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George W. Price

Robert S. Sanborn Staff Vice President

Manager Patents

Patent Department AMF Incorporated

International Paper Company White Plains, New York

New York, New York Carl B. Pritchard, Jr.

Elwood J. Schaffer President

Patent ('ounsel Scottdale Machine, Foundry and

American Smelting and Refining Construction Co.

Company Scottdale, Pennsylvania

New York, New York Charles A. Prudell

Walter L. Schlegel, Jr. General Patent Attorney

Assistant Secretary & Chief Patent McGraw-Edison Company

Attorney Elgin, Illinois

Amsted Industries Incorporated Dr. Leonard T. Prusak

(hicago, Illinois General Patent Counsel

Richard L. Schmalz Johnson & Johnson

General Patent Counsel New Brunswick, New Jersey

Westvaco Corporation Robert P. Redner

New York, New York Vice President

George S. Schwind General Filters, Inc.

Patent (ounsel Novi, Michigan

Crane Co. Allan R. Redrow

New York, New York Patent Counsel

Robert L. Shafter Norton Company

Consel Worcester, Massachusetts

Copyrights & Trademarks John V. Regan

Xerox Corporation Staff Vice President

Stamford, Connecticut Patent Operations

Joseph L. Sharon RCA Corporation

Patent ('ounsel Princeton, New Jersey

Otis Elevator Company C. Cornell Remsen

New York, New York General Patent Counsel

Melvin Sharp International Telephone and

Group Patent Counsel Telegraph Corporation

Texas Instruments Incorporated New York, New York

Dallas, Texas Charles F. Renz

John R. Shipman Assistant General Patent Counsel Director of International Patent Westinghouse Electric Corporation Operations Churchill, Pittsburgh, Pennsylvania International Business Machines John M. Richman

Corporation Vice President and General Counsel

Armonk, New York Kraftco Corporation

John L. Shortley Glenview, Illinois

General Patent Counsel Robert H. Robinson

Massey-Ferguson Limited Patent Counsel

Detroit, Michigan ESB Incorporated

John F. Sieberth Philadelphia, Pennsylvania

Associate Patent Counsel Stephen A. Roen

Ethyl Corporation
Patent Counsel

Baton Rouge, Louisiana
GTE International, Incorporated Edward J. Sites
New York, New York

Patent Counsel
Russell L. Root

Certain-teed Products Corporation Patent Counsel

Valley Forge, Pennsylvania
Addressograph Multigraph Corporation Leroy F. Skubic
Cleveland, Ohio

President
Frank C. Rote

The Paltier Corporation
Assistant Secretary and General Michigan City, Indiana
Patent Counsel

John L. Snaido
The General Tire & Rubber Company Director
Akron, Ohio

Patents and Licensing
Kennecott Copper Corporation
New York, New York

William D. Soltow, Jr. Corporate Patent Counsel Pitney-Bowes, Inc. Stamford, Connecticut Willard R. Sprowls Assistant Chief Patent Counsel UNIROYAL, Inc New York, New York Donald Stone Chief Legal Counsel Medtronic, Inc. Minneapolis, Minnesota David S. Stump Executive Vice President Jackson & Perkins Company Medford, Oregon Ilerbert S. Sylvester Patent Counsel ('olgate-Palmolive Company New York, New York George W. Talburtt (hief Patent Counsel Chrysler Corporation Detroit, Michigan Joseph R. Teagno General Patent Counsel Eaton Corporation (leveland, Ohio Robert T. Teeter Patent Counsel Aluminum Company of America New Kensington, Pennsylvania B. Tharp Patent Counsel Atlantic Richfield Company Philadelphia, Pennsylvania John C. Thompson Patent Counsel Sperry-New Holland Sperry Rand Corporation New Holland, Pennsylvania William F. Thornton Chief Patent Counsel The Bendix Corporation Southfield, Michigan Alfred H. Trepte President Trepte's Wire & Metal Works Inc. Paramount, California Richard R. Trexler Partner (For the Wurlitzer Co.) Olson, Trexler, Wolters & Bushnell Chicago, Ilinois S. Maynard Turk Director Patent Department Hercules Incorporated Wilmington Delaware

Theodore Van Meter
Vice President
General Counsel
Vickers Division of
Sperry Rand Corporation
Troy, Michigan
Hilmond 0. Vogel
Chief Patent Counsel
Pullman Incorporated
Hammond, Indiana
Eric H. Waters
Senior Partner
Haseltine, Lake & Waters
New York, New York
Samuel L. Welt
Assistant Vice President
and Chief Patent Counsel
Hoffman-La Roche Inc.
Nutley, New Jersey
Orland W. Wilcox
Executive Vice President
Sierra Engineering Co.
Sierra Madre, California
Chester A. Williams, Jr.
Assistant Vice President &

Chief Patent & Trademark Counsel
The Singer Company
New York, New York
Olin E. Williams
Patent Counsel
Koppers Company, Inc.
Pittsburgh, Pennsylvania
Thomas A. Wilson
General Patent Counsel
New York, New York
Herbert J. Winegar
General Patent Attorney
Western Electric Company, Inc.
New York, New York
Richard A. Wise, Esq.
General Patent Counsel
USM Corporation
Boston, Massachusetts
Kenneth C. Witt
General Patent Counse!
Clark Equipment Company
Buchanan, Michigan
Richard C. Witte
Director
Patent Division
The Procter & Gamble Company
Cincinnati, Ohio
James W. Wright
Corporate Patent Attorney
Lord Corporation
Erie, Pennsylvania
Eugene C. Ziehm
Patent Counsel
Carnation Company
Los Angeles, California

Mr. BRENNAN. Mr. Chairman, the final witness in this series of hearings is Mr. Milton Weissman.

Senator Hart. Mr. Weissman. You are a patient man.

Mr. BRENNAN. Mr. Weissman, you have a rather lengthy prepared statement and I think it will accommodate the hearing if we place it in the record.

Senator Hart. That is because he is an author and an editor.

Mr. BRENNAN. It would accommodate the subcommittee considerably if you would have it printed in full in the record and then focus all of your testimony on the five issues that are included in the hearing.

Senator Hart. It will be printed in full.

Mr. WEISSMAN. Senator Hart, I will try to concentrate on the matters that really haven't been discussed too much.

STATEMENT OF MILTON WEISSMAN, PRIMARY EXAMINER,

U.S. PATENT OFFICE Mr. WEISSMAN. By way of introduction, my name is Milton Weissman. I am a primary examiner in the U.S. Patent Office. I have close to 29 years of experience in patent examination and over 2 years of experience in patent classification and retrieval systems. I am also the editor-in-chief of the journal of the Patent Office Society, to which I was appointed in April of 1967. Before that I was appointed as the assistant editor in February of 1963, so I have over 10 years of experience, of editorial experience, in patent-related matters.

Now I think I want to make clear that the opinions expressed in the prepared statement are fully my own, and they don't represent and I don't want them to be judged as representing or having been adopted by any organization of which I am a member.

Senator HART. Fine.

Mr. WEISSMAN. Now, the first section of the prepared statement is entitled, “Patent Invalidity: A Crisis for the United States Patent System.”

Almost all recent dicussion, either written or oral, dealing with the subject of the invalidity of patents is based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. Now it is high time indeed that the opposite side of the coin be closely scrutinized. The conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees that the courts are applying a too strict standard of patentability.

Now, 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 do desire the issuance of patents of the highest possible validity. But, in view of their actual conduct concerning 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.

23-932 0.74 - 29

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 focused on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and the applicant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.

Furthermore, the attitude of the patent bar toward any proposal for altering the present patent system, even though expressly designed to aid in the goal of having patents of greater validity issued by the Patent Office, can at best be described as merely lukewarm. Is it really too much to ask that they put aside self-interest at least to some extent, to pursue a goal of having patents of the highest possible validity issued by the Patent Office ?

Now, the Patent Office has always had a tremendous problem, i.e., insufficient time in which to perform a proper examination of a patent application, without any solution therefor. I want to call attention to the following statement by Mr. Donald Brown, then vice president and patent counsel of Polaroid Corp., which appeared at pp. 266-267 of "Hearings before the Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary, United States Senate, 84th Congress, 1st Sess.," back in 1955. This is his statement.

We believe that the present shortage of Patent Office personnel makes it impossible for the examiners adequately to search the art if the work of the Office is to be kept on a reasonably current footing. For example, it is our common practice, even in fields in which we are reasonably expert, to search the art before introducing a new product commercially. These searches, which are usually limited to U.S. patents of the last 15 or 20 years, may average 4 to 5 days of one mans time. An exhaustive literature search, such as we make if we are charged with infringement of anothers patent, may run from 10 to 20 days of one man's time or even longer. As opposed to this, it is our under. standing that the Patent Office's examiners on the average, can devote not more than one-half day to the preparation of each Office action. *** We do not believe that it is possible, even for a skilled examiner familiar with the art, to make an adequate search and to consider a new specification or a fairly complete amendment within a period of 3 or 4 hours. *** We feel that today much of the technical literature is not searched by the Patent Office examiners. We know that our own searches invariably develop references which we believe are closer than those developed by the Office.

Since at that time a patent application normally received three office actions, the last one being final, it received about 12 hours of examination by the Patent Office. From those figures it should be quite evident what basically is the cause of patent invalidity. It is extremely interesting to note that at the present time patent applications receive the same inadequate type of examination.

Now, patent applications are presently filed at the rate of about 90,000 or 100,000 per year. To keep the backlog at the same level at least this number of patent applications must be disposed of annually by the Patent Office, i.e., by allowance or abandonment. Because of various factors such as leave, et cetera, assuming that an examiner works 1650 hours per annum, a typical GS-13 examiner without signatory authority is expected to obtain 110 disposals per annum. This averages out to 15 hours per disposal. And might I say this is a figure given in the introduction to the bill. I think that is the source of it.

Now the situation is far worse with respect to a typical GS-15 examiner, having full signatory authority, who is expected to obtain as high as 147 disposals with an average of 11.5 hours per disposal. Any comment that this hardly represents adequate examination of a patent application is woefully inadequate. The next section is entitled "The United States Patent Office: Its Role in Fostering Patent Invalidity.”

Now, much as been written recently concerning the causes of patent invalidity, but practically nothing relates to the role of the Patent Office in fostering patent invalidity. Only a few scattered comments can be found in the legal literature, such as the following:

"[The Patent Office] has got to be the sickest institution that our Government has ever invented. It is just as far as I can see an attritional war between the patent applicant and the patent examiner who apparently got paid on the piecework for how many patents they could put out.” Judge Miles W. Lord, September 8, 1971, United States v. Charles Pfizer & Co., Inc., et al. (Tetracycline civil damage suit), 4–71, Civ 435 (D. Minn.).

What exactly is going on in the Patent Office that would cause a judge in a Federal district court to place such a vitriolic comment in the record of a legal controversy!

It should hardly surprise anyone that the Patent Office, operating under present practices and procedures, is at least one of the prime causes for patent invalidity. There is also hardly any question that some of the practices are a result of the demands made upon the Patent Office with respect to decreasing, or at least maintaining at the same level, the backlog of unexamined applications. But the question here is simply whether or not there can be any justification for the practices and procedures employed by the Patent Office in order to meet the demands made, regardless of what they may be, when it is glaringly apparent that they must inevitably result in a flood of invalid patents. Now exactly what are the practices and procedures, and why must they foster patent invalidity?

This section I have entitled, “A. The Quota System.” This is what I am really going to concentrate on, Senator.

Now, what is involved in any quota system is always a subordination of quality to quantity in order to meet some production goal.

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