views of the American Bar Association before the committee and I
statement.
ask leave at this time to file

Mr. LANHAM. That statement will be incorporated at this point in the record.

(The statement referred to follows:)

Mr. Chairman and members of the committee, my name is Chester L. Davis, an attorney at law, specializing in matters of patent law. I maintain offices at 1625 K Street NW., Washington, D. C.

I appear before this committee on behalf of the patent section of the American Bar Association, and more particularly as chairman of the committee on legislation.

It is both my duty and my responsibility to represent the patent section of the American Bar Association before this committee, and I want the committee to know that I have not requested Mr. Church or any other member of the House to introduce this bill.

With respect to the history of this legislation, I do not believe there is any great dispute. As early as we have had a patent system, we have had disputes as between rival claimants for patent. Almost as early we have had proposals at one time or another with respect to whether patents should be granted to the first applicant, thereby doing away with interferences altogether. Shortly before the beginning of the present century, considerable agitation developed against a proposal to transfer interference proceedings from the Patent Office to the courts. This is set forth in quite considerable detail in the Annual Reports of the Commissioner of Patents to Congress for the years 1891, 1892, and 1898.

The idea at various times since has found support but has always met with a considerable amount of opposition. In February of 1925 an article appeared in This article was written the Journal of the Patent Office Society entitled "A Proposed Substitute for Interference Proceedings in the United States Patent Office.'

by Mr. Karl Fenning, a very capable patent attorney of this city, and at the present time he is president of the American Patent Law Association. This seems to have started increased discussion of the proposal, and we find an address by the chairman of the patent, trade-mark, and copyright section of the American Bar Association entitled "Patent Law Reforms," which address was reported in the Journal of the Patent Office Society for July 1926. By 1929 sufficient interest was developed within the patent section of the American Bar Association to warrant the taking of a referendum among the members of the section on the The report of the broad proposition as to whether interferences should be retained in the Patent Office or whether they should be transferred to the courts. patent, trade-mark, and copyright section of the American Bar Association, dated April 24, 1929, stated that the referendum showed 212 votes in favor of retaining interferences in the Patent Office and only 60 votes in favor of transferring them to the courts. Considerable interest continued to be aroused, and we find articles appearing in the Journal of the Patent Office Society in January 1930 and in July of the same year in furtherance of the discussion. In 1931 the section disapproved a proposed amendment of R. S. 4904 (U. S. C., title 35, sec. 52) to provide for issuance of the patent to the first applicant with provision for interference proceedings between the patentee and later applicants. Then, for a period of some 8 years, we find the proposal coming up, being referred to committees and being usually referred back to committees for further study. The logical conclusion to be drawn, and I think the correct one in this case, is that there have been a sufficient number of active members in our association sufficiently interested in the matter to keep it alive.

The patent section of the American Bar Association, at its meeting in Detroit 2 years ago, approved in principle the theory that testimony in interference cases should be taken under competent judicial supervision. A committee was appointed to give the matter further study, and more particularly to work out the details of a bill for revising all related statutes, particularly R. S. 4904 and R. S. 4915. The chairman of that committee was Mr. Otto R. Barnett, a very capable attorney, in whose ability many people have the utmost confidence. The committee report was presented to the patent section at its meeting in Chicago August Advance copies of the committee report, including suggested 23-24 of last year. changes in the law, were circulated a short time before the meeting to each member of the patent section. The members of the section received them only a few days prior to the meeting and may not have had an opportunity to thoroughly study the committee report and its suggested changes in the law before attending the meeting.

At the meeting in Chicago we did have a rather thorough discussion of the committee report, but very little discussion of the particular language with respect to the proposed changes in the law. I might state that the proposed changes in the law are substantially those set forth in the present bill. There was a considerable amount of objection to adoption of the committee report, and perhaps I am personally responsible as much as anyone for bringing the matter to a vote. An inquiry was addressed to me as to the probable effect of section action on the efforts of my committee. The way matters then stood, I was under some obligation to appear before Congress to urge something in the nature of interference reform, but certainly I had no definite concrete proposal in workable form which could honestly be said to carry the support of the American Bar Association. I, accordingly. urged a vote, with the result that the section voted to adopt the report of the committee and recommend approval of the legislation by the house of delegates. I am informed that the house of delegates referred the matter to the board of governors, that the board of governors has taken the matter under consideration and has approved the action of the section. I furthermore understand that a communication from one member of the board of governors carries an instruction which, in my opinion, is most important. It appears that under date of December 2, 1943, Judge Thompson, chairman of the committee on sections of the American Bar Association Board of Governors, wrote to Mr. Barnett, advising him of the action taken by the committee on sections and by the board of governors, as above referred to, and in connection therewith stated "Obviously it is the responsibility of the section to see that any defects in the proposed legislation are cured before passage is advocated."

Accordingly I consider that I, as chairman of the committee on legislation. and that Mr. John D. Myers as chairman of the section of patent trade-mark. and copyright law, are charged with a most serious responsibility. Mr. Myers as chairman of the section has referred the bill to a special group of the patent law revision committee for the purpose of giving it thorough consideration for possible defects and for a report thereon, including proposed changes to correct such defects. The chairman of that committee is a very able member of our patent profession, Mr. Dean S. Edmonds of New York City, and I am quite confident that he will faithfully discharge his responsibility in the matter.

I am concerned however with a much more serious aspect of this situation. I am very much interested in the fine work which has been done and which is now being done by the National Patent Planning Commission. The first report of the Commission has been approved in principle by the American Bar Association but we deferred consideration and approval or disapproval of the individual recommendations until legislative bills become available. Now here we are holding hearings on a bill which at most, relates to orly a part of what we know as the United States patent system. Any one proposal, including that represented by the bill before us, cannot, in my opinion, be given an adequate and fair consideration when we fail to have before us other bills which deal with other but closely related branches of the patent law.

Mr. LANHAM. You may have the floor.

STATEMENT OF C. W. RIVISE, PHILADELPHIA, PA.

Mr. RIVISE. I represent myself and my associate, who have for years studied this procedure of patent interference. In our practice we represent the individual inventor and small industrial corporations. We do not represent any large corporations, and I will tell you that speaking to my clients and to other attorneys I found in studying these cases, I have come to the conclusion the inventors of this country and the small industrial corporations, industrial establishments, have the utmost confidence in our Patent Office, especially the present administration of the Patent Office, and they look with horror at the thought of transferring this function from the Patent Office to the courts, where they will have to drag their witnesses, these small inventors, small industrial establishments, drag their witnesses all over the country.

Under the present practice we come to the plant of our client, we have a stenographer there, and we take a man away from his work a half hour or hour at a time and take the testimony and then we submit that to the Patent Office, and in 99.9 percent of the cases we are satisfied with the decision of the Patent Office. I can say this because I have won cases and I have lost cases.

I have studied several thousand records in patent interference cases, studied them carefully for the preparation of certain books we are writing on interference practice, and find the Patent Office gives the most thorough study of these cases.

I have tried litigation in courts and have waited 9 months for the decision and then the court calls us up and says reargument, and we reargue the case again and find the court does not understand the basic principle of patent law in the patent system. We have to explain the thing back and forth. Sometimes the court says, let us submit this to a master. They do not get a master, a fellow who knows patent practice but a general practitioner, generally. We go through that back and forth in our litigation and that is what would happen in our interferences, our interference practice if we take it from the Patent Office, where it has been admirably administered. There are some defects but we can streamline the Patent Office system. The present Commissioner has done a lot in that regard and he is going to do more, I am fully confident of that.

I spoke yesterday to an inventor before I left for Washington and he said to me, why, if they have to drag witnesses to California, where they have several interference cases, to a court where they don't have confidence in the judge, in the first place, without reflecting on the court, they are in a strange territory in which to try a case, that would make it very difficult. They are satisfied with the Patent Office.

He said to me, "We know they are in favor of a patent system, they are in favor of patents and they are in favor of the small inventor and they will study the case."

I have studied a large number of cases and I find a small inventor or an establishment will send a disclosure to another corporation and that corporation will immediately file an application on it, get in first. Under that administrative practice, administrative award, that corporation which stole the invention will get an administrative award and the poor inventor will have to go into court to prove his right to that patent. There are several decisions which were recently made, one in the fourth circuit and one in the second circuit. There is the Kemp case in the fourth circuit, where a corporation filed an application and they lost in the Patent Office but they got the judge in the fourth district court to believe their story. The court of appeals reversed the district court, did what the Patent Office did, and they said the small man was the first inventor.

Another case was McNauley v. Powell in the second circuit and the same thing happened. The Patent Office was finally sustained in the court of appeals after going through the Patent Office and the courts and finally the court of appeals sustained the Patent Office. The court awarded damages for interfering with this man's patent right, which is going a long way in protecting the small inventor.

A good many of these cases involve complicated inventions and that is where a lot of the time is lost.

Mr. LANHAM. Thank you very much. There are others who wish to make statements, file statements for the record?

STATEMENT OF BERNARD GARVEY, AMERICAN PATENT LAW ASSOCIATION

Mr. GARVEY. We would like to reserve the right to file a statement. Mr. LANHAM. The record will show that you have a right to file a statement, a brief. I would suggest you try to get them all in by the middle of March or approximately that time so that the record may be complete.

The amendments offered for the record by Congressman Church will be added to the record at this point. (The amendments referred to follow:)

PRESENT LAW

under the statutes in force at the time

H. R. 3264

(c) If the rejected applicant shall elect

of approval of this Act as if such to appeal, he will thereafter be forever statutes had not been amended.]

barred from asserting priority of invention over any senior application or patent upon which his claims have been rejected, for the purpose of obtaining patent.

a

SECTION 4904. (d) If the rejected applicant shall, within a time to be specified by the Commissioner, ask for an administrative award of priority, then the Commissioner shall send a notice to all parties specifying the claims under rejection and stating that within a time specified, not less than twenty days thereafter, any party may file in the Patent Office such proofs, not requiring testimony, as he may see fit, which tend to establish who is the prior inventor of the subject matter of the rejected claims, that within such specified time any interested party may copy any of the rejected claims and may call attention to any reference to the prior art which he may consider pertinent. At the same time, any party may file a written memorandum as to the pertinence of any proofs so filed and as to pertinence of any prior art so cited.

(e) Thereupon, without any hearing or oral argument, the Board of Appeals shall render its decision, first as to the patentability of any of the rejected claims which are questioned and, second, making an administrative award as to which party on the showing so made appears to have the better claim to priority of invention.

(f) From any holding of nonpatentability of any claim or claims, the usual ex parte appeals will lie.

(g) For the purpose of further proceedings hereunder the party in whose favor such administrative award shall be rendered shall be considered the senior party.

(h) Within three months from the rendering of any administrative award, any party who is held by such award not to be the senior inventor, may file a complaint under section 4915 to have the question of priority adjudicated.

(i) In any such priority proceedings the administrative award shall only have the effect of determining which party or parties is entitled to file a complaint under section 4915, but there shall be no presumption in favor of the correctness of the administrative award except that in the absence of any proceeding under section 4915 or in the absence of proofs tending to support any complaint filed under section 4915, such administrative award shall authorize the grant of a patent to the party in whose favor it is rendered.

(j) In case of rejection of two or more applications upon the disclosure of the