the general order of competence of the examiners. A way must be found in which to enlist the affirmative and enthusiastic aid of industry and inventors and patent attorneys in furnishing input data for the examining process.

The experienced attorney generally overpowers the relatively inexperienced examiner in the over-all lowering of the standard of invention in the U.S. Patent Office. This is a major reason for the issuance of invalid patents. A very secondary reason is misrepresentation and fraud on the part of patent attorneys and applicants. Patent attorneys as a class are as ethical and dedicated a group of professional men as can be found. They are generally candid in their dealings with each other and with the U.S. Patent Office, but there are a marginal few who are standard forms for reissue oaths, who withhold knowledge of the most relevant prior art from the U.S. Patent Office, who present false oaths for signature by applicants, and resort to like sharp practices. In recent years, the courts have become more and more inclined to look into these and to hold patents unenforceable for fraud and unclean hands. There is need for machinery in the U.S. Patent Office that would discourage these practices and subject them to rigorous scruntiny. There is need for an agency whose very presence would constitute a detriment to fraud.

We must find a way to bring to bear on the examination process all available input intelligence and maximum competence and attention. At the same time, this optimum examination must be accomplished without unduly burdening the applicant, particularly the independent inventor. Many of the best inventions come from the individual inventors, the men who either do not know the rules of science or know them too well, the cross pollenizers, the men who take an unorthodox view of the status quo in technology, the men who are not satisfied with things as they are, the men who do not have to conform to corporate policy. The machinery must not be so elaborate as unduly to burden them or the already heavily overburdened taxpayer..

Let us now compare these objectives and the various curative proposals that Senator Hart is making.

THE PUBLIC COUNSEL-SECTIONS 3, 24, 132, 134, 142, AND 148

The Public Counsel principle is eminently sound but there is some confusion in the proposed legislation as to the proper functions of the proposed Public Counsel and the present office of Solicitor in the United States Patent Office. The present office of the Solicitor should be continued. The Solicitor is the legal adviser to the Commissioner of Patents. He handles petititions on special matters and represents the Commissioner in defending appeals by applicants to the Board of Appeals. Most of these appeals involve the question as to whether or not an invention is patentable over the prior art. The Solicitor and the Boards of Appeals are thoroughly competent to perform these functions and their role should be continued. However, there are a number of bars to patentability which the Patent Office does not have adequate machinery to inquire into and the best prior art may not be on the record. The proper role of the Public Counsel is to inquire into these matters and to accomplish compliance with the very rigid requirements of candor and good faith that Sections 115 and 131 of the Hart Bill require. The objective of Sections 115 and 131 is to enlist the aid of the inventor and the applicants and the attorneys in placing on the record the most pertinent prior are known to them and a full disclosure of all facts, pro and con, bearing on compliance with the statutory requisites. The proper role of the Public Counsel is to inquire into these matters on which the highest good faith is required.

The Public Counsel should be empowered but should not be required to review all proceedings in the U.S. Patent Office. His office should be entirely independent from that of the Solicitor, who should continue to bear the principal responsibility to oppose appeals of applicants from the various tribunals of the Patent Office. The office of Public Counsel should be completely independent from that of Commissioner except for purely administrative matters. The Public Counsel should be permitted to appoint all of the employees of his office. He should receive complaints from examiners and competitors of applicants and from the public at large. With regard to fraud or unethical practice or noncompliance with statutory requirements or breaches of ethics, he should be empowered to inquire into them and to intervene in any case before the Patent Office tribunals, representing the public interest. Generally he should

concern himself with cases involving fraud or unfair practice and his efforts should only supplement those of the Solicitor in the conventional defense of appeals, which generally involve the question as to whether or not the subject matter claimed is patentable over the prior art.

The Public Counsel must exercise a great deal of discretion and judicious restraint and should be sure that at least a prima facie case in favor of the public exists before he intervenes in any proceeding.

Most of the law relating to fraud and unclean hands is made in the Supreme Court or in the Circuit Courts of Appeals. It should be made in the Patent Office. There is presently no effective means for making it. The Public Counsel will supply the means. Clearly he cannot review all proceedings or intervene in all cases. That might require that his office have a staff as large as the examining corps. However, even operating on a spot check basis, his very presence will discourage misrepresentation and fraud, and litigation conducted by him will establish principles that will further discourage misrepresentation and fraud.

Heretofore the appellate procedure before the Patent Office Board of Appeals is invoked by the applicant. An excellent feature of the Hart Bill is the proposal that he may intervene in any Patent Office proceeding or intervene or appeal rulings therein. In other words, the Public Counsel, on behalf of the public, can now appeal if he is dissatisfied with allowance of a patent application by the primary examiner or a Board of Appeals. This will provide the public with machinery to uplift the standard of invention in the Patent Office so that patents issuing therefrom will have a better chance of vindication in court.

PUBLIC ADVERSARY HEARINGS-SECTIONS 122, 134, 135, 137, AND 138 The principle here involved is most commendable. The objective is to enlist the aid of the interested public and the relevant sector of industry in contributing to the examining process the maximum of intelligence and the optimum prior art picture. These sections require revision. It is suggested that not every applicant be subjected to what amounts to a full trial in the U.S. Patent Office. His case should not be published and laid open for opposition until it has been examined and tentatively allowed. At that stage it would be in order to consider, ex parte, any and all comments and reference material submitted by any interested party. Moreover, the Public Counsel could be brought in to ascertain if any public interest appears at that point. The interested party or opposer should not be permitted to intervene or participate in or set up an inter partes proceeding, bearing on the merits of the patent application, unless and until the Public Counsel determines, in a specific case, that such intervention would aid him in the performance of his function. In the majority of cases an ex parte consideration of data submitted by a potential adversary should exhaust the reexamination process.

A serious defect in opposition proceedings is in evidence in certain foreign countries. Many companies filing patent applications in those countries now simply assume that their competitors abroad will file oppositions, whether or not in good faith. The public Counsel should be given authority to ascertain whether or not data supplied by adversaries are furnished in good faith and to tax costs and penalties if they are not.

DEFERRED EXAMINATION-SECTIONS 191-193

The present practice of examining all patent applications is a prime reason why the examination is too often inadequate. This practice overlooks certain realities that many patent applications are filed in order to establish dates on invention and set up defensive latitude for manufacturers who are not interested in licensing or like patent exploitation, and that some are filed for only potential use and others for bargaining purposes.

Under Senator Hart's proposal a patent application would not be examined on the merits unless and until the applicant visualizes commercial exploitation, a licensing opportunity, or some practical impact on the economy that would justify the payment of an examination fee. The applicant would have a fiveyear period of grace during which to make a request for examination and pay the fee. Upon failure to make it within the time limited, the application would

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 invention. 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.

MAINTENANCE FEES-SECTION 41

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 invention, 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

men.

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 impose 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 America'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 obvious. 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 flat 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 OrdnanceNaval 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