are in those interferences which are tied up by motions, testimony and appeals, it is obvious that these burdensome delays do not delay the steady product of the office." SEC. 10. SUMMARY.-With the intelligent cooperation of the attorneys the average interference can be decided within the Patent Office without unnecessary delay or undue complications and with a satisfactory proportion of accuracy. It is the exceptional cases that furnish the hard examples and even in those cases the delay and technical difficulties which arise are largely chargeable to the attorneys' efforts to take every advantage for their clients. Apart from this fundamental question of jurisdiction there is no part of the substantive law of interferences that needs changing. One of the most urgent needs in the patent system is the improvement of the practice and procedure in interference contests and this topic is treated further on in these pages, under the appropriate heading. OFFICE OF THE ATTORNEY GENERAL, Hon. FRANK W. BOYKIN, Chairman, Committee on Patents, The House of Representatives, Washington, D. C. MY DEAR MR. CHAIRMAN: This in response to your request for my views concerning a bill (H. R. 3264) to amend the patent laws with respect to practice in interference cases. Under existing law, whenever a patent application claims substantially the same invention as another patent or application, the Patent Office institutes an "interference proceeding" to determine who is the prior inventor and therefore entitled to the patent. Such a proceeding is conducted before officials of the Patent Office known as examiners of interferences (35 U. S. C. 52 et seq.). decision of the Patent Office may be reviewed either in the United States Court of Customs and Patent Appeals (35 U. S. C. 59a) or in the United States district court (35 U. S. C. 63). Final Under present practice, interference proceedings tend to become protracted and expensive, often consuming several years. Since a patent is withheld until determination of priority, the proceedings lend themselves to abuse, as has been recognized by those experienced in the field. Interference proceedings may be utilized to defer indefinitely the issuance of a patent to a competitor, and to compel small inventors to dispose of their inventions under threat of protracted and expensive proceedings. Likewise, advantage can be taken of interference proceedings to postpone the commencement of the applicant's own patent term while holding over potential competitors the threat of "patent pending." The purpose of the bill under consideration is to eliminate or at least substantially reduce this potential source of abuse by making the interference proceedings more expeditious and more economical. With this objective I am in full accord. I have considerable doubt, however, whether the present bill is a desirable vehicle for achieving this end. The bill would almost entirely eliminate interference proceedings in the Patent Office and would require the Patent Office to render an administrative award of priority on the basis of affidavits filed with it, and without a hearing or taking of testimony. A party aggrieved by the decision would be accorded a remedy by a civil action in the district court, which would consist of a de novo trial. At present, review of interference decisions made by the Patent Office is usually in the Court of Customs and Patent Appeals, on the record made in the Patent Office. The alternative method of review-a civil action in the district court-has a chance of success only if evidence not before the Patent Office is introduced. However, the full proceedings had in the Patent Office at present results in the disposition of most cases in the Patent Office itself. The undesirable feature of the proposed legislation is that it would so sharply curtail the administrative procedure as to force into litigation many matters which are now disposed of administratively. Merely to substitute judicial for administrative proceedings will not produce any appreciable improvement in terms of expedition or economy. This Department is inclined to the view that improvement and simplification in existing interference proceedings can largely be achieved administratively by amending the rules of the Patent Office. For example, after 97151-44- --6 preliminary statements are submitted by each party showing the date of invention and other material information, a pre-trial conference could be had, in which all the steps in the Patent Office preceding the actual taking of testimony could be amalgamated. At this preliminary conference, which would follow substantially the pre-trial procedure now provided by the Federal Rules of Civil Procedure, the issues could be limited and clarified, thereby restricting the scope of the testimony to be taken. This conference could be followed by a hearing before an examiner, with irrelevant and repetitious matter sharply excluded at the outset. Consideration might be given to the possibility of appointing traveling examiners to hold hearings at convenient places throughout the country, at which all available witnesses could be produced, leaving depositions only for exceptional circumstances. The expense of reporting might possibly be eliminated by providing salaried official reporters as was done recently in the district courts by the act of January 20, 1944 (Public Law No. 222, 78th Cong.). The suggested procedure would in my opinion be preferable to the changes embodied in the proposed bill. It should reduce the time and expense of interference proceedings, while permitting the Patent Office to give sufficient consideration to the issues to permit disposition of a large number of cases without reaching the courts. While the improvements suggested herein may be effectuated almost entirely by a change in the Patent Office rules, it may be desirable to amplify the present subpena powers of the Patent Office. In view of the foregoing considerations, I am unable to recommend the enactment of the bill. I have been advised by the Director of the Bureau of the Budget that there is no objection to the submission of this report. Sincerely yours, FRANCIS BIDDLE, Attorney General. STATEMENT ON BEHALF OF THE AMERICAN PATENT LAW ASSOCIATION RE H. R. 3264 On February 24, 1944, a hearing was held by the House Committee on Patents, for the purpose of receiving testimony or reports of opponents to and proponents for the bill above entitled. The committee was at that time advised that a referendum was being taken by the American Patent Law Association and permission was requested to file with the committee, the results of the referendum ballot sent out to each member of the association. Permission was also requested to file a statement or brief. Both requests were granted by the acting chairman, Mr. Lanham. In the outset, the committee is advised that the American Patent Law Association is opposed to this bill. The questions propounded in the referendum ballot submitted to the members of the American Patent Law Association, are as follows: 1. Do you approve of the Church bill, H. R. 3264? 2. Do you prefer determination of priority on testimony taken in a district court instead of in the Patent Office? 3. Do you approve of an administrative award of priority by the Patent Office on an ex parte showing? 4. Do you favor rejecting one pending application on a prior pending application? 5. Do you favor the requirement of section 2 (a), (b), (c) of the bill necessitating election between a request for an administrative award of priority and an appeal from a rejection on a prior pending application? 6. Do you favor a bill making no provision for interlocutory procedure in the Patent Office to settle or reform issues of interference before determining priority? 7. Do you favor a bill providing for interlocutory procedure in the Patent Office to settle or reform issues of interference and then letting the case go to a district court for testimony and determination of priority? The ballots received from the members of the association show the vote to be overwhelmingly negative on each question. The ratio on the questions runs from 2 to 1, to 20 to 1. Some of the observations of the members of the association, are as follows: 1. "From the standpoint of the individual inventor, I venture to assert most emphatically that the passage of this proposed bill would be an awful mistake. * * * Throwing interferences into many different jurisdictions throughout the This proceeding, known as an interference, is unique in the American system. The American system gives the inventors an opportunity to show when they actually made the invention, and bases their rights accordingly upon the actual facts of who first made the invention, and not upon an arbitrary criterion such as the date of filing of the application. Filing of the application may be immediately after the making of the invention, or some time thereafter. According to all European systems of granting patents, no applicant for a patent is entitled to any earlier date than the filing date of his application, and priority as between applicants claiming the same invention, is determined strictly on the basis of the earliest filing date. We think that our system is far superior to that of any European country primarily because we allow the facts to prevail rather than to allow the granting of so valuable a right as the patent to depend upon an arbitrary criterion, and to be subject to the unequal opportunity for first filing which various inventors may have. Thus, under the European system, a corporation having a large staff prepared to file applications immediately upon completion of the inventor has an enormous advantage over the less-favored inventor who has no such facilities at his command, and who frequently must find the facilities and raise the money to effect filing of an application upon his invention. The American system checks the unfairness of the above by providing the interference procedure under which an inventor is permitted to show that though he may have been later to file, nevertheless, he was actually the first to make the invention. This procedure is of enormous practical value. It has the psychological effect of encouraging men to try to solve problems by invention. They know that if they succeed they will not be prevented from gaining the fruits of their labor and ingenuity by some "slicker" getting into the Patent Office first. Now if we are to preserve to the American inventor full opportunity to establish the actual fact of inventorship, so that the patent goes to the first and original inventor, instead of to someone who is able, by false or misleading affidavits filed in the Patent Office, to put great obstacles in the way of showing the true facts as the Church bill proposes, we must avoid putting a premium on dishonesty, which certainly is the effect of the procedure proposed in the Church bill. THE PRESENT INTERFERENCE PRACTICE CONTAINS MANY NECESSARY SAFEGUARDS The present interference practice has been worked out over a period of more than 100 years and is not to be lightly wrecked or dismembered. There are a few important facts to be remembered concerning its operation. First and foremost is the fact that the Patent Office decisions on priority of invention are rarely disturbed by the appellate court or by the district and courts of appeal. It is only when the parties introduce further evidence, as in proceedings under Revised Statute 1495, that any conclusion different from that of the Patent Office is likely to result. In brief, the Patent Office, under the present practice, does a splendid job. Complaints lodged about the interference practice of 50 years ago are of course somewhat de trop. The interference practice in the United States Patent Office has been steadily improved and has been streamlined very considerably by the change in the statute August 5, 1939, effective August 5, 1940. Delay in the procedure is, in the main, not chargeable so much to the Patent Office as to the parties themselves. The delays of which Mr. Barnett and other attorneys have so eloquently complained are in large part of their own making. Attorneys demand certain procedures and insist on them for themselves and then complain when the opposing counsel indulges in them. The Patent Office constantly offers to cut out certain procedures, such as certain types of motions, but the practicing attorneys resist strenuously. A complex question, such as that of determining the extent of the controversy, that is, what is patentable subject matter common to the parties involved, and then determining the dates up on which they made their respective inventions, is a very intricate proceedings and requires time. Such intricate technical and factual questions are involved that experts in the arts to which the inventions relate are required to decide them. The time required for settling such complex questions is absolutely unavoidable if correct conclusions are desired. If applicants and their counsel are willing to have their cases considered hurriedly, and to have them decided on snap judgment, without thorough consideration, they could have such a procedure. But neither the inventors, manufacturers, nor the patent attorneys want that. They know that is not the way to save time. They want full opportunity to develop both the scope of the controversy BROWN, JACKSON, BOETTCHER & DIENNER, Hon. FRITZ LANHAM, Acting Chairman, House Committee on Patents, Chicago, March 6, 1944. DEAR SIR: As per permission granted by you at the hearings on Church bill (H. R. 3264), of February 24, I respectfully submit the following statement: I am John A. Dienner, of Chicago, Ill. I practice patent law. My first contact with the interference practice occurred upon my appointment as assistant examiner in the United States Patent Office in 1910. In 1914 I entered the private practice of patent law, and there has been hardly a day since then in which I have not represented some client whose application was involved in an interference in the Patent Office. Along with a group of others, I have in recent years made an intensive study of the interference practice. That study has included consideration of numerous proposals for changes or modifications of the interference practice in some respect. Among these proposals considered has been that of the Church bill H. R. 3264. It would, in my judgment, be a calamity if this bill (H. R. 3264) should be passed and become law. In my judgment, it is wrong in principle, incomplete and inconsistent in its provisions, and destructive of the system of granting patents according to the American theory. In support of the above statement of opinion, I submit the following: WHY INTERFERENCES ARE NECESSARY Under the American system of granting patents as provided for in the Constitution, the inventor is granted an exclusive right for a limited time to his discovery. "Inventor," as used in the Constitution, has, in the American system of law and jurisprudence, been interpreted as the first and original inventor. The statutes passed by the Congress from the earliest days of the Republic, and the decisions thereupon, have universally construed the "inventor" referred to in the constitutional provision as the first and original inventor. That meaning is fixed by usage. The Congress, in 1836, by statutes, delegated to a Commissioner of Patents its authority to grant patents, and established a bureau or office under the control of the Commissioner of Patents for performing the functions prescribed by appropriate acts of Congress under the authority of article I, section 8, of the Constitution. One of the fundamental duties of the Commissioner, prescribed under the law of 1836, is to determine, in the case of each application for patent, whether the statutory requirements which Congress had established are fulfilled. One of the most fundamental requirements for an applicant to secure the grant of a patent to him is for him to assert and for the Commissioner to find, that such applicant was the first and original inventor of the claimed invention. To determine this question the application is examined and compared with prior patents and prior publications by the staff of examiners. Failing to find the invention disclosed in prior publications or prior patents, the application is allowed, and the grant of patent to the applicant effected. That is the normal ex parte prosecution. However, if the Commissioner, in the course of the examination of one application, discovers pending in the Patent Office another application claiming the same invention that is claimed by the first applicant, then reference to the prior art, that is, prior publications and prior patents, will not resolve the question of which of the said two applicants claiming the same invention is the first and original inventor. The decision as to who is the first and original inventor cannot be based upon filing date, for under the American system it is the date of making the invention which determines who was the first inventor, and not the matter of who happens to file his application first. The first to file his application is, of course, so far as the face of the records go, prior inventor to the one who files his application on the same invention afterwards. But the order of filing is not determinative of the order of making the invention. In other words, the filing dates do not tell who was actually the first to make the invention. It becomes necessary thereupon for the Commissioner of Patents to institute proceedings to permit the parties to prove the facts of making the invention by each of them, and then to determine from the evidence submitted which applicant was in fact the prior inventor This proceeding, known as an interference, is unique in the American system. The American system gives the inventors an opportunity to show when they actually made the invention, and bases their rights accordingly upon the actual facts of who first made the invention, and not upon an arbitrary criterion such as the date of filing of the application. Filing of the application may be immediately after the making of the invention, or some time thereafter. According to all European systems of granting patents, no applicant for a patent is entitled to any earlier date than the filing date of his application, and priority as between applicants claiming the same invention, is determined strictly on the basis of the earliest filing date. We think that our system is far superior to that of any European country primarily because we allow the facts to prevail rather than to allow the granting of so valuable a right as the patent to depend upon an arbitrary criterion, and to be subject to the unequal opportunity for first filing which various inventors may have. Thus, under the European system, a corporation having a large staff prepared to file applications immediately upon completion of the inventor has an enormous advantage over the less-favored inventor who has no such facilities at his command, and who frequently must find the facilities and raise the money to effect filing of an application upon his invention. The American system checks the unfairness of the above by providing the interference procedure under which an inventor is permitted to show that though he may have been later to file, nevertheless, he was actually the first to make the invention. This procedure is of enormous practical value. It has the psychological effect of encouraging men to try to solve problems by invention. They know that if they succeed they will not be prevented from gaining the fruits of their labor and ingenuity by some "slicker" getting into the Patent Office first. Now if we are to preserve to the American inventor full opportunity to establish the actual fact of inventorship, so that the patent goes to the first and original inventor, instead of to someone who is able, by false or misleading affidavits filed in the Patent Office, to put great obstacles in the way of showing the true facts as the Church bill proposes, we must avoid putting a premium on dishonesty, which certainly is the effect of the procedure proposed in the Church bill. THE PRESENT INTERFERENCE PRACTICE CONTAINS MANY NECESSARY SAFEGUARDS The present interference practice has been worked out over a period of more than 100 years and is not to be lightly wrecked or dismembered. There are a few important facts to be remembered concerning its operation. First and foremost is the fact that the Patent Office decisions on priority of invention are rarely disturbed by the appellate court or by the district and courts of appeal. It is only when the parties introduce further evidence, as in proceedings under Revised Statute 1495, that any conclusion different from that of the Patent Office is likely to result. In brief, the Patent Office, under the present practice, does a splendid job. Complaints lodged about the interference practice of 50 years ago are of course somewhat de trop. The interference practice in the United States Patent Office has been steadily improved and has been streamlined very considerably by the change in the statute August 5, 1939, effective August 5, 1940. Delay in the procedure is, in the main, not chargeable so much to the Patent Office as to the parties themselves. The delays of which Mr. Barnett and other attorneys have so eloquently complained are in large part of their own making. Attorneys demand certain procedures and insist on them for themselves and then complain when the opposing counsel indulges in them. The Patent Office constantly offers to cut out certain procedures, such as certain types of motions, but the practicing attorneys resist strenuously. A complex question, such as that of determining the extent of the controversy, that is, what is patentable subject matter common to the parties involved, and then determining the dates up on which they made their respective inventions, is a very intricate proceedings and requires time. Such intricate technical and factual questions are involved that experts in the arts to which the inventions relate are required to decide them. The time required for settling such complex questions is absolutely unavoidable if correct conclusions are desired. If applicants and their counsel are willing to have their cases considered hurriedly, and to have them decided on snap judgment, without thorough consideration, they could have such a procedure. But neither the inventors, manufacturers, nor the patent attorneys want that. They know that is not the way to save time. They want full opportunity to develop both the scope of the controversy |