The amendment at (d) and (e) imposes upon the Patent Office the duty of deciding the controversy, upon "proofs, not requiring testimony" and "without any hearing or oral argument.' Plainly, this would be a needless time-wasting procedure, which could not possibly result in any justice whatever. Of course there is seldom any "proof" which could properly be considered as "not requiring testimony." Surely the Patent Office could not be expected to rightfully render a decision upon a mere presentation of exhibits and the bald statements of the applicant or the "written memorandum" of counsel. Affidavits of any kind would certainly be exceedingly poor evidence. Under the present practice, the Patent Office very admirably performs its functions of rendering a decision upon the evidence presented, and there is a thoroughness and efficiency which clearly represents an ability to render justice in a fair and impartial manner, which in most instances is accepted as correct without resorting to appeal, and is held correct in a big majority of appeals. This proposed "Reform" seeks to have the Patent Office render a decision without any sound evidence upon which to base proper judgment. Surely, there is no wisdom in that kind of "Reform." The amendment at (f) reviews the previously abolished appeal as to patentability, and imposes a needless burden upon the Patent Office. Furthermore, the question of patentability is also subject to appeal under section 4911 and the whole procedure would be delayed until the C. C. P. A. could render a decision on patentability, instead of the present practice where the C. C. P. A. decides the whole controversy in one appeal. Under this "reform" the Patent Office does not decide the question of priority and the amendment at (m) leaves that to be decided by the district court wherever the "senior party" resides. Thus the junior party must transport his witnesses and physical exhibits to wherever the senior party resides, and pay all of the expenses, instead of taking the testimony where the witnesses reside. Surely, there is no wisdom in that kind of "reform." Moreover, there would be no way to compel witnesses to travel unreasonable distances. Anyway, it could hardly be presumed that the various district courts are more capable to decide an interference than the Patent Office. When a "reform" is suggested it is thought that it should present some worthwhile improvement over the existing practice. The Patent Office has made some credible improvements by the recent changes in the Rules of Practice. The only time-wasting procedure which now remains, is the hearing upon motions. This could readily be corrected by abolishing such hearing and requiring each motion to adequately set forth the grounds upon which it is based, and to require the other party to file a written answer, whereupon the examiner should decide the question, subject to review if again raised at the final hearing. That would save much time and expense which is now wasted on oral arguments on motions, when the matter could equally as well have been concisely put in writing. It is well known that motions are often decided in favor of the party who filed a brief instead of the party who appeared for oral argument. Justice can easily be rendered by eliminating briefs and oral hearings, and confining the practice to the motion with grounds of support, and the filing of an answer by the other party. On the question of priority, the final hearing with oral argument is of little or no advantage, and the whole subject can readily be presented by printed briefs. It would save much time and expense, if oral arguments were abolished; and then with each party required to file a brief, the Patent Office could with credible ability, render a decision upon the evidence of record. With those minor changes, eliminating the time wasted in setting motions for hearing and in arguments at the final hearing, the practice would be the best of which the world can boast, and would have a sound foundation based upon years of experience and gradual evolution, instead of "reform." Moreover, it would leave it possible to perfect the counts in an inter partes proceeding in the Patent Office which apparently the "reform" intends to eliminate or else impose upon the District Court where quite obviously it does not belong and could not be efficiently accomplished. The so-called "reform" merely evidences a devising attempt to remove the interference practice from the Patent Office where it rightfully belongs and is quite properly administered. It seeks to place the unfortunate inventor in court where none but members of the bar can appear, and thus compel him to engage some member of the bar no matter whether he has any knowledge whatever of patent practice, or else to seek out some patent lawyer somewhere, no matter whether or not he has any experience with the particular subject matter of such inventions, and no matter how capable and efficient a patent attorney or agent the inventor may already have. It is interesting to note that in a recent interference the winning party was represented by a lone patent attorney who is not a member of the bar, and the defeated party was represented by five patent lawyers. The defeated party promptly engaged that patent attorney to take charge of all of their patenting. That makes four corporations who now engage the same patent attorney. He is indeed capable in interference practice, and there is no good reason why those corporations should be deprived of his services in case of an interference. The worst part of the "reform" is that any member of the bar who is not admitted to practice in the Patent Office, would be at liberty to appear in any patent interference in a district court, even though he had absolutely no knowledge of patent practice, nor the slightest understanding of the complexities of patent interference practice. (Ford Harris, The New Interference Practice, Journal of the Patent Office Society, vol. 25, No. 7, July 1943, pp. 526–528:) The comments of Mr. Bakalar in the April Journal are quite interesting. While I disagree with Mr. Bakalar as to his principal reason for objecting to having interferences tried by the courts, I am inclined to agree with him that this particular change should not be made. Our present interference system is a national scandal. The Patent Office has been forced to set up this system due to the indefiniteness of the words "known or used by others" in R. S. 4886, 35 U. S. C. 31. As Judge Learned Hand said in a recent decision, the words have an "esoteric meaning," and the statute should be revised and made more definite and practical. A long line of able Commissioners and interference examiners have labored to build up a system within statutory bounds that was workable, and, considering this handicap, they have done a good job. There is also no question in my mind that, working from necessity within the bounds of the system so set up, the Interference Division is very efficient. I think the interference examiners decide interferences correctly, within these bounds, more often than the courts decide correctly in litigation. Moreover, I have never had an interference in which it was not evident that the examiner had carefully studied the record and conscientiously applied the rules, and I am sorry I cannot say the same for all Federal judges as to contested cases. I think we would have a better presentation of evidence if interferences were conducted by lawyers who understand the rules of evidence than we now have when interferences are conducted by patent attorneys and agents, many of whom are not lawyers and some of whom could never become lawyers since they are incapable of legal reasoning. While the cases would be better prepared for submission, I think the advantages derived from this better submission would be more than balanced by the fact that the highly trained interference examiners are more competent to decide interferences than the Federal judges. The primary fact is, however, that interference practice is a national scandal. Designed to protect inventors from larceny, it is so expensive that it is little protection. As a complicated and expensive legal proceeding, it has had no peer since the British people abolished their old chancery practice, as practiced by Mr. Tidd, the special pleader. Perhaps some day men of ability, in place of worrying about who is going to get the fees, will start thinking about the people who have to pay these fees and devise a simpler system. The Patent Office, starting with a defective statute and a false theory of values, cannot do more than it has done, and before much simplification can occur, certain changes in our basic thinking on this subject will have to occur. Most of us accept the fundamentals of our present patent laws which were formulated a hundred years ago as fixed and unalterable. It is my earnest recommendation that the younger practitioners critically study the validity and worth, under our present state of industrial development, of these fundamentals, and that they try to measure them, not from any narrow view of probable personal advantage but by the yardstick of the constitutional provision. It is very hard to see how science and the useful arts are promoted in any way by interference practice, and we all know the fix a poor inventor is in when his application is thrown into interference. AMERICAN CHEMICAL SOCIETY, COMMITTEE ON PATENTS AND RELATED LEGISLATION, Los Angeles, Calif., February 18, 1944. Re H. R. 3264, bill to amend patent laws with respect to practice in interference cases, and for other purposes. Hon. FRANK W. BOYKIN, Chairman, Committee on Patents, House of Representatives, Washington, D. C. DEAR MR. BOYKIN: The committee on patent and related legislation of the American Chemical Society has studied the above-mentioned bill, on which it is understood a hearing will be held February 24. We should appreciate your placing this letter in the records. The American Chemical Society has a membership of approximately 37,000 chemists of high quality and professional standing engaged in industry, in private consulting practice, in private research work, and in academic teaching and in Government service. The society speaks through our committee on matters relating to patent legislation. Our committee has studied H. R. 3264. The committee is in favor of simplifying and improving the rules and procedures pertaining to adjudication of interferences and, therefore, is in sympathy with the "intention" of H. R. 3264. However, we feel that this bill, as drawn, contains many defects, some of which might easily make the proposed procedure more unsatisfactory than the present procedure. As this is a highly technical bill, it is difficult to discuss in detail by letter and it cannot possibly be corrected during the hearing of your committee. Therefore, it is our recommendation that the bill be referred to a small committee for study and revision, and that a hearing be held at a later date on the revised draft. Very truly yours, WALTER A. SCHMIDT, Chairman. CAMERON, KERKAM & SUTTON, Re H. R. 3264. Hon. FRANK W. BOYKIN, Chairman, Committee on Patents, House of Representatives, Washington, D. C. SIR: In pursuance of the permission granted at the hearing on H. R. 3264 on February 24, 1944, I wish to submit the following considerations in opposition to this bill, predicated on approximately 30 years' experience in active practice of patent law before the Patent Office and Federal courts, a like period teaching patent law at George Washington University, observations and studies made as chairman of the Patent Office Advisory Committee, chairman of the section of patent, trade-mark, and copyright law of the American Bar Association and other positions in professional groups. I am not concerned at this time with criticism of phraseology, but wish to state my opposition broadly to certain principles embodied in this bill. Section 2, subsections (a) and (b), proposes the rejection of a later filed application on an earlier filed application if there is common subject matter disclosed, whereupon the later applicant has access to the earlier filed application. Under present practice one applicant may not gain access to another applicant's file until he has first filed with the Patent Office a sworn statement as to his dates of invention, known as a preliminary statement. Thereby before one applicant has an opportunity to learn anything about the dates of his opponent, he has committed himself as to his own dates of invention under conditions which make it very difficult for him to change his story after he learns of his opponent's dates. Inventors are naturally jealous and suspicious of an opponent so admitted to an application record that is normally maintained in secrecy under the long-established policy of the Patent Office, but the present practice of requiring a sworn statement as to dates to be relied upon has worked well and been accompanied by a minimum of apprehension and suspicion that improper advantage is taken of any knowledge gained. The present bill proposes to open the senior application to the inspection of the junior applicant, following a rejection, without safeguarding in any way the senior applicant's rights. The junior applicant does not have to commit himself in any way as to his dates of invention before gaining access to the senior applicant's case. This fact alone is calculated to encourage a person filing an application which will embrace subject matter common to his competitor's structure, with the expectation that he will be rejected on the competitor's case and thereby have an opportunity to gain access thereto and ascertain what he is trying to claim and what are the probabilities with respect to the scope of protection to be obtained. Under present practice an interference is initiated only after the subject matter of the issue is found to be patentable. Such is not required by the present bill. If the mere presence of common subject matter disclosed is to provoke a priority proceeding under the proposed practice, the number of priority proceedings so initiated will be greatly increased, because the mere presence of common subject matter is much more frequent than the existence of allowable claims directed to common subject matter. Aside from the fact that the proposed practice will encourage the filing of applications for the purpose of a person going on a "fishing expedition" to find out what his competitor is trying to protect, the lack of necessity for patentable subject matter to be claimed by both parties (as under present practice) will result in the initiation of many prima facie contents that do not arise under present practice. Section 2, subsection (c), requires that the applicant following the rejection above referred to make a binding election by either appealing from the rejection or demanding what is called "an administrative award." No matter how honest an applicant may be in his opinion that there is no common patentable subject matter if he elects to stand on this belief, he "puts all of his eggs in one basket" and forever stops himself to prove the truth as to his own priority. This is hardly consistent with present day concepts of legal rights, but the obvious consequence will be that to avoid this binding estoppel most applicants will demand the award under conditions that, under present practice, would result in the disposition of the interference before any decision of priority was called for. Section 2, subsections (d) and (e), proposes an administrative award on a purely ex parte showing-an award which under subsection (i) has no presumption of correctness, but which under subsection (k) would result in the grant of a patent having no prima facie validity. This issuance of patents on the basis of ex parte showings which are not even presumptively correct is in effect the offering of a premium to the lawyer who can draw the most ingenious and truth-concealing picture of his client's invention history, and as the resulting patent will have no prima facie validity the Patent Office is hardly likely to be overzealous in analyzing the ambiguities and omissions of such ex parte presentations. But a graver incident of the proposed practice is this placing in the hands of patentees apparent deeds of monopoly which may be instruments of harassment of others if the patentees are not the first inventors or instruments of little or no value if such patentees are the first inventors. Who would dare put capital into exploiting a patented invention knowing that there was this threat of priority contest in the courts if the Patent Office had made no determination which was even presumptively correct? On the other hand, here an unscrupulous patentee, having obtained a patent by skillful and misrepresentative showing in the Patent Office, would be furnished with the seal of the United States Government for dealing with the gullible until such time as the unsuccessful applicant could prove his superior right to the patent. The patent system is criticized because too many invalid patents are granted. The proposed procedure is one that would increase the number because of the very machinery set up for getting patents granted without even a prima facie determination of right. While in favor of any practice that does not leave open the entire retrial of the issue of priority in the courts because the decision of the Patent Office is not conclusive, I gravely question if the proposed procedure is going to have the other advantages of open court trials urged by the proponents of the bill. Under this bill a suit must be started at the residence of the inventor who has received the administrative award in the Patent Office. In priority contests the parties come from widely separated parts of the United States. Under existing Federal statutes, it is permissible to proceed by deposition when a witness is outside of the jurisdiction of the court or more than 100 miles from the place of trial. It is hardly likely that a party to a suit will transport his witnesses and exhibits more than 100 miles to the place of trial when with a great saving of expense and without disruption of his business the entire testimony can be taken by depositions the same as under present practice. The proposed procedure under section 2, subsection (j), also opens the door to a multiplicity of suits, because where there are three inventors there is no requirement that one of the two losers intervene in the suit started by the other loserand there is no requirement on the court to admit him if he does try to intervene. For the foregoing reasons the proposed bill impresses me as unsound in principle. It tends to break down the principle that applications for patents are maintained in secrecy during their pendency unless an opponent commits himself under oath as to his dates of invention; it encourages initiation of priority contests insofar as the Patent Office is concerned; it does not protect the rights of a party whose application, because he was the first to file, is made the basis of rejections; it places a premium on ingenious presentation of facts to simulate a story that cannot be adequately substantiated when testimony is taken; it removes from the Patent Office responsibility in arriving at conclusions which are presumptively correct; it increases the number of invalid patents that may be granted for unconscionable use by unprincipled patentees; and it retards the opportunity for the meritorious patentee to exploit his invention if his record in the Patent Office shows there is the threat hanging over him of initiation of a proceeding under R. S. 4915; while the interference records may still be made by deposition and hence it is questionable if there will be any real saving in time or expense. Respectfully, Re H. R. 3264. COMMITTEE ON PATENTS, LOYD H. SUTTON. MANN, BROWN & Cox, United States House of Representatives, Washington, D. C. GENTLEMEN: Although I do not expect to be able to attend the hearing, I have given this bill considerable study and offer the enclosed memorandum for your consideration and for the record. It is my understanding that some amendments are to be proposed. Those I have heard about are far from adequate. If you are favorably inclined toward the bill after this hearing, I urge you to submit it to public scrutiny again, with the amendments you intend to propose, before reporting it to the House. However, I am strongly convinced that no bill should be reported until the defects pointed out in the enclosed have been corrected and the questions satisfactorily answered. To summarize my views as a patent lawyer on the two major propositions of the bill: 1. Granting patents after some sort of a preliminary award would be desirable in clear cases, highly undesirable in the close cases. The Commissioner of Patents should be given power to use his good discretion. 2. There are many, including lawyers, who think the courts will make interferences worse. We should be permitted to keep our interferences in the Patent Office until those wanting to go to the courts have tried them out and educated at least a few of them. There is no gain for the public in forcing us into the course that could not be obtained by reform within the Patent Office. Yours very truly, LOUIS ROBERTSON. PROPOSED INTERFERENCE CHANGES, CRITICISMS, AND SUGGESTIONS DISCRETION TO DELAY PATENT At the present time no patent is granted ordinarily until the question of priority has been fully fought out. Until the patent is granted, no one is incurring any liability for infringement. Admittedly this is objectionable because the real inventor is given no opportunity to force the payment of royalties in the meantime. The present bill, H. R. 3264, would be objectionable in the other direction: Upon grant of the patent on an administrative guess based on affidavits, the true inventor (if the guess is wrong) may immediately have his entire business put in jeopardy. He is rarely sure he is the first inventor; never that he can prove it. If 97151-44- -5 |