patents may, in themselves, have expired. The owner of the improvement patents thus effectively loses their value, which should exist at least for the interval during which their lives continued after the expiration of the basic patent. In order to capitalize upon the improvement patents, their owner is virtually compelled to turn only to the owner of the fundamental patents and to deal with him on his own terms. Furthermore, without injecting subsequent patents into the matter, a user who employs the published inventions during the interim years, perhaps completely innocent of the existence of any pending applications, suddenly finds himself ejected from a business he has built up after years of effort to a point where to stop it may mean destruction of the user's future business possibilities. The remedy for this situation, in a measure would be accomplished, in my judgment, by a grant of the patent for a term of 17 years, or for the balance of a 20-year term dating from the application date, whichever is the shorter. This so-called "20-year term" proposal would avoid an unseasonable delay in the issue of a basic patent with a disturbing effect on industry, in some instances, many years after the application was filed. A procedure whereby a patent may issue on an application, in some cases as long as twenty to twenty-five years or more after the filing of an application, is definitely wrong; and, while it is true that there are not numerous instances of periods of twenty-years or more between the filing of the application and the issuance of the patent, there are sufficient of them to have a serious detrimental effect. Therefore, I would strongly favor the so-called "20-year term" proposal. But, in adopting such a proposal, it must be recognized that certain injustices to the inventor may occur unless provision is made for reducing the normal prosecution of an application in all instances, in the Patent Office. The present requirement, that an applicant must respond to a Patent Office action within six months, has a tendency, so far as that prosecution is under the control of the applicant, to reduce the time of the pendency of the application. But the reduction in the time for the applicant to act upon the application alone does not solve the difficulty, as the historical facts show that the reduction of this period from two years to one year and finally to six months does not prevent, in some instances, a long delay between the filing of the application and the issue of the patent. I feel that there would not be any injustice to an applicant if the period was further reduced from the present six months period to a three months' period, providing there was a reciprocal provision that the Patent Office response be limited to a corresponding period. In many cases the Patent Office actions occur within a three months' period, whereas, in other instances, longer delays than six months in the Patent Office exist. I have no doubt with the present personnel of the Patent Office that the application work is handled as expeditiously as possible, but there is no question that the period of prosecution in many instances is increased by reason of delayed actions by the Patent Office itself. Without doubt, the interference proceeding in its present complicated form is the major cause for delay in prosecution of applications beyond a reasonable period of pendency. Numerous suggestions have been made with respect to a complete revision of the interference proceeding. It is an extremely difficult problem to solve. There have been several methods of approach suggested: 1. The total abolishment of interferences; 2. A substitution of an opposition practice; and 3. A simplification of the present interference proceeding. It is my view that the first solution is the only one that will effectively reduce the delay in the issue of the patent, but there remains the question as to whether this theory could be applied in practice without working an injustice in some instances. Under this solution the patent would be issued to the first applicant; but some provision should be made for priority determination between a diligent applicant and the issued patent, lest injustices arise to the applicant. The present interference practice, that depends upon depositions found so unsatisfactory as to become the exception in equity cases twenty-five years ago; and upon depositions of scattered witnesses; and with appeals to the Patent Office Board and even to the courts under Revised Statutes §§ 4911 and 4915, only then to result in inconclusive opinions short of res adjudicata and hence subject to retrial in the courts in later litigation, is extremely costly. Since the statute now provides for interferences in the district courts by way of appeal under Revised Statute § 4915, as de novo trials, and original actions between interfering patents under Revised Statutes, § 4918, a similar procedure could be adopted in all interferences without introducing a judicial novelty. I, therefore, suggest that interferences should, under restricted circumstances, be allowed, but determined by the District Courts in the jurisdiction of one of the parties. This cuts away the interference practice from the Patent Office, with its three potential reviews on appeal, and sends it at once to a court convenient to at least one of the parties, where it had two chances of ultimately going under old procedure, but then only after a costly and tedious prior determination in the Patent Office. If the applicant was successful, his term should still be held to the "20-year term." Under the simplified federal court procedure priority issues should be promptly determined. Such action should be reviewable on appeal, and the decree in such suit should be res adjudicata as between the parties. The solution of the problem has the merit of removing the primary cause for delay in prosecution of applications. It would safeguard the rights of the junior applicants, and it would eliminate the time and expense of presentation of the issue to the two tribunals in the Patent Office and on appeal to the Court of Customs and Patent Appeals that result in an inconclusive opinion. In order that the junior applicants, having interfering applications pending in the Patent Office, upon the issue of the patent to the first applicant, may be notified of the existence of the interfering patent, provision should be made for a formal notice from the Commissioner of Patents of the issuance of the patent and of the common subject matter found by the Patent Office in the issued patent and the application, or applciations, then in the Patent Office. It is my view that the right to obtain a determination of the issue of priority by the courts should accrue only to applicants whose applications are filed within one year (or other limited time) of the filing date of the senior party whose patent has been granted; and also that there be a formal action by the Patent Office determining the question of the existence of common subject matter. The purpose of such provision is (a) to stimulate prompt filing of applications in the Patent Office (and, coupled with the 20-year term rule, prompt issuance of patents) and (b) to safeguard against setting up false interferences for purposes of delay where common subject matter does not, in fact, exist. The time within which priority actions may be instituted after such notice should be limited. The second solution, namely, the substitution of an opposition proceeding for the present interference proceeding, particularly the plan proposed by the Advisory Committee to the Secretary of Commerce, has merit and, in my opinion, should receive consideration as a solution of the problem. My feeling, however, is that it would be time-consuming, perhaps to a lesser degree than the present practice but, nevertheless, to a degree sufficient to defeat the purpose of prompt issue of patents to the extent necessary to justify the "20-year term" proposal. Under the third suggested solution, namely, simplification of the present interference practice, it seems almost hopeless to acomplish the elimination of delay. There are, of course, certain palliative measures that may be taken. Among these are the proposals of: 1. Eliminating one appeal in the Patent Office; 2. Abolishment of optional appeals to the Court of Customs and Patent Appeals or actions under § 4915; 3. Requirement for disclosure of invention dates when applications are filed, with proper provision for secrecy; 4. Limitations as to period of pendency of an application that may be declared in interference, i. e., a junior application filed over one year after the senior one, for example, may be denied the right to contest priority with a senior application; 5. Curtailment of preliminary motions; and, 6. Definite limitation as to time within which testimony must be taken. Each of these proposals has merit, and would tend to reduce the delays due to the present practice, but they are inadequate, in my opinion, to correct the long pending application evil. There are instances in which interferences are obtained by filing a reissue and involving another issued patent in a priority contest in the Patent Office. While this practice is not one that is directly connected with delay due to interferences, it does, in many instances, work an injustice because the patentee of an issued patent can be drawn back into the Patent Office and required to go through the complicated interference proceeding, and thus prevent him from enjoying the full effectiveness of his issued patent. Such practice accomplishes no useful purpose because the patentees, if there is in fact common subject, may contest the question of priority either in infringement suits on the patent, or a suit for cancellation of the interfering patent. This type of interference is merely a waste of time and money because the Patent Office adjudication, under the present law, is not res adjudicata between the parties, and the whole gamut of court litigation is still available to either of the parties to the interference. This delay can be simply corrected by a provision that interferences shall not be declared under such circumstances. In relation to delays of ex parte prosecutions, it is my view that the "20-year term" proposal would materially reduce delays chargeable to the applicant. A statutory change reducing the applicant's time for amendment to three months instead of six months would be helpful. Reciprocal provisions, that were discussed in connection with the "20-year term" proposal, supra, requiring promptness on the part of the Patent Office, would be necessary in order to assure prompt issue of the patent. Specifically, delays that result from renewing applications can be corrected by withdrawing the privilege of renewal after allowance, and the filing of continuations should not be permitted to extend the monopolies. Divisional applications should be required to be filed within a limited time, not to exceed six months after requirement for division is made final. This probably requires right to interlocutory appeal on such requirements. I am in favor of amendment of Revised Statutes, § 4886, to reduce the time period with respect to public use, public sale, and publication to one year. This would tend to promote prompt filing of applications after the completion of the invention, and yet secure to the inventor a sufficient time for testing the invention and for properly preparing and submitting the application. I am clearly of the opinion that the situation growing out of the interpretation of the marking statutes by the Supreme Court in the Wine v. Railway Applicance decision should be corrected by legislation. Personally, I am in favor of denying to a patentee any recovery based on a constructive marking notice unless it be established that the infringer had notice or knowledge of the patent or wilfully infringed. In most instances no injustice is done by requiring the patentee to give written notice of alleged infringement. If the marking statutes are to be retained as a basis of constructive notice, then clearly they should be revised, so that their benefits apply equally to all patentees, regardless of the nature of the invention, to correct the present situation where a process patentee is relieved from marking, as well as the owner of a paper patent, who has not made embodiments of the invention, whereas one making embodiments and failing to mark is denied recovery. The foregoing has dealt mainly with Patent Office procedure looking to the prompt issue of a patent. There is another delay that exists which arises out of the group ownership of patents, whereby such owner may protract litigation almost interminably by suing in sequence on various ones of the group of patents. Examples exist of instances in which infringement of a large number of patents by the same structure is alleged, but the patents sued on one at a time. Termination of a suit on one is marked by the institution of another suit on other patents. I am of the view that this condition can be remedied either through legislation or through the Rules of Civil Procedure by requiring that the plaintiff must sue on all of his available causes of action; that is to say, on all patents that are alleged to be infringed, in one suit; or, if he does not sue at the one time on all patents, he shall be barred thereafter to maintain action on any that are not brought into the suit. A related burden is put upon the defendant by the present rules. Another possible solution of this evil of protracted litigation would be to require a patentee, as a basis of recovery, to give notice to an alleged infringer on all patents thought to be infringed and, if suit is instituted only on part of the patents included in the notice, then the defendant could have an election to counterclaim for declaratory judgment on the remainder under Rule 13. If this right was clearly fixed by legislation, it would be possible to clear the issue of infringement in a single suit and, if the charge of infringement is not well founded, not only the expense of the protracted litigation would be avoided, but the industry would be stabilized to an extent that it could safely expand its production without the hazard of belated establishment of infringement. It is recognized that safeguards would have to be included to prevent the technical compliance with such provision by the transfer of patents at the time of notice. There is another matter in connection with patent litigation that, in my opinion, requires drastic revision, and that is the question of accounting proceedings follow ing the interlocutory decree. The new rules of Civil Procedure have not met the situation as it applies to patent accountings, but, as this is a subject that requires specialized consideration and is not one that apparently has been raised so far by the testimony before this Committee, I see no purpose at the present time in making any detailed suggestions with respect thereto. I quite realize that the foregoing suggestions are stated in rather general terms and that the technique of accomplishing the reforms embodying the principles of the suggestions will require quite detailed consideration. If there are any of the suggestions that the Committee would desire to have amplified, I shall be very glad to do so, if requested. Very respectfully, LCK:0. LAWRENCE C. KINGSLAND. 254-256 Arnold, Thurman, Assistant Attorney General__ Association of Licensed Automobile Manufacturers. Atlantic Bottle Co_____ 301 268-269, 271-272 524 Beech-Nut Packing Co.... 428 Belknap, Charles B., executive vice president, Owens-Illinois Glass Co- 656-667 Berney-Bond Co.... 466 Borg-Warner Motor Co... 366 Bracken, A. M., assistant treasurer and counsel, Ball Bros- 551-560, 570-582 British Hartford-Empire Co- 598 British Hartford-Fairmont Co. 598 Buck Glass Co. 404, 408 Carter, Henry W. 455 Chance Bros. & Co., Ltd.. 659 Clerk, Sir Dugald 270 Coe, Conway P., Commissioner of Patents, United States Patent Office. 372-374 Corporations, barred from filing patent applications. Cox, H. B., chief counsel, temporary national economic committee for Curtiss, William H., vice president, Corning Glass Works.. Day, George, Attorney at Law._ 610 456 377-379 637-656 619-624 371 354 294 436 276 271 |