Mr. KANE. We are holding ourselves available for meetings with the staff at the staff's convenience. Mr. BRYSON. Thank you. Mr. Scott, will you identify yourself? STATEMENT OF JOHN W. SCOTT, SCOTT & LITTMAN, Mr. SCOTT. I am John W. Scott. I am a member of the firm of Scott & Littman, attorneys, 1025 Vermont Avenue, Washington, D. C. I appear here for Clarence O'Brien and Harvey B. Jacobson, patent attorneys. I join in the statement that Mr. Kane has just made. I, too, am working with the group. We hope that there can be some satisfactory solution of the problems which we have been working on with the staff. I would like to reserve the right in case that does not materialize to submit a statement on behalf of my clients and also be heard at whatever further session of the committee may be held in that regard. Mr. BRYSON. We will try to extend every courtesy possible. Thank you. Mr. SCOTT. Thank you. Mr. BRYSON. We now have Captain Robillard of the United States Navy. We will be pleased to have you come around. Do you have a prepared statement? STATEMENT OF CAPT. GEORGE N. ROBILLARD, UNITED STATES NAVY, APPEARING FOR THE DEPARTMENT OF DEFENSE Captain ROBILLARD. Mr. Chairman, I understand that you have received the copy of the report. I have not prepared any statement in addition. I would like to add a few comments to what is in the report. (The report is as follows:) Hon. EMANUEL CELLER, DEPARTMENT OF THE NAVY, OFFICE OF THE JUDGE ADVOCATE GENERAL, Chairman, Committee on the Judiciary, House of Representatives. MY DEAR MR. CHAIRMAN: Your request for comments on H. R. 3760, to revise and codify the laws relating to patents and the Patent Office, and to enact into law title 35 of the United States Code entitled "Patents," has been referred to this Department for the preparation of a report thereon expressing the views of the Department of Defense. The purpose of this proposed legislation is expressed in the title of the bill. The Department of the Navy, on behalf of the Department of Defense, interposes no objection to the enactment of H. R. 3760 subject, however, to certain amendments which are recommended hereinafter for the reasons stated in connection therewith. (a) In line 1 of section 101, insert the word "art," before the word "process" and make the same change in line 2 of section 115. The above changes are recommended to avoid misinterpretation. H. R. 3760 has eliminated the term "art" now appearing in the present law (35 U. S. C. 31) and substitutes the word "process." The term "art" is as old as the patent law and finds its basis in the constitutional provision permitting the establishment of patent laws. It has a well-defined meaning and has been construed by the courts in numerous cases. (b) Delete subsection (g) of section 102 and insert the following in lieu thereof: "before the applicant's invention thereof the invention was in fact made by another who in this country was using reasonable diligence in reducing it to practice or had reduced it to practice, provided such other had not abandoned, suppressed or concealed the invention after reduction to practice, and had exercised diligence in putting it into use or in other. wise making knowledge thereof available to the public." This subsection as now written in the bill could be interpreted to constitute a secret reduction to practice in anticipation of an issued patent. This interpretation is contrary to existing law and is not approved by the Department of Defense. The above amendment would prevent such an interpretation. (c) Add the following paragraph to section 122 of the bill. "Pending applications for patents may be printed and published by the Commissioner, at the request and expense of the applicant and owner. Such publication shall have the same effect as an issued patent for the purposes of section 102 (e) of this title." This paragraph was included in H. R. 9133, Eighty-first Congress, and received strong support from governmental agencies. It will permit governmental agencies to have applications printed and published and thus save the cost of prosecuting them to allowance. If the application is full disclosure then publication will make it "prior art" and give to the Government the same protective position as does an issued patent. The procedure is presently followed under administrative orders of the Commissioner of Patents. Statutory authority would remove any doubt of the legality of this procedure. (d) In line 1 of section 201, strike out the words "through error." In line 4 of section 201, insert the words "through error and" before the word "without". As presently drawn the words "through error" could be construed as referring to the words "is deemed" whereas these words should refer to "by reason of a defective specification or drawing or by reason of the patentee claiming more or less than he had a right to claim in the patent." The recommended change will assure the proper construction. (e) Strike out the first sentence in section 211. Although patents have always been recognized as property, they have not been recognized as personal property but as having the attributes of several kinds of property. The opinion in Solomons v. United States (21 Ct. Clms. 479), points out wherein patents are a novelty in the law, certain respects wherein they differ from personal property, and certain similarities thereof to real property. It is not considered desirable to discard over a century of law relating to patent property and replace it with the rules of personal property. (f) Delete all after the catch line in section 212 and insert in lieu thereof the following: "Whenever two or more persons own a patent jointly, either by issuing of the patent to them jointly or by reason of the assignment of an undivided interest in the patent or by reason of succession in title to such interest, each of the joint owners, in the absence of any agreement to the contrary, shall be entitled to make, use or sell the patented inventions or license others so to do, or assign or incumber his interest without accounting to the other joint owners.' This section of the bill provides that joint owners must either join in an assignment or license or account to each other in the absence of an agreement to the contrary. It is believed that this requirement unnecessarily restricts the rights of joint owners. The above amendment, which was section 212 of H. R. 9133, Eighty-first Congress, is considered preferable. (g) Add the following sentence to section 246: "With respect to infringement committed by or on behalf of the Government, the period between the date of receipt by the Government of a written claim for compensation for infringement and the date of mailing by the Government of a notice to the claimant that his claim has been denied shall not be counted as part of the 6 years, unless suit is brought before the last mentioned date." Governmental agencies have authority to settle claims prior to suit and this authority has proved very useful in resolving and disposing of claims against the Government without the necessity of the effort and expense of litigation. It is noted, however, that a claimant who seeks to proceed administratively to settle his claim prior to suit may lose his right to recover compensation for a period of the time equivalent to the time required to process the claim admin istratively since the statute of limitations has been running against the claimant during this period of time. Because of this many claimants have filed suit rather than proceeding to a final administrative determination. The intent of Congress in providing for the administrative compromise and settlement of claims was to reduce the over-all cost of determining the existence of Government liability, both from the Government's standpoint and that of the claimant. The above amendment is needed to protect this intent. (h) In subsection (e) of terminal section 4 on page 28 of the bill add the following at the end before the period: "prior to the effective date of this Act." This amendment will clarify the application of this subsection. This report has been coordinated within the Department of Defense in accordance with procedures prescribed by the Secretary of Defense. The Navy Department has been advised by the Bureau of the Budget that there is no objection to the submission of this report on H. R. 3670 to the Congress. For the Secretary of the Navy. Sincerely yours, G. L. RUSSELL, Rear Admiral, United States Navy, Judge Advocate General of the Navy. Mr. BRYSON. I would like to state before Captain Robillard proceeds, and I hope you will not object, it might be that some of you busy lawyers here have not seen the current issue of the Saturday Evening Post. It would be profitable and interesting if you would get a copy and see the article that is in there. Captain ROBILLARD. The report has been cleared by the Bureau of the Budget. In the report, you will find that we request but eight changes on behalf of the Department of Defense in the codification. I think that is an outstanding tribute, Mr. Chairman, to your committee and to the coordinating committee. We can generally make eight changes in a single paragraph. Of those eight changes there are two in particular to which I would like to address myself and invite your attention. The first is an addition to section 122. You will find it on page 2 of the report where we ask that a paragraph be added which will permit the printing and publication of pending applications without the necessity of prosecuting them through to an allowance. The reason we are particularly interested in that, from the viewpoint of the Government, is that we feel that our policy of issuing patents in the name of the Government only from the viewpoint of establishing a protective position results in a tremendous waste of time, effort, and money, which could be saved if we could print and publish the application and make it a complete disclosure with the same effect as the patent. Merely as an example, we have in our own Navy Department approximately 800 to 1,000 cases which are Government-owned. If this provision were enacted into legislation, we could probably publish all of those without the necessity of any further prosecution, saving a tremendous amount of time on our part and certainly relieving the Patent Office of a tremendous burden. The second provision which I wish to emphasize is the addition to section 246 which, in effect, is the statute of limitations for recovery under a patent. At present, a patent owner's remedy against the Government is by suit in the Court of Claims, unless they reach a satisfactory settlement with those agencies which have authority to settle the cases. We would like to add the provision to toll the statute of limitations during the pendency of a claim in an administrative agency so that neither of us would have the pressure on us to try to reach a settlement and the patent owner would not be losing his right to go into the Court of Claims in the period between the time he files the claim and we finally reject it. It would be particularly beneficial to the Government, I think, in view of the fact that in many instances we can often arrive at a very satisfactory compromise, many times including settlements for past infringement and future use, which, of course, is extremely important to use where the patent has not expired and we will continue to use it. Mr. CRUMPACKER. I see that this language which you have recommended here says that the period of time from the date a written claim is received until the date of mailing of a notice of denial shall not be counted in the 6-year period unless suit is brought before the last mentioned date. If a claim were filed, say, 5 years after the infringement and negotiations continued for more than one year thereafter, and no suit was filed, then from the time that the 6-year period had expired until the Government saw fit to act on the claim the patentee would be entirely without remedy or recourse, would he not? Captain ROBILLARD. Your point is well taken, sir. The language is poor. That was not the intent. The intent was to toll that period. Mr. CRUMPACKER. Then if you strike the part beginning with the words "unless on", would that create any new defects? Captain ROBILLARD. We did want to point out if a claim is pending and during that pendency the claimant brings suit, then the statute would start running. Mr. CRUMPACKER. The filing of the suit tolls the statute in any event, does it not? Captain ROBILLARD. Yes. I think it is right to strike it out. Would you let me give it a little more thought and discuss it with the committee in case we have any worries about it? Mr. CRUMPACKER. Yes. Mr. BRYSON. When we go into executive session to mark the bill up, we would appreciate your being available to assist us in making any changes. Captain ROBILLARD. They are the two which I consider very important. The others, I think, are directed more to clarification than anything else. That is all I have to say. Mr. BRYSON. You do not care to discuss the others? Captain ROBILLARD. No, sir. I do not think they are important enough to take up the time of the committee. Mr. BRYSON. Thank you, Captain. We wish to offer for the record here a statement dated June 13, 1951, from the Federal Security Agency and likewise a statement dated June 12, 1951, from the National Advisory Committee on Aeronautics. (The statements referred to follow: FEDERAL SECURITY AGENCY, HON. JOSEPH R. BRYSON, Chairman, Subcommittee No. 3, Committee on the Judiciary, House of Representatives, Washington 25, D. C. DEAR MR. CHAIRMAN: This letter is in response to your request of April 30, 1951, for a report on H. R. 3760, a bill to revise and codify the laws relating to patents and the Patent Office, and to enact into law title 35 of the United States Code entitled "Patents." Each year a number of inventions are made by employees of this Agency, and also by other individuals engaged in research work supported wholly or in part by Public Health Service fellowships or grants in aid of research. Where the invention is of such a nature that it should be patented in the public interest, the Agency takes steps to secure a patent. The preparation and prosecution of patent applications is handled for us by the Department of Justice, and we assume that Department may have its own recommendations with respect to this bill. Our comments will be confined to points relating to the ownership and assignment of inventions and patents, and to the waiver of patent fees in certain cases. 1. Section 212 "Joint Owners".-This section of the bill provides that in the absence of any agreement to the contrary, where an invention is made jointly by two or more persons "neither of the owners may grant licenses or assign his interest, or any part thereof, without the consent of the other owners or without accounting to them.". This constitutes an important change from the present law, under which each joint owner has an independent interest in the patent. There are two aspects to this interest. At present, in the absence of an agreement to the contrary each coowner of an undivided interest in a patent can independently make, use, and sell the invention, i. e., the thing or process invented, without the consent of the other owners and without accounting to them for any profits; and this rule is preserved in section 212 of the present bill. However, under existing law a joint owner ordinarily can also assign or grant his interest in the patent itself, or can grant licenses under the patent, without the consent of his coowners and without accounting to them; and this aspect would be changed by the language quoted above. The exact meaning of the quoted language is not entirely clear, however. It might be interpreted as requiring a coowner either to obtain the consent of his coowners or to account to them, before granting licenses or assigning his interest in the patent. On the other hand, it could also be read as requiring him to do both. In the latter event particularly, the change in the law would create a problem for this agency in certain cases and presumably also for other Government agencies making research grants. This difficulty arises out of the circumstance that patentable inventions sometimes result from research performed by a research scientist who, for example, may have been receiving a Public Health Service fellowship, but who may have been working in a laboratory jointly with one or more other individuals who received no support from public funds. In such cases, the inventor who had received Federal funds in support of his work would be free, under existing law, to fulfill without the consent of his coinventor any agreement he may have made for the purpose of receiving the research award. For example, that agreement might call for the assignment of his interest in the patent, without remuneration, to the Government, or the inventor might be authorized to assign his interest in the patent to a suitable institution for administration in the public interest. In the event of such assignment, the Government or other assignee in turn is also free to grant licenses under any such patent to any commercial firm or other person who may wish to make use of the invention. However, without the agreement of the colleague who participated in the research (who was under no obligation to the Government), it would appear that the Government might be impeded in receiving any interest in the invention or granting any licenses under it, even though the invention resulted from a substantial investment of public funds. This would be equally undesirable from the point of view of the coinventor, since the Government would be involved in any action he wished to take with respect to his interest in the patent. If the bill were passed in its present form and narrowly interpreted, it might be difficult to take effective steps to protect the public interest in such inventions. For example, it would not always be practicable to enter into advance agreements with each person who might collaborate in the research, because it would be very difficult to identify in advance each scientist or assistant who might participate and who therefore would have to be a party to the agreement. Even if the identity of all such individuals could be ascertained, the main purpose of the research grants and fellowships is to promote the increase of knowledge and to train skilled personnel, rather than to make inventions, and a patentable invention results from only a small percentage of them. Therefore it would be necessary to enter into a large number of agreements, only a small fraction of which would be useful. If it is decided to enact a provision which will accomplish the general objectives of section 212, this agency would have no objection, provided it clearly |