in any manner, deceive, mislead, or threaten any applicant or prospective applicant or other person having immediate or prospective business before the Office by word, circular, letter, or by advertising." I have deemed it advisable to give you these further references because you apparently had not been advised that the patent law section of the American Bar Association has for more than 15 years been attempting to have the word "advertising" deleted from the statute. By writing this letter I do not intend to foreclose my right to file the written statement which we discussed yesterday. This letter is intended merely as something which you may use in your discussion of the matter in the executive session next week. Thanking you for your courtesies in this matter, I am Very truly yours, AL. PHILIP KANE, Mr. JOSEPH R, BRYSON, POPULAR SCIENCE PUBLISHING CO., Chairman, Subcommittee No. 3, Committee on the Judiciary, House of Representatives, Washington, D. C. DEAR MR. BRYSON: Thank you for your very courteous letter of July 6 regarding the status of that part of H. R. 3760 in which we are interested. In addition to any other material that has been submitted to you and your associates in relation to section 32, I would like to take a moment of your time to incorporate in this letter the statement that as publisher of one of the largest circulation magazines in the country (more than a million every month) of interest to inventors, we have, over the years, received a negligible number of complaints from inventors about the patent attorneys using our columns. In fact, our present editor tells me that since September 1948 we have had no complaints whatsoever from our readers about patent attorneys. So I hope that whatever form the bill you are now working on takes it will preserve the rights of patent attorneys to effectively tell inventive Americans that their services are available. With best regards, I am, Cordially yours, Hon. JOSEPH R. BRYSON, GODFREY HAMMOND, Publisher. NEW ORLEANS, LA., May 9, 1951. House of Representatives, Washington, D. C. DEAR SIR: I have recently completed reading your bill H. R. 3760 that is to revise and codify the laws relating to patents and the Patent Office. I respectfully make the following comments and suggested amendment to your bill after having had over 20 years' personal experience in patent matters, working for both patent attorneys and inventors. I sincerely believe there is a large number of people like myself who are now doing a certain kind of patent work that will become illegal to perform :should your bill as it is now written become a law. I am speaking of those of us who are now employed by patent attorneys from time to time to write their specifications, claims, and amendments, and then return the same to them for prosecution in the United States Patent Office. I have been employed for this type of work when the local attorney is busy or when he desires the benefit of my years of experience as a mechanical engineer with invention development experience. I am, of course, always paid by the job. Another hardship, your bill as it now stands will be on the engineer who assists the development of an invention for a person of very limited means and is then employed to make a patent drawing, write the specifications and claims. The work is then given to the inventor for whatever disposal he sees fit. No one wants to see the inventor protected and the legal profession preserved more than I do, but I feel that there is a certain type of worker, as described in the last paragraph, that is more and more being placed in an impossible position. Therefore, I suggest that the following be added to chapter 1, section 31, of your bill: Patent Office; practice before Patent Office; regulations for agents and attorneys. Suggestion: "That the Commissioner of Patents shall issue a certificate of authority to write patent specifications, claims, and amendments to anyone who shall present written proof from a registered patent attorney or agent that the person making application for certificate has been employed by them continually for 3 years or part time for 5 years; that the certificate shall state if the person is qualified just to write specifications, or the claims, or the amendments, or all three, and if they are qualified to write the same for chemical, electronic, or mechanical inventions; that a charge of $10 shall be made for each certificate." The above-suggested addition does not in any way whatsoever suggest, approve or recommend that a person other than as now licensed be permitted to practice before the Patent Office. In fact, I would even make it a crime for the telephone directories to list people whose ads in the yellow section suggest they are patent attorneys. (Some people still do this in spite of all the laws and the Patent Office well knows of the fact.) Another thing sir, a large number of people are mislead about inventions and patents by the report they receive on searches, yet, anyone in Washington, D. C., can advertise they make patent searches and send any kind of a report they see fit. They can work for an attorney and still only half do the job without being found out for months, and there is no restrictions put on this practice or are people required to show they are qualified to make a patent search before doing so. One other matter often overlooked is the fact there is practically no school in most parts of the country where one can go and take a course in patent law. I trust you will give serious consideration to the above matter and be able to make some form of amendment to your bill that will permit others like myself to continue to perform certain useful services to inventors and patent attorneys with limited funds. Services, I respectfully repeat, are not desired by us to be taken as the practice of patent law. I am sure that neither you or the Commissioner of Patents have any desire to force me out of work, yet, what can one do should your bill be passed? Patent attorneys here in the South do not by themselves have enough work to keep one busy, and I for one cannot afford to move and try to make a connection with a patent attorney in another city. No course of instruction in patent law is given in this area. A letter as to my ability in patent work given by a registered patent attorney and former examiner in the Patent Office is not taken as proof enough under the present law for me to be granted an agent's license, and I know from experience that I cannot pass an examination for the same without first taking a course in patent law. This latter is not because I do not know everyday procedure but because I am not up on the finer points of the subject. Trusting I may have the pleasure of hearing from you regarding this matter. Sincerely yours, J. OWEN EVANS. 1821 TWENTY-FIRST AVENUE, LONG ISLAND CITY, N. Y. May 15, 1951. Hon. JOSEPH R. BRYSON, DEAR MR. BRYSON: As a member of the patent bar for the past 9 years, previous to which time I was an examiner in the United States Patent Office for 11 years, I have been deeply interested in H. R. 3760 which you recently introduced. Thank you for sending me a copy of your bill. I have read over the provisions of your bill and believe that it will do much to clarify and strengthen the patent law. However, I should like to recommend that one additional clause be added in order to clarify the application of section 4 of chapter 1. I believe that this section was not meant to apply to applications which were filed prior to the effective date of the act, nor to patents which have been or will be issued on such applications. Although section 4 of chapter 4 was probably designed to exempt such applications from the provisions of section 4 of chapter 1, I believe that such exemption should be made more explicit, and several members of the patent bar with whom I have discussed this matter agree with me. I therefore recommend that a section, somewhat as follows, be added to the bill: "Section 4 of title 35, as enacted by section 1 hereof, shall not apply to applications filed prior to the date on which this Act shall take effect, nor to patents 1 issued or to be issued on such applications, but the law previously in effect, namely Revised Statutes 480 (U. S. C., title 35, sec. 4, 1946 ed.) shall apply to such patents and applications." I should like to make another recommendation. All patent examiners are qualified as engineers. The provisions of the above section of the bill would greatly reduce their ability to get employment as research and development engineers, since their employers would be placed at a great disadvantage in respect to inventions which such employees might make within 1 year after they left the Patent Office. To give sufficient notice to examiners who are contemplating employment as engineers, it is recommended that the provisions of the above section should not be made effective as to applications which are filed within 1 year after the date of enactment of the act. To incorporate such a provision, a section, such as the following, might be added, in place of the aboveproposed section: "Section 4 of title 35, as enacted by section 1 hereof, shall not apply to applications filed prior to one year from the date on which this Act shall take effect, nor to patents issued or to be issued on such applications, but the law previously in effect, namely Revised Statutes 480 (U. S. C., title 35, sec. 4, 1946 ed.) shall apply to such patents and applications." Thank you for your consideration of this matter. DEAR MR. BRYSON: I respectfully express the opinion that section 33 of the above entitled bill is not broad enough. The words, "holds himself out," to me mean that for a person to fall within the condemnation of that section, there must be a direct active representation. It is my thought that this section should be expanded by the insertion before the word "holds" in line 2 thereof the following: "renders services in the preparation or prosecution of applications for a patent before the Patent Office, or offers to render services in the preparation or prosecution of applications for a patent before the Patent Office,". Thus, if this amendment is added, without any "holding out," or any representations of any kind, the mere fact of the rendition of these services without a representation of qualifications will constitute an offense. Would it not also be desirable to provide in this section some mechanism for enforcement of the penal provisions such as a statement where the complaint shall be made, i. e., where the acts were performed, and that the United States district attorney for the particular area shall be empowered to initiate the prosecution as well as any interested citizen. Very respectfully yours, NORMAN N. POPPER. Hon. JOSEPH R. BRYSON, RADIO PATENTS CORP., New York 16, N. Y., June 20, 1951. Member, Judiciary Committee, House of Representatives, Washington, D. C. DEAR SIR: My attention has been called to your proposed bill, H. R. 3760, revising the patent laws. I believe there should be included therein a clause protecting inventors or inventions made abroad. We have a number of associates abroad, such as the General Electric Co., Ltd., and I might cite the following example: Scientists would be working in the laboratory on a new development-perhaps a very important contribution and invention. In the laboratory there may be two or three assistants. While they keep careful records of their experiments and developments, they do not file an application until they have completed their experiments and determined best results; or, if a provisional application is filed, it gives a general outline without details. If an assistant should leave the employ of the laboratory or should by chance mention to a friend something about this development and this information is published in England, this publication would be beyond the control of the inventor. The inventor then proceeds as quickly as possible to file a provisional application to protect himself in England. Within the year he files in the United States, claiming the convention date. The uncontrolled publication of some of the information would invalidate his American application and patent as far as the disclosure is concerned due to this publication. On the other hand, if his actual date of filing his application in the United States were allowed to be equivalent to or the same as the convention date, he he would get his desired protection. Therefore, I recommend that the actual date of filing in the United States under a convention date should be the convention date as far as publications are concerned describing work done by the inventor himself. The present law does not protect an inventor in such situations where publication is beyond his control. On the other hand, an American inventor is protected abroad under similar situations. Therefore, it is unfair and in due time Americans may lose valuable rights abroad if the foreign countries should retaliate against this unfair situation here. As outlined on page 9, paragraph 102, the present bill provides that the invention must not be published more than 12 months prior to the filing of the application in the United States. This should be limited to state that it must not be published by others or as the discovery of others, other than the inventor. The inventor should have the right to patent protection providing he files his application within 12 months of his publication anywhere and then providing he files an American application equivalent to such foreign application under the convention date. I hope you will give this due consideration, as situations are constantly arising which are very unfair to inventors, especially those residing abroad. DEAR SIR: As directed by the board of directors of the Patent Equity Association, I am sending you herewith 10 copies of a resolution of the board in reference to H. R. 3760, Eighty-second Congress, first session, for the use of the members of your committee. Very truly yours, T. IRVING POTTER, President. RESOLUTION Referring to H. R. 3760, Eighty-second Congress, first session, a bill to revise and codify the laws relating to patents, and so forth, the board of directors of Patent Equity Association, Inc., hereby resolves as follows: 1. The bill evidences much careful thought. 2. The provisions of the bill are, for the most part, sound and constructive. 3. The bill is endorsed, except for section 102 (e), which should be eliminated, and section 212, which should be clarified if retained. 4. Section 102 (e) would perpetuate various anomalous results that have developed under court decisions, e. g., the following results: (I) An inventor invents a new window screen and sells a few to try out the market. An early customer then invents a lock particularly adapted for that screen-and hurries to the Patent Office with an application which necessarily discloses the screen in order to show how the lock works. This second inventor is honest, and his application claims only the lock, not the screen. The first inventor then files an application on his screen within the year permitted by section 102 (b), and obtains his patent. Later the second inventor's patent issues on the lock. Years later, after both inventors are dead, the first inventor's screen patent is invalidated by the subsequently issued lock patent which made no claim whatever to the screen. Thus, the first inventor's screen patent is invalidated on the first inventor's own invention, even though the first inventor filed within the year permitted by section 102 (b), and even though no one other than the first inventor ever even claimed to have invented the screen! This remarkable doctrine stems from Alexander Milburn v. Davis-Bournonville (270 U. S. 390). In that case, the two applications were filed only 5 weeks apart, and only one of the applicants claimed to be the inventor of the invention which the court struck down. (II) Under section 102 (e) information which is not available to the public when an inventor files his application becomes prior art against his patent ex post facto—through an earlier filed application subsequently issuing as a patent. And in view of section 103, the earlier filed application does not even have to disclose the invention; instead, it is added, ex post facto, to other things to synthesize the invention-and by hindsight at that. 5. Section 212 is new to the law, and it probably will make things worse instead of better. If retained, it should be clarified. As worded, it is not at all clear whether a joint inventor who grants a license has to both obtain the consent of the other inventor and account to him or only either (a) obtain consent or (b) account. 6. The president of Patent Equity Association, Inc., is directed to forward 10 copies of this resolution to the Committee on the Judiciary, House of Representatives. BOARD OF DIRECTORS, PATENT EQUITY ASSOCIATION, INC. THE B. F. GOODRICH Co., COUNSEL, JUDICIARY COMMITTEE, SUBCOMMITTEE No. 3, House of Representatives, Washington, D. C. SIRS I have been informed of the work of the coordinating committee sponsored by the Council of Patent Law Associations in reviewing drafts of the proposals for recodification of the patent laws, and in particular in proposing corrections in the bill H. R. 3760, on which hearings are scheduled to commence on June 13. I approve of the proposals made by the coordinating committee, but believe that they may not have gone as far as is desirable in clarifying the most important of all the sections of the bill, which is section 102. As it stands, this section, defining what is patentable, suffers from some faults in draftsmanship, including use of words without antecedents, use of different words to designate the same thing, use of special words of art without definition, and a somewhat illogical and confusing arrangement. I am sure that you are as deeply concerned as any of the many people more directly interested in the patent laws in having the recodification state the law with the greatest clarity, and I consequently invite your most careful considera- ' tion of the following additions and changes, which are intended to be and are believed to be codification of existing law, with no changes in effect from what was intended in section 102, and the immediately adjacent sections as introduced before the Congress: 100. Definitions.-Add the following subparagraph: "(e) The word 'applicant' includes not only an inventor but also joint inventors, and personal representatives and assignees when entitled to take action in connection with applications for patent." a." 101. Inventions patentable.-In line 1, after "any" insert "invention which is 101-A. Date of invention (new section to be inserted between 101 and 102).— "An invention shall be deemed to be made when conceived by and actually reduced to practice by or on behalf of the inventor or constructively reduced to practice by the filing of an application for patent, provided that an asserted prior invention or prior knowledge, use, or publication, may be overcome by proof of reasonable diligence in adapting and perfecting the invention from a time just before the earliest activity of the rival inventor or the earliest date of knowledge use or publication, and continuing until the reduction to practice." 102. Conditions for patentability: novelty and loss of right to patent.-Rewrite the section as follows: "An applicant shall not be entitled to a patent for an invention if the inventor or inventors named in the application for patent 86988-51-ser. 9-13 |