And, while the committee does not feel empowered to request endorsement of the specific amendments of substance embodied in the bill, it wishes to emphasize that these amendments were included only after the most careful study, and with full consideration to suggestions of technically competent private groups. Now, therefore, be it Resolved, That the Chamber of Commerce of the State of New York endorses, in principle, H. R. 3760, which would revise, codify, and enact into law title 35 of the United States Code, entitled "Patents"; and which would add to title 35 certain amendments of substance; and be it Resolved, That the chamber urges the Congress to act favorably upon this or generally similar legislation; and be it further Resolved, That copies of this report be sent to all Members of Congress. Respectfully submitted. AUGUST IHLEFELD, Chairman, JOHN M. MONTSTREAM, EDWIN S. S. SUNDERLAND, Committee on Law Reform, Attest: B. COLWELL DAVIS, JR., Executive Secretary. NEW YORK, June 7, 1951. SEATTLE, WASH., June 13, 1951. NATIONAL COUNCIL OF PATENT LAW ASSOCIATIONS, The Seattle Patent Law Association by special committee for the consideration of H. R. 3760, approves that bill as it is proposed to be amended in the coordinating committee's report of May 22, 1951, subject to further consideration of section 102 (g) which may better state the law of interferences. In principle this proposed legislation is approved and its passage is supported. FORD E. SMITH, Chairman. ORLAND M. CHRISTENSEN. DUANE C. BOWEN. Mr. BRYSON. Mr. T. Hayward Brown, of the Department of Justice. STATEMENT OF T. HAYWARD BROWN, CHIEF, PATENT LITIGATION UNIT, CLAIMS DIVISION, DEPARTMENT OF JUSTICE Mr. BRYSON. Please proceed, sir. Mr. BROWN. Mr. Chairman, I appreciate the opportunity to express the views of the Department of Justice concerning H. R. 3760. ~The primary purpose of the present bill is the codification of the statutes relating to patents. The Department of Justice is in accord with this general objective and recognizes that your subcommittee has made notable accomplishments in codifying the law in other fields. In addition to the codification objective of the present bill, the bill also proposes to make various changes of substance in the patent laws. Ordinarily codification bills are very restricted in the actual changes in substance made in the law. There is one danger in introducing changes in the law in a codification bill in that the changes may be major or may be controversial and would overshadow the general objectives of the codification bill. In cases of codification there is a general presumption of a legislative intent to follow existing statutes, notwithstanding changes in phraseology, which would not be applicable where the law is also being amended substantively. As a result, it becomes difficult to ascertain upon a doubtful point whether a substantial change in existing law or merely a change in language was intended and the ultimate effect may be to cause confusion in the interpretation of the law. It is particularly important that the patent law not be unsettled or rendered ambiguous at this time of National emergency when patents will play a large part in the expansion of industry incidental to National defense needs. The Government has a particular interest in this since it must pay, directly or indirectly, for the use of patent rights in such expansion and in the rearmament program. There is also the danger that in attempting to revise the whole patent law insufficient consideration may be given to particular sections and their interrelationship with the consequence that unintended changes in the law may result. It is suggested that if enactment of the present Title 35 into law is deemed necessary, this be done without attempting to revise the law substantively at the same time. If, on the other hand, over-all substantive changes are deemed necessary, it would seem better to handle such changes by separate enactments. If it is thought desirable, however, to enact the bill in its present form, there are certain features of the measure which would seem to require further consideration. I will discuss the particular sections that the Department feels may deserve further consideration. Section 100 of the bill, "definitions," defines "invention" to include discoveries. While the term "discovery" is used in the patent law as synonymous with invention and it has been recognized that the act of discovery is an essential part of the invention, under existing law discoveries, as such, are not patentable. The section might have the effect of creating doubt as to existing law on the subject of discovery and might result in opening the door to a huge new area of patents, and permit the creation of monopolies in some of the fundamental and far-reaching discoveries in the fields of chemistry, physics, medicine, mathematics, et cetera. The Department would be opposed to the creation of any new area of monopoly which would be exempt from the operation of the antitrust laws in the absence of clear evidence that such extension is necessary to provide adequate incentive for scientific effort. There would appear to be no such necessity with respect to the broad field of "discovery.' Section 100 also defines the term "process" to include a "new use of a known process, machine, manufacture, composition of matter or material." Under present law it is not invention to apply old and wellknown materials, processes, or devices to new uses in other and analogous arts. However, if an old device or process be put to a new use, which is not analogous to the old use, and the adaptation of the old device or process to the new use is of such a character as to require the exercise of the inventive faculty to produce it, a patent may be granted for the new use. The Department is opposed to this section if it is intended to materially extend existing law, to uses that are obvious or to uses that do not require invention. Section 103 of the bill, "conditions for patentability; nonobvious subject matter," provides that: A patent may not be obtained though the invention is not identically disclosed or described in the prior art set forth in section 102 of this title, if the differences between the subject matter sought to be patented and that prior are are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. This section is rather ambiguous in phraseology and its meaning is not clear. Section 103 apparently attempts to state one of the present negative rules of invention that mere mechanical skill is not invention. This rule has a long history and background and the standard of mechnical skill depends upon the nature of the art in question. The wisdom of attempting to codify this rule in one sentence is questionable and in any event this is only one test of invention and it should not, in the opinion of this Department, be made the sole test. Insofar as this section may be intended to change the present law, we are opposed to it. If no change is intended, we think that the language should be clarified. There are some sections of the bill that have been discussed in the Deputy Attorney General's letter that you have on file in which he reports favorably on the sections, pointing them out as being new legislation that the Department agrees with. To shorten my presentation, I will omit mention of those sections. They include section 104 and other sections that I will mention later. Section 112 relating to patent specification contains a provision that an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure or acts in support thereof, and such claim shall be construed to cover the corresponding structure, materials, or acts described in the specification and equivalents thereof. This section may substantially alter existing law. At present the courts will invalidate a single "means" claim when it is functional; that is, when it covers all means for performing an act, or when the step described as a "means" is the precise point of invention. The burden at present is upon the patentee to describe his invention in exact terms and it is not clear to what extent he might be relieved of this duty under the proposed section. The section further introduces into the statute for the first time the controversial doctrine of equivalents without defining its scope. The Department sees no necessity for this section since the courts have rarely invalidated a patent merely because of the language used in a claim when it is clear that the patentee only intended to refer to, but not to claim as his invention, means which were old in the art. Section 118 of the present bill introduces a new concept heretofore unknown to the United States patent law. This section permits an assignee or a person to whom the inventor has agreed to assign an invention in writing to apply for a patent whenever the inventor cannot be found or refuses to execute an application. The patent to be applied for under this section will issue to and in the name of the inventor unless a court of competent jurisdiction orders a transfer thereof to the party to whom the inventor has agreed to assign the invention. This new section is believed to be highly desirable in that it would permit employers, including the Government, to file applications for patent on inventions made by employees who are unavailable when an application is ready to be filed. This is not uncommon in these troublous days when many military and other personnel are beyond the seas when needed for the execution of a patent application. The section does not change any substantive rights. It merely permits the timely filing of an application by the party who thinks he has an interest therein without in any way affecting the inventor's rights. Section 144, "Decision on appeal," embodies the existing statute except that it omits the last sentence of the present section 4914 (35 U. S. C. 62) which states that no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question. Deletion of this sentence might be interpreted as expressing a congressional intent to make patent validity conclusive where the patent had been upheld by the Court of Customs and Patent Appeals in what is frequently an ex parte action. This Department would be opposed to such a change in the law and suggests that the bill be amended so as to retain the above language. With respect to section 202, it is suggested that if the existing court law is to be embodied in a statute, as that section contemplates, the established court rule of due diligence in applying for a reissue should be included as well as the present rule that a delay of more than 2 years will create a presumption of intervening rights in the public. Section 212 of this bill provides that in the absence of agreement, joint owners of a patent may not individually grant licenses or assign their interest without the consent of the other owners or without accounting to them. This section introduces a new concept to the patent law but it is believed to be a salutary one for inventors very often know little or nothing about the patent laws. Enactment of this section would protect a joint inventor against an unscrupulous coinventor or coowner. Paragraph (b) of section 231 provides that any person who actively induces infringement shall be liable as an infringer. Paragraph (c) provides that it shall constitute contributory infringement to sell a component part of a patented machine, manufacture, combination or composition or material or apparatus for use therewith, if a— material part of the invention especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use Paragraph (d) provides that: * * * No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal etxension of the patent right because he has done one or more of the following: (1) Derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized a person to perform acts which if performed without his consent would constitute contributory infringement of the patent; and (3) sought to enforce his patent rights against infringement or contributory infringement. These provisions would result in writing into the patent statutes for the first time the strictly judicial doctrine of contributory infringement, a doctrine which has been the subject of considerable controversy and has been properly limited by the courts in recent years. This Department is opposed to extending the law of contributory infringement. The revision would clearly extend it in several respects. In the first place, paragraph (b) would put the contributory infringer in the same category as a direct infringer, thereby subjecting him to the limitations and liabilities of the latter. Paragraph (d) would greatly impair the salutary doctrine that a patentee who has misused his patents may not recover in a suit for either direct or contributory infringement. The Supreme Court has held that a requirement by a patentee that users purchase from him or his exclusive licensee unpatented parts not within the scope of the patent, was a misuse of the patent and barred recovery even though contributory infringement was assumed to exist. This doctrine is a most important factor in the enforcement of the antitrust laws with respect to tying arrangements and the Department is opposed to any impairment thereof. It is not clear to what extent paragraph (b) is intended to enlarge the present law on contributory infringement. The phrase, "actively induces infringement" might cover many situations which are not now considered to be contributory infringement. Paragraph (c) also appears to enlarge the scope of contributory infringement. While some cases have indicated that one who sells an article not capable of use except in an infringing manner is liable for contributory infringement even in the absence of actual knowledge of the infringement, the sounder approach would seem to be that such facts merely give rise to a rebutable presumption of intent to infringe. The first paragraph of section 242 (Presumption of validity; defenses) provides that a patent shall be presumed to be valid and the burden of establishing invalidity shall rest upon the party asserting it. The Department objects to these provisions since at present the presumption of validity is not embodied in a statute and is merely a qualified rule of evidence. Also under present law this presumption does not always hold true, for example in cases where the Patent Office fails to cite or consider pertinent references or prior art. Section 203 (Disclaimer of invalid claim) and 248 (Suit for infringement when a claim may be invalid) substantially alter the present law as to a statutory disclaimer. Section 203 omits the provision of the present statute (R. S. 4922; 35 U. S. C. 71) that "no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer." Under this provision, the courts have held that the entire patent may be void if a prompt disclaimer is not filed. Section 248 of the proposed bill, on the contrary, expressly provides that an action for infringement may be maintained despite failure to disclaim an invalid claim, the only penaly being that no costs may be recovered. The present rule requiring a prompt disclaimer of invalid claims is intended to place upon the patentee the burden of restricting his claims to his actual invention. This accords with the basic idea of the patent laws that a patentee may only claim the invention he had disclosed in his patent. The present law even goes so far as to require the prompt disclaimer of claims similar to one which has been held invalid. The public interest requires the formal cancellation of invalid claims so that they may no longer be used to harass the public through nuisance litigation and misleading impressions of legitimate scope of the patent, and thus discourage the public's use of technology that it is entitled to use freely. |