the patents may have relief against the owner of the other by civil action, and the court may adjudge the validity of any of such patents, in whole or in part. *(b) Such suit may be instituted against the party in interest as shown by the records of the Patent Office, but any party may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Commissioner shall not be made a party but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene. "§ 292. False marking "(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, or sold by him, the name or any imitation of the name of the patentee, the patent number, or the words 'patent', 'patentee', or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made or sold by or with the consent of the patentee; or "Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word 'patent' or any word or number importing that the same is patented, for the purposes or with the necessary effect of deceiving the public; or "Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words 'patent applied for', 'patent pending', or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose or with the necessary effect of deceiving the public "Shall be liable for a civil penalty of not more than $500 for every such violation. Each article so marked shall furnish the basis for finding a separate violation. "(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States. "§ 293. Nonresident patentee; service and notice "Every patentee not residing in the United States may file in the Patent Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court." TRANSITITIONAL AND SUPPLEMENTARY PROVISIONS SEC.. 2. Section 1542 of title 28, United States Code, Judicial Code and Judiciary, is amended to read as follows: "1542. Patent Office decisions "The Court of Customs and Patent Appeals shall have jurisdiction of appeals from decisions of: "(1) The Board of Appeals of the Patent Office as to patent applications and patents as provided in chapter 13 of title 35, Patents, United States Code. "(2) The Commissioner of Patents or the Trademark Trial and Appeals Board as to trademark applications and proceedings as provided in section 1071 of title 15." SEC. 3. If any provision of title 35, Patents, United States Code, as amended by this Act, or any other provision of this Act, is declared unconstitutional or is held invalid, the validity of the remaining provisions shall not be affected. SEC. 4. (a) This Act shall take effect on the date six months after enactment. Except as otherwise provided hereafter in this section, it shall apply to all applications filed in the United States on or after such effective date, whether or not such applications are entitled to the benefit of an earlier filing date; to patents issued on such applications; to applications in respect to which, on or before such effective date, there has been no notice of allowance pursuant to section 151 (a) of title 35, United States Code, as amended by this Act; and to patents issued on such applications. (b) Except as otherwise provided hereafter in this section, the provisions of title 35, United States Code, in effect immediately prior to the effective date of this Act, shall govern all patents issued before such effective date; applications filed in the United States before and still pending on such effective date, in respect to which, on or before such effective date, there has been notice of allowance pursuant to section 151 (a) of title 35, amended by this Act; and to patents issued on such applications. (c) Section 263 of title 35, United States Code, as amended by this Act, shall apply to all applications filed on or after the effective date of this Act, and patents issued on such applications, and it shall apply only to such applications and patents. (d) The following provisions of title 35 as amended by this Act, shall apply to all unexpired patents, whether issued or applied for before or after the effective date of this Act: (1) chapter 19 of part II, and (2) part III (subject to subsection (c) of this section). (e) Section 147 of title 35, United States Code, as amended by this Act, shall apply to all appeals decided on or after the effective date of this Act. (f) Notwithstanding any other provision of this Act, subsection (e) of section 112 of title 35 as amended by this Act shall not apply to patents issued, and applications filed, prior to the effective date of this Act. No such application shall be held incomplete, and no such patent shall be held invalid, because availability to the public of a deposit of a micro-organism recited therein was conditioned upon issuance of a United States patent reciting a deposit of said micro-organism. (g) The amendment of title 35, United States Code, by this Act, shall not affect any rights or liabilities existing under title 35 in effect immediately prior to the effective date of this Act. (h) Examiners-in-chief in office on the effective date of this Act shall continue in office under and in accordance with their then existing appointments. (i) The Commissioner may exercise any rulemaking power conferred upon him by this Act, upon the date of enactment hereof: Provided, however, That no rule promulgated under any newly conferred authority shall become effective prior to the effective date hereof. The Public Counsel may exercise all the powers this Act confers upon him, on and after the effective date thereof, in respect to any patents, applications, or conduct, whether issued, applied for, filed, or engaged in before or after the effective date hereof. SEC. 5. Nothing in title 35 as amended by this Act shall affect any provision of the Atomic Energy Act of 1954 (Aug. 30, 1954, ch. 1073, 68 Stat. 919) as amended or of the National Aeronautics and Space Act (Public Law 85-568, July 29, 1958; 72 Stat. 426) except that the functions of a Board of Patent Interferences specified in said Acts may be performed by the Board of Appeals as specified in section 5 of title 35 as amended by this Act. SEC. 6. (a) Section 119 (e) of this title shall take effect on the date when articles 1-2 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States and shall apply only to applications thereafter filed in the United States. (b) Section 102 (d) of this title, insofar as it applies to inventors' certifi cates, shall take effect six months from the date when articles 1-12 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property. as revised at Stockholm, July 14, 1967, come into force with respect to the United States and shall apply to applications thereafter filed in the United States. SEC. 7. Section 31 of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1113) is revised to read: " 31. Trademark fees "Trademark fees shall be prescribed by the Commissioner under the authority of section 41 of title 35, United States Code. If a fee in connection with examination of a trademark application is not paid within such time as prescribed by the Commissioner, the application shall be regarded as abandoned." SEC. 8. In the second sentence of section 7(c) of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1057c), "fee herein provided" is changed to "prescribed fee". SEC. 9. In section 7(e) of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1062a), "fee herein provided" is changed to "prescribed fee". SEC. 10. In section 12(a) of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1062a), "fee herein provided" is changed to "prescribed fee". SEC. 11. Section 5315 of title 5, United States Code, is amended by adding at the end thereof the following: "(95) Commissioner of Patents." SEC. 12. Section 5316 of title 5, United States Code, is amended by deleting the following: (48) Commissioner of Patents, Department of Commerce." SEC. 13. Section 5316 of title 5, United States Code, is amended by adding at the end thereof the following: "(131) Deputy Commissioner of the Patent Office." SEC. 14. This Act may be cited as "The Patent Reform Act of 1973". Mr. BRENNAN. I again call the attention of all the witnesses to the hearing notice which indicate that this series of hearings is limited to the five issues specified in the hearing notice. Senator McClellan, however, has indicated that the subcommittee will accept for the record written statements on any issue relevant to S. 1321. For that purpose, it is the intention of the chairman to leave the record open until September 28, and we can incorporate all the statements that are submitted for the record. Senator HART. We can enter an order-do I understand Senator McClellan authorizes the entering of an order that any such statement filed before then will be made part of the record? Mr. BRENNAN. That is correct. Mr. Chairman, the first witness this morning is Mr. C. Marshall Dann. Mr. Dann, would you identify yourself and your associate for the record, please? Mr. DANN. I am C. Marshall Dann. I'm a patent lawyer and currently president of the American Patent Law Association on whose behalf I am testifying. On my left is Mr. John T. Kelton, who is currently the presidentelect of the American Patent Law Association. Mr. BRENNAN. Mr. Dann, I believe you have a prepared statement. Do you wish to have the statement printed in full in the record, and then you may highlight the statement? Mr. DANN. I would appreciate that happening. [The prepared statement of Mr. Dann follows:] STATEMENT OF C. MARSHALL DANN, PRESIDENT, AMERICAN PATENT LAW ASSOCIATION This statement is submitted in behalf of the American Patent Law Association, an organization composed of about 3800 lawyers located throughout the United States who are concerned with the law of patents, trademarks, copyrights and unfair competition. Many of these lawyers are members of private firms specializing in patent law; many are members of corporation patent departments. On any given occasion, some of our members are seeking to obtain or to enforce patents on inventions and others are working to avoid or to invalidate the patents granted to persons other than their clients. Despite this wide variety of objectives with respect to specific patents, I think that essentially all of our members share the belief that the United States patent system has been a constructive feature of our political and economic scheme and that it has played an important part in stimulating the creation and introduction of new technological developments. Speaking generally, we are in favor of anything which will strengthen this system and add to its reliability and are opposed to whatever seems calculated to weaken the incentives it provides. It is popular to blame many of the current problems of society on our advanced state of technology. This is said to be the cause of our environmental difficulties, our materialism, the effect of the automobile on our cities and so on. The fact remains that the solution of many of the most aggravated of these situations lies in the development of still more technology. We can't hope to cure the problems caused by the automobile by going back to the horse. If our patent system is to provide effective incentives for invention and innovation, we should avoid provisions which make the whole procedure of obtaining a patent unduly expensive and burdensome to the applicant. If the mere filing of a patent application exposes the applicant to harassment, great expense, the possibility of becoming involved in litigation outside his control, and the need to divulge his invention to the world, including his competitors, before he has any sort of assurance that he will obtain patent protection, many individuals and companies will decide that the game is not worth the candle. The result would be to stifle rather than to promote the development of technology and the disclosure of new discoveries. Valuable inventions are made both by individual inventors and by persons employed by corporations. So far as the public interest in obtaining solutions to the technical problems of the day is concerned, it is immaterial which sort of inventor solves the problem. It is therefore important that the incentives to make the necessary developments be uniformly available to all applicants. The Board of Managers of our Association has recently given its approval to a proposed patent revision bill and we have requested the chairman of the Subcommittee to have a copy included in the record of these hearings so it will be available for your consideration. In most respects this proposed bill is similar to S. 643 of the 92nd Congress. Our committees have carefully studied the previous bill and the objections thereto which have been raised in various quarters and have redefined some of its provisions to overcome as many objections as possible. We believe our proposed bill represents a consensus on how best to revise the patent laws to achieve in the present day world the purposes which the patent system should fulfill. While there is no unanimity among our members on its provisions, we are prepared to and do support it. Our proposed bill differs from S. 1321 with respect to every one of the five subjects to which these hearings are primarily directed. The strength of our opposition to these subjects as treated in S. 1321, however, is not the same in every case. I will discuss each proposal separately. Incidentally, at the meeting of our Association to be held next month, on October 11 and 12, we have scheduled symposia on the subjects of oppositions, deferred examination and maintenance fees as they have actually worked in foreign countries. European and domestic patent counsel will participate. The information developed through these discussions should cast further light on whether these practices might, in some form, improve the patent system in this country. ADVERSARY PROCEEDINGS DURING EXAMINATION In our proposed bill, we have not provided for any opposition or reexamination prior to issue of the patent, but have included in Sections 191 and 192 provision for reexamination after issuance. We definitely favor providing some opportunity for members of the public to come in with prior art or other information, which may demonstrate that the invention is not patentable. We agree that this should help to weed out some undeserving patents and also to persuade the courts to give greater effect to the presumption of validity for patents which have been exposed to this procedure. Sections 191 and 192 of our proposed bill are believed to accomplish this with a minimum of chances for harassment and oppression. Our concerns with the procedure set forth in Section 135 of S. 1321 include (a) the added expense to the Patent Office and therefore to the public of having to publish applications twice, once prior to opposition and again at time of grant; (b) exposure of the applicant to the possibility of harassment by way of extensive discovery, either by the Public Counsel or by "any party"; (c) the added expense to the applicant of a full-blown inter partes proceeding, particularly if prior to indication of patentability such as to justify such expense; and (d) the lengthy delays in issuance which could occur if a number of persons choose to intervene. If adversary examination procedures prior to issue should be adopted, we strongly urge that the reexamination not take place until the Patent Office has indicated the application to be allowable, that the reexamination process not be repeated after issue and that the term of the patent not be shortened as a result of the time used in the reexamination proceedings. Postponing reexamination after the case has been found allowable would at least give potential opposers a better idea of the scope of claim which might issue and would avoid making the applicant publish his invention before he has some reasonable prospect of obtaining protection in return. If provision for reexamination is included in the bill, it would seem desirable and might be specified that the reexamination would be by a different person from the examiner who handled the case initially. This should make for a greater degree of objectivity. It has been suggested that any reexamination be by the Board of Appeals. PUBLIC COUNSEL We readily agree that patents should not issue on unpatentable inventions, but have difficulty in seeing how creation of the office of Public Counsel can accomplish very much in this regard except at great expense. Our problem is with the practicality of the proposal rather than with the principle. We do not see how the Public Counsel could hope to do a thorough independent job of examining selected applications unless he had a staff more or less duplicating that of the regular examining corps. Many of the duties given the Public Counsel in S. 1321 are already performed by someone else. Thus the Patent Office Solicitor and Law Examiners now represent the Patent Office in appeals and contested cases. The Commissioner regularly carries on a quality control program, though this could be considerably more effective if more funds were available. It is not clear to us how the Public Counsel and his staff would know when to intervene in a pending application. With the subpoena power there is at least the possibility that decisions to intervene might be arbitrary, might be a form of harassment of specific applicants, and might be made for reasons other than the only legitimate one, which is to assure that only high quality patents issue. Creation of the Public Counsel might also appear to denigrate the patent examining operation and result in a lesser feeling of responsibility, lower morale and a generally lower level of effectiveness on the part of the examining corps. We tend to think that more could be obtained in improving the quality of patents by expending added monies in strengthening the examining staff and the present quality control program. DEFERRED EXAMINATION Provision for deferred examination has not been included in our proposed bill, though it would obviously be desirable to avoid the effort of examining those applications which, after the passage of some years, either seem unpatentable to the applicants or are of so little interest to them that examination is not requested. There are, however distinct disadvantages. Early publication of applications, before there is any indication that they will be allowable, is unfair to the applicant and will lead to inventions being kept secret instead of being filed on. If deferred examination is introduced, it will be necessary for the Patent Office to publish all applications subject to deferral and later to publish again |