I think a better plan is to have the whole litigation go directly into court. There is one feature this bill does not deal with at all, which I think is very vital, that is avoiding the extension of the patent by the time consumed in the interference. It is unfair to the public merely because two people are fighting about something to have the patent extended for a long time. This bill doesn't change the law, I mean as to the second man. If the junior man wins in court, then his patent is issued at the end of the court proceeding, so it extends for that much longer than it would have otherwise. Now, there are two ways of avoiding that result, one, by providing that whatever form of contest you have, if the result of it when it is over is that the patent when it goes to the man who wins shall be only for the unextended part of the term of the patent which has already been issued. That is, you can issue one patent immediately, let them fight it out, and if the other man wins, give him a patent for the remainder of the term. I think that is the fairest way to do it, but in order to make it fully fair to the junior if he wins, there is no reason why his patent should not be retroactive insofar as the other people in the interference are concerned; that is, there is no reason why a man should gain by it; that is, the man who held him up, should gain by it. He ought to be able to enforce infringement against the other party, not against the public generally. There is another way of doing that which I think is even cleaner and better, and that is to have the Patent Office issue both patents immediately with a note on them that they interfere and provide that the junior party; that is, the one who filed last, that his patent shall have no effect unless he proceeds in court to try it out with the senior party and then both patents have a reasonably early date, and the term of neither is extended. Mr. LANHAM. Thank you very much, Mr. Byerly. You may extend in the record your remarks. Mr. BYERLY. I have a statement here which I would like to add, a written statement. Mr. LANHAM. It will be incorporated in the record at this point. (The statement referred to follows:) STATEMENT OF ROBERT W. BYERLY, OF NEW YORK I practice patent law in New York City with an office at 225 Broadway and appear before the committee as an individual. I am chairman of the committee on patent law and practice of the New York Patent Law Association and of the committee on patents of the Association of the Bar of the City of New York. These committees have been unable to take formal action since this hearing was announced. I have, however, taken an informal po 1 of the committees which indicates (1) almost unanimous approval of the object of H. R. 3264, namely, the removal of interference preceedings from the Patent Office, and (2) almost unanimous dissatisfaction with H. R. 3264 on the grounds that it involves unnecessary complication by introducing a new way of setting up interferences and fails to remedy the most serious cause of public dissatisfaction with interference proceedings, namely, the extension of the term of a patent by such a proceeding. The members of the committees are about evenly divided on the question of whether an administrative award of priority is desirable. I shall endeavor to give some constructive suggestions in connection with these objections to H. R. 3264: J. ADMINISTRATIVE AWARD If an administrative award of priority is considered desirable, provision for it may be made by the following simple amendment of Revised Statutes 4904: I. Simplified provision for administrative award of priority. (To replace sec. 2 of H. R. 3264, p. 2, line 8, to p. 5, line 8, inclusive.) Amend Revised Statutes section 4904 to read as follows: "SEC. 4904. Whenever an application is made for a patent which, in the opir.ion of the Commissioner, would interfere with any pending application which has been determined to be allowable, he shall give notice thereof to the interfering parties, and, after consideration of such ex parte proofs as the parties may file, shall make an administrative award of priority in favor of the party who, on the basis of such ex parte proofs and the filing dates of the parties, appears to have the better claim to priority of invention, and shall promptly thereafter issue a patent on the application of said party.” This provision has the following advantages over the language of H. R. 3264 extending from page 2, line 8, to page 5, line 8: (1) It allows interferences to be set up in the manner with which the Patent Office is familiar, instead of introducing a new method involving the rejection of one application on another. (2) It avoids including details which should be covered by Patent Office rules rather than statutes. (3) It avoids an administrative award in cases where a patent has been issued inadvertently on one of the interfering applications before the interference is discovered. Since the only purpose of an administrative award is to decide which patent should be issued, there is no point in such an award where one of the patents has been issued. The other interfering party should go directly to court in such cases. II. PREVENTING EXTENSION OF TERM OF PATENT The most serious objection to present interference proceedings from the point of view of the public is their effect in postponing the expiration date of patents issued on interfering applications. This objection is not removed by H. R. 3264, since the bill makes no change in the present procedure in a case where the junior party wins in the court priority proceedings. Under these circumstances, the junior party's patent would be issued after termination of the proceedings, and its expiration date would accordingly be extended by the length of the proceedings. Furthermore, there is no provision for canceling the patent which has been granted to the senior party before the termination of the proceedings. While statistics may show that the average extension of patents by interference proceedings is not very great, there have been extreme cases in which a patent involved in interference proceedings has been issued 20 years after the application was filed. From the point of view of the public, it is important to remove the possibility of such extensions even though they may not occur very often. There are two ways in which the danger of extending the expiration date because of interference proceedings may be avoided: (1) by limiting the patent issued as a result of the priority proceedings to the term of the original patent; or (2) by issuing both interfering patents before determining the question of priority. The first method may be effected by a simple statute analogous to the reissue statute: II. Preventing extension of term of patent by cancelation and "reissue." "If at any time during the term of a patent issued to an interfering party there shall be filed in the Patent Office a certified copy of a judgment of a court having jurisdiction of the matter and of the parties awarding priority to an interfering party other than the patentee, the Commissioner shall cancel the patent and cause a patent for the same invention to be issued on the application of the party to whom priority is awarded by said judgment for the unexpired term of the original patent. As against all parties to said judgment of priority, the patent so issued shall have the same force and effect as if the same had been issued on the date of issue of the canceled patent. The Commissioner may also cause a patent to be reissued to the original patentee for any part of his patent as to which priority is not awarded to another party by the judgment." Amend Revised Statutes 4915 to include the following provision: "The party to whom priority is awarded by the judgment may, if he so elects, have remedy by suitable supplementary proceedings in the same action against any other party to the judgment for infringement of his patent or of the patent issued to him pursuant to the judgment." The proposed statute eliminates as far as possible the injustice to the junior party from the shortening of the term of his patent. So far as the parties to the interference are concerned, the junior party's patent is effective from the date of the original patent. This makes it possible to provide a bilateral provision for relief against infringement to replace the unilateral provision contained in H. R. 3264, page 5, lines 9-16. III. ISSUING BOTH PATENTS BEFORE PRIORITY PROCEEDINGS The cleanest and simplest way of accomplishing the main object of H. R. 3264 and completely eliminating interference proceedings from the Patent Office is to authorize the Commissioner to issue patents on both interfering applications so that the question of priority may be decided by a court action under the provisions of Revised Statutes 4918. In order to indicate how this could be done, I append a suggestion for a statute in the drafting of which I have been assisted by Mr. Samuel E. Darby, Jr., of New York. III. Issuing patents on both interfering applications. (Simple form of statute which could be substituted for H. R. 3264.) SECTION 1. Whenever two or more applications for patent pending in the United States Patent Office claim the same invention, which invention has been determinated to be patentable, and whenever an application for patent pending in the United States Patent Office claims the same invention as a patent issued not earlier than one year before the filing of the pending application, the Commissioner shall not determine the issue of priority thereby raised but shall issue interfering patents on said applications, provided, however, that no interfering patent shall be issued to any junior applicant unless he has made claim, under oath, to an invention date effective in this country preceding the filing date of the senior application. SEC. 2. The Commissioner shall notify the patentees or record owners of each interfering patent of the patent or patents with which it interferes. Whenever two or more interfering patents are issued at the same time, a notice identifying the other interfering patent or patents shall be printed on each printed copy of the specification and claims of each interfering patent. On the issue of any patent or patents interfering with a patent previously issued, a notice identifying the previously issued interfering patent shall be printed on each copy of the printed specification and claims of the later interfering patent or patents and a notice identifying later interfering patents or patent shall be placed in the file of the first interfering patent and a printed copy of the notice thereof shall be attached to all printed copies of the specification and claims of the patent. SEC. 3. All the claims of a junior patent claiming an invention common to two or more interfering patents shall be void and of no effect unless the junior patentee establishes priority of invention in a suit under Section 4918 of the Revised Statutes filed by him or to which he became a party within six months after he had notice of the senior patent, or unless a concession of priority to him by the record owner of the senior patent is filed in the Patent Office within said six months. By replacing Revised Statutes Secs. 4904, 4905, 4906, 4907, and 4908, by a statute drawn along the lines of the above suggestion, all or nearly all the objections to the present interference practice would be eliminated. The suggestion is, therefore, commended to the study of this committee. Mr. LANHAM. You may now have the floor, Mr. Edmonds. STATEMENT OF DEAN S. EDMONDS, NEW YORK, N. Y. Mr. EDMONDS. I may say I am successor of Mr. Barnett as head of the legislative committee of the patent section, American Bar Association. I wanted to say a word here today by way of focusing attention upon some broad principles involved in this bill which distinguish it from the procedure we have now. There are three of them and they are quite vital and I would say that we, Mr. Barnett, Mr. Byerly, and others who, like myself, favor this bill, would probably favor any bill which had these three basic principles as its fundamental basis. Such a bill, whatever it was, having these three fundamentals, I am sure could be supplemented by suitable rules, particularly with Mr. Henry's cooperation, which would avoid many of the criticisms he has leveled at this present bill. The first of these three broad principles is that under the procedure of this bill the determination of an issue of priority of invention occurs during the grant of a patent and not prior to the grant, and that is The reason for that is that the an item of the greatest consequence. delay in the issuance, the long pendency of applications for patent in the Patent Office, is one of the outstanding defects of the American patent system and has been for generations past. Congress has recognized it time and again, has passed one law after another directed to reducing that period of pendency and everything Congress has done has been well done and has achieved some measure of success. But the sum total is insufficient and we still have that defect prominent in our system. It will never be rectified until some drastic operation is performed upon the interference procedure. That is what this bill does and it does it in a drastic fashion by saying, this issue which must be determined some day, we are not going to allow to postpone the beginning of this 17-year monopoly because that makes the 17-year monopoly expire sometime off in the future far beyond the date it should expire. And so, we are going to grant the patent first and settle this issue afterward. That is what must be done some day to rid the patent system of this defect of long pendency. That is what I say is the first outstanding principle. Mr. LANHAM. Would you suggest the way recommended by Mr. Byerly, the granting of patent to both the senior and junior applicants to run concurrently until the priority was determined? Mr. EDMONDS. I would prefer not to grant two patents; I think the Patent Office should not do that. It exhausts its function when it grants one and it should not grant another until a court says that the first was granted improperly and we will cancel that one and now issue another. However, that is an item of minor consequence and I would be glad to debate that with Mr. Byerly. Mr. LANHAM. Then the judicial matter would be merely the determination of whether or not the priority was properly granted in the first instance by the Patent Office with reference to its issue of the patent? Mr. EDMONDS. The issue of priority has got to be settled some day and somewhere and I say the first prerequisite is to settle it after you have granted a patent. Now, the second is where you are going to settle it and I say it should be settled in the courts of the United States rather than in the Patent Office. The reason why I say that is that this issue is a fact issue, who did something first. In its essence it is not different from fact issues we are settling in courts day in and day out. We have found in the experience of the centuries that that is the best way we know to settle such fact issues. And so, I say we should settle this fact issue where we settle others, namely, in the courts. That is No. 2 of the broad principles of this bill. The third is that in order to incorporate those two principles into your system, you have got to do something else. You have got to do something in the Patent Office, because the Patent Office receives two applications, which, so to speak, collide inside the Office because they are applications for patents for the same invention, and you have to do something to unblock and allow the Patent Office to proceed with the performance of its function. That has to be done and done in a way which takes into account the fact that the Supreme Court in the Morgan v. Daniels case decided that some weight has to be given to the decision of the Patent Office in an interference case. We have to accomplish that unblocking in a way that does not invoke the principle of the Morgan v. Daniels cese; that is to say, we should make an informal determination of this issue, what we have gotten around to speaking of as an award as distinguished from a decision, an administrative award and not a judicial decision, make that award, whose primary effect is nothing more than to allow the Patent Office to go on with the performance of its function to the extent of issuing a patent in the way it thinks is the best way to issue it, leaving to these rival claimants the right to fight out their differences in the courts after a patent has been issued. The issue would finally be settled in accordance with a judicial determination of the courts. Mr. LANHAM. Did I understand you to say, Mr. Edmonds, you succeeded Mr. Barnett as chairman of the legislative committee of the American Bar Association? Mr. EDMONDS. Yes. There was one committee in the year when he presided and now we have three and I am chairman of one of them. We have them subdivided into three, whereas he was chairman of the only one at that time. Mr. BARNETT. Mr. Edmonds was a member of my committee. Mr. LANHAM. We have 3 or 4 minutes. Is there somebody from out of town who wishes to make a statement? STATEMENT OF CHESTER L. DAVIS, CHAIRMAN, COMMITTEE ON LEGISLATION, AMERICAN BAR ASSOCIATION Mr. DAVIS. These gentlemen have been talking as representing the American Bar Association and they are on subcommittees of a patent law revision committee. I have a statement which represents the |