patent Office. Section 131. Eramination of application Section 131 (b) serves the same salutary purpose as Section 115 and should be enacted for the reasons stated above in connection with Section 115. Section 131 provides for the submission of a so-called "patentability brief" and is a requirement, once again, that an applicant for patent be open and candid with the Patent Office. Such a brief will have the further advantage of reliving the Patent Office of much of its burden (and the Patent Office is over-burdened), and will provide a record which will prove of benefit to the parties and to the courts in the event the patent becomes involved in subsequent litigation. Section 132. Examination proceedings Section 132 (e) introduces some useful and needed reforms into the prosecution of a patent application. All too often, the file history of a patent is completely silent as to the reasons why the Patent Office finally allowed the patent. Subsection (c) of this section which requires the examiner to state the reasons for his actions and to include a complete narrative report of all matters discussed with the applicant and his attorneys will be very useful. I have suggested in the past and I suggest now that the Patent Office make tape recordings of all oral discussions with the applicant or his agents and attorneys, at the expense of the applicant, and make copies of such recordings available to the public. Verbatim tape recordings will take much of the mystery out of unrecorded interviews which presently constitute critical gaps in the prosecution of a patent application. All too often, the claims of a patent are rejected; the history then shows an interview, the substance of which is not reported in any form; and then allowance by the Patent Office without any real explanation for the change of position by the examiner. Tape recordings of such interviews will remove such clouds of uncertainty from the prosecution history of a patent. Section 132 (e) also has a desirable provision requiring that amended or new claims presented during the prosecution shall not materially enlarge the scope of the claims of the application as originally filed. If this is adopted, it will prevent that practice of which many courts have complained; namely, the practice of some applicants to hold a pending application in the Patent Office for a number of years and at the last minute adding new and enlarged claims to encompass the latest advances of the art in which the applicant himself played no part. The provision just referred to should foreclose such practice. Section 122. Public availability, publication, and confidential status of application Section 191. Deferment of examination Section 191, which provides for deferred examination of applications, is desirable. It will save both the Patent Office and many applicants a great deal of time and money. The provision is particularly useful in connection with Section 122 which provides for early publication of applications. Since many patents are obtained for defensive purposes it is likely that many applications will be allowed to lapse without examination for the same reason. In addition, the subject matters of many applications which seem to be of great importance when initially filed do not stand the test of time and such applications will within a few years turn out to have little interest and will likewise be allowed to lapse. Thus both deferred examination and early publication of applications offer many advantages with no discernible disadvantages. Section 282. Presumption of validity; defenses Section 282 (c) is a change which has long been needed. That section requires the parties in infringement litigation to make definite statements as to their position before trial. I would hope that the courts will require the parties to take such definite positions "as soon as practicable" and not wait until 90 days before trial and 30 days before trial, respectively, which are specified as the ultimate time limits in this section. If this section is properly applied by the courts, patent cases no longer will reach trial and even the appellate stages without either party having taken a position and without the issues ever having been properly defined. Section 286. Time limitation on damages This section which reduces the statute of limitations from six years to two years properly takes into account the almost instant means of communication which exist in the world today. Perhaps a hundred years ago a patentee could |