« iepriekšējāTurpināt »
be abandoned. The Public Counsel or the Government or any interested person could call up the application for examination.
This proposal is not novel and it is controversial. However, it is an excellent proposal because it will enable the examining corps to concentrate its efforts on the patent applications that the applicants intend to exploit. Patent applications filed for defensive reasons or in an abundance of caution or for the purpose of building up numbers often become obsolete and die of their own weight within five years. They are akin to annual grasses as distinguished from perennials. The deferred examination process would operate in such a way that the Patent Office can concentrate its efforts on those inventions and patent applications which the applicants bona fide and seriously regard as important and intend to exploit. The proposal enables an applicant to safeguard his fundamental rights with respect to dates and the like, while he endeavors to profit by his inveution. If he finds it unexploitable and fails to request examination prior to the expiration of the five-year period the patent application dies and the Patent Office has not gone through any waste motions in examining it.
I respectfully submit that this section is unwise and erroneous both in its motivating philosophy and in its implementation. The theories behind this proposal are: (1) the Commissioner should adjust the filing and maintenance and issue fees so as to make the Patent Office primarily self-liquidating; (2) the inventor will be motivated to put his patent to work so that he can in due course pay the heavy maintenance fees or show cause to be excused; (3) the weight of the maintenance fees will act as a scavenger to cancel out those patents that are not contributing to the economy.
I respectfully dissent most emphatically from the concept that the United States Patent Office should be self-liquidating or even partially self-liquidating. Whatever the Patent Office annual budget is, it is one of the best bargains that the American citizen derives from his government. Whatever the budget is, it is minute compared to the contributions of the patent system to the American economy. The prime objective of the patent system is to stimulate inrention, to persuade the inventor to come up with real contributions and to reward him for doing so. Nobel Prize winners do not pay costs of administration, nor do Congressional Medal of Honor winners, nor do fellowship winners.
The minimum filing fee is now $65.00 and the minimum issue fee is $112.00, as provided by statute. This burden on the inventor is already too heavy. The Hart Bill proposes to leavy progressive intolerable maintenance fees on the patentee after the fourth year of patent life. If the patentee shows a bona fide but unsuccessful effort to work the invention, these may be waived, up to the tenth year. A discount in the filing and examination fees and a larger discount in maintenance fees is provided for individual inventors and small business
Again, there is reason to dissent very strongly from proposed legislation which, on its face, discriminates in favor of individual inventors and small businessmen, Filing and issue and examination fees should be fixed by statute and should be uniform.
The whole concept of maintenance fees is erroneous. These in pose an undue burden on inventor and applicants. The individual inventor and the small businessman would be most injured. The erroneous theories behind the maintenance fee overlook patents on the late-blooming type of invention. I have in mind specifically the Farnsworth patent on the fly back power supply for home television receivers. The invention was far ahead of the art. It was not used except during the final two or three years of its life. When home television reception came into general acceptance, shortly after World War II, the Farnsworth invention made one of the greatest contributions thereto. A maintenance fee system would, at least by the end of ten years of patent life, have caused the patent to be cancelled, so that the inventor and his assignees would never have derived any benefit. But in thirty years of patent practice this is one of the most significant and meritorious inventions that I have observed.
Summarizing, maintenance fees are inconsistent with the objectives of the patent system. They deliver to the inventor an impaired gift horse. They penalize the inventor who is far ahead of the art. Worse still, the maintenance fee proposal herein contained would attempt to discriminate on its face in
favor of individual inventors and small business. It is fundamental that legislation should treat all alike. Reform of the patent system is not the proper occasion for social experiment.
THE PATENT OFFICE AS AN INDEPENDENT AGENCY--SECTION 2 During the years 1942-43 and prior to Naval service I was a junior examiner in the United States Patent Office. Under the then-current administration of Commissioner Conway P. Coe and for some time prior thereto the Patent Office was regarded as a model agency. The pay was poor. Armed with degrees in law and in electrical engineering and in liberal arts, I made $2,000 per year. However, then, as now, the Patent Office had a veteran corps of able chiefs, solicitors, supervisors and board members. The various ethnic groups and majorities and minorities worked together in harmony. Service was rendered with enthusiasm and dedication.
Mr. Coe served in the office for about twelve years, resigning in 1944 or 1945. Since that time we have had at least nine commissioners. I suggest that, no matter how able or dedicated the director of an activity might be, you are not going to obtain continuity of policy or consistent improvement with this constant turnover.
The work of the U.S. Patent Office is sui generis. It has nothing in common with that of the Bureau of Standards or the various other agencies of the Department of Commerce. No reason is apparent why a man of the stature of Commissioner of Patents should be "second guessed" by an Assistant Secretary of Commerce. The need for this supervisory linkage simply does not exist. While there is reason to believe that the present Assistant Secretary of Commerce for technology will work effectively with the Commissioner of Patents (whenever a Commissioner is appointed) the proposal is a matter of organization principle and not of personalities. There are rumors that in the past some Assistant Secretaries have exerted pressure on the Commissioner of Patents to give priorities to foreign treaty activities and to emphasize employment by minorities and to become involved in other activities which may be good in themselves but are quite secondary to the main purpose of improving Amer ca's position in technology. These rumors may be unfounded but I would respectfully suggest that the Committee inquire into them.
The Patent Office performs one of the designated constitutional functions. The incentives that it offers are worthy of primary governmental attention. This should be recognized by making the Patent Office an independent agency. I believe that there will be less turnover in the office of Commissioner when the Patent Office is set up in this manner.
COMMENT ON MISCELLANEOUS SUBORDINATE FEATURES OF THE HART BILL Article 23 with reference to discovery proceedings should be redrawn. It reflects the general tendency toward "overkill” in discovery proceedings. These weapons, in the hands of a not too scrupulous adversary can subject a victim to gross injustice, the costs of seeking judicial relief often being prohibitive.
Section 24 should be narrowed to confine the Public Counsel's work to cases and controversies and to preclude general fishing expeditions.
Section 31 should be amended in an effort to discourage the future registration of patent agents. There are so many night law schools that there is no compelling reason to license future patent agents.
Section 100(g) is mistaken in certain respects. Some of the best inventions arrive out of adaptation of old structure or substance to a new use.
Section 102 is too broad in its treatment of foreign usage. Public use or sale abroad should not discourage independent invention here.
Section 104 is misguided. Some of the best inventions are found in the perception of a problem, which, when announced, makes the solution look obvions.
As to Section 112, it would not be practical to set forth a range of equivalents in a specification. Independent claims should not be defined by statute. It is reasonable to make a specification include the dates of invention provided that the timing of the various Patent Office procedures is such that this will not give any advantage to an actual or potential interferent.
As to Section 114, applicant should not be required to furnish models.
Section 112 should be so modified that applications are not made available for public inspection or opposition until they have been examined or allowed, or until the Public Counsel has intervened and has determined that publication would then be of benefit to the public. Applicants should not be discouraged from filing patent applications for fear that their concepts and principles and business confidences will be revealed prematurely to competition and the public at large.
The examination proceedings should allow broadening of claims and Section 132 should be modified accordingly. Section 137, which permits any party to in effect provoke a trial in the Patent Office at any time is an "overkill” proposal. Any party should be permitted to state his interest and perhaps present affidavits and briefs, for consideration, during the examination process. But bona fide applicants with meritorious inventions should not be confronted with trials in the Patent Office on every occasion.
Section 201 is too broad in prohibiting reissues that enlarge the claims. While reissue applications in this category should be carefully scrutinized a tiat prohibition is inconsistent with the basic reason for reissues.
As to Section 263 the problem of supplying motivation to the employed inventor should be subjected to a separate study. Individual award systems, set up by employers, are to be preferred to statutory fiat.
Section 1542 should be amended so that the new act would not be applicable to impose any additional restraints on acts of an alleged infringer of the precise kind performed prior to the effective date of the act.
Thank you, Honorable Chairman and Colleagues, for attention and consideration. I am at your service. Respectfully submitted,
CHARLES M. Hogan.
STATEMENT OF CHARLES M. HOGAN, GENERAL PATENT COUNSEL,
AVCO CORP. Mr. Hogan. Mr. Chairman and counsel, this opportunity is very much appreciated.
I started out as a country general lawyer, and perhaps my point of view may be somewhat different than those that you have heard expressed. Thereafter, I was a junior examiner in the Patent Office. Then I went to work for the Hazeltine Electronics Co., which is a very active research and licensing company in New York. After that, into the military, and was assigned to the Bureau of Ordnance-Naval Bureau of Ordnance, then to work for a private patent law firm in Chicago. And for the last 26 years, I have been employed by Avco Corp., the last 7 as general patent counsel.
Avco is a diversified manufacturing company in the very forward van of technological research in several areas, particularly aerospace and laser technology.
My views are my own, and I am not authorized to speak for the company.
It would seem that the principal problem with which the committee is confronted is the quality of the examination in the U.S. Patent Office. The tendency is for the experience and expertise of the attorney to push the standard of invention down against the resistance of the relatively inexperienced junior examiner who very often is the examiner on the firing line. A young man out of engineering school who studies law in Washington and aspires to be a patent attorney may remain with the Patent Office 2 to 4 years, has limited or no experience in industry, views the invention disclosure as an academic thing, is interested in how it works and how it fits
into the prior art and has not the slightest idea as to the economic impact of the disclosure, before him, on industry.
Îhe standard of invention is notoriously low, in view of the statistics relating to the invalidating of patents by the courts. Now, an invalid patent is analogous to weeds in the presence of a nice lawn. An effort to grow a lawn and an effort to encourage worthwhile inventions are handicapped by the presence of weeds and by the presence of marginal patents. In agriculture, growth is often achieved by judicious pruning, and the same would be applicable to the U.S. Patent Office.
We are not going to get any radical improvement in the quality of the examination by simple duplication of effort. The problem is to enlist the affirmative aid of industry and enlist the affirmative aid of the knowledgeable attorneys in the examination process. Let us bring to bear the aggregate of knowledge, pertaining to prior art, to a reasonable extent on the examination, not of every tidbit invention, but on every worthwhile advance. Let us concentrate selectively on the advances.
Now, then, how are we going to do this? First, we have to make up our minds that this is an objective that we seek. I have yet to see the Patent Office or the patent bar direct itself, as a primary objective, to the aim of the elimination of the chaff that exists in the work product of the Patent Office. The rationalization seems to be: I have to file this patent application because the client wants it. If I do not file the patent application, some other patent attorney will.
The analogue is somewhat related to domestic relations cases. Some lawyers justify taking a domestic relations case without investigation on the basis that if they do not, another attorney will.
Now, some patent applications are filed because, if the filer does not take the case, some other patent attorney will; some are filed to humor superior executives, senior engineers; some are filed for purely defensive purposes. That is widesprad in the military. I da resay the primary motive for the thousands of patent applications that are filed on behalf of the military establishment each year, at least hundreds—I daresay that the primary motive is to safeguard latitude to make and use and otherwise practice an invention. The military establishment does not care what the scope of the received claims might be; any old claim will do.
We patent lawyers are tuned to understand each other. And when we look at the Gazette and see a one-claim patent in the Gazette, we often say to ourselves: From much coming, the examiner doth weary, and he issueth a patent with one claim and a red button that does nobody any harm.
That is a far cry from an incentive that we are offering to an inventor to promote, to induce, to persuade him to put his good ideas on the table, to come up with good ideas, to come up with great innovations, to help put our country on top technologically. It is a far cry from that ideal and is down to the bottom of the scale, when we say that this one-claim patent is not going to hurt any. body.
So that we need to dedicate ourselves to the objective of putting the best ideas on the table, getting them into the Patent Office, and discouraging the chaff, discouraging the weeds, and doing the right amount of pruning.
Now, stage 1, the patent bar can do some pruning on its own. At this point, the Public Counsel principle is an excellent one. I would suggest that the Office of Public Counsel be treated as separate and distinct from the Office of Solicitor. The usual procedure now is for the Solicitor of the Patent Office to appear before the courts to oppose the issuance of patents that he considers to lack invention.
Now, these cases generally involve the issue of invention vel nonbased on the prior art on the record. Now, the Solicitor's office is eminently competent to perform that function, and it should be maintained.
But the issue of invention vel non, which is a give and take issue, is not the only one that is before the Patent Office. Many issues are before the Patent Office, but they are really hidden. Is the best art on the record? Is this patent application affected by public use? Is this patent application affected by some other bar?
These things prompt inquiry on behalf of the public. Who is going to perform that function? That is the job of the Public Counsel. There is no need whatsoever to double the examining corps of the Patent Office. The Public Counsel can have the same type of influence on the administration of patents in general as a lovely, charming lady in the classroom does. She keeps the boys on their good manners; they dress up and behave themselves.
By the same token, the presence of the Public Counsel making an occasional spot check, looking into cases of complaint, looking into cases that have obviously a great impact on the economy, looking into suspicious cases, making spot checks—his very presence is going to greatly elevate the candor with which patent applications are prosecuted.
That is particularly the case when, in addition to the charming young lady in the classroom, statutory standards of conduct are coupled with the existence of the Public Counsel, with the requirement of a citation of art and the requirement of a brief of patentability, and the probability is that most of the pertinent facts will come before the Patent Office is much higher than in this climate of unilateral prosecution that we classicially have.
Senator Hart. At that point, Mr. Hogan, let me get over for another vote. I will be back in about 10 minutes.
(A brief recess was taken.] Senator Hart. We can proceed.
Mr. Hogan. Senator Hart and counsel, I will be brief because we are waiting to hear from Mr. Pederson. We need to take heed of the fact that at one time our statute said that “the Commissioner of Patents shall issue a patent on the disclosure if it be sufficiently important.” It is regrettable that those words “sufficiently important” were taken out of the statute.
The German patent office has an attitude that we American patent attorneys occasionally run into. One of the gentleman before this committee made the statement, I believe it was Mr. Irons—that if anything were novel a patent attorney can get a patent on it in this country.