connivance in a decent way-or through some manufacturer, finds that his invention may be of very great importance if it can be put into use, and the Government may want it to be put into use, and therefore the Commissioner of Patents under the previous statute during the World War, and I assume under this statute, has said to the inventor: "You have a secrecy order on this application. However, you may take up and disclose this invention to William Brown who is making shells for the Government, or to William Brown who is making an airplane for the Government, to see whether he can develop that for

us.

Mr. LANHAM. Do they not have that authority now?

Mr. FENNING. There is no authority of that kind in the statute. Mr. LANHAM. Would not the War and Navy Departments take that step?

Mr. FENNING. They might but the inventor in the meantime, if he makes the disclosure, may be subject to the penalty, and it seemed to me, while you are amending this statute, it may be well to consider whether it would not be desirable to say specifically that the secrecy may be released, in the discretion of the Commissioner of Patents, with respect to individual cases.

That is one case, and I think the case came before the Court of Claims thereafter, and the Court of Claims in that case suggested that the man had made the disclosure to his employer, who was using the invention for the Government, and therefore he had not abided by the secrecy order.

Mr. LANHAM. Is there any likelihood that a court would impose upon an inventor, the penalties of the criminal provisions of this statute where the disclosure had been made by the national defense agency like the War or Navy Department?

Mr. FENNING. No; not that, but if disclosure is made by the in

ventor.

Of course, the inventor cannot be penalized if the national defense. agency does something; other than that, if the national defense agency says to the inventor: "I want you to go to help the development of this," and then the inventor makes a disclosure, that might not be a release.

Mr. LANHAM. The inventor would not be likely to do that without clearance from a defense agency, would he?

Mr. BATES. It would be the act of the Department, it would not be his act.

Mr. FENNING. In one case the Court of Claims said that the inventor using that, with the advice and consent of the War Department, and with a release from the Commissioner of Patents, had lifted his secrecy and therefore he could not recover from the Government. Now, if the Court of Claims has done that, possibly a criminal court may do the same thing, and it seems to me that certainly there is no disadvantage in specifically providing that the Commissioner of Patents can issue such a release in specific cases.

Mr. LANHAM. Well, could you at the Tuesday meeting suggest some amendment in that regard?

Mr. FENNING. I will endeavor to do that.

The CHAIRMAN. Mr. Coburn, you do not want to add anything? Mr. COBURN. I will not add anything to what Mr. Jackson has said.

The CHAIRMAN. Is there anyone else that has anything that he wants to say in opposition in any way? If there is, we would like to hear from him.

Now is the time to make your complaints, because this is neither a Democratic or Republican meeting, you can speak your own lauguage here in the interest of the Nation's defense.

If there is no other, I would like to make this suggestion; that anyone who is here, or not here, who would like to file anything with the committee, may have the opportunity to do so at any time.

Mr. LANHAM. I suggest that that be done promptly.

The CHAIRMAN. Well, promptly, within the next few days. We have a further hearing on Tuesday morning at 10 o'clock, at which time we will hope to hear from the Attorney General, I believe. Mr. Shea, will you confer with the very able Mr. Mothershead of your Department on Patents?

You may learn a great many things out of the discussion that you heard here today.

Mr. SHEA. Mr. Chairman, I feel that I am competent to run my own Division.

The CHAIRMAN. But there is one gentleman that I know can give you a great deal of aid.

Mr. SHEA. Thank you, sir, for your suggestion.

The CHAIRMAN. We will recess until Tuesday morning at 10 o'clock. (Whereupon, at 12 o'clock m., the hearing was adjourned until 10 a. m. Tuesday, February 25, 1941.)

PREVENTING PUBLICATION OF INVENTIONS AND
PROHIBITING INJUNCTIONS ON PATENTS

TUESDAY, FEBRUARY 25, 1941

HOUSE OF REPRESENTATIVES,
COMMITTEE ON PATENTS,
Washington, D. C.

Pursuant to adjournment, the committee met at 10 a. m., Hon. Charles Kramer (chairman), presiding.

The CHAIRMAN. We will call the meeting to order, and we will continue with H. R. 3359. It seems that we are to hear from the Department of Justice, and from the Army and Navy. They had not come to any definite conclusions, and I think that I would like to hear from Mr. Shea. He is here from the Department of Justice.

STATEMENT OF FRANCIS M. SHEA, ASSISTANT ATTORNEY GENERAL, IN CHARGE OF THE CLAIMS DIVISION

The CHAIRMAN. Have you any information you can give the committee that we did not have last week, Mr. Shea?

Mr. SHEA. I have had more opportunity to study the bill, and I have some suggestions.

As I think I stated the last time, I thought that the Department of Justice would support this measure, and the only question was whether there were any desirable changes from a drafting point of view.

A number of suggestions were made in the course of the last hearing. One of those suggestions, I think, should be adopted in terms of language which I should like to propose, and the other suggestions which were made it seems to me should not be adopted.

In regard to section 3 of the bill, as you will remember, there was a suggestion by Mr. Fenning, and I believe also Mr. Jackson, that it should be limited to citizens and residents of the United States. I think that probably it would be interpreted in any event to be limited to persons under the jurisdiction of the United States but it is probably wise to make that explicit. However, it seems to me that the language should be drafted so as to cover any person or corporation which is under the jurisdiction of the United States, and any person or corporation which is subject to the control of any person or corporation under the jurisdiction of the United States.

It seems to me also that it should extend to any invention which is made in the United States, or which is brought into the United States, so that the invention itself, becomes subject to the jurisdiction of the United States.

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That is to say, if the invention is made in the United States, whether by a citizen or resident or not, it seems to me reasonable that the United States require that the invention be offered to the United States first, and the United States see whether it has an importance to the national defense, and if it considers it of importance to the national defense, the invention should not issue as a patent and it should not be filed abroad.

Secondly, wherever the invention is developed, if it is developed by a citizen of the United States and within the control of a citizen of the United States, he should offer it first to our Patent Office.

Now, if it is developed jointly between citizens of the United States and some other person and that other person is in a position to file abroad without consent of the citizen of the United States, in such circumstances the citizen should not be penalized; but if he is in a position to assert control, it seems to me very properly he should be subjected to the terms of this order.

Mr. LANHAM. Do you have the specific language?

Mr. SHEA. I have the language for that purpose. I have some mimeographed papers which will be along in 5 minutes but I can read you the language proposed.

It would strike the words "no person," and insert in lieu of the words "no person" the following language:

No person, in respect of any invention made or brought into the territorial jurisdiction of the United States, and no citizen or resident of the United States, or corporation organized within the United States, or directly or indirectly controlled or beneficially owned by any citizen or resident of the United States, or the legal representatives or assigns of any such person, resident, or corporation, in respect of any invention, shall file

and so forth.

Now, in short, no person shall file abroad if the invention is made or brought into the United States, and no citizen or resident or person who is subject to the jurisdiction and owes loyalty to the United States, should file in respect of any invention.

Mr. LANHAM. The purpose of that broadening seems to be very wide. Now, as a matter of practice, could that be done all right? Would there be any complications in the way of carrying out those provisions?

Of course we want our country to get all it can and keep its secrets. Mr. SHEA. At the chairman's suggestion, we argued this down to midnight several nights in succession, and so far as I see there is nothing in my suggestion which is not feasible. It is possible, of course, that we may discover that experience may indicate that the draftsman has not foreseen all possibilities, but so far as I can see it is feasible and it is fair.

Mr. LANHAM. Would there be any objection, Mr. Shea? It seems to me that the purpose of that broadening is very wise, we want to preserve everything that we can. I am just wondering if these persons who are versed in this patent administration would know of any practical reason why that could not be carried out, because it seems to me very wise to broaden it as much as we can.

Mr. SHEA. I assume that you will question them on that. May I suggest that I attempted to get to talk this matter over with Mr. Coe as far as I could, but as you realize the time is short, and I was able to do it only on the telephone, that is about all.

Mr. LANHAM. I think that we might clear that up, and that would settle it.

Mr. SHEA. As you remember, an objection was directed to the case of a British subject who developed an invention in Great Britain, as to depriving him of the right later to file in the United States, if he should, pursuant to the laws of his own country, file first in Great Britain.

This would leave it open to him, subsequently, to file, provided he developed his invention or provided the invention was made abroad, and had not been brought into the United States before the application was made.

Mr. FENNING. May I break in a minute? I understand the Attorney General is to have here multigraphed copies of these amendments and possibly it would be well to let us see those before you ask us any questions about them, if we may.

Mr. LANHAM. It seems to me that the prupose of the broadening is quite salutary in order to get this on as broad a scope as we can, and it seems to me a fine suggestion, if it works out in practice.

The CHAIRMAN. I understand that you have conferred with Commissioner Coe in respect to this?

Mr. SHEA. I said that I had not had as much opportunity as I would have liked, but I discussed the matter with him on the telephone. The CHAIRMAN. I thought you were going into very serious conference with the Commissioner, on any suggestions that you had. Is this just your own idea, then?

Mr. SHEA. If those remarks are going on the record, I want to reply to them.

The CHAIRMAN. I wanted to know whether you had taken this up. Mr. SHEA. First of all, I recall no such suggestion that I was to sit down with Commissioner Coe, and the Army and Navy, and in the second place, the time limit did not permit any extended conferences.

Now, I did feel it desirable, and I did to the extent that time was available, call Commissioner Coe and discuss this matter, these suggestions with him, but now I want the record

Mr. LANHAM. The purpose of my inquiry, Mr. Chairman, was that believing this a very wise broadening of the bill, that if it is perfectly practical and could be carried out, and these other gentlemen so say, we might be over that hurdle.

The CHAIRMAN. That was the reason that I thought that they would get together, that is, the various different agencies of the Government, whether the War or Navy or the Department of Justice or Commissioner of Patents. I feel they should get together and sit around the table, and discuss these problems, so that then they could bring in their draft, if they are in accord, or know whether they are in accord or not.

You see, while I am not in a position to express myself either for or against the suggestions that are made, nevertheless it throws it back again, where these other interests of our Government in the bill are out here this morning, in the same position as we were before.

Mr. LANHAM. I feel that these gentlemen are in the same position as we are. They have got so many things on their hands, they cannot devote

Mr. SHEA. I think that that is a very excellent suggestion, and I would like to sit down with Commissioner Coe and the representatives