to continue providing the services and products to the extent desired. It appears that H.R. 6933, while crediting

the fees to the PTO Appropriation Account, will still limit the ability of the PTO to utilize funds in that account to the extent provided for in the appropriation acts and, therefore, any forecast which underestimates the demand for services would result in the same problem as the PTO faces today. 4. With respect to Section 5, the bill provides that the Secretary of Commerce will establish the fees for filing and processing of an application and for all other services performed by and materials furnished by the PTO related to trademarks and other marks and that the fees will be set and adjusted by the Secretary to recover in aggregate the "full costs of all services performed and all materials furnished." The APLA has an established position that the fees charged for services and products which are principally of private benefit to the party requesting those services or products should cover the cost of the services and products. However, the fees charged for services and products which benefit the public and users of the trademark system should be covered, in part, by general appropriation. There are many services offered by the Trademark Division, such as maintaining the Search Room facilities, examining applications for registration, offering public informational services and

other similar services which benefit the public as a
whole. There is no logical reason why trademark owners who
file applications for registration and others who speci-
fically request certain services or materials from the
Trademark Division should pay the cost of providing the
services which benefit the nation as a whole. Furthermore,
as the present bill presently stands, it is conceivable,
and with the inflation rate at its present level,

indeed possible, that fees which necessarily will have to
be charged to recover the full cost of all services performed
and all products furnished by the PTO would be at such a high
level as to discourage use of the Trademark Division. Clearly,
this is not in the best interests of this nation. It is
for these reasons that the APLA has decided to distinguish
between those services and products offered which principally
benefit the recipient of the services and products from the
services and products offered which benefit the public as
a whole and the users of the trademark system generally.
Any other arrangement would be prejudicial against those who
specifically request services and products and would result
in unduly high fees and discouragement from using the

services offered by the PTO.

Time has not permitted APLA to examine and take a position on the remaining PTO funding provisions of H.R.

6933.

Needless to say, we would be pleased to offer the

Subcommittee our considered views on this issue when these views are formulated.

Copyright Protection on Computer Programs

APLA has not yet had an opportunity to review the provisions of H.R. 6934 dealing with copyright protection for computer programs. While I have no reason to feel, from my limited review of the bill and the CONTU report which deals with the subject, that APLA would oppose H. R. 6934, I must defer taking a position on its provisions at this time. I would, however, be pleased to supplement my comments today with APLA's views on the subject as soon as they are available.

*

In conclusion, let me once again thank the Subcommittee for inviting APLA to offer its testimony on this most important subject. We would, needless to say, be pleased to have the

opportunity to assist you further in your ongoing consideration of patent, trademark and copyright law revision.

APPENDIX 1

RECOMMENDATIONS FOR MODIFICATION OF S.1477 (COURT OF
APPEALS FOR THE FEDERAL CIRCUIT), AS APPROVED BY
APLA BOARD OF DIRECTORS ON FEBRUARY 5, 1980

The most important change recommended has to do with the
patent jurisdiction of the United States Court of Appeals
for the Federal Circuit (hereinafter "CAFC"). As presently
worded, jurisdiction of CAFC depends upon the allegations in
the Complaint filed in the District Court, since jurisdiction
is dependent upon the District Court having its jurisdiction
based, in whole or in part, on Section 1338. Because of
such basis for jurisdiction, some cases which actually
involve an issue of federal patent law at the time of appeal
might not be appealable to the CAFC and some cases might be
appealable which no longer have any issues of federal patent
law. For examine, if jurisdiction is based in the District
Court on diversity of citizenship, but the dispute is largely
one between licensor and licensee over the validity of the
patent, involving one or more issues of federal patent law,
the case nevertheless would not be appealable under the
present provisions of Section 1295 of S. 1477 to the CAFC.

Similarly, where jurisdiction was not originally based on Section 1338, but a counterclaim was filed for patent infringement, that would not be subject to appeal under the present provisions. On the other hand, a case could be filed with jurisdiction under Section 1338, having a patent infringement action along with trademark or other issues, but prior to the appeal, the patent infringement issues could be settled or dismissed, leaving only the trademark or other non-patent issues for appeal. In that situation, the CAFC would have jurisdiction even though no federal patent law issue was on appeal. Because of the present wording of Section 1295, it is apparent that there is no potential for a number of cases dealing with issues of federal patent law to go to appellate courts other than the CAFC.

In addition, as presently worded, the jurisdiction of the
CAFC does not include appeals from interlocutory orders.
Accordingly, it is recommended that Section 1295 (1) as set
forth in S. 1477 be amended to read as follows:

(1) of an appeal permitted under Sections
1291 and 1292 of this Title from a final
decision or an interlocutory order of a
district court of the United States, the

II.

-2

United States District Court for the
District of the Canal Zone, the District
Court of Guam, the District Court of the
Virgin Islands, or the District Court
for the Northern Mariana Islands if the
appellant states in the notice of appeal
or application that the appeal will raise
a substantial issue relating to a United
States patent or if an appellee states in
a notice of election filed with a regional
circuit court within twenty days of the
filing of a notice of appeal or application
therein that the appeal will raise a
substantial issue relating to a United
States patent. If an appellee files such
a notice of election, the appeal shall be
transferred from the regional circuit

court to the United States Court of Appeals

for the Federal Circuit where it will be treated

as though originally filed in the latter court
on the date on which it was filed in the

regional court.

MODIFICATION OF JURISDICTION RE INTERLOCUTORY
ORDERS OF BOARD OF PATENT INTERFERENCES

OR TRADEMARK TRIAL AND APPEAL BOARD

SECTION 325 OF S. 1477

By

The second most important area for modification relates to the jurisdiction of the CAFC with respect to interlocutory orders of the Board of Patent Interferences or the Trademark Trial and Appeal Board. The present situation precludes such consideration, although apparently attempts have been made to substitute appeals through the ALL WRITS ACT. permitting the CAFC to consider an interlocutory order which involves a controlling question of law, a more orderly, and probably less expensive, procedure can be accomplished. It is therefore proposed that the period at the end of proposed 28 U.S.C. 1292 (c) (4) be deleted and replaced with --; and --, that "and" at the end of proposed 28 U.S.C. 1292 (c) (3) be deleted, and that the following paragraph 28 U.S.C. 1292 (c) (5) be added as follows:

(5) when any panel or member of the Board
of Patent Interferences or the Trademark
Trial and Appeal Board in issuing an inter-
locutory order includes in the order a
statement that a controlling question of
law is involved with respect to which