not learn of another's infringement for several years. Today, if he is alert, he can learn of it almost immediately and there is no justification in permitting a patentee to sit idly by for a period of six years while potential damages accrue in large amounts.

I have noted with approval the absence of any reference to patent practices and the antitrust laws. Any legislation concerned with such subject matter is unnecessary and inappropriate, and should not be intermingled with legislation that is concerned with patent reform such as the proposed bill.

Obviously, there are many features of the bill which I have not commented upon. I would rather confine my remarks to those changes in or clarifications of the present law which I believe are in the public interest and should be supported. If all of these public interest provisions, both those upon which I have commented and those as to which I have remained silent, should become legislation, then better and stronger patents should issue, the patent system should be improved, and the public interest thereby be better protected. I urge spreedy consideration, approval and enactment of this legislation.

Respectfully submitted,

STANLEY M. CLARK.

EXHIBIT A OF STATEMENT OF STANLEY M. CLARK ADVOCATING
ENACTMENT OF S. 1321

EXHIBIT B OF STATEMENT OF STANLEY M. CLARK ADVOCATING
ENACTMENT OF S. 1321

THE FEDERAL COURTS' VIEW OF PATENTS-A DIFFERENT VIEW

(By Martin R. Horn* and Saul Epstein*)

EDITORIAL NOTE

Almost all recent articles dealing with the subject of the invalidity of patents are based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. It is high time indeed that the opposite side of the coin be closely scrutinized. As pointed out in the present article the conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees with the basic premise of the article that the courts are not applying a too strict standard of patentability.

Do the officials of the Patent Office really care about the validity of the patents which are issued from their agency, as long as the production goals which they set for the patent examiners concerning the disposal of patent applications are met? The official position of the Patent Office is that they desire the issuance of patents of the highest possible validity. But, in view of their actual conduct councerning production goals, this position must be viewed as at least open to question. As long as the officials of the Patent Office demand greater production of disposals each year, even though the number of examiners remains about the same and the amount of prior art to be searched increases ominously each year, it is difficult indeed for anyone with an objective viewpoint to be convinced that they are paying anything more than lip service to the concept of the highest possible patent validity.

Nor are the others involved in the issuance of invalid patents to be considered entirely blameless. 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? Then the examination process could be focussed on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and applicant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.

Finally there are the patent examiners, and their conduct in the examination of patent applications. At this point it must be stated bluntly that what they require is help, not hindrance, in the examination process. It may well be that, as urged by many, the issuance of patents of the highest possible validity by patent examiners is simply not possible if the Patent Office continues to operate under present conditions and procedures. If this is in fact true, then all possible help should be given to them by all interested parties, as noted in the article, concerning grounds for invalidity of which they may be

aware.

MILTON WEISSMAN,
Editor In Chief.

Senator HART. Let me make an addition at this point in the hearing schedule. The subcommittee has heard from several former Patent Office Commissioners and the Acting Commissioner currently. I became aware of Commissioner Gottschalk, the former Patent Commissioner, sitting in the audience and listening to testimony given the committee during these days of hearings. Also, I have been hearing reference to the relationship of the Patent Office to the Department of Commerce and the question of whether that

• Spensley, Horn, Jubas and Lubltz, Los Angeles, California.

Patent Office should be made an independent agency. That is a proposal that is contained in S. 1321. I think Commissioner Gottschalk is in a position to bring us first hand knowledge and private experience to that otherwise theoretical question of should we have an independent agency? And at my request he has agreed to appear this morning. I welcome him.

Mr. BRENNAN. Mr. Chairman, just a brief statement for the record. Both the counsel for the subcommittee and the counsel to the Minority Leader were available in their offices until 5:30 last evening. The first we were informed of this development was at 9 a.m. this morning. The well-established practice of the subcommittee has been to request witnesses to submit statements 24 hours in advance. The subcommittee staff has tried to cooperate with your staff on these hearings. I regret that we were not extended the same courtesy. Thank you Mr. Chairman.

Senator HART. I regret that that sequence of events occurred and will assume full responsibility for it. I did not determine until midday yesterday afternoon to invite the Commissioner. It never occurred to me it was a clear violation of the 24-hour rule, a rule very difficult to enforce in other committees, but a very desirable rule. Your comment I think is completely proper. My explanation does not change that. You should have been advised.

However, I felt it was desirable to call the Commissioner for two reasons: First, to get your reaction, Mr. Commissioner, generally, to the concept of the independent agency proposal, and, secondly, to ask of you a question that I asked of an earlier witness to react to trade press reports as to the circumstances and reasons for your resignation. As I understand the problem it relates directly to the independent agency proposal.

So let me ask first the question that I directed to the Commerce Committee witnesses and I hope I am almost reciting literally what I asked them.

It has been brought to my attention through trade press reports that Commissioner Gottschalk was fired without prior warning by the Assistant Secretary for Science and Technology for three reasons: Refusing to give special consideration to a particular patent application, advocating the many other reforms in S. 1321 to the displeasure of the organized patent bar, and arguing that since patent reform was so vitally needed, the administration should not risk the fate of 1971 and should sever the antitrust considerations from the patent reform considerations.

Would you describe, Commissioner, the circumstances that attended your resignation and specifically what your opinion is in respect to the accuracy of those reports?

STATEMENT OF ROBERT GOTTSCHALK, FORMER COMMISSIONER, U.S. PATENT OFFICE

Mr. GOTTSCHALK. Senator, let me acknowledge your invitation and my willingness to appear. I hasten to explain that as you might anticipate, I have had mixed feelings about appearing as a witness in these hearings but felt that I had no choice in the light of your remarks yesterday followed by your invitation to testify.

I certainly must agree that your inquiries are directed to points which I would consider most relevant and undoubtedly important in arriving at appropriate solutions of the problems with which the committee is now concerned. If my participation in these hearings, and if drawing upon my past experiences can be helpful, then I would regard it as desirable to make myself and those experiences as fully available as possible. I would like not to be misunderstood in that. I was concerned and I think understandably so-lest any voluntary approach on my part be misunderstood in the light of the developments to which some of your inquiries have been directed.

It might be appropriate to point out by way of general background that I spent approximately 3 years in the Patent Office.

I joined the Patent Office as Deputy Commissioner in the spring of 1970. I became Acting Commissioner on or about August 25th, 1971. I became Commissioner by recess appointment on January 4 of 1972. I was later confirmed by the Senate and, pursuant to Senate confirmation, reappointed. My resignation from the Patent Office and from Government service was effective June 29.

Part of what concerns us of course is your interest in determining the circumstances with respect to, and indeed the nature of, that resignation. I can describe the mechanics of what happened. I don't believe I am in position to answer in detail questions raised with respect to the three points you mentioned, for the reason that in truth, I do not know why I was fired. I think possibly that the references with respect to those points may have some basis in fact, but I would regard this on grounds of reason and probability-—as unlikely. I could be wrong. The fact remains that I do not understand and was never given any adequate explanation of the circumstances attending the request for my resignation.

I will, as best I can, outline the situation broadly. I must say that at the time I was appointed Commissioner I was greatly surprised, but I think possibly that the appointment was a direct response to the efforts which I had been making while Deputy Commissioner and Acting Commissioner. The point I would make there is that the then Secretary, Mr. Stans, had been very concerned about the internal state of the Patent Office and I knew that he was deeply interested in dealing effectively and promptly with many of the important problems with which the Office was struggling. I think it not unfair to characterize his approach as one of near-desperation, impatience, and perhaps even anger. I do know that there were tense moments between us; but I know too that as time went on, and as he became better acquainted with what was going on as I attempted to achieve his objectives, he became more optimistic about the resolution of those problems. What I am saying in short is that what had begun as a relatively antagonistic experience resulted in one of very close cooperation and, on the part of the Secretary, appreciation expressed many times for the "fine work" that I was doing in my role as Commissioner.

I seemed also to serve well and by all standards to satisfy the requirements that his successor, Mr. Peterson, imposed. We had an excellent relationship.

It was against that background that it came as a total surprise that the things that I was doing seemed so totally unacceptable. The

whole chain of events came as a "bolt from the blue" and indeed with no prior warning.

On April 19, well, let me go back a little bit further. The Secretary came aboard in January of 1973. Shortly thereafter, in the office of the then Acting Assistant Secretary for Science and Technology, I and other members of the Science and Technology units of the Department of Commerce, together with the Acting Assistant Secretary, provided briefings for the Secretary. Presentations of the various units of the Patent Office, the National Bureau of Standards and others, averaged about 15 to 20 minutes each, at most. As it happens, the presentation by the Patent Office, which I made, was the last. It was no longer than 20 minutes. It may well have been more like 15. At best it sketched in broadest outline the functions of the Patent Office, its staffing and funding situation, it physical facilities, and little else. At no time thereafter did I have with the Secretary any discussion relating to Patent Office affairs or problems. Indeed at no time thereafter, with the one exception to which I will refer later, did we ever have any discussion beyond the merest kind of social and casual contact, at receptions or matters of that sort. I assumed, perhaps incorrectly, that he was aware of and satisfied by what I was doing.

On April 19, as I recall the date, the present Assistant Secretary for Science and Technology was sworn in. On May 7, a Monday morning, I received at 8:30, a telephone call in which she requested that I appear at her office at 9 o'clock. I did. As I entered, she motioned me to a chair and proceeded to speak directly to the point. She said very briefly, in what I recall as approximately as three sentences, that she was aware that I had indeed been doing a very fine job; she recognized that I had made great strides, particularly in dealing with some of the people and personnel and policy problems of the office; and that I had made other strides forward as well-but that I had a fatal fault or flaw, and that as a result of that she felt constrained to ask for my resignation.

To say that I was stunned of course would be an understatement. I inquired as to the reasons for the request and I received no answer that I can repeat; none that I then thought I understood or could begin to accept, because at best there were the vaguest references only to such things as inability to get along with the top managers of the Patent Office. There was a vague reference to support for her position in that respect in an audit report, then presumably still in process of preparation by an audit team from the Department of Commerce, access to which I did not have at that time. So that as I heard the few words spoken in that connection, I had absolutely no way of knowing what she might have had in mind and indeed I was surprised by the reference for a still further reason-this represents a digression but I assure you a minor one, namely, the effort that was covered by that report was one that I had initiated some months before. I had requested that the Department of Commerce, working with specialists from the Civil Service Commission, provide assistance which I felt was needed. I had identified certain problems. I realized they were deep rooted and difficult to deal with. They were the kinds of problems which I suppose permeate many government