Mr. HUXLEY. Always subject to appeal to the court. It would do away with an appeal to the court on precisely the same record. It would also permit the applicant to go into the Federal court and have the decision of the commissioner reviewed in that manner-not by direct appeal but by starting a new proceeding.

Mr. BARNETT. Will you point out how, in the original suit, the inventor would be allowed to strengthen his case?

Mr. HUXLEY. He could take testimony and bring out all the facts pertinent and have an absolutely full hearing in the matter, and if he does not get justice from the Patent Office he could get it from the

courts.

Mr. UNDERWOOD. What I was interested in was whether the rights of the inventor were positively safeguarded in the way of appeal. Mr. HUXLEY. Yes, sir. He can always go right into the court. Simply as a matter of record, I should like to file the preliminary report of the committee of the American Bar Association and also the vote of the different bar associations indorsing these measures in so far as they relate to the propositions that are concerned here. The CHAIRMAN. If there is not objection they will be made a matter of record.

(The papers referred to are printed in full as follows:)

REPORT OF THE COMMITTEE ON PATENT LAW REVISION

To the Patent Section of The American Bar Association:

Your committee, appointed to consider the matter of revision of the patent law, submits the following report:

At the meeting of the section held at Philadelphia July 7, 1924, the committee on patent law revision submitted a report recommending:

(1) That appeals from the board of appeals of the District of Columbia be abolished.

"(2) That appeals from the board of examiners in chief to the Commissioner of Patents be abolished.

"(3) That the commissioner and his assistants and the examiners in chief be constituted a single board of appeals.

"(4) That section 4915 R. S. be amended to permit suits in ex parte cases to be brought at either the residence of the applicant or in the District of Columbia, and the inter partes cases in the district of residence of any prevailing party; and to make the evidence taken in the interference proceeding in the Patent Office competent in the subsequent suit."

At the section meeting amendments were offered to the several proposals of the committee, vote was taken upon the several amendments to the report, and the entire report was then referred back to the committee on the patent law revision for further consideration with instructions to report to the next meeting of the section. The vote on the several amendments offered to the committee's report indicated approval by the section of the following changes in the existing law:

"(1) That appeals to the Court of Appeals of the District of Columbia in both ex parte cases and interferences be abolished.

(2) That the appeal from the board of examiners in chief to the Commissioner of Patents be abolished in interference cases but retained in ex parte

cases.

(3) That under section 4915 R. S. suits in ex parte cases be brought exclusively in the Supreme Court of the District of Columbia.

"(4) That under section 4915 R. S. provision be made for service upon a representative of a foreign party and upon parties in the United States residing in different districts."

At the midwinter meeting of the patent section, held in Washington, February 20, 1925, your committee reported that the committee organized by Secretary Work under the chairmanship of Mr. Thomas Ewing had taken up for consideration, among other things, the same questions relating to appeals in the Patent Office and proceedings under section 4915 which had been referred to your com

mittee, and your committee was instructed to collaborate with the Secretary's committee in the work of the preparation of a bill to be submitted, with recommendations, at the meeting of the section to be held in Detroit.

Your committee has carefully considered the proposed changes in the statutes, and submits herewith a bill prepared in collaboration with a subcommittee of the secretary's committee. The subjects covered are briefly as follows:

(a) Elimination of appeals to the Court of Appeals of the District of Columbia requires the repeal of R. S. sections 4911, 4912, 4913, and 4914, and section 9 of the act of February 9, 1893; ch. 74; 27 Stat. L., 434, and an amendment of R. S. section 4915. The first few lines of R. S. 4915 read:

"SEC. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity

* *

The section should be amended by striking out the words italicized.

(b) Elimination of appeals to the Commissioner of Patents from the examiners in chief in interference cases requires the amendment of R. S. sections 4904 and 4910. Section 4904 now reads:

"SEC. 4904. Whenever an application is made for a patent which, in the opinion of the commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the primary examiner, or of the board of examiners in chief, as the case may be, within such time, not less than twenty days, as the commissioner shall prescribe.

The proposed amendment strikes out the words italicized.

Section 4910 reads as follows:

"SEC. 4910. If such party is dissatisfied with the decision of the examiners in chief, he may, on payment of the fee prescribed, appeal to the commissioner in person."

The proposed amendment adds:

Provided, however, That in interference proceedings the decision of the examiners in chief shall be final except that the commissioner may at his option review their decision on any points involved therein (a) upon petition of one of the parties; (b) upon his own volition; or (c) upon request of the examiners in chief."

(c) In proceedings under R. S. section 4915, it is proposed to provide for service upon defendants residing abroad and upon a plurality of defendants residing in different judicial districts; and also to provide for the use of records made in the Patent Office. The first object can be accomplished by an amendment to section 52 of the Judicial Code so that said section will read as follows, the added matter appearing in italics:

"SEC. 52. When a State contains more than one district, every suit not of a local nature, in the district court thereof, against a single defendant, inhabitant of such State, must be brought in the district where he resides; but if there are two or more defendants, residing in different districts of the State, it may be brought in either district, and a duplicate writ may be issued against the defendants, directed to the marshal of any other district in which any defendant resides. The clerk issuing the duplicate writ shall endorse thereon that it is a true copy of a writ sued out of the court of the proper district; and such original and duplicate writs, when executed and returned into the office from which they issue, shall constitute and be proceeded on as one suit; and upon any judgment or decree rendered therein, execution may be issued, directed to the marshal of any district in the same state. And upon the filing of a bill in the Supreme Court of the District of Columbia wherein remedy is sought under Sec. 4915 or Sec. 4918 of the Revised Statutes, without seeking other remedy, if it shall appear that there is an adverse party residing abroad or adverse parties residing in a plurality of districts not embraced within esame State, the court shall have jurisdiction thereof, and writs may be issued against all of the adverse parties with the force and effect and in the manner set forth in this section; provided that writs issued against parties residing abroad pursuant to this section may be served by publication or otherwise as the court shall direct."

The provision for use of evidence taken in the interference proceeding in th: Patent Office, can be accomplished by adding the following to R. S. section 4915. "In all suits brought hereunder, where there are adverse parties, the record in

the Patent Office shall be admitted in whole or in part, on motion of either party, subject to such terms and conditions as to costs, expenses and the further crossexamination of the witnesses as the court may impose, without prejudice, however, to the right of the parties to take further testimony. The testimony and exhibits, or parts thereof, of the record in the Patent Office when admitted, shall have the same force and effect as if originally taken and produced in the suit. For the purposes of this section an adverse party is the owner of a right to as in a patent with respect to which the patent sought by proceedings hereunder, if granted, would be an interfering patent."

(d) The proposed amendment to R. S. section 4894 is to limit the time for responses to actions by the examiner (which would include appeals to the board and to the commissioner) to six months.

(e) The proposed amendment to R. S. section 4918 is designed to make it clear that in proceedings under that section, between owners of interfering patents, the court may declare either or both of the patents invalid.

In presenting the annexed bill for the consideration and action of the patent section, your committee makes the following statement: It believes that the members of the patent bar are practically a unit in recognizing the desirability of reducing the number of appeals in both ex parte and interference cases. Your committee is informed that the specific proposals set forth in the bill presented herewith have at least the tentative approval of the Secretary's committee. A majority of the members of your committee favor the bill in its entirety, save as to the proposed amendment of R. S. section 4894 (item d) above referred to. As to said item the amendment is presented merely in order that the section may have that subject before it in concrete form for such action as it may desire to take. On the other hand, one member of your committee favors retaining the appeal to the Court of Appeals of the District of Columbia, and establishing in the Patent Office a single board of appeals comprising the commissioner and as many assistant commissioners as may prove necessary, doing away with the examiners in chief.

In view of the extended consideration and discussion which the patent bar has already given to the various proposals involved in the annexed bill, further comment thereon in this report is believed unnecessary. Respectfully submitted.

CHARLES H. Howson, Chairman.
G. WILLARD RICH,

MARCUS B. MAY.

(NOTE. By reason of his absence in Europe at the time this report was prepared, the fifth member of the committee, Mr. Charles J. Williamson, was unable to join herein.)

A BILL Amending the statutes of the United States as to procedure in the Patent Office and in the court with regard to the granting of letters patent for inventions and with regard to interfering patents

To be enacted by the Senate and House of Representatives of the United States of America in Congress assembled: That section 4894 of the Revised Statutes of the United States be amended by striking out the words " one year" wherever they appear and substituting therefor the words "six months."

That section 4904 of the Revised Statutes of the United States be amended by striking out from the last sentence thereof the words "or of the board of examiners in chief, as the case may be."

That section 4910 of the Revised Statutes of the United States be amended by adding thereto the following:

"Provided, however, That in interference proceedings the decision of the examiners in chief shall be final except that the commissioner may at his option review their decision on any points involved therein (a) upon petition of one of the parties; (b) upon his own volition; or (c) upon request of the examiners in chief.'

That sections 4911, 4912, 4913, and 4914 of the Revised Statutes of the United States be and the same are hereby repealed.

That section 9 of the act of February 9, 1893, entitled (here insert the title of the act) be and the same is hereby repealed.

That section 4915 of the Revised Statutes of the United States be amended to read as follows:

"SEC. 4915. Whenever a patent on application is refused by the Commissioner of Patents, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had,

may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not. In all suits brought hereunder, where there are adverse parties, the admission and use of the record in the Patent Office, in whole or in part, shall rest in the sound discretion of the court, and subject to such terms and conditions as to costs, expenses and the further cross-examination of the witnesses as the court may impose, without prejudice, however, to the right of the parties to take further testimony. The testimony and exhibits, or parts thereof, of the record in the Patent Office when admitted, shall have the same force and effect as if originally taken and produced in the suit."

That section 4918 of the Revised Statutes of the United States be amended by inserting after the word "either" in the phrase "may adjudge and declare either of the patents void in whole or in part" the words or both." That this act shall take effect months after its approval; but it shall not affect appeals then pending before the Commissioner of Patents or in the Court of Appeals of the District of Columbia.

A BILL Amending section 52 of the Judicial Code

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled: That section 52 of the Judicial Code be and the same is hereby amended by adding thereto the following:

"And upon the filing of a bill in the Supreme Court of the District of Columbia wherein remedy is sought under section 4915 or section 4918 of the Revised Statutes, without seeking other remedy, if it shall appear that there is an adverse party residing abroad or adverse parties residing in a plurality of districts not embraced within the same State, the court shall have jurisdiction thereof and writs may be issued against all of the adverse parties with the force and effect and in the manner set forth in this section; provided that writs issued against parties residing abroad pursuant to this section may be served by publication or otherwise as the court shall direct."

OBJECTIONS, DISSENT TO AND SUGGESTIONS COncerning REPORT OF THE COMMITTEE ON PATENT LAW REVISION

To the Patent Section of the American Bar Association:

It is impossible for me to approve the report of the committee on patent law revision, of which I am a member, signed by Charles H. Howson, G. Willard Rich, and Markus B. May.

It seems to me that the plan proposed by it very greatly increases the complications and likelihood of delay over the present procedure, and is apt to result in a very wide conflict of opinions affecting the grant and issuance of patents.

There should, in my opinion, be but a single appeal to a single appeal board within the Patent Office.

Since hearing the discussions on the report of the same committee at the meeting of the patent section held in Philadelphia, July 7, 1924, a plan has been suggested by which the procedure incident to the granting of patents could be greatly simplified and expedited (without changing the present statutes relative to appeals to the courts from decisions in the Patent Office), on both ex parte and inter partes matters.

The new plan, which has my approval, is, in substance, as follows: "First. That the board of examiners in chief be abolished.

"Second. That there be appointed sufficient assistant commissioners, with qualifications similar to those now required for eligibility to the board of examiners in chief, and appointed in the same way.'

(I suggest in this connection that the present members of the board be made assistant commissioners when the board of examiners in chief is abolished.)

"Third. That three assistant commissioners or the commissioner and two assistant commissioners sit in hearing all appeals in the Patent Office, the personnel for each hearing to be determined by the commissioner.

"Fourth. That all appeals in the Patent Office be taken directly to the commissioner and to be decided by the three thus selected.

"Fifth. In this connection I favor retaining appeals to the Court of Appeals of the District.

"Sixth. I should not oppose leaving in force section 4915 simply for the reason that it is so rarely used as to be largely innocuous. I should have no objection to entirely eliminating section 4915, because I think one appeal to the courts is ample concerning all matters affecting the grant and issuance of patents."

By the suggestions above outlined in paragraphs first to fourth, inclusive, everyone representing applicants for patents would immediately know to what tribunal an appeal within the Patent Office was to be taken, as there is but one, and that this tribunal would settle all matters of appeal. With a board consisting of the commissioner and assistant commissioners, the commissioner would have entire supervision of the grant and issuance of patents and all matters of practice relating thereto.

In the event any applicant felt that the commissioner or board of commissioners was acting improperly, he would have a single appeal to the Court of Appeals of the District if the present statute relative thereto remains in force, as I think it should.

I can see no reason whatever for eliminating the Court of Appeals of the District and substituting some other appellate tribunal in matters affecting the Patent Office. If the personnel of the court of appeals is unsatisfactory (which I think it is not) this can be easily rectified in the future by the President and those having to do with appointments to that court. There is no occasion for changing the system.

It seems to me, and to a great many others with whom I have had occasion to discuss the subject, that dividing the jurisdiction between two appellate tribunals at the Patent Office, and doing away with the court of appeals as proposed by the three members of the committee signing the report, would fail to accomplish what is needed over the present practice, for many applicants would bring proceedings in the different district courts of the United States under section 4915. As these proceedings largely affect administration matters and would go to any district court in the United States or the Supreme Court of the District, much further delay and confusion would result than under the present practice. It seems to me unfortunate that more consideration should not have been given this matter by our committee before attempting to formulate a report.

As the matter is of such vital importance and is bound to affect the public so generally, I feel it necessary to make the foregoing objections, dissent to and offer suggestions concerning the report of the committee as fully as I have done, especially as it seemed to me a year ago that the plan which is now proposed by the three members of the committee signing it was as satisfactory arrangement as could be then agreed upon. The plan proposed herein I now think much more efficacious and should have careful consideration before any final recommendations are made.

The question of eliminating unnecessary procedure, and especially as to appeals, in connection with the granting of patents is one of such vital importance that I think every feasible suggestion should be considered by the bar generally, and that it would be advisable to have members of the bar invited to make suggestions concerning any such report as is made here before final recommendations are made by any committee.

WALLACE R. LANE.

CHICAGO, ILL., July 15, 1925.

VOTES OF ASSOCIATIONS IN RESPONSE TO QUESTIONNAIRES ON QUESTIONS REQUIRING LEGISLATION

(9) That the time for filing responses to actions by the examiner be limited to six months (at present it is one year).