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George W. Price

Staff Vice President
Patents

AMF Incorporated

White Plains, New York

Carl B. Pritchard, Jr.
President

Scottdale Machine, Foundry and
Construction Co.
Scottdale, Pennsylvania
Charles A. Prudell
General Patent Attorney
McGraw-Edison Company
Elgin, Illinois

Dr. Leonard T. Prusak
General Patent Counsel
Johnson & Johnson

New Brunswick, New Jersey

Robert P. Redner
Vice President

General Filters, Inc.

Novi, Michigan
Allan R. Redrow
Patent Counsel
Norton Company

Worcester, Massachusetts

John V. Regan

Staff Vice President
Patent Operations
RCA Corporation
Princeton, New Jersey
C. Cornell Remsen
General Patent Counsel
International Telephone and
Telegraph Corporation
New York, New York
Charles F. Renz

Assistant General Patent Counsel
Westinghouse Electric Corporation
Churchill, Pittsburgh, Pennsylvania
John M. Richman

Vice President and General Counsel
Kraftco Corporation
Glenview, Illinois

Robert H. Robinson

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Robert S. Sanborn
Manager

Patent Department

International Paper Company
New York, New York

Elwood J. Schaffer
Patent Counsel

American Smelting and Refining
Company

New York, New York

Walter L. Schlegel, Jr.

Assistant Secretary & Chief Patent
Attorney

Amsted Industries Incorporated
Chicago, Illinois

Richard L. Schmalz
General Patent Counsel
Westvaco Corporation

New York, New York
George S. Schwind
Patent Counsel
Crane Co.

New York, New York
Robert L. Shafter
Counsel

Copyrights & Trademarks

Xerox Corporation
Stamford, Connecticut
Joseph L. Sharon
Patent Counsel

Otis Elevator Company
New York, New York
Melvin Sharp

Group Patent Counsel

Texas Instruments Incorporated
Dallas, Texas

John R. Shipman

Director of International Patent
Operations

International Business Machines
Corporation

Armonk, New York

John L. Shortley

General Patent Counsel

Massey-Ferguson Limited

Detroit, Michigan

John F. Sieberth

Associate Patent Counsel

Ethyl Corporation

Baton Rouge, Louisiana

Edward J. Sites

Patent Counsel

Certain-teed Products Corporation

Valley Forge, Pennsylvania

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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
Herbert S. Sylvester
Patent Counsel

Colgate-Palmolive Company
New York, New York
George W. Talburtt
Chief Patent Counsel
Chrysler Corporation

Detroit, Michigan

Joseph R. Teagno

General Patent Counsel

Eaton Corporation

Cleveland, 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, Illinois

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 O. 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 Counsel

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

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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 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 understanding 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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