Mr. CRUMPACKER. How long has it been since there has been any substantial change in the fee system?

Mr. FEDERICO. The basic fees for obtaining a patent were changed to what they are now about 20 years ago.

Mr. CRUMPACKER. That is all.

Mr. FEDERICO. I will take up the next group of sections now.
Mr. ROGERS. May I interrupt you?

You had reference there to section 241; is that right?

Mr. FEDERICO. Yes.

Mr. ROGERS. Could I interrupt you to go back again to section 231? While we appreciate any opinions or statements that you are giving us, it more or less is to help the committee and is in no manner binding, so far as the Department or the Patent Office is concerned. You are appearing here to assist us in any manner possible.

You were present at the time that the Department of Justice expressed their displeasure to section 231, pointing out that it may interfere with the antitrust laws.

Have you made any particular study of that, or do you know how that may affect it in any manner whatsoever?

Mr. FEDERICO. I would like to ask not to speak on that point at the moment. I do understand that several witnesses are going to comment on that.

Mr. ROGERS. I appreciate your position, and thank you.

Mr. FEDERICO. Beginning with 241 are a group of sections relating to remedy for infringement of a patent, the suit in the courts. The present statutes on this matter are in quite mess because they were written quite some time ago and court procedure and the names of actions, and so on, have changed considerably since then.

So the present sections were substantially reorganized into a group of sections fitting in at this place, with some slight changes.

The beginning section is a declaration which serves as a preliminary to the others.

Section 242 introduces a declaration of the presumption of validity of a patent, which is now a rule made by courts in decisions, but has had no expression in the statute.

The defenses to an action for infringement are stated in general terms, changing the language in the present statute, but not changing the substance materially.

The next section relates to injunctions and the next to damages, the next to attorney fees, the statute of limitations, and to marking and notice; all of which together replace present statutes on suits, with a good deal of reorganization in language to attempt to clarify the statement of the statutes.

Mr. CRUMPACKER. May I interrupt again at this point?

Mr. FEDERICO. Yes.

Mr. CRUMPACKER. On attorney fees, it says the court in exceptional cases may award reasonable attorney fees. Does not that open the door to all kinds of interpretations as to what is meant by the language, or is there already a body of law as to what "exceptional cases" are intended?

Mr. FEDERICO. The present statute says the court may award reasonable attorney fees to the prevailing party; which was introduced into the law by an act of 1946.

The hearings and the reports of the committees showed that they intended that to apply to exceptional cases without going into detail, and the court decisions have followed that principle of awarding attorney fees in exceptional cases.

What that constitutes is left, and stays left, to the discretion of the court that is conducting the case.

Mr. CRUMPACKER. Should not there be some kind of an expression of the particular areas that they intended to apply to? I never saw any statutory language as unclear to the uninitiated as that would be. It may mean something to an experienced patent lawyer, but just to look at that

Mr. FEDERICO. That provision, as I said, came into the statute in 1946. There have been a number of rulings on it. In some cases the courts have denied attoney fees and in others, they have allowed them. Mr. CRUMPACKER. You say the 1946 statute just said that the court in its discretion may award reasonable attorney fees; is that right? Mr. FEDERICO. Yes.

Mr. CRUMPACKER. But this term "exceptional cases" is introduced for the first time here, is it not?

Mr. FEDERICO. Yes. It was picked up from the reports in passing that first law, which indicated that that was what was meant, and the decisions of the courts that have followed that.

Mr. CRUMPACKER. That is all.

Mr. BRYSON. Proceed, Mr. Federico.

Mr. FEDERICO. Section 248 is the other companion section to the disclaimer point that I mentioned before.

Sections 249 and 250 involve merely changes in language.

Section 251 is a criminal statute relating to falsely marking an article as being patented when it is not patented; which is now in the present law.

But this section revises it and makes a few changes as to the fine for false marking and a few other things, and also makes it an ordinary criminal action as well as an informer action that is in the present statute.

Section 252 is a new section that is needed to obtain jurisdiction over foreign patent owners, those that do not reside in the United States. That is necessary on some occasions.

Mr. BRYSON. That has been discussed by a previous witness.

Mr. FEDERICO. Yes.

Chapter 4 is the chapter that collects the provisions relating to plant patents and to design patents.

In the group of sections relating to plants, there is no change in the present law except in section 303, relating to the nature of the right granted by a plant patent.

The wording here is that the plant patent grants to the patentee the right to exclude others from reproducing the plant and selling the plant so reproduced.

Under the present law, there is some ambiguity in interpretation, and this section settles what the interpretation should be in the manner indicated.

The next groups of sections relates to design patents.

The only effort in this group was to state the present statute.

In the committee's preliminary print that introduced this codification the statement was made that the subject of design patents was

reserved for later consideration, and the present code merely puts it in its place without attempting to make any changes in the statute. Following that are a few miscellaneous provisions with a table of statutes repealed, and that concludes the description of the bill. Mr. BRYSON. Thank you, Mr. Federico.

We have one other witness, the President of the New York Patent Law Association, Mr. Neave.

STATEMENT OF ALEXANDER C. NEAVE, PRESIDENT, NEW YORK PATENT LAW ASSOCIATION, NEW YORK CITY

Mr. NEAVE. I am Alexander C. Neave, of New York City. I am here on behalf of the New York Patent Law Association, Mr. Chair

man.

Our committee has written your committee a letter, Mr. Chairman. Mr. BRYSON. We have your letter. Would you like to read it, or would you like to have it submitted for the record and make comments on it?

Mr. NEAVE. May I have it submitted for the record? I do not think it necessary for me to read it.

Mr. BRYSON. All right.

(The letter referred to follows:)

THE NEW YORK PATENT LAW ASSOCIATION,

Re Bryson, H. R. 3760, Codification of the patent laws.
HON. JOSEPH R. BRYSON,

Chairman, Subcommittee No. 3, Committee on the Judiciary,

House of Representatives, Washington, D. C.

June 8, 1951.

DEAR SIR: The committee on patent law and practice of this association, after making a thorough study of the Bryson H.R. 3760, and of its predecessor in the Eighty-first Congress, H. R. 9133, reached the following conclusion in regard to bill H.R. 3760:

"The committee highly recommends the adoption of this bill by Congress as soon as possible. Certainly no patent legislation of recent years has been given as much study and careful thought as has this bill. It is our opinion that the bill not only clarifies the existing law but also, in those instances in which it revises that law, achieves a proper balance between the protection of the public from extension of monopoly rights and the encouragement to inventors to make and disclose their inventions so that 'the progress of science and useful arts' will be promoted in accordance with the provision of the Constitution."

This committee also concluded that the bill would be improved if a few changes were made. These and other proposed changes were discussed and voted upon at a meeting of the coordinating committee appointed by the National Council of Patent Law Associations. That committee has made certain recommendations which, in the opinion of our committee, would materially improve this proposed legislation. Since we understand that these changes will be submitted to you, we will not burden the record by including them in this letter. We wish to emphasize, however, that we are in entire agreement with the coordinating committee that these changes should be made.

On May 24, 1951, the governors of the New York Patent Law Association passed the following resolution:

"Resolved, That the president of the New York Patent Law Association, acting on behalf of its board of governors, is authorized to endorse and to testfy in support of the Bryson bill H. R. 3760; he is also similarly authorized to endorse and support the recommendations finally made by the coordinating committee as valuable suggestions for improvement in the bill which should be included in it if possible."

Sincerely yours,

ALEXANDER C. NEAVE, President.

Mr. NEAVE. Mr. Ashton has read to your committee a resolution favoring the bill in question.

The letter also contains an extract from our patent law committee's report on the bill. A great deal of study over a period of 2 years was given the bill by our committee.

There is one additional matter which is not contained in our letter to your committee that I would like to mention, since the matter has been brought up by Captain Robillard.

The committee of our association which considered the bill believed that it would be advisable to have included in the bill a section of a character which Captain Robillard referred to, with respect to publication of applications. That suggestion was specifically made to the coordinating committee and was discussed in their meetings, in several of their meetings.

The committee, as a whole, voted against such a provision, and in interest of not having a talent for disagreement, we thought we would not press the matter.

We believe, however, that since the Navy has made the suggestion, it might be helpful to your committee to have some specific language with respect to that matter.

Of course, I have no idea whether the Navy would approve of the language, because Captain Robillard has not seen that.

The language which we are suggesting-and conceivably it might be a separate section, section 123-is as follows:

Pending applications for patents may be printed and published by the Commissioner, at the request and at the expense of the owner or applicant if he be the owner. Such publication shall have the effect as an issued patent for the purposes of section 102 (a) of this title.

The only other matter that I would like to mention is to comment upon the statement by Mr. Lanham that there are in the bill a number of controversial sections.

Our association does not feel that is so.

In that connection, I would like to call the attention of the committee to the fact that the Department of Justice's report on the bill contains. only eight suggestions or criticisms. I would say criticisms of eight paragraphs.

When you consider that the Antitrust Division has had quite a talent for criticizing patents, I think that is a real accomplishment. I also feel, although I have not had much time to study the criticisms that the Department of Justice has made that practically all of the criticisms are of such a character that they can be taken care of upon further consideration.

I believe that many of them are perhaps justified if the bill is understood. It may be that the bill is not sufficiently clear.

As to such remaining criticisms as they have, I think it is entirely a matter of whether the Antitrust Division's policies with respect to patents, which became fairly sharp at the time Mr. Arnold came into the Department, should be followed, or whether it is this committee that should recommend and urge the legislation that should be passed. I feel that the work that has been done by the Department of Justice on this bill and the comments that they have made to it show that the bill is an excellent bill, and we recommend it very highly to your committee.

Mr. BRYSON. Thank you very much.

Mr. ROGERS. May I ask this: You state that, in your opinion, there are not enough controversial things in this recodification that would justify our not going ahead with the codification and that there are, as pointed out by Mr. Lanham, possibilities; that is, he points out possibilities, and it has been directed to our attention perhaps this contributory infringement is one controversial point.

Do you feel that the section here, 231, as it is now written, actually states what the decisions of the courts have announced within recent years?

Mr. NEAVE. My difficulty in answering that Mr. Rogers, is rather the same difficulty Mr. Federico had. The law is in a considerable state of confusion on that point. I prefer not to go into it because it is going to be gone into tomorrow, I believe, by somebody who is more capable of doing it than I am.

On the other hand, I do very much feel that where the law is in a very confused situation, it is up to the Congress to clarify it.

Mr. ROGERS. Do you think that this clarificaton is sufficient in words as placed in the section 231 to properly advise the legal profession and the manufacturers as to when and where they may be likely to become contrbutors to a patent infringement?

Mr. NEAVE. As to that, I think that this will very much help the lawyers in straightening the matter out. It does not go the whole way, but it is better than nothing, and it will help us in knowing what the law is, insofar as it goes.

Mr. ROGERS. The main objective so far, of the legal profession, as I understand it, is to have it clarified.

Mr. NEAVE. That is right, sir.

Mr. ROGER. It is not so much as to which way it may go as to how far a man must act before he becomes a contributor to an infringement. Mr. NEAVE. That is always a matter depending upon the facts themselves.

Mr. ROGERS. That is all.

Mr. BRYSON. Mr. Crumpacker, do you have any questions of Mr. Neave?

Mr. CRUMPACKER. No questions.

Mr. BRYSON. I believe that is all.

Thank you, sir.

Mr. NEAVE. Thank you, Mr. Chairman.

Mr. BRYSON. We will meet in the morning at 10 o'clock, gentlemen. (Thereupon, at 4:10 p.m., the hearing recessed, to reconvene at 10 a.m., Friday, June 15, 1951.)