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the law of private contract relating to trade secrets in essentially the same way that the patent clause and the patent laws since 1790 were found to circumscribe the state law of unfair competition in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), and Compco Corp. v. Day-Brite Lighting. Inc., 376 U.S. 234 (1964). In short, what the Administration bill will accomplish if enacted is, without knowledge by the Congress of all the facts or the real intent, to foreclose decisions which the Supreme Court may make in the future on constitutional grounds. If Congress is now to make judgments upon the leeway to be afforded the states for the protection of trade secrets by private monopolies, then, at the very least, Congress must engage in detailed consideration in the light of full knowledge of what it is accomplishing and must particularly consider what limits the constitutional standard of invention necessarily imposes on such private monopolies. It is submitted, moreover, that Congress should not place a federal legislative imprimatur upon the state law of trade secrets as it now exists, since that law as now extended far beyond the narrow bounds of personal fiduciary relationship upon which it was originally premised and as to which it is still valid, is necessarily in direct conflict with the constitutional patent clause and every patent law enacted by Congress since 1790. In short, there is no clearly demonstrated need or jurisdiction for this sweeping legislation. which has not been fully explained to Congress and has not been the subject of fully focused factual inquiry by the Subcommittee.

The foregoing discussion of Sections 122 and 301 of the Administration bill. first available to the public, including the writer, on September 27. 1973, is not intended to be exhaustive of criticism of the provisions of that bill. Per contra, in the short time that such bill has been available, there has been no opportunity to digest or consider thoroughly any of the others of the provisions it contains. Other provisions, like those especially discussed, may also contain hidden or camouflaged dangers to which the Subcommittee should be alert and hence careful consideration of every provision of the Administration bill is urged.

SPECIFIC COMMENT CONCERNING PARTICULAR SECTIONS OF S. 1321

Many sections of S. 1321 have already been the subject of extensive comment by the writer and by others who have testified. Presumably various sections will also be commented upon in writing by members of the public who did not testify. Particular attention is invited, however, to the following specific subsections which it is believed merit further consideration by the Subcommittee:

Section 119(c).-This section should be reworded to make clear that even though the first filed foreign application has not been "withdrawn, abandoned or disposed of without having been laid open to public inspection and without leaving any rights outstanding”, a subsequently filed application in the same foreign country by the same applicant may serve as the basis for a right of priority provided the first application was filed not more than one year before the United States application. Such a provision is consistent with the original Paris Convention and the Stockholm Revision; is consistent with the treatment that United States applications are afforded in foreign countries, and is consistent with the way that the present law is construed. quite properly, by the Patent Office. To exemplify; If the first filed foreign application does not contain sufficient disclosure to satisfy 35 U.S.C. 112 or otherwise fails to satisfy some requirement of United States law but a subsequently filed foreign application is adequate under United States law and a United States application based upon both is filed within a year of the filing date of the first application, the fact that only the second application complies with United States law and hence qualifies under 35 U.S.C. 119 should not prejudice the applicant from obtaining the benefit of his second application. In such a case, moreover, so long as the United States application has been filed within a year of the first filed application, the United States public is in no way hurt by the fact that the earliest priority date available to the applicant is the later date of the second application.

Section 120.- The desirability of perpetuating any form of continuationin-part application is exceedingly doubtful. One of the most frequent criticisms of the United States patent system I have heard voiced by foreigners is a criticism of the continuation-in-part practice as it now exists. Moreover,

the practice is widely abused both by design and by accident. The practice frequently results in situations where an applicant's United States patent sued from his continuation-in-part application is invalid based on the 35 US.C. 102(b) or (d) consequences of his own foreign patent issued on a counterpart to his original United States patent application. If the practice is to be as severely curtailed as it would be if Section 120(a)(4) of S. 1321 were enacted, it will be relatively unavailable to practitioners in any event and extremely cumbersome to deal with. It would seem that total abolition of the pratice by deletion of the section might well be the more desirable alternative since it would permit simplification of the practice and would gire greater certainty to practitioners in the long run.

Section 282(c).—This subsection would greatly complicate the presently required statutory notice under 35 U.S.C. 282 required of persons opposing the validity of a patent. In point of fact, the present Section 282 notice is an outmoded throwback to practice under the equity rules as it existed before the Federal Rules of Civil Procedure with their liberal discovery provisions were promulgated for all litigation, including patent litigation. In litigation as it now exists, every litigant (including every patentee) has the right by the use of interrogatories, pretrial depositions and requests for admission to obtain whatever information he may deem necessary relative to the claims which are being made against him including the basis for allegations of invalidity, etc. Because the tendency is toward simplification and not overcomplication of litigation procedures, it would seem more equitable and more appropriate to delete the anachronistic requirement for the 282 notice altogether and to leave to patent litigants the choice of what pretrial discovery to pursue. The trial judge, who presumably will know the facts of the case, will be able better to determine the extent of specific information that it is feasible or useful to require in any given case.

SPECIFIC COMMENT ON THE PROPOSED APLA BILL

This bill, filed as a part of the testimony given September 11 on behalf of the American Patent Law Association, is not really a "reform" or "modernization" bill at all. It fundamentally constitutes a mere rehash of S. 643 with some retrogressive embellishments, e.g., in Sections 102 and 103 designed to make patents easier to obtain and easier to enforce. It has already, in essence, been fully considered and rejected by the Subcommittee and bence does not merit further detailed consideration at this time.

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Published by THE BUREAU OF NATIONAL AFFAIRS, INC., WASHINGTON, D.C. 20037

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THE SUPREME COURT AND

ADMINISTRATIVE AGENCIES

By Martin Shapiro

THE PATENT ACT OF 1952

From an excursion into the world of litigational bargaining we return to our main story, this time at the year 1952. But the story itself now leads us from Supreme Court and administrative agency to pressure groups and Congress. And again this is not an unusual route peculiar to patent law. Since both court and agency function as supplementary lawmakers under the statute maker, it is hardly surprising that the statute maker sporadically intervenes in the relationships between his two subordinates. It is important to note, however, that such intervention may create a major change in policy, a minor change or, in spite of the passage of a whole new statute. no change at all. In other words, it should not be automatically assumed that the statute maker always makes big policy decisions and the courts and agencies little ones. Each is capable of various levels of intervention in the legal process taken as a whole. The Patent Act of 1932 illustrates an intervention by the statute maker that approaches the zero level.

It is always best to begin the examination of a new statute at the beginning, not with its birth but its conception. By the early 1950s there was a widespread feeling among patent lawyers that the Supreme Court had gone astray and that somehow the good old days as symbolized in the pre-1930 cases had been better and should be revisited. The Patent Office was, of course, both a source and supporter of these sentiments. In 1952 one of those legislative accidents occurred that frequently serve as the catalyst that turns widespread sentiment into concrete political action. Congress was in the process of recodifying the laws of the United States. The U.S. Code is an arrangement in logical sequence of all the laws passed by Congress. But as minor amendments and major changes build up, and are tacked on here and there to the old code, things get more and more confused. Eventually the Congress does a periodic general cleaning and straightening up and then re-enacts its newly ordered arrangement of the laws as a new edition of the U.S. Code. It just so happened that in 1952 the subcommittee of the House Judiciary Committee in charge of going through the entire code and preparing a new edition was the subcommittee which in the normal course of its business, when it wasn't redoing codes, was in charge of proposed patent legislation. So long as the subcommittee had to work over the patent sections of the Code anyway for a new edition-and they badly needed straightening-it might as well take the occasion to improve the law, since that was part of its normal responsibilities—two birds with one stone, so to speak.

At least those forces anxious to undercut the Supreme Court pressed this argument on the members of the subcommittee. They responded favorably and set the subcommittee's professional staff to work on drafting new legislation. The reader will recall that the rather cumbersome term "statute maker" rather than Congress was originally adopted to emphasize that legislation was often a joint product of the executive and legislative branches, not of Congress alone. He should not be surprised to find then that Mr. J. P. Federico, a leading member of the Patent Office bureaucracy, soon appeared as a counsel to the subcommittee that is, a member of its staff and was given the central responsibility for drafting the proposed law. There is nothing improper about this. Experts fom the agencies are frequently seconded to congressional committees for such work. But in a very real sense the Patent Office wrote the congressional statute of 1952 as part of its continued battle with the Supreme Court.

It had help. The American patent bar is a relatively well-organized group comprehending most of the lawyers who specialize in patent matters, formed into regional associations with a national coordinating hierarchy. As soon as patent law revision was in the wind, this group created a task force of its most prominent leaders to help shape the legislation. This task force became so active in the statute drafting that in the end Mr. Frederico did not so much draft legislation for a congressional committee as with the patent bar. Not only did he and three lawyers officially representing the

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organized patent bar do almost all of the drafting, but the drafts were circulated among all the prominent patent lawyers and revised to conform to their desires.

Political scientists have often pointed out that it is incorrect to view congressional lawmaking as necessarily occurring in the context of various pressure groups fighting it out against one another. Very frequently there is only one pressure group in the field at a time, and it fights for what it wants but not against any particular interest-group opposition. While patent lawyers of course represent infringers as well as patent lawyers in court, the bulk of their services to clients consists of helping them obtain and defend the validity of patents. Quite naturally then they tend to identify the good with more patents rather than fewer, just as does the Patent Office for a different but parallel set of reasons. Thus the Patent Office and the patent bar comprise a powerful, "propatent” pressure group.

Because no group of lawyers and no government agency specializes in figliting against patents, and no particular segment of the business community is uniformly harmed by patents, there is no "antipatent” pressure group. The “antipatent" interest in this country is not specialized or concentrated, but consists only of the general interest shared by all citizens that their Lovernment not make a bad bargain for them when selling its stock of limited monopolies. Such amorphous interests are notoriously underrepresented in American politics precisely because no organized group and no specialized government agency speaks for them. Indeed, it makes considerable sense to view the Supreme Court's role in this area, as in some others, as the representation of widespread but unorganized public interests that are not adequately represented in the executive or legislative branches. This may be the major special reason justifying court intervention in this area of policy making.

In any event the propatent forces had a free hand in writing the legislation unopposed by any countervailing group. Of course the congressman on the subcommittee, and then those on the full Judiciary Committee, all of Eirin lawyers, but none particularly expert on patent matters, did review the draft. But they made few changes, and the Committee's report and “Revisor's Notes,” which accompanied and explained the bill, were written by Frederico, either independently or in cooperation with the representatives of the patent bar. One of those representatives has proudly answered the question: "Who wrote the patent laws of 1952? We did."

The bill then had to proceed to the floor of the House where theoretically the whole membership considers it before exercising their legislative will. It was brought up on the unanimous-consent calendar, no one objected, and it was passed without debate; the whole proceedings taking perhaps thirty seconds. It then went to the Senate, where the Senate Judiciary Committee made only a few minor changes. The bill failed of unanimous consent on the floor of the Senate, one senator asking the chairman of the Judiciary Committe whether the bill was simply a new codification or made changes in the law, the chairman replying that it was simply a codification. The bill subsequently passed with no further debate.

There is little question that the general membership of Congress had no idea what it had enacted and was left with the impression that it didn't matter anyway, since the bill was simply a recodification of the previously existing law. The peculiar coincidence which started the whole process off had much to do with this. In a normal year, if a patent bill had been brought to the floor everyone would have assumed it meant some change in the existing law. Committees don't devote energy to bringing in new bills that do nothing. But in the year that Congress was re-enacting the whole U.S. Code, and from the subcommittee that was doing all the re-enactment, this bill must have appeared to most congressmen to be simply another in the stream of re-enactments. It would have taken an alert congressman indeed to remember, if he had even known such a minor thing in the first

& The nearest approach in the patent field is the Antitrust Division of the Justice Department which is concerned with patents insofar as their manipulation contributes to violation of the antitrust laws, and quite significantly this agency is the only *antipatent" voice in Washington, besides the Supreme Court itself. * See Shapiro, Freedom of Speech, the Supreme Court and Judicial Review (1965). place, that the subcommittee handling recodification of the whole body of law just happened to also be the subcommittee which had special jurisdiction over patents, and then put two and two together to conclude that this particular recodification might not therefore simply be a recodification but a new law. And even if such a congressman had existed, and he had then bothered to get a copy of the bill and read it carefully line by line, another minor miracle in and of itself since few congressmen have time to do this sort of thing, there are so few hints in the language of the statute that it is anything but a recodification. So much of it is precisely that, that only a superalert congressman, fully briefed by someone on what to look for, would have spotted any changes. There was no someone, because there was no antipatent interest group fighting the bill, and there was no superalert congressman.

LEGISLATIVE INTENT I have not gone into all this just to illustrate the vagaries of Congress but rather to provide some concrete data on which to base a discussion of "legislative intent" which is frequently a key problem in administrativejudicial conflicts, and also because the specific question of whether Congress intended simply to codify previous law or pass new law becomes the principal vehicle for policy debate in the post 1952 period.

It is one of the small ironies of political studies that the principal source of information for our story of the writing of the patent law by an interest group composed of propatent lawyers and bureaucrats, and its consequent passage by a Congress totally unaware of what it was doing, is the reports of one of the drafters, a noted patent lawyer and leader of the propatent forces.23 And he makes his revelations in order to prove that the legislative intent of the 1952 laws is to liberalize the standard of invention not codify the old law. What he actually proves is that Congress in passing the legislation thought it was passing a simple codification.

Why then does this distinguished lawyer and judge think he is proving the opposite? The answer lies in the several different approaches to legislative intent that typically lead to conflict in the administrative-judicial sphere.

The lawyer almost instinctively treats a statute as a legal document like a contract. Its meaning is to be derived from its plain words, no matter what those who signed it actually intended. When its words are not entirely clear, one looks to the meaning that those who wrote the words intended them to have. The argument in the patent area then becomes clear. Precisely because Congress did not know what it was doing when it passed the statute, and precisely because the words of the statute are not themselves absolutely clear, the statute means whatever those who drafted it wanted it to mean. Since those who drafted it meant its words to reduce the standard of invention below that used by the Supreme Court, that is the meaning, i.e., the legislative intent, of the statute.

The legal conventions that grew up around the interpretation of contracts are based on a set of circumstances and considerations that are not necessarily applicable to the reading of statutes. Many administrators and judges today prefer not to pretend that a statute is like a contract. but, shifting to direct and realistic political analysis, to ask what did the Congress really want? This question leads to its own difficulties.

Frequently a statute consists of a set of verbal devices used to compromise between various conflicting interests and purposes rather than specifically furthering one interest. Congress in effect avoids choosing between the interests by using words that each can interpret as favorable to it. Indeed different congressmen may have voted for the bill for entirely different reasons, some taking the words one way and some another. Realistic politieal analysis lies not in trying to discover the "true" meaning of such a law, but in taking it as a command by the statute maker to its administrative and judicial subordinates to work out on their own initiative a compromise satisfactory to the interests at play.

Alternatively it may be discovered that Congress as a whole had no intention, in the sense that it was simply approving what one of its

33 See Rich, "Congressional Intent-Or. Wḥn Wrote the Patent Act of 1952 *** in Patent Procurement and Eæploitation 61-78 (1968).

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