A Jepson claim follows the German practice of claiming and consists essentially of two parts in which the first part of the claim states what is old and the final portion sets out what is new. Let us see how this works. At Page 636 of the APLA Bulletin for November-December 1972, Mr. Dunner stated in connection with the disposition of courts to hold patents invalid, the following:

at the very least, the examiner should have the benefit of the most relevant prior art of the published type that the applicant's attorney knows about." a good many of the holdings that patents are invalid stem from the discovery on the part of a district judge that the invention which the examiner thought was a substantial forward step was in fact just the tiniest little pipsqueak sort of change from a product that had been in public use for years and which the examiner had no way of learning about."

I agree wholeheartedly with the above remarks and would like to expand upon the last quotation. If a Jepson claim had been required in the cases referred to by Mr. Dunner, it would have read as follows:

"(1) In a product that has been in public use for years,

"(2) the improvement which consists of:

"(3) just the tiniest little pipsqueak sort of change."

If the Patent Office required a claim in this form, it would have been apparent to the patent examiner just what a "pipsqueak" the invention really was; the prosecution of the application would have been expedited and in all probability no patent would have issued. Even if the Patent Office had resolved doubts in favor of the applicant and had issued such a patent, then a claim in such form would have made the scope of the invention readily apparent to the court and it would have been able to dispose of the litigation with a minimum of expense and cost. Furthermore, in all likelihood, the court would justifiably hold that the "little pipsqueak of an invention" did not merit the protection of a patent.

However, perhaps an added proviso should be included to the effect that if an applicant deliberately includes old and conventional elements in Part 3 of the claim, such inclusion would make the claim invalid.

Section 115. Oath of invention

For example, Section 115 requires each agent, attorney or other person who participated in the preparation or prosecution of the application to file a statement which requires him to be fully candid with the Patent Office. Such a provision was discussed in the hearings before this Subcommittee in connection with S. 643, S. 1253 and S. 1255 in 1971. I refer particularly to pages 325 and 326 of those Hearings which read, in part, as follows:

"Mr. CLARK, * * * The inventor, more particularly his patent counsel, has the time and the opportunity and the incentive far beyond the overworked patent examiner does not have; and when you add all this together it is an unfair struggle and this is why I would lend support to the Department of Justice position that the oath of the inventor ought to be restored to the proposed patent bill and that the burden should be upon the applicant to be fully candid with the Patent Office.

"Senator MCCLELLAN. You think the law does not require that now? "Mr. CLARK. I don't think it does now, no, sir.

"Senator MCCLELLAN. If it is intended to it has a lot of loopholes in it; is that correct?

"Mr. CLARK. That is correct. I would suggest that the burden also be placed not only upon the inventor but upon the lawyer that is representing him. At present the burden is only upon the inventor.

"Senator MCCLELLAN. Why upon the lawyer?

"Mr. CLARK. Because often the lawyer knows more about the prior art and is the only contact with the Patent Office. Once the inventor signs an oath, which he doesn't understand, to a patent application which he usually can't interpret, then he is through with the whole procedure and you never hear from him again.

"Senator McCLELLAN. But if the applicant testifies or signs a false oath knowing it is false, maybe his attorney doesn't know that.

"Mr. CLARK. That may be true. That may be true.

23-932-74- -24

"Senator MCCLELLAN. I don't think the attorney should be held responsible for that.

"Mr. CLARK. No; but I think perhaps the attorney ought to be required on his own to make a full statement of the prior art as he knows it to the Patent Office.

"Senator MCCLELLAN. In other words, you would put a burden on the attorney not to rely upon the information supplied him by his client?

"Mr. CLARK. I would say if that is the only information he has he is entitled to rely upon it, but if an attorney has additional information, which he often has, sometimes these attorneys are as expert as the inventors in the art and as knowledgeable as the inventor in the art, he should disclose that information to the Patent Office.

"Senator McCLELLAN. If he has additional information maybe he should rely on it or shouldn't, I don't know. But I wonder how far we are going and I am not arguing against it at the moment, I am just trying to clarify what you are recommending with respect to placing an additional burden upon attorneys. Attorneys should not be permitted to permit fraud or to mislead, willfully mislead the court or in this instance the Patent Office, but I know that attorneys are often misled by their clients and how much a burden you put upon them or you are attempting to put upon them, they have to check the veracity and reliability of their own clients. Would you go that much farther now?

"Mr. CLARK. I am not suggesting that. I am saying he is entitled to rely upon what his client tells him. I suggest if he has additional information he should volunteer it himself.

"Senator MCCLELLAN. Yes: if he has additional information and the client has not submitted it he shouldn't withhold that from the Patent Office.

“Mr. CLARK. That is correct.

"Senator McCLELLAN. That is what you are saying?

"Mr. CLARK. Yes.

"Senator MCCLELLAN. I think that is not unreasonable at all. It might be proper."

In March of this year, the same views which I expressed in the hearings of two years ago were endorsed in different words by Mr. Milton Weissman, Editor-in-Chief of the "Journal of the Patent Office Society." I call attention to the statement which reads as follows:

"Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long as they can obtain these patents (which may or may not be valid). Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware?"

Mr. Weissman's remarks, which occur on pages 134 and 135 of the "Journal of the Patent Office Society," are attached hereto as Exhibit B, and I ask that they be incorporated in toto in these remarks.

Also, the APLA Bulletin for October-November 1972 at pages 645-6 had the following comments by Mr. Rabinow, a successful, independent inventor: "I think the patent attorney should tell, in other words, he should help the Patent Office, he shouldn't play games *** we always felt that we should tell them (the Patent Office) everything we know *** and in saying what the prior art was you should say what it really was. Because if you don't do it you are really cheating the Patent Office."

In the same bulletin on pages 635-6, and on the same point, Mr. Dunner, a patent lawyer, stated:

"I think there should be an explicit rule which requires an attorney at some appropriate stage of the application, certainly well ahead of the allowance, to file a written statement of the best published prior art he knows of."

There seems to be a unanimity of opinion that the time has come for all persons to "play fair" with the Patent Office.

Section 131. Examination of application

Section 131 (b) serves the same salutary purpose as Section 115 and should be enacted for the reasons stated above in connection with Section 115. Section

131 provides for the submission of a so-called "patentability brief" and is a requirement, once again, that an applicant for patent be open and candid with the Patent Office. Such a brief will have the further advantage of reliving the Patent Office of much of its burden (and the Patent Office is over-burdened), and will provide a record which will prove of benefit to the parties and to the courts in the event the patent becomes involved in subsequent litigation.

Section 132. Examination proceedings

Section 132 (e) introduces some useful and needed reforms into the prosecution of a patent application. All too often, the file history of a patent is completely silent as to the reasons why the Patent Office finally allowed the patent. Subsection (c) of this section which requires the examiner to state the reasons for his actions and to include a complete narrative report of all matters discussed with the applicant and his attorneys will be very useful. I have suggested in the past and I suggest now that the Patent Office make tape recordings of all oral discussions with the applicant or his agents and attorneys, at the expense of the applicant, and make copies of such recordings available to the public. Verbatim tape recordings will take much of the mystery out of unrecorded interviews which presently constitute critical gaps in the prosecution of a patent application. All too often, the claims of a patent are rejected; the history then shows an interview, the substance of which is not reported in any form; and then allowance by the Patent Office without any real explanation for the change of position by the examiner. Tape recordings of such interviews will remove such clouds of uncertainty from the prosecution history of a patent.

Section 132 (e) also has a desirable provision requiring that amended or new claims presented during the prosecution shall not materially enlarge the scope of the claims of the application as originally filed. If this is adopted, it will prevent that practice of which many courts have complained; namely, the practice of some applicants to hold a pending application in the Patent Office for a number of years and at the last minute adding new and enlarged claims to encompass the latest advances of the art in which the applicant himself played no part. The provision just referred to should foreclose such practice. Section 122. Public availability, publication, and confidential status of application

Section 191. Deferment of examination

Section 191, which provides for deferred examination of applications, is desirable. It will save both the Patent Office and many applicants a great deal of time and money. The provision is particularly useful in connection with Section 122 which provides for early publication of applications. Since many patents are obtained for defensive purposes it is likely that many applications will be allowed to lapse without examination for the same reason. In addition, the subject matters of many applications which seem to be of great importance when initially filed do not stand the test of time and such applications will within a few years turn out to have little interest and will likewise be allowed to lapse. Thus both deferred examination and early publication of applications offer many advantages with no discernible disadvantages.

Section 282. Presumption of validity; defenses

Section 282 (c) is a change which has long been needed. That section requires the parties in infringement litigation to make definite statements as to their position before trial. I would hope that the courts will require the parties to take such definite positions "as soon as practicable" and not wait until 90 days before trial and 30 days before trial, respectively, which are specified as the ultimate time limits in this section. If this section is properly applied by the courts, patent cases no longer will reach trial and even the appellate stages without either party having taken a position and without the issues ever having been properly defined.

Section 286. Time limitation on damages

This section which reduces the statute of limitations from six years to two years properly takes into account the almost instant means of communication which exist in the world today. Perhaps a hundred years ago a patentee could

not learn of another's infringement for several years. Today, if he is alert, he can learn of it almost immediately and there is no justification in permitting a patentee to sit idly by for a period of six years while potential damages accrue in large amounts.

I have noted with approval the absence of any reference to patent practices and the antitrust laws. Any legislation concerned with such subject matter is unnecessary and inappropriate, and should not be intermingled with legislation that is concerned with patent reform such as the proposed bill.

Obviously, there are many features of the bill which I have not commented upon. I would rather confine my remarks to those changes in or clarifications of the present law which I believe are in the public interest and should be supported. If all of these public interest provisions, both those upon which I have commented and those as to which I have remained silent, should become legislation, then better and stronger patents should issue, the patent system should be improved, and the public interest thereby be better protected. I urge spreedy consideration, approval and enactment of this legislation.

Respectfully submitted,

STANLEY M. CLARK.

EXHIBIT A OF STATEMENT OF STANLEY M. CLARK ADVOCATING
ENACTMENT OF S. 1321

EXHIBIT B OF STATEMENT OF STANLEY M. CLARK ADVOCATING
ENACTMENT OF S. 1321

THE FEDERAL COURTS' VIEW OF PATENTS-A DIFFERENT VIEW

(By Martin R. Horn* and Saul Epstein*)

EDITORIAL NOTE

Almost all recent articles dealing with the subject of the invalidity of patents are based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. It is high time indeed that the opposite side of the coin be closely scrutinized. As pointed out in the present article the conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees with the basic premise of the article that the courts are not applying a too strict standard of patentability.

Do the officials of the Patent Office really care about the validity of the patents which are issued from their agency, as long as the production goals which they set for the patent examiners concerning the disposal of patent applications are met? The official position of the Patent Office is that they desire the issuance of patents of the highest possible validity. But, in view of their actual conduct councerning production goals, this position must be viewed as at least open to question. As long as the officials of the Patent Office demand greater production of disposals each year, even though the number of examiners remains about the same and the amount of prior art to be searched increases ominously each year, it is difficult indeed for anyone with an objective viewpoint to be convinced that they are paying anything more than lip service to the concept of the highest possible patent validity.

Nor are the others involved in the issuance of invalid patents to be considered entirely blameless. Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long ax they can obtain these patents (which may or may not be valid). Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware? Then the examination process could be focussed on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and applicant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.

Finally there are the patent examiners, and their conduct in the examination of patent applications. At this point it must be stated bluntly that what they require is help, not hindrance, in the examination process. It may well be that, as urged by many, the issuance of patents of the highest possible validity by patent examiners is simply not possible if the Patent Office continnes to operate under present conditions and procedures. If this is in fact true, then all possible help should be given to them by all interested parties, as noted in the article, concerning grounds for invalidity of which they may be

aware.

MILTON WEISSMAN,
Editor In Chief.

Senator HART. Let me make an addition at this point in the hearing schedule. The subcommittee has heard from several former Patent Office Commissioners and the Acting Commissioner currently. I became aware of Commissioner Gottschalk, the former Patent Commissioner, sitting in the audience and listening to testimony given the committee during these days of hearings. Also, I have been hearing reference to the relationship of the Patent Office to the Department of Commerce and the question of whether that

• Spensley, Horn, Jubas and Lubitz, Los Angeles, California.