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Mr. BRYSON. It is just a double precaution there to have it in the bill.
Captain ROBILLARD. Mr. Koonz points out to me that the answer is what we discussed heretofore. In a sense it still prevents a patent from issue after it is allowed, or, rather, an application from being issued as a patent after allowance, and that we may not stop, even if it were a Government case prosecuted to allowance, unless we had something to stop its issuing as a patent, even though the Government owned it. In other words, we cannot say to the Patent Office that in this case it is now in condition for allowance, but do not issue it unless we have statutory authority for saying so, and we have it here. Mr. WILLIS. May I ask a question off the record?
Mr. BRYSON. Surely.
(Discussion off the record.)
Mr. BRYSON. We had such an act in World War I, and then again in World War II, and these suggested amendments are based on the experience they had with the operation of the law.
Mr. WILLIS. And they want to extend it?
Mr. BRYSON. Yes.
Captain ROBILLARD. Off the record.
(Discussion off the record.)
Mr. GOODWIN. Still off the record, Captain.
(Discussion off the record.)
Mr. WILLIS. Captain, how do you square this proposed legislation with the measures sometimes proposed before us to make it illegal to suppress patents? Is not this the opposite of that philosophy? I suppose the answer is that in time of war, or of national emergency, all of these considerations are overcome, is that it?
Captain ROBILLARD. Yes, plus the fact that we are not suppressing patents.
What we are saying is this, that during the pendency of your application if it is detrimental to the national defense to disclose this you must withhold it until such time as it will no longer be detrimental, and then when you obtain your issue you still have your 17 years, and that during that period that we have withheld it you can be compensated for such use as we made of it or for such damages as you incurred. Mr. WILLIS. Now, that brings up the next question: Suppose the Government surpresses it or does not exploit it, then what rights does the applicant have?
Captain ROBILLARD. He has the right to collect for such damages as he suffered.
Mr. WILLIS. There is a provision in the bill to cover the situation where it is surpressed.
Captain ROBILLARD. That is covered by the proposed amendment. It is in Public Law 700, and will be put back into this bill if it is acceptable to the committee.
Mr. BRYSON. Captain, this is interesting and helpful, but we must make time here, as the House meets at 11 o'clock.
Captain ROBILLARD. Yes, sir.
Mr. Brysox. Go ahead with your amendments now,
Captain ROBILLARD. The first amendment is to provide authority to the Commissioner of Patents to suspend action on applications where they disclose something so vitally important that we think it should be concealed or placed in the vault.
There have been very few cases of that kind, but heretofore we have said to the inventor if he was a Government contractor we will not even let you file an application, which gets us back to Mr. Willis' case, and under those instances we surpressed inventions, and there was no doubt about it, but they related to such matters as cartography, for example, and with those we do. With this provision we feel he would be amply protected in that he would get a filing date and have his application on file.
Now, the industry also wanted us to agree that we would never forbid filing an application, that we would relinquish that right. However, the armed services feel that they must retain that right in case something, let us say, equivalent to the atomic bomb suddenly appeared that it would be detrimental to have it all written up in a patent application, thereby completely disclosing it in one document.
H.R. 6389 as presently written provides that for the duration of the war a case may be retained in secrecy rather than just for a 1year period. We would like to change that to for "a period of 1 year following the cessation of hostilities", so that we do not again get into this problem of what is the duration of the war.
The next amendment would carry into the bill the administrative practice that where anybody from the Defense Establishment examines a patent application in the Office he must place in there a signed acknowledgment that he has seen it. That is if, for example, a later invention got in there from some Defense Establishment employce it would establish the date for the applicant when the Defense Establishment's employee first saw his application, thus safeguarding him.
The bill as presently written provides that if an applicant files an application abroad prior to the time he does here, his U.S. application shall be held abandoned. The former Commissioner of Patents, Mr. Conway Coe, discussed that and thought it should be "may" be held in abandonment, giving the Commissioner of Patents discretion to look into the facts rather than make it arbitrary.
Mr. BERNHARDT. Are you familiar with the reaction of the American Patent Law Association to each one of these amendments as you go along?
Captain ROBILLARD. Yes.
Mr. BERNHARDT. Are they in favor of the first amendinent that you proposed, Captain?
Captain ROBILLARD. They are in favor of the first, but they would like an addition to the restriction against our compelling them not to filo.
Mr. BERNHARDT. Are they in favor of the second amendment that you propose?
Captain ROBILLARD. The period of 1 year following the cessation of hositlities?
Mr. BERNHARDT. Yes.
Captain ROBILLARD. Yes. They are in favor of all of those which I discuss from here on.
Mr. BRYSON. There is no great difference between your views and theirs?
Captain ROBILLARD. The only one thing was that question of restricing our right to forbid their filing.
Mr. BERNHARDT. Are there any amendments which they proposed which are not contained in your summary?
Captain RORILLARD. No, not that I know of.
Mr. BERNHARDT. Have you examined their statement?
Captain ROBILLARD. No, I have only talked to Mr. Paul Rose, and the consequence of it was that we discussed it with Mr. Dearborn of the NSIA, and a number of others, and then they, in turn, discussed it with the American Patent Law Association.
Mr. BERNHARDT. Mr. Paul Rose called me up this morning and said something about an amendment which he probably differed from the Navy on, and that was in connection with the disjunctive use of
Captain RobiLLARD. Yes; I will get to that. That is the next amendment which I discuss and that is placing back into the bill provision for damage if we place a secrecy order on and do not use an invention.
What we have said is to insert in a number of places "and/or damage". Mr. Rose says "damage and/or use". We do not care which way it is.
Mr. WiLLIS. If it will lessen opposition.
Captain ROBILLARD. It does not. It is just a matter of words. Mr. BOGGS. You can take the conjunctivity out. The Supreme Court by its rules have made conjunctive pleading good. I do not know why that would not be good.
Captain ROBILLARD. The next amendment provides no one may collect compensation under this act if the invention was made while he was in the employ of the Government and we add "in the service of” to conform to 22 U.S.C. 448 which has the same terminology.
The next amendment relates to the issue of licenses by the Commissioner of Patents to permit filing abroad and it provides that he shall issue one in each case. We suggest striking out the words “in each case" because he might be able to issue one license which would cover a number of cases and thus avoid a great amount of paperwork. The next amendment is to provide that the Commissioner of Patents if, in his discretion, he has decided that a case filed abroad was not in violation of the act, then he has authority not to hold the case abandoned or the patent that was issued invalid-which brings into H.R. 6359 the act of August 8. 1946, which was for that specific purpose.
The next two amendments are merely technical and add "divisions" after "thereto" at page S, line 20; and at the end of the sentence after "thereof", insert "or substitutes therefor". This in in accord with the Patent Office rules.
The next amendment is to hold harmless anyone who has examined one of these applications with either written or apparent authority--one authorized to give the right to examine. As I have said, all these amendments are acceptable to the Department of Defense and I think you will find that, with one exception, the right to prevent filing---or with two exceptions --“and/or damage” or “damages and/or
Mr. BERNHARDr. Are you in agreement with the Department of Justice?
Captain ROBILLARD. So far as I know.
Mr. WILLIS. What about the Commissioner of Patents?
Captain ROBILLARD. Mr. Frederico is here. We discussed it yesterday and I believe we are in substantial agreement.
Mr. Buysox. Does Mr. Hackley know about your amendments?
Captain ROBILLARD. No, sir; I thought he would be here this
Mr. Boggs. He was to appear?
Captain ROBILLARD. We will not be able to go further.
Mr. BRYSON. We have an important meeting with the Rules Committee at 11:15.
Captain ROBILLARD. I will come here to testify.
Mr. Willis asked if we were in agreement. We reported we were in agreement with the objectives of the bill. There might be a few minor matters in these amendments but nothing of substance.
Mr. WILLIS. Don't you think we should have the benefit of the study of the clean bill and his views?
Mr. BRYSON. Yes. We would like to proceed with this. I see the importance of it. It would be fine if you could get together with Mr. Rose and Mr. Hackley. It looks as though you are in agreement.
Mr. BERNHARDT. Would it be agreeable to Captain Robillard to prepare amendments to meet the objections raised by the Chicago Patent Law Association, so the record will be complete?
Captain ROBILLARD. I will be happy to do so.
Mr. BRYSON. Thank you, gentlemen.
(Whereupon at 11:05 a.m. the committee adjourned.)
SUBCOMMITTEE NO. 3
TO PROVIDE FOR THE WITHHOLDING OF CERTAIN PATENTS THAT MIGHT BE DETRIMENTAL TO THE NATIONAL SECURITY, AND FOR OTHER PURPOSES
AUGUST 21. 1951
Serial No. 22
Printed for the use of the Committee on the Judiciary
U.S. GOVERNMENT PRINTING OFFICE