As you will no doubt have understood from Mr. Christy's letter, the Pittsburgh Patent Law Association approved, as implementing the act of July 1, 1940, Public, No. 700, provisions in conformity with those of section 5 of H. R. 3359. Sections 3 and 4 of H. R. 3359 would, as the bill is understood, prevent the filing of any foreign application for patent except upon authorization of the Commissioner of Patents. There has been insufficient time to study thoroughly the meaning and possible effect of such a provision, or to submit the matter to our association for definitive action. However, I am instructed to raise before your committee the question of the wisdom of a provision of such breadth. The action taken by our association last night in connection with S. 4410 of the last Congress shows that our membership approves restricting the filing of foreign applications describing inventions whose disclosure might be detrimental to the public interest. Probably no dissent would be raised by anyone to a statutory provision to that effect. The wisdom of absolutely barring the filing of foreign applications for patent except with the consent of the Commissioner of Patents is questioned, however, partly because there would seem to be nothing to be gained by prohibiting the filing of applications for inventions which have no possible bearing upon national defense. And the necessity in every instance for obtaining authorization to do so would apparently place a heavy burden of work and responsibility upon the Commissioner of Patents at a time when he is already burdened with the necessity of determining and handling those application describing inventions whose disclosure would be detrimental to the public interest. Under a provision such as contained in section 3 of H. R. 3359 the Patent Office might well be swamped with applications for license to file in foreign countries. It seems to your committee that the ultimate purpose of the act, to promote national defense, would be obtained equally as well by a provision such as that contained in section 10 of S. 4410 of the last Congress. Under that section the filing of foreign applications for patent would be prohibited within 6 months after the filing of an application for the same invention in this country. This would provide an ample period within which the Commissioner could determine whether the invention was important to national defense, to call it to the attention of the appropriate board, and, if need be, to issue a secrecy certificate under which the filing of foreign applications could be prohibited. In behalf of the Pittsburgh Patent Law Association, therefore, it is respectfully suggested that the House Committee on Patents give consideration to the desirability of amending section 3 of H. R. 3359 so that, either as suggested above or otherwise, it will apply only to those inventions whose disclosures would detrimentally affect national defense or the public interest. Very respectfully, FULTON B. FLICK, Chairman, Committee on Legislation, Pittsburgh Patent Law Association. HARRIS, KIECH, FOSTER & HARRIS, In re: H. R. 3360. Hon. CHARLES KRAMER, Chairman, Committee on Patents, House Office Building, Washington, D. C. DEAR SIR: I wish to thank you for your letter of February 28, 1941, enclosing a copy of the above bill. It seems to me that the bill is unnecessary. 35 U. S. C. 68 provides that a patent owner cannot sue anyone except the United States for infringement of his patent due to use or manufacture by the United States. He cannot sue any manufacturer or user who makes or uses the invention for the benefit of the Government. His sole remedy is a suit against the United States in the Court of Claims, and it must be a suit solely for reasonable and entire compensation for the infringement. As I read the statute, the Court of Claims cannot issue an injunction, and I find no case in which such an injunction has issued. If I am incorrect in my understanding of the statute, I would favor a specific provision in 35 U. S. C. 68 prohibiting the issuance of an injunction by the Court of Claims in such cases. It seems to me that 35 U. S. C. 68 answers our needs. I think the bill, H. R. 3360, might work great hardship on poor inventors. Under the bill any patent may be thrown open to general public use and the patentee would then be forced to pursue a multiplicity of infringers for damages. Many of these infringers might be financially irresponsible, and by the loss of the right to injunction the patent owner would lose the only effective remedy he now has. Probably the framers of this bill had in mind patents such, for example, as oil-cracking patents owned by the big "Whoosis" Oil Co. The bill would not be so bad as far as Whoosis is concerned. It is big enough to force the payment of royalties or collect damages. My client, Bill Jones, who has a cracking patent, would, however, be in no such a position if Whoosis desired to use his patent. Bill Jones would just have to forget he ever had a patent, because by the time he obtained his damages, he would be too old to enjoy them, and during the entire period he is litigating, Whoosis is making its profits. I can really think of no scheme that would give the big operators a better position than they will get by the enactment of this bill. Yours very truly, FORD W. HARRIS. HAWGOOD AND VAN HORN, Cleveland, February 22, 1941. Re H. R. 3359 and 3360. Mr. CHARLES KRAMER, Chairman, Committee on Patents, House of Representatives, Washington, D. C. DEAR MR. KRAMER When the notice of the hearing on the two-above bills reached me late in the afternoon of the day before the hearing, I had very little time to dash off my previous protest against both bills, so must apologize for its somewhat unfinished form. Being advised that further hearings are to take place next week, please permit me to amplify my remarks herein. H. R. 3359 To prohibit inventors from filing foreign applications is particularly objectionable from the standpoint of giving effective aid to Great Britain and her Allies. It is unnecessary, in that even at the present time, under Presidential proclamations in accordance with the act of July 2, 1940, there is already considerable confusion as to what patent papers may be sent abroad without special permits. I myself have had occasion to apply in at least one recent instance. Apparently such papers, when relating to fuels and tetraethyl of lead, now require permits under the Presidential proclamation of December 20, 1940. This restriction could, of course, be extended to patents in any other field by similar proclamations and would cover the situation at which the bill seems to be aimed. However, when we consider the history of inventions of the kind most important to national defense, it is at once obvious that such a law would, in the past, have reacted very much to our detriment, not to our benefit. It is presumable that its operation in the future wou'd no be radically different. Consider, for example, the case of Samuel Colt and the invention of the revolver slightly over 100 years ago. The revolver was not immediately grasped by the United States War Department, but it found its first use elsewhere in the then foreign Republic of Texas. Later modifications played an important part in the Civil War, after its use had been demonstrated outside of the then United States. Also consider Sir Hiram Maxim and the Maxim gur, which played so important a part in the ground operations of the first World War and which was not seriously taken up until Maxim had gone to England. Another example is the instance of Colonel Lewis and the Lewis gun, which was not taken up by our military authorities even during the days in 1916 when our troops on the Mexican border were armed with the so-called daylight gun (was it Benet Mecier?) in which the clips would jam if inserted in the dark. Lewis got no recognition until he took his gun to England, where its fine performance, particularly in airplane work, was first appreciated, and, thereafter, many Lewis guns were used by the American Expeditionary Force. These few instances are only some of many which show that even military inventions of Americans which have gone outside of the country helped the American public interest, and I know of no similar instance of an American inventor taking his invention to a country inimicable to our interest. I think that the bill would not only harm our inventors but would retard both the aid to Great Britain and our own attempts at preparedness. Moreover, should there develop any particular field where any limitation on the export of techni cal information really becomes necessary, it can well be taken care of under the act of July 2, 1940. H. R. 3360 This bill seems to be unnecessary in that injunctions are extremely difficult to obtain, even in the most favorable circumstances with respect to patent infringement, and certainly no Federal court (and all patent jurisdiction is in the Federal courts) is going to enjoin anything which is really essential to the national defense. Moreover, the right of eminent domain should be ample to take care of anything that the Government needs for this purpose. I hope your committee can see fit to dispose of this bill also. These two bills seem to be a part of the rather insidious attempt, which involved the compulsory licensing bill which your committee so effectively disposed of about 2 years ago, the so-called 20-year bill, and several others which would deprive an inventor of the already extremely scanty protection afforded him, by chipping away a little here and a little there. It is difficult for one who, like myself, represents mainly a number of individual inventors and small and new organizations which are trying to bring on the market new and improved products, to see what incentive there will be for future invention and development if the protection of our patents is lessened in any sensible degree. It is already so difficult and so expensive to enforce their rights and the mortality rate among the patents is so high that it is extremely difficul to combat a firmly entrenched infringer. On the other hand, the one thing that these people need to let them gain any foothold, frequently, is a little better break on maintaining their own patents. Generally they are only interested in promoting the things that they have them-selves developed, and it might be pointed out that most of the really broad and far-reaching improvements still come from this class of people, while the large corporations' laboratories turn out more mere refinements of more basic ideas that were made before the organization had become so large. Very truly yours, (Unsigned) HARVEY R. HAWGOOD. HAWGOOD AND VAN HORN, Cleveland, February 19, 1941. Re H. R. 3359 and 3360 Washington, D. C. DEAR MR. KRAMER: Your letter of yesterday enclosing copies of the two abovementioned bills has been received and I hasten to answer briefly because I note that the bills were only introduced day before yesterday and the hearing is tomorrow. This certainly seems like an awful lot of haste and of the kind which reduces speed of actual progress. My impression of the bills is as follows: H. R. 3359 This bill seems to be entirely unwarranted and merely amounts to blanket prohibition against any American inventor obtaining protection abroad. It is in no way tied to national defense or to inventions which might have any bearing thereon, but it just broadly prohibits Americans from filing abroad except when licensed by the Commissioner of Patents. It is impossible to tell from the bill for what reasons licenses might be granted or refused, but it would seem that this is given to the absolute discretion of the Commissioner without review by the courts or other redress. Lord knows the poor inventor has enough trouble with foreign countries when he attempts to do business abroad without depriving him of the slight benefit that he could get from foreign patents and as I see it, the only result that could come from this bill is either that a policy of granting licenses whenever asked be adopted, in which event the procedure means nothing, or that the American inventor would be seriously and additionally penalized by the type of piratical competition that is already sufficiently difficult to meet. I hope your committee will see fit to dispose of this bill. H. R. 3360 This bill has at least the merit of being tied to national defense and of being effective only on advice of the Secretary of War or the Navy or Director General of the Office of Production Management or the like. It does not really seem necessary, as it seems to be directed to matters which would probably be taken care of under eminent domain in any event, and seems to duplicate partially existing legislation. Moreover, it is difficult to visualize a situation in which the courts would enjoin anything which was really needed for the national defense. I feel that this act is unnecessary, although not as dangerous as the one above discussed, and that it likewise should be stopped by your committee. I appreciate your notifying me of these bills and the hearings, and only wish that I could drop my practice when things of this kind come up and dash down there to the hearings. However, this cannot often be done, and particularly on short notice. There seems to be a rather prevalent frame of mind in some quarters that the inventor is some kind of public malefactor who is apt to turn his talents to the aid of the enemies of our country. I never could understand where this came from. On the other hand, there seems to be a clear recognition of the fact that our inventors have developed many things to the benefit of the country, including those useful in national defense, and there are even some governmental agencies actively seeking support along these lines. If your committee could appreciate, as those who deal with the inventors do, that they, like Kipling's Tommy Atkins, "ain't no thin red 'eroes, ain't no blackguards, too," I think you would find it possible to deposit a lot of the proposed legislation such as H. R. 3359 in the round, open-topped file in your office. Sincerely, HARVEY R. HAWGOOD. CHARLES W. HILLS, Chicago, Ill., March 5, 1941. In re H. R. 3360. Hon. CHARLES KRAMER, Chairman, Committee on Patents, House of Representatives, Washington, D. C. MY DEAR CONGressman KramER: This will acknowledge and thank you for your letter of February 28, 1941, concerning further hearings to be held by your committee on H. H. 3360. I have given considerable study to this bill in connection with work on the committee on patent-law revision of the American Bar Association and also in connection with committee work on the patent commmittee of Illinois Manufacturers' Association and of the Chicago Patent Law Association. While I appreciate that the purpose of this bill is proper and further appreciate that there are many instances where the issuance and enforcement of an injuction based upon patent infringement might seriously hamper national-defense industry, I feel that the bill as drawn is (I have no doubt unintentionally) of such scope that its enactment and enforcement might cause serious hardships. This is due to the fact that many patents are susceptible of being employed in the production or both defense and nondefense items. That fact would mean that once a patent of such character were certified to be necessary to the national defense, etc., those desiring to copy the patented article for nondefense purposes might proceed with relative impunity and indeed such infringers could so arrange their infringing activities that it would be impossible to collect reasonable conpensation as provided in the bill. For example, let us say that a patentee has a patent on a plastic. That plastic is useful for the making of defense items and is equally useful for making nondefense items such, for example, as cups and saucers and costume jewelry. It certainly should be possible for the patentee to enjoin nondefense uses of its patent even though that patent had been certified as necessary or useful to the national defense. With the foregoing thoughts in mind, I have together with members of various committees with whom I have worked, considered certain amendments to the bill which, while not extensive in character, would, in my opinion, take care of situations such as the one above noted. For purposes of clarity, it is my opinion that page 1, lines 7 and 8 of the bill, should be amended to read as follows: "Office of Production Management, or such chief officer of any established defense agency of the United States as shall be designated for that purpose." Similarly, it is my opinion that, page 2 of the bill should be amended in lines 1 and 2 by canceling the words "or required by the public interest or public safety." I have to suggest that line 2 be further amended by erasing the words "based upon" and substituting the following: "restraining infringing manufacture, use or sale of." I wish to further suggest that page 2, line 3 of the bill, be amended by inserting the following after the word "patents": "for the purpose of national defense." In my opinion, the foregoing amendments in no way defeat the ultimate purpose of this bill and at the same time such amendments would appear to cure the possibility of serious hardships being worked by enactment of the bill as originally submitted. Your courtesy in writing me in reference to this subject is very much appreciated. Indeed, I wish to compliment your committee on the manner in which matters of proposed patent legislation are conducted and handled. With kindest regards, I remain CARLTON HILL. ILLINOIS MANUFACTURERS' ASSOCIATION, H. R. 3359, 3360. Hon. CHARLES KRAMER, Chairman, Committee on Patents, House of Representatives, Washington, D. C. DEAR CONGRESSMAN KRAMER: We have your letter of February 24, relating to the above subject. We submit herewith memoranda relating to both of the above bills, which reflect the views and recommendations of the patent committee of the Illinois Manufacturers' Association. We hope that these memoranda may be received in time to have the consideration of yourself and your associates before final action is taken by your committee. In event, however, that your committee has acted before the enclosures are received, I will be grateful if you will, as suggested in your letter of February 24, have these memoranda incorporated in the record of your committee hearing. The changes our committee has suggested will not, in our opinion, interfere with the proper objectives of these bills, and will provide real and desirable safeguards for private enterprise. Assuring you of our appreciation of your cooperation in connection with this important subject, I am, Cordially yours, JAMES L. DONNELLY, Executive Vice President. MEMORANDUM IN RE H. R. 3359 Although it is the belief of the patent committee of Illinois Manufacturers' Association that Public Law No. 700, Seventy-sixth Congress, third section, C. H. 501, as orginally enacted probably sufficiently protects the public interest, and although your committee recognizes that the enactment of H. R. 3359 will add materially to the complexity of securing adequate protection for inventions in foreign countries, on nondefense items, it is felt that this legislation is not particularly objectionable. The members of your committee, however, are aware that in order to secure proper protection for inventions in countries foreign to the United States of America, it is many times necessary that the foreign application be filed within 1 year from the date of filing in the United States of America. Because of that fact, the bill as drawn makes it possible for delay on the part of the Commissioner of Patents which would seriously jeopardize if not cause forfeiture of valuable foreign rights of American patentees. Because of such fact, it is the opinion of your committee that this legislation if enacted should include the following amendment: After the period in line 11, page 1, insert "if no order or license is issued by the Commissioner of Patents within 60 days after the request for such license by the applicant, then the applicant may proceed as if the license had been issued." |