of Patents is authorized to rescind any order upon notification by the heads of all departments and the chief officers of all agencies who caused the order to be issued that the publication or disclosure of the invention is no longer deemed to be detrimental to the national security.

“SEC. 2. The invention disclosed in an application for patent subject to an order made pursuant to section 1 hereof shall be held abandoned upon its being established before or by the Commissioner of Patents that in violation of said order said invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent or approval of the Commissioner of Patents, and such abandonment shall be held to have occurred as of the time of such violation: Provided, That in no case shall the consent or approval of the Commissioner of Patents be given without the concurrence of the heads of all departments and the chief officers of all agencies who caused the order to be issued: Provided further, That any such holding or abandonment shall constitute forfeiture by the applicant, bis successors, assigns, or legal representatives, or anyone in privity with him or thein, of all claims against the United States based upon such invention.

SEC. 3. Any applicant, his successors, assigns, or legal representatives, whose patent is withheld as herein provided, shall, if the order of the Commissioner of Patents above referred to shall have been faithfully obeyed, have the right, during a period beginning at the date the applicant is notified that, except for such order, his application is otherwise in condition for allowance, or beginning at the effective date of this Act, whichever is later, and ending two years after the date a patent is issued on such application, to apply for compensation based upon the use, if any, of the invention by the Government, such right to compensation to begin from the date of the first use of the invention by the Government. The head of any department or agency who caused the order to be issued is authorized, if any such claim is presented within the periods above specified, to enter into an agreement with said applicant, his successors, assigns, or legal representatives, in full settlement and compromise for such use, if any, and any such settlement agreement entered into shall be final and conclusive for all purposes, notwithstanding any other provision of law to the contrary. If full compromise and settlement of any such claim cannot be effected, the head of any department or agency who caused the order to be issued, may, in his discretion, administratively award and pay to such applicant, his successors, assigns, or legal representatives, a sum not exceeding 75 per centum of the maximum sum, if any, which in the opinion of the head of such department or agency would constitute fair and just compensation for such use, if any. Within two years after issuance of the patent, any claimant who fails to secure an award satisfactory to him shall have the right to bring suit against the United States in the Court of Claims for such amount which, when added to such award, if any, shall constitute fair and just compensation for the use, if any, of the invention by the Government. The owner of any patent issued upon an application that was subject to a secrecy order issued pursuant to section 1 hereof, and who faithfully obeyed the order, who did not apply for compensation as above provided, shall have the right, within two years after the date of issuance of such patent, to bring suit in the Court of Claims for fair and just compensation for the use by the Government of the patented invention, such right to compensation to begin at the first date of such use: Provided, That in any suit under the provisions of this section, and in any negotiations looking toward settlement and compromise of any such claim; the United States may avail itself of any and all defenses that may be pleaded by it in an action under page 28, United States Code, section 1498 (revised), as amended: Provided further, That no compensation under the Act shall be paid for use by the Government of an invention made while the inventor thereof was employed by the Government.

"SEC. 4. No person shall file or canse or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States prior to ninety days after filing in the United States an application covering such invention except when authorized in each case by a license obtained from the Commissioner of Patents under such rules and regulations as he shall prescribe: Provided. That no such license shall be granted with respect to any invention which is the subject matter of a subsisting order issued by the Commissioner of Patents pursuant to section thereof without the concurrence of the heads of all departments or the chief officers of all agencies who caused the order to be issued.

"SEC. 5. Notwithstanding the provisions of sections 4886 and 4887 of the Revised Statutes (35 U.S.C., secs. 31 and 32), any person and the successors, assigns, or legal representatives of any such person, shall be debarred from receiv ing a United States patent for an invention if such person, or such successors, assigns, or legal representatives shall, without procuring the authorization prescribed in section 4 hereof, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of such invention where authorization for such application is required by the provisions of section 4 hereof, and any such United States patent actually issued to any such person, his successors, assigns, or legal representatives so debarred or becoming debarred shall be invalid..

"SEC. 6. Whoever, during the period or periods of time an invention has been ordered to be kept secret and the grant of a patent thereon withheld pursuant to section 1 hereof, shall, with kuowledge of such order and without duc authoriza tion, willfully publish or disclose or authorize or cause to be published or disclosed such invention, or any material information with respect thereto, or whoever, in violation of the provisions of section 4 hereof, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for hot more than two years, or both.

"SEC. 7. As used in this Act

"The term 'person' includes any individual, trustee, corporation, partnership, association, firin, or any other combination of individuals.

"The term 'application' includes applications, and any modifications, amendments, or supplements thereto, or continuances thereof.

"The term 'use' includes manufacture, sale, or other disposition of the invention by the Government, or for the Government with its authorization or consent. "SEC. 8. The prohibitions and penalties of this Act shall not apply to any officer or agent of the United States acting within the scope of his authority. "SEC. 9. The Atomic Energy Commission, the Secretary of the Army, the Secretary of the Navy, the Secretary of the Air Force, the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States, and the Commissioner of Patents, may separately issue such rules and regulations as may be necessary and proper to enable the respective department or agency to carry out the provisions of this Act, and in addition are authorized, under such rules and regulations as each may prescribe, to delegate and provide for the redelegation within their respective departments or agencies of any power or authority conferred by this Act to such responsible officers, boards, agents, or persons as cach may designate or appoint,

"SEC. 10. If any provision of this Act or of any section hereof or the application of such provision to any person or circumstance shall be held invalid, the remainder of the Act and of such section and application of such provision to persons or circumstances other than those as to which it is held invalid shall not be affected thereby.

"SEC. 11. Any order of secrecy heretofore issued, and subsisting on the date of the approval of this Act, shall be considered as an order issued pursuant to this Act and shall continue in force and effect for a period of one year from the effective date of this Act, unless sooner rescinded as provided herein: Provided, That any claim arising under the Act of which this Act is amendatory and unsettled as of the effective date of this Act, the provisions of any other Act or Acts to the contrary notwithstanding, may be presented and determined pursuant to the provisions of section 3 hereof.

"SEC. 12. Nothing in this Act shall alter, amend, revoke, repeal, or otherwise affect the provisions of the Atomic Energy Act of 1946 (60 Stat. 755).”

Mr. BRYSON. The committee will please come to order. We have for consideration this morning H.R. 6389, a bill to amend the act relating to preventing the publication of inventions in the national interest, and for other purposes. I believe Captain Robillard is the first and only witness.

Mr. BERNHARDT. Mr. Chairman, before Captain Robillard procccds, may I say that the American Patent Law Association has submitted a statement on this bill in which they approve of it with

amendments, or, at least, they state that they will not oppose it if it is amended in the ways that they indicate.

Mr. BRYSON. It seems that they have voluminous amendments. Mr. BernitaRDT. That will be submitted for the record.

Mr. BRYSON. Do you have additional copies of that statement? Mr. BERNHARDT. Yes, sir; I have additional copies of this state

ment.

Mr. BRYSON. Without objection that statement will be included in the record.

(The matter referred to is as follows:)

STATEMENT On Behalf of THE AMERICAN PATENT LAW ASSOCIATION ON

II. R. 6389

(Prepared by the Committee on Laws and Rules, Paul A. Rose, chairman)

The board of managers of the American Patent Law Association has authorized this statement to express the views of the association with respect to the bill, H.R. 6389, to amend the act relating to preventing the publication of inventions in the national interest and for other purposes.

This bill is generally similar to the existing legislation, but if enacted would be effective at all times, whereas the present law is effective only during the time when the United States is at war. The bill is more specific as to the procedures to be followed in determining which applications for patents will be placed in secrecy by the Commissioner of Patents and makes it incumbent on the Commissioner of Patents to issue secrecy orders when notified by the Atomic Energy Commission or the head of a defense agency that the disclosure of the invention by the grant of a patent would be detrimental to the national interest. Under the present law the matter is entirely discretionary with the Commissioner, although as a matter of practice he follows the recommendations of the Atomic Energy Commission and of the defense agencies.

The advisory power provided for the heads of the defense agencies is desirable since they are in a better position than is the Commissioner of Patents to make the determination as to which inventions should be maintained in secrecy. However, the disclosure of pending applications to persons other than employees of the Patent Office is contrary to the general rule of maintaining applications for patents in secrecy, and it is believed desirable that record be made of the identity of all persons outside the Patent Office who are permitted to examine an application and that this be a part of the official record. Accordingly, it is suggested that the bill be amended on page 2, line 14, by inserting the following language after the word "States"; "; and each individual to whom the pending application is disclosed, shall execute a dated acknowledgment thereof, which acknowledgment shall be made an official paper of the application file."

Also on page 3, line 2, before the colon, after the word "requires", insert the following: "and upon proper showing by the head of any department or agency, who cansed such security order to be issued, that the examination of the applica tion might jeopardize the national interest, then the Commissioner of Patents shall immediately seal such application:",

The purpose of this amendment is to make it possible for contractors working on highly classified projects to file applications in order to get a date of filing in those cases in which the subject matter is so highly secret and important that the contracting officers of the defense agencies would not permit the filing of an ap plication for patent if the same were to be processed and examined in the usual hanner in the Patent Office. By providing for the sealing of the files in these special cases, the rontractor's patent rights are safeguarded by permitting him to obtain a filing date for the application covering the invention.

The bill provides for annual review of secrecy orders in time of peace, but during time of war the orders will be effective for the duration of the war. Because of the nuduly long "duration" of World War II after the cessation of hostilities, it is suggested that the words "duration of the war" in line 17 of page 3 be changed to rad "duration of hostilities and a period of one year following the cessation of hostilities”. This will give ample time for review and issuance of requests for maintenance of secrecy orders in proper cases after the end of netual hostilities in

any war.

The bill, as does the present law, provides severe penalties, including a holding of baddoument of the application if the secrecy order is violated. The bill makes

such holding mandatory, regardless of the circumstances or motive. It is urged that the penalty should be permissive in order that the Commissioner may use his discretion in those cases in which violation is unintentional or mitigating circumstances are present. Accordingly, it is recommended that in line 1 of page 4 the word "shall be changed to the word "may".

The present law provides for compensation of an applicant whose application has been placed in secrecy in those cases in which the invention is used by the Government, the compensation to begin from the date of use by the Government, and also provides that the head of a department or agency may enter into an agreement in compromise of any claim for compensation for such use and also for any damage accruing to an applicant by virtue of a secrecy order.

The bill provides only for compensation in those cases in which an invention placed in secrecy is actually used by the Government and omits the provision for compensation for damage by virtue of the secrecy order. In time of peace particularly, there should be some provision for compensating an inventor who is prevented from patenting and exploiting his invention which well may have valuable civilian uses and applications. If such an invention has military value or is of such a nature that the defense agencies desire that it be kept secret, although the Government may not make any use of it, then the applicant should be compensated. • Admittedly, the measure of damages will be difficult to establish, but the right to compensation should be provided. In order to make such provision it is suggested that the bill be amended as follows: On page 5, line 3, cancel the words "based upon" and insert the words "for the damage accruing to him by reason of the order of secrecy and/or for"; on page 5, lines 11 and 21 before the word "use" insert the words "damage and/or"; on page 6, lines 2 and 10 before the word "use" insert the words "damage and/or".

These amendments will provide the same remedies for making claim for compensation for damage as for making claim for compensation for use.

The following additional amendments are suggested:

Page 3, at the end of line 11 and in line 12 before “agency," change "the" to "any."

Page 7, line 25, after the word “invalid" insert "unless otherwise authorized by the Act of Congress of August 8, 1946 (60 Stat. 943, ch. 910, sec. 6; 35 U.S.C. 105," Page 8, line 20, after "thereto," insert "divisions"; line 21, at the end of the sentence after "thereof," insert "or substitutes therefor"; line 23, delete the comma; line 24, place a period after the word “Government" and delete the remainder of the sentence.

These amendments are for the sake of completeness and clarity.

On page 9, line 2, delete the period at the end of the sentence and add thereto "nor to any person acting upon the written instructions of, or in reliance on the written permission or advice of, any such officer or agent."

This amendment is for the protection of a contractor who discloses an invention upon the order or authority of the contracting oflicer or other officer of the United States having authority to order such a disclosure.

On page 9, line 16, after the word "appoint" delete the period, and substitute a colon and insert the following: "Provided, however, That no rules or regulations issued by any such department or agency shall forbid the filing of an application by a Government contractor, except in those instances where the United States has full right, title, and interest, in and to the invention."

This amendment is made in keeping with the amendment on page 3, line 2, in order that no contractor will be prevented from filing an application on an invention growing out of a classified contract unless the invention is wholly owned by the Government.

Provided the bill is amended as proposed herein, the American Patent Law Association interposes no objection to its approval.

Mr. BERNHARDT. At the same time I have received a statement from the Chicago Patent Law Association in opposition to the bill, and I have also received a statement from the Aircraft Industries Association of America, Inc., which does not oppose the bill if it is amended in the ways that they have suggested.

Mr. BRYSON. Their amendments are similar to the others?

Mr. BERNHARDT. I have just gotten their amendments, so I cannot state, Mr. Chairman.

Mr. BRYSON. Without objestion those statements will be included in the record at this point.

(The matter referred to is as follows:)

The Patent Law Association of Chicago, Legislative Committee, Report OF SUBCOMMITTEE ON Tydings BILL, S. 2557, and the CompanION CELLER BILL, H.R. 6389, RELATING TO SECRECY OF PATENT APPLICATIONS

S. 2557 was introduced in the 81st Congress, 1st session, by Senator Tydings on September 15, 1949, and the indentical companion bill, II. R. 6389, was introduced in the House of Representatives by Mr. Celler on October 13, 1949. These bills propose to amend the existing statutes 35. U.S.C. sections 42 to 42f, inclusive, These existing statutes are effective during the time when the United States is at war, while the proposed legislation will be effective in peacetime, as well as wartime.

Similar legislation was introduced in the S0th Congress known as S. 1726 and H.R. 4220. A subcommittee consisting of Paul J. Glaister, chairman, Benjamin H. Sherman and John A. Dienner, Jr., made a report to the legislative committee in the spring of 1948, recommending that these previous bills be disapproved.

DIGEST OF S. 2557 AND 1.R. G3SO

These bills relate to preventing the publication of inventions in the national interest and are intended to replace 35 U.S.C. sections 42 to 42f. The proposed bills are briefly summarized below by sections,

Section 1.--When the Government has a property interest in an invention and the head of the interested department thinks that its publication would be detrimental to national security he may notify the Commissioner of Patents to withhold the grant of a patent.

When the Government does not have an interest in the invention but the subject matter is within certain categories prescribed by the President and the Commissioner is of the opinion that publication would be detrimental to national security he may make the application available for examination to the Atomic Energy Commission, the Secretaries of the Army, Navy, and Air Force and the heads of such other governmental departments or agencies as may be designated by the President as defense agencies, an if any one of them notifies the Commissioner that the invention should be kept secret he shall withhold the grant of patent. The owner may appeal from the secrecy order under rules to be prescribed by the President.

Secrecy orders will remain in effect for only 1 year but may be renewed for additional 1-year periods upon notification by the department head requesting the initial secrecy order except in the event of war, in which case the secrecy orders stay in effect without notice of renewal.

The present law does not provide for an appeal from a secrecy order and the term of a scercey order is prescribed by the Commissioner rather than being limited to 1 year.

Section 2.- In ease of failure to comply with the secrecy order the application is abandoned. The Commissioner must approve any foreign filing with concurreace of the Secretaries or department heads who caused the secrecy order to issue. Section 3.- When the application being prosecuted under a secrecy order is in condition for allowance the owner may apply for compensation for its use by the Government dating from the first use by the Government. Upon application by the owner the head of the agency causing a secrecy order to issue may enter into a settlement with the owner. If the parties cannot agree, the department head may settle on the basis of 75 percent of his offer and the owner may suc for the remainder in the Court of Claims at the time his patent issues and for 2 years thereafter. If the owner does not apply for compensation he may suc in the Court of Claims when his patent issues and for 2 years thereafter.

Under the present law the inventor must-tender his invention to the Government and then has the right to sue in the Court of Claims when his patent issues. Section 4.-There may be no foreign filing irrespective of the subject matter of the invention until after 90 days from the U.S. filing date without the approval of the Commissioner.

In the present law (sec. 42a) all foreign filings must have the Commissioner's approval, but this approval is automatically given in the form of a license issued and printed on the back of the filing receipt.

Section 5.---An application made contrary to section 4 shall be debarred from becoming a patent.