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an interference between two applications for patent, and in an infringement suit where the alleged infringer relies upon a United States patent, proof of prior foreign knowledge and use for the purpose of showing priority over the domestic applicant or patentee is not permitted.

Thus by virtue of the two different sections of the Revised Statutes, section 4886 as interpreted by the Supreme Court, and section 4923, testimony relating to acts done abroad is accepted in some cases and refused in others. The Supreme Court said in this connection:

There is force in the petitioner's argument that the distinction seems illogical. Thus, if a diligent domestic inventor applies, in good faith believing himself to be the first inventor, section 4923 assures him a patent and gives it priority, despite prior foreign use, even though that use is applied for after the invention made in this country. The foreign applicant or patentee cannot carry the date of his invention back of the date of application in this country, as the holder of a later patent for an invention made here would be permitted to do in order to establish priority. On the other hand, a domestic inventor who is willing to dedicate his invention to the public may be held as an infringer by reason of the later patenting of an invention abroad which antedates the invention and use in this country; and so is put in a worse position vis-à-vis a foreign inventor who subsequently receives & patent, and succeeds in establishing an earlier date of invention, than he would occupy if he had promoted his own interest by procuring a patent.

We have no way of knowing whether the discrimination results from inadvertence or from some undisclosed legislative policy.

The bill remedies the inconsistency by prohibiting testimony relating to acts done abroad in the cases in which such testimony is now permitted with respect to patent validity, and makes the practice uniform. It is deemed preferable to refuse evidence of foreign activities, not published or patented, in all cases, as this is the greater convenience in trials and other proceedings held in this country. It is pointed out in the hearings that this change is more in line with foreign laws, since foreign countries pay no attention to acts done outside of their own borders.

The present bill is substantially identical with H. R. 9616 of the Seventy-sixth Congress, and H. R. 2519 of the Seventy-seventh Congress, on which bills hearings were held and the testimony of witnesses heard. No objections were raised to the proposed measures, and all of them, including the present bill, have the approval of various patent attorneys, patent law associations, and also of the Commissioner of Patents.





In compliance with paragraph 2a of rule XIII of the Rules of the House of Representatives, section 4886 of the Revised Statutes (U.S. C., title 35, sec. 47), is set forth below, with the proposed addition thereto printed in italics:

SEC. 4886. (U. S. C., title 35, sec. 31.) Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tuber-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, for more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.

In proceedings of The Patent Office and in the courts of the United States, an applicant for a patent, or patentee, shall not be permitted to establish his date of invention or discovery by reference to knowledge or use thereof, or other activity with respect thereto, in a country foreign to the United States, other than the filing in a foreign country of an application for a patent for the same invention or discovery which, in accordance with the provisions of section 4887 the Revised Statutes, is entitled to have the same force and effect as it would have had if filed in this country on the date on which it was filed in such foreign country: Provided, That the phrase "country foreign to the United States" shall not be construed to include any territory or area under the control or jurisdiction or in the possession of the United States acquired by lease, or otherwise, for military, naval, national defense, or other purpose from any foreign country.



FEBRUARY 26, 1945.-Referred to the House Calendar and ordered to be printed

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Mr. Bates of Kentucky, from the Committee on Rules, submitted

the following


(To accompany H. Res. 149]

The Committee on Rules, having had under consideration House Resolution 149, report the same to the House with the recommendation that the resolution do pass.


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