easier for nonregistered lawyers to engage in interference practice despite lack of qualifications.

3. The bill creates a new and second class of patents of inferior standing. With the present attack by the courts against patents in general, they (as well as the public) would, under the bill, be confronted with patents which would not carry any presumption of validity since they (patents) would have been issued without any presumption in favor of the correctness of the administrative award. The bill, by preventing the complete presentation to the Patent Office of the factual question of priority through testimony, cross-examination and corroboration, by preventing the interferants from challenging in any way the adequacy of disclosure and the operative character of the other party's case, and by denying the senior party any inspection of his opponent's case during the Office proceedings, deliberately furthers the issuance of a patent by the Office under a cloud. At the same time it opens the way to fraud and perjury since it permits issues to be decided on perjured or colored proofs or through proof which can be readily contradicted.

4. The bill not only limits the Patent Office to an ineffectual examination of a narrow ex parte showing resulting in a waste of time and money, but it transfers such original examination from experienced personnel to the already overburdened Board of Appeals. It further loads the Board of Appeals with cited alleged prior art to consider without the benefit of prior examination thereof by the primary examiner; in the case of an adverse holding on patentability the bill provides an inconsistent, wasteful appeal from the Board of Appeals to the Board of Appeals.

5. The bill places a premium on first filings, which in turn will reap a harvest of paper cases and incomplete applications contrary to public policy and interest. An additional penalty is placed on the junior applicant under section (c) of the bill if he wins an ex parte appeal thereunder, since he is barred from asserting priority of invention over the senior applicant or patentee not then claiming the same invention even though in fact the junior applicant is the first inventor. It would therefore appear that a senior party at a later date could obtain a patent for the same subject without a contest, thus creating further confusion in the public.

6. The bill will increase the number of interferences declared, since it encourages their institution on the basis of disclosure rather than on the basis of claims. As instances of undesirable situations under this bill contrary to public policy and present day practice, a party may be forced into an interference merely on the basis of nonclaimed subject matter with a finally rejected application ready to be abandoned, or may be forced into an interference with a patent which cannot be validly reissued on the interfering subject matter previously uncliamed by the patentee. The bill ignores the simple fact that a person may disclose inventive subject matter not his own but must claim only his own invention.

7. The bill violates the confidential and secret character of the disclosure of applicants to the Office, since it permits a junior party to have access to the senior party's case and affidavits therein without knowledge of the latter and without reciprocal rights. This factor will also encourage an increase in interference declarations since it will inable a junior party to pick up other ideas in the senior party's case and file thereon before laches or other bar can be effected. 8. The bill emasculates the Patent Office to the detriment of the public. Not only is the proven ability and experience of the Board of Interference Examiners thrown into the discard thereby, but the priority award question is thrown under Not only does the more expensive circumstances into already overburdened Federal district courts whose judges are inexperienced in interference matters. average citizen become involved thereby to the detriment of his position and pocketbook, and thus become eliminated unfairly, but also the financially betteroff applicant would prefer the well-studied, less expensive Office proceedings of today. Further, the three Examiners of Interferences, drawn by rotation from a panel of experienced men, maintain a system of uniformity divorced from the prejudices and ignorance of an individual. It is doubtful that a single Federal As one leading judge could do as well, or that like uniformity would prevail among the many District Courts, particularly where each judge's opinion is final. practitioner has said, "I think the Interference Examiners decide interferences correctly, within these bounds, more often than the Courts decide correctly in litigation."

Attached are a series of articles published in the Journal of the Patent Office Society which discuss in greater detail some of the items here summarized.

(B. M. Klivitzky, Comment on Proposed New Interference Practice, Journal of the Patent Office Society, vol. 24, No. 12, December 1942, p. 869:)

It is not the purpose of this note to express a viewpoint opposed to that of the author of the principal article as to the desirability in general of the proposed revision of R. S. 4904, transferring interference proceedings from the Patent Office to the courts. The practical advisability of at least one particular of the proposition as worded, however, provokes inquiry. Taking it for granted that initially the issue or issues on which priority is to be determined by the court have been formulated in the Patent Office, it may perhaps be left to the court to determine or review the patentability of the subject matter, when the question is raised by one of the parties to the conflict. On the other hand as to new claims which have not been passed upon by the Patent Office, the appropriateness of leaving to the determination of the court, "the patentability of the alleged invention" and "the form of claims" may well be questioned. Is it expedient to place the parties in a position to agree among themselves as to the patentability of certain subject matter and form of claim? Is it the intention of the proposed revision of the statute that the court also consider new claims such as are now introduced by motion under rule 109? And, if so, would the court's award of priority on such claims preclude an ex parte rejection by the Patent Office for lack of novelty or invention, or on technical grounds? Conceding the inefficiencies of the present practice sought to be remedied, do they warrant or require that interlocutory matters (such as are now determined by the primary examiner) be thrust upon the court?

(Arthur B. Bakalar, Comments on Proposed New Interference Practice, Journal of the Patent Office Society, vol. 25, No. 4, April 1943, pp. 289–291:)

In the December 1942 issue, pages 863-868, of this Journal (vol. XXIV, No. 12), is contained an article open to certain criticisms which are offered here in the interest of a fuller understanding of the topic under discussion.

The article in question starts off with the proposition that the patent bar has "finally reached the point of recognition that the present interference of the Patent Office is a futile, expensive and unwarranted system of litigation." Issue is joined on this sweeping general statement.

The expression "patent bar" is one of uncertain designation but apparently has been employed to signify the patent section of the American Bar Association, in view of the previous author's reference to the newly proposed section 4904, R. S. U. S. It is manifest from the total number of registered patent attorneys and patent agents recognized by the Patent Office to practice patent law before it that the Patent Section of the American Bar Association, with its membership of 1092, represents only a very small percentage of the entire patent bar in the truer sense.

Not all of the members of the patent section of the American Bar Association practice patent law, since the section has on its roster people who are judges, members of faculties, and persons otherwise interested in patent law as a hobby but not as a vocation. Furthermore, the patent section of the American Bar Association represents members who are not recognized (registered) by the Commissioner of Patents to practice patent law before the Patent Office. Finally, the patent section of the American Bar Association contains members who have never engaged in interference practice either before the Patent Office or before the courts. At the last meeting of the patent section of the American Bar Association, held at Detroit, Mich., August 24-25, 1942, not more than about 70 members were present. At this meeting the patent section of the American Bar Association adopted a resolution approving in principle the amendment of section 4904, R. S. U. S., as set out on pages 863-864 of the aforementioned article. No vote of the section was ever published setting forth the numbers of the patent section who voted on the resolution at the Detroit meeting, and no count has been presented of the votes for and the votes against said resolution.

We thus find that the expression "patent bar" carries no weight as a representation of the views of even a majority of the practitioners of patent law, and the previous author's conclusion that the present interference practice of the Patent Office is a futile, expensive and unwarranted system of litigation recognized by the patent bar is a conclusion not sustained by the record.

As a test on this proposition, the members of the Patent Law Association of San Francisco were polled by mail to ascertain their views on the proposed revision of section 4904, R. S. U. S., and, of 35 voting, 23 members were definitely opposed to

the proposed revision. It would be highly illuminating if other patent law associations and the National Patent Planning Commissioner were to poll all of the registered patent attorneys on the specific proposition and thereby obtain a truly democratic and representative expression of the patent profession.

It seems that the history of interference practice before the Office denies any justification for any sweeping generalization that the same is futile, expensive and unwarranted. Certainly the author of the previous article has conceded that "in certain district courts of the land business is considerably congested and a hearing might not be reached for a year or more in regular order of calendering of cases." This delay in the district courts would not be an improvement over the more expeditious hearings in the Patent Office.

It is not believed that the interference practice in the Patent Office as a rule can be as expensive a system of litigation as would be the proposed litigation in the district courts, and if the choice were given to individual inventors or manufacturers, the prediction here is that they would prefer to have interferences heard on testimony in the Patent Office by experienced and scientifically trained interference examiners than by judges who lack such training and experience. Certainly the judges of the district courts of the land are none too anxious to increase the number of patent cases on their dockets and in fields most strange to them. It has been contended that the reason for the proposed amendment of section 4904, R. S. U. S., is that nearly all interferences are finally adjudicated in favor of the senior party. The correctness of such conclusion is questionable. It has been my good fortune to have discussed this point at sundry times with members of the Interference Division of the Patent Office, and the general opinion therein existing is that of all the interferences which go to final hearing based on testimony the junior party wins about 50 percent of them. Therefore the proposal to issue a patent to the first applicant and to cause the junior party to provoke an interference with the patent, which is to be litigated essentially in the district courts, throws an undue and unjust burden on the junior party, particularly where the newly proposed section 4904, R. S. U. S., makes no provision for permitting the junior party to file a motion to shift to advance his record date in the Office to an earlier-filed domestic or convention application, or to challenge the right of the senior party-patentee to be entitled to the earlier record date awarded him by the Patent Office. Further, the proposed modification in interference practice does not provide for suitable motions to add additional counts or additional applications or for the institution of additional interferences, and it leaves no provision for a simple and inexpensive determination of an interference within the Patent Office on a stipulated statement of facts.

One of the outstanding faults which may be found with the proposed interference practice is that it would place a premium on paper cases or half-baked ideas since it, in a sense, penalizes the inventor who would first "perfect" his invention before filing thereon, and the net result of practice thereunder would be a partial, if not complete, defeat of the patent objects of the Constitution of the United States.

Finally, interferences are as judicially determined by the Board of Interference Examiners as any other piece of litigation before other administrative tribunals or referees. Its final character is readily established if, instead of granting alternative remedies of appeal whereby a case may be tried de novo under section 4915, R. S. U. S., all proceedings on appeal from the Board of Interference Examiners are restricted to practice under section 4911, R. S. U. S. In this manner one would have in effect a single court of interference appeals, whose members, well versed in interference practice, will finally decide on the appeal record the matters litigated; thus interferants would be afforded their full measure of justice in the Patent Office while affording the court the benefit of the experience and ability of the Board of Interference Examiners. Thereby also the interference practice, within the Patent Office, of competent registered patent attorneys and patent agents, who do not happen to be members of any bar or of the Federal bar of their residence, would be preserved, to the economic benefit of their clients and the public, and the question of priority determined without the otherwise nessary and expensive transportation of witnesses, exhibits, and records from the junior party's domicile and elsewhere to the District where the senior party is an inhabitant.

(John D. Chestnut, Transfer of Interference Proceedings to District Court, Journal of the Patent Office Society, vol. 25, No. 7, July 1943, p. 526:)

The Journal of the Patent Office Society for April 1943, under the subject of "Commentaria" printed an interesting letter from Mr. Arthur B. Bakalar, San Francisco patent attorney, pointing out that the purported approval by the

"patent bar" of the proposal to transfer interference proceedings from the Patent Office to the District Courts was somewhat misleading. The reason being that the "patent bar" referred to is presumably the patent section of the American Bar Association, which does not represent many of the patent attorneys and agents who are not members of the bar association. Mr. Bakalar pointed out that 23 out of 35 voting members of the Patent Law Association of San Francisco were opposed to the proposition.

It may be of interest to know that the membership of the Patent Law Association of Los Angeles was polled on this subject recently and out of 26 votes, 25 were opposed to the proposition.

The roster of the Patent Law Association of Los Angeles contains 60 names, representing about one-half of those eligible for membership. The membership comprises approximately equal numbers of members of the bar and nonmembers. Of the one-half of the members who voted, exactly one-half were members of the bar.

The poll related to 15 patent "reform" proposals currently under discussion. It was not possible to detect any differences in the views of the two groups of members on any of the questions. A rather curious thing about the single vote of approval on the proposition to transfer interference proceedings from the Patent Office to the District Courts was that it came from a voter who is not a member of the bar. This leads one to believe that it may have been an error. (Vanderveer Voorhees, "Out of the Frying Pan" Journal of the Patent Office Society, vol. 25, No. 10, October 1943, p. 760:)

It is encouraging to see that not all patent attorneys are willing to sit idly by while patent practices long established are subjected to criticism and destruction in the name of reform. This is particularly true of the proposal to transfer interference practice to the courts on which Arthur Bakalar and John Chestnut have obtained the sentiment of quite a number of patent attorneys, April and July Journals. The reasons offered by those promoting this change would be amusing were the matter one which did not seriously affect American scientific and technological progress.

The high cost of the interferences is held up as shocking. Ford Harris is the July Journal says the system is a "national scandal” and the "poor inventor" is in a fix when his application is thrown into interference, but notwithstanding that; Mr. Harris does not favor transferring interference practice to the courts. There is generally a discreet silence on the relative cost of Court procedure to settle the same questions. Let us be frank and admit that the technical men of the Patent Office are settling these knottly interference questions far more economically than would the Courts where the simplest infringment suit involving simlar questions of priority costs many thousands of dollars. True, an interference is expensive relative to no interference but what can we expect? The answer to the question "Which of these two or more claimants is the first inventor?" is never obvious. Much testimony and many records need be searched, scrutinized and weighed. The process is not as simple as toting up a column of figures.

Another reason advanced for transferring interferences to the Courts is that it will speed the issue of the patent. Agreed, but where have we gotten with a patent whose only value is an invitation to an interference court? Issuing such a patent would be an empty gesture-a false consideration for the inventor's final fee. We may fairly assume the courts would handle interferences with the same dispatch as they have patent cases heretofore, which promises little for the expeditious determination of which claimant gets the patent. In some cases an inventor could expect to get the patent about the time his seventeen-year monopoly expires leaving him little time to recoup his court expenses in a rapidly changing technology.

Isn't it about time we quit knocking the patent system built up thru many years of experience? Granted that the settlement of interference questions requires some time and costs some money. We should recognize that this is the price we must pay for the privilege of developing our inventions in a reasonable time without the need of deepest secrecy but with the collaboration and assistance of our coworkers. Those who have suggested granting patents to the first to file as is done in some foreign countries, must have failed to consider how that practice would cramp our large laboratories and stifle free discussion of technical problems. If interferences result, the Patent Office seems the logical place to settle thembefore the patent is granted. Reform may well be directed toward eliminating unnecessary delays.

(Benjamin T. Rauber, Proposed Patent Law Reforms, Journal of the Patent Office Society, vol. 25, No. 12, December 1943, pp. 896-897:)

The varied criticisms and proposed reforms of patent law now currently under discussion seem to overlook the fact that many of the difficulties are not due to any unnecessary complexities in the law but to the situations with which the law has to deal. The subject matter of certain patents is of a highly technical nature and the circumstances under which inventions are made are sometimes quite complex.

When, for example, interfering inventions are made in automatic machines or in the electric or chemical fields and are the result of years of research and investigation, the question of priority may be an extremely difficult one. The rival inventors may have approached the invention from different viewpoints and their patent applications may show an equal variety in embodiments and in the manner of describing the invention. To formulate the issues so clearly as to avoid unnecessary interferences, and to enable the evidence correctly to disclose priority, may be a time-consuming and difficult problem. If done hurriedly or by some simple rule of thumb it may result later in confusion and delay that might have been avoided. The practice of requiring preliminary statements and of permitting motions as to patentability, to the right to make claims and to add counts, serves to clarify the issues at the outset, serves to avoid confusion later in the taking of testimony and frequently enables the interference to be terminated forthwith.

If after these preliminaries are completed there are a number of contestants with voluminous testimony it is, in the nature of things, impossible to bring the proceedings to a speedy end. If the testimony were held in open court it might be speeded but the effect on the court's dockets of a number of such trials and the expense to the contestants, if in widely distant parts of the country, would undoubtedly lead to the appointment of a master-a result that would not be likely to lead to any better or more speedy results than the present practice.

If the present practice as to preliminary statements, motions, and rules of evidence seems too technical, the alternative of having these questions develop during the taking of testimony would only lead to worse confusion. And while the rules are technical they are not indefinite or unfair, and if one undertakes to practice in this field he has only himself to blame if he has failed to take the proper steps at the proper time.

It is, of course, unfortunate when the grant of a patent is greatly delayed in an active and rapidly developing field, under the present interference-practice. But the situation would not be improved if the patent were issued to one contestant and an interference declared with the others unless it were known in advance that the party to whom the patent issued was to win the interference, in which case the interference would be an empty formality and unnecessary. If, on the other hand, conflicting patents were issued to all parties and the interference then declared it would present a practically impossible problem to prospective licensees to determine the winner in advance of, and even in ignorance of, the evidence. And with each such patentee free to sue for infringement on the issuance of his patent the danger of a multiplicity of infringement suits would be formidable.

Perhaps if the number of troublesome, long drawn-out interferences were compared with the number expeditiously disposed of and with the total number of patents granted, the present interference practice might not appear in as unfavorable a light as when attention is concentrated solely on a few exceptional and abnormal cases.

(O. W. Lee, Patent Interference Reform, Journal of the Patent Office Society, vol. 26, No. 2, February 1944, p. 132:)

The December 1943 Journal of the Patent Office Society sets forth the American Bar Association approved of "Patent Interference Reform." The proposed amendments to section 4904 merely impose upon the Patent Office the duty of rendering a decision without the benefit of testimony, and also reestablishes an interlocutory appeal which was previously abolished.

The amendment at (a) merely makes a previously filed application prior art, and would impose upon the Patent Office a multitude of rejections which otherwise would never result in interferences, because not claimed in the prior application (or patent).

The amendment at (b) would unwarrantly give access to prior applications and enable the later applicant to amend his claims to define over those of the earlier applicant having no voice or knowledge of the procedure. Obviously this would be a vicious practice. This paragraph also creates an appeal which is unnecessary under the present practice.

The amendment at (c) makes the appeal an almost useless procedure and a dangerous hazard which deprives the applicant of the right to prove his priority unless he does not appeal.