courts may construe the express elimination of the injunctive right as depriving equity of its jurisdiction. 2. As the injunctive relief is to be denied, the court should be required to take action that will assure that the patentee is compensated for the continuing infringement. The court should accordingly be required to cause the continuing infringer to pay the reasonable royalty at stated intervals or place the defendant under a bond to assure that the royalty will be paid. Otherwise the profits may be dissipated or even the defendant become insolvent so as to make it impossible to collect the compensation if the latter is permitted to accumulate for the whole period of the emergency. 3. The certificate should be limited to acts of infringement which are matters of public concern or national defense. An infringing lathe, for example, may be used for making artillery or it may be used for making children's toys. There would seem to be no sound reason why the toy manufacturer should be in a position to hide behind a certificate issued because of the work of the gun maker. Respectfully, Re: H. R. 3359, H. R. 3360. L. H. SUTTON. PACKARD MOTOR CAR Co., Detroit, Mich., February 20, 1941. Chairman, Committee on Patents, House of Representatives, Washington, D. C. DEAR MR. KRAMER: Thank you very much for your notice of the public hearing on these two bills. I am sorry that I cannot get to Washington for the hearing, but may I state to you that I am heartily in favor of both of these bills. They should be enacted, and it is important that they should be enacted soon. Very truly yours, MILTON TIBBETTS, Vice President, Packard Motor Car Co. Re: H. R. 3360. Hon. CHARLES KRAMER, PACKARD MOTOR CAR CO., Detroit, Mich., March 3, 1941. Chairman, Committec on Patents, House of Representatives, Washington, D. C. DEAR MR. KRAMER: Replying to your letter of February 28, in which you notify me of the hearing on this bill next week, I regret that I will not be able to get to Washington then. I am somewhat surprised to hear that there seems to be considerable objection to this bill. My feeling is that the owners of patents should not be in a position to interfere with national-defense projects, and this bill is only for the purpose of preventing just that thing by denying the right to injunction during the present emergency. Of course, the patentee's right to compensation should not be taken away from him, and this bill retains that right in the patentee. The Packard Motor Car Co. owns 1,594 patents and is perfectly willing to forego its injunction right during the emergency. We want it restored after the emergency is over, and the prohibition of this bill expires then. Very truly yours, COMMITTEE ON PATENTS, MILTON TIBBETTS, Vice President, Packard Motor Car Co. WILLIAMSON & WALTON, Washington, D. C., February 19, 1941. House of Representatives Building, Washington, D. C. (Attention: The Honorable Charles Kramer, Chairman.) DEAR MR. KRAMER: Thank you for your letter of the 17th instant advising me concerning the public hearing to be held on February 20 before your committee respecting H. R. 3359 and H. R. 3360. I am in favor of these bills but will be unable to appear before you at the hearing because of previous appointments and the relatively short notice which I received, your letter being received just this morning. Hoping to be advised further in this matter, I am EDW. R. WALTON, Jr. WATSON, COLE, GRINDLE & WATSON, Hon. CHARLES KRAMER, House Committee on Patents, Washington, D. C. MY DEAR MR. KRAMER: I will not attend the hearing upon bill H. R. 3360 on March 11. I think that the bill is timely and that there should be little opposition to it. My only comment is that the phrase in lines 7 and 8 which reads as follows, "or the chief officer of any established defense agency of the United States," is rather vague. It might be well to more particularly specify the titles of those defense agencies which are to be given the power which the bill purports to convey. Respectfully, ROBERT C. WATSON. WASHINGTON, D. C., February 28, 1941. Re: H. R. 3359. HOUSE COMMITTEE ON PATENTS, Washington, D. C. (Attention Hon. Charles Kramer.) GENTLEMEN: In connection with the contemplated executive session of your committee preparatory to its reports to the House on the above-captioned bill, I desire to add a few words for consideration by the committee. I repeat that I am wholly in favor of the objections of the bill and believe its intended purpose to be necessary and desirable. The redraft of the bill as presented by Commissioner Coe on the morning of February 27, eliminates many of the objections and criticisms as made to the Commissioner as originally presented. It is particularly true in view of the fact that the bill, as redrafted, is limited to inventions made in the United States. However, I feel with Mr. Fenning that the last sentence of section 3 of the proposed bill, that is, the sentence beginning "This section," is wholly unnecessary in view of the explanation by the War and Navy Departments that it was inserted at their request and in view of their admission that such Departments themselves control and maintain the secrecy of the inventions that correspond to those described in that sentence. If these Departments exercise such authority now, then there is no apparent reason why the sentence should form a part of the proposed legislation. There is no apparent reason why the individuals whose applications have been taken over by the Army or Navy should not also be subject to the requirement that such individuals obtain the permission of the Commissioner of Patents before foreign applications on their inventions are sought. If the sentence, however, is retained in the bill, then it certainly is not going to apply to the individuals whose applications have been acquired by other departments, such as the Agriculture Department or the Commerce Department (Bureau of Standards). The sentence as it now reads refers to an application, and the mere assignment of an application which has been filed in the United States Patent Office does not also transfer to the assignee the foreign rights to the invention. If any of the governmental departments desire to have all rights throughout the world, then the assignment to such department must be of the invention. I therefore suggest that to clarify this situation there be inserted after the word "office" and before the word "which" the expression "or any invention." The War Department, by its representative, states that whenever they take over an application, the assignment includes the complete invention, that is, foreign rights as well as the United States rights. The representative of the Navy Department said they do likewise. However, I believe the latter is mistaken. I have personal knowledge of at least one case where the United States application only was assigned to the Navy Department. The inventor could not assign other rights, because he had already disposed of foreign rights to the same invention. In the particular case I have in mind, the Navy Department has placed the United States application under section 4894, and the application has never to date resulted in a patent, but has been kept pending. Why, I do not know, because people outside of the United States were made conversant with the invention even before the application was filed in this country. Section 5, relating to penalties for violation of the Commissioner's order, is in much better language than as at first proposed, and I do not believe the proposed insertion of the word "willfully" before "publishes" is necessary in view of the word "knowledge" preceding that part of the section. I personally am inclined to believe that the insertion of the word "willfully," while shifting the burden on the Government, would materially tend to weaken the proposed penalty provision. Personally, I do not like section 5 at all because, in my opinion, it is entirely too drastic. Here it is proposed to punish the violation of the order of a bureau head by a fine of $10,000 and 2 years' imprisonment. Such a punishment is only meet and proper in connection with the violation of an Executive order but in my opinion too severe for the violation of the order of the head of one of the subordinate bureaus of an executive department. As regards the definition set forth in section 7, it is my opinion that this definition is sufficient and perfectly clear, and I am not in favor of some of the proposals suggesting a change in language as regards this section. GENTLEMEN: In connection with the contemplated further consideration of your committee preparatory to report to the House on the above captioned bill, I want to go on record with certain observations in view of my inability to be present at the hearing on the morning of March 11. I would have no objection to the bill in any respect, if the bill itself actually were drawn to carry out the apparent purpose as set forth in the title to the bill, that is, prevent the issuance of injunctions or enforcement of injunctions on patents when necessary in the interest of national defense. The bill, however, as now drawn and as presented, is much broader than that and would prevent the issuance of injunctions on patents even when not used for national defense merely on the advice of the heads of the War and Navy Departments or the Director General of Office of Production Management, or even the chief officer of an established defense agency. Furthermore, the injunction would apply if the work is necessary or required by the public interest or public safety. At the first presentation of the bill to the committee, the representatives of the War and Navy Departments expressed their preference for the bill and their support because of their feeling that the present act of June 25, 1910, as amended in 1918, would not be applied by the Federal courts in case a suit for an injunction were brought against a subcontractor. That was the only reason given by these representatives in support of their position that this proposed legislation is desirable. I think the fears of these representatives are wholly groundless. The act of June 25, 1910, which permits suit to be brought in the Court of Claims wherever an invention has been appropriated "by or for the United States," certainly is not limited to recovery by the owner of the patent only if the work done by or for the United States has been done by a single contractor. The language of the statute is certainly broad enough to cover any work no matter by whom manufactured, as long as it is by or for the United States. The fears of the representatives of the armed services can certainly be eliminated by a very short phrase inserted into the existing statute, that is, into the act of June 25, 1910. The change would merely require the insertion of words "by any contractor or subcontractor" after the words "United States," second occurrence in the act. Considering the bill, H. R. 3360, it seems to me that if such legislation is to be enacted, then certainly the expression in lines 7-8, page 1, "or the chief officer of any established defense agency of the United States" should be eliminated. In line 9 of page 1, the word "particular" should be inserted before “manufacture." This amendment I believe to be desirable because many patents have uses aside from possible uses in the interest of national defense. As the bill is now drawn, an injunction cannot be secured even against an infringer of a patent who is making or using the patent on nondefense articles if the proper certificate has been issued by the head of one of the defense departments and even though where the acts complained of are not in the interest of national defense. At the hearing Mr. Jackson, of Philadelphia, presented such an example. Another example might be presented: Recently there have been many new synthetic plastics patented and these plastics have a wide variety of uses. Some of their uses are in connection with the national-defense program. Under the bill H. R. 3360 no injunction obtained in any suit for infringement of the patent on such a plastic if either of the armed services or the Director General of the Office of Production Management or the head of any established defense agency, including the Commissioner of Patents, certified that the use of the invention covered by the patent was necessary to the national defense, etc. Thus, the owner of the patent on the plastics could not secure an injunction in a suit against an infringer who was using the plastic to make an ashtray or a cup and saucer or costume jewelry, because the use of the patent itself had been certified as necessary to the national defense. Note, that the infringement suit, as indicated, would be in a field entirely apart from and remote from any use of the patent for defense purposes, yet under the wording of the bill no injunction could be obtained. As Mr. Christie, of Pittsburgh, pointed out at the hearing on the 25th of February, the patent statutes grant a monopoly to the owners of a patent and the very core of the monopoly is the ability to prevent an unauthorized use of the invention covered by the patent claims by way of an injunction. To remove the possibility of an injunction, at once robs the monopoly of its very heart. It also appears that in line 11, after the word "patents" there should be inserted some phrase limiting the manufacture, use, or sale to the parties named in the certificate. This would protect innocent parties and still would keep the act binding on those mentioned in the certificate that has been issued as the result of the certification required. On page 2, in lines 1-2, the words "or required by the public interest or public safety" should be canceled. This phrase is entirely too broad. It would prevent an injunction being issued in the case where an infringer of a particular patent on casting concrete could not be enjoined, even though the violation took place in the laying of cement walks in a bird sanctuary. Such a preserve is certainly required by the public interest and yet is wholly remote from national defense. In line 3, of page 2, after the word "enforced" some language should be inserted limiting the injunction to the use of the patent or the monopoly granted by the patent to national-defense needs. In line 9, on page 2, after the word "act" there should be inserted an expression somewhat as follows: "When presented in evidence." As the language now reads, a court is bound by the certificate that has been issued even though it may never have been presented to the court in any form. Finally, the act appears to be wholly unnecessary because there never has been any instance where any Federal court is granted an injunction where it has been brought to the attention of the court that such an injunction would in any way curtail or injure or delay a governmental function. It seems to me, therefore, that first, the proposed legislation is unnecessary. Second, if desirable, the simplest procedure would be the slight amendment to the act of June 25, 1910, as I have pointed out hereinabove. Third, if the committee feels that the language of the bill, or some similar language be desirable, then certainly some or all of the amendments that I have pointed out should form a part of the legislation. Respectfully, E. F. WENDEROTH. Hon. CHARLES KRAMER, OFFICE OF ADMINISTRATOR OF EXPORT CONTROL, Chairman, Committee on Patents, House of Representatives, Washington, D. C. DEAR MR. KRAMER: This will acknowledge receipt of your letter of April 25, 1941, requesting information as to the activities of this office with respect to applications for foreign patents and amendments to such applications, with particular reference to statutory and other pertinent authority. This is I am very happy to be able to offer you the desired information. presently being organized and will be forwarded to you within the next few days.* Very truly yours, R. L. MAXWELL, Brigadier General, United States Army, Administrator. To the Committee on Patents of the House of Representatives (Hon. Charles Kramer, chairman). GENTLEMEN: The patents committee of the American Institute of Chemical Engineers wishes to register its opposition to the bill H. R. 3360 and to the substitute therefor, for the following reasons: 1. The committee believes that neither of these bills is necessary in the interest of national defense, since none of the committee members knows of a single instance in which an injunction has been granted prohibiting the manufacture of goods necessary to national defense during the present emergency or necessary to the prosecution of the war during the World War. The provisions of the act of June 25, 1910, as amended by the act of July 1, 1918 (40 Stat. L. 705; U. S. C., title 35, sec. 68), satisfactorily dealt with a similar situation during the World War and is believed sufficient to deal with the present emergency. 2. The provisions of section 1 would be unfair to the owner of any patent certified under this section, since the patent owner would be forced to prove the reasonable value of a nonexclusive license under his patent before a jury, being forced to forego collection for any damages and profits resulting from the infringement. The bill provides for no security to the patent owner in case the infringer has no resources at the determination of the suit. 3. Section 2 of the substitute bill provides for the condemnation of patents, applications, etc., and this committee believes that the provisions of this section are wholly unnecessary and unfair. It is not clear in whom the title of the patents, etc., which might be condemned under this section would rest after the period of the emergency. It would require the owner of a condemned patent to bring suit at his own expense in order to collect compensation, and it would be necessary for him to establish the validity of his patent before collection could be made. This would work an injustice to the great bulk of individual inventors who would not have the means to prosecute such a suit against the Government. It would discourage invention at a time when invention of war implements is of the greatest necessity. Under the provisions of this section the Government could license any condemned patents, collecting royalties therefrom, and the patent owner would not be able to collect these royalties. All of the results desired under this section could be accomplished by the granting of a license to the Government by the patent owner. And it is believed that many owners of patents would be sufficiently patriotic to do this if given an opportunity. But this section makes no provisions for such cooperative action on the part of the inventors and patent owners. HENRY C. PARKER, Chairman. R. P. DINSMORE. ERNEST M. SYMMES. FIRST WISCONSIN NATIONAL BANK BUILDING, (From Elwin A. Andrus, patent attorney) Milwaukee, Wis. PROPOSED AMENDMENTS TO H. R. 3360 (SUBMITTED WITH LETTER DATED MARCH 22, 1941, IN COMMITTEE FILES) Page 1, line 11, at the end of line, insert "or whenever any court, in a suit involving the infringement of any United States patent shall find that the invention covered by said patent is". *See p. 377. |