intention. But it involved the surrender of the original patent and the destruction of all rights arising therefrom.

The disclaimer statute of 1837 afforded a way in which this formidable and time-consuming reissue procedure, with its accompanying surrender of right, could be avoided by the simple abandonment of an excessive claim, provided the part excessively claimed was so claimed through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, and constituted a separable and definitely distinguishable part of what was originally claimed. (Secs. 973, 4917, and 4922 R. S.)

By the amendment of May 24, 1928, the reissue statute (sec. 4916 R. S.) was amended to provide that the surrender shall not affect any pending action nor abate any existing cause of action, and that the reissue patent, to the extent that its claims are identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.

When H. R. 7245 is read in the light of the foregoing review it will be seen that the purpose and effect of that bill is to do away with the provisions of our law, which has been in it from the beginning, that a patentee may not knowingly persist in the assertion of excessive claim. We feel that for a patentee knowingly to permit an excessive claim to remain in his patent is fudamentally contrary to the contractual theory of our patent law, and that in this respect the requirement of our law ought to be preserved. We assume that the whole patent bar is concerned, as we are concerned, to preserve in its full integrity the limited monopoly authorized by the Constitution in favor of inventors for what they have actually invented or discovered. On the other hand, the continued assertion of a claim to which a patentee knows he is not entitled is an unlawful assertion of monopoly; is abhorrent to natural justice, and is directly contrary to the purpose expressed in the Constitution. We think it would be a profound mistake to so change the law as to remove from it the penalty that it now applies to a patentee who knowingly persists in the assertion of excessive claim.

The proposed substitute for section 973 Revised Statutes, in H. R. 7245, not only has this defect, but it also has the further defect that it unduly limits the effect of adjudication of patent claims. As the law now stands, a patentee whose claim is held invalid by a district court has his appeal to the Circuit Court of Appeals. If it were not for the division of our Federal jurisdiction into 10 separate circuits, the decision of a court of appeals would be final unless the Supreme Court saw fit to issue certiorari. Because of the division of our Federal jurisdiction into several circuits, it is possible for a patentee whose patent has been held invalid in one circuit to try the issue again in another circuit, provided he can find an infringer in another circuit. If the second circuit court of appeals is of a different opinion from the first circuit court of appeals, as sometimes happens, the conflict of authority leads to the issuance of certiorari by the Supreme Court. In practice the second circuit court of appeals applies the rule of comity which persuades but does not command. It will follow the decision of the first court of appeals unless that decision is manifestly wrong. The effect of the last clause of the proposed substitute for section 973 Revised Statutes would seem to be to prevent the second circuit court of appeals from applying the rule of comity. We think that is a great mistake.

We may add that the proposals embodied in H. R. 7245 undoubtedly arose out of, or at any rate were activated by, the recent decision of the Supreme Court in Louis H. Ensten et al. v. Simon Ascher Inc. (282 U. S. 445.) It is our opinion that this decision, which applies the statutory rule that the patentee must disclaim the invalid part of his patent without unresonable neglect or delay, does not go beyond holding that, after the validity of a claim has been put in question by an adverse decision, it is "uneasonable neglect or delay" if the patentee fails to take advantage of the means immediately available to him for finally testing the validity of the claim. We point out that in that case the situation was such that the persistence in the claim was a deliberate and knowing persistence in total disregard of the rights of the public. We do not think the decision went beyond that, and we think that the integrity of the patent system requires that the statute and the courts should not stop short of that. We do not think the rule of that case would be applied in any case where it could not be affirmatively established that the inventor actually and definitely knew that his claim was excessive. If there were any reasonable doubt about that fact of knowledge,

or if it rested in matters of opinion, then we feel quite sure that the rule would not be applied to invalidate the patent.

We come now to our proposed amendment to section 4917. It will be observed that the whole amendment is embodied in the insertion of the words "provided, however, that such disclaimer must be a complete disclaimer of the subjectmatter of a particular claim or particular claims of his patent identified by number."

The purpose of this proposed amendment is to do away with what we regard as a manifest abuse of the disclaimer statutes that has grown to large proportions in recent years. Under section 4917 as it stands, the practice has grown up of entering disclaimers that seek to modify the scope of patent claims but which do not cancel those claims. The propriety of the disclaimer is not passed upon by the Patent Office, and the result is that this practice has permitted patentees to alter the scope of their claims at any time after the patent has been issued, without subjecting the new claims (the real effect of this disclaimer is to put into the patent new claims) to examination by the Patent Office. The inpropriety and injustice of this has been widely commented upon by members of the patent bar. It finds a very full, and in our opinion, a very just and comprehensive statement in the opinion written by Judge Tuttle in the district court for the southern division of the eastern district of Michigan under date of August 21, 1931, in Fruehauf Trailer Co. v. Highway Trailer Co. (54 Fed. (2d) 691 at pp. 692–7.) We have no doubt that this abuse of the disclaimer statute leads to such injustices that it may well bring the whole patent law into discredit unless something is done to curb it. We believe that our proposed amendment to section 4917 will terminate the abuse if it is enacted by Congress.

If this amendment to the disclaimer statute had been proposed prior to the above-recited amendment to the reissue statute of May 24, 1928, it would have been open to the objection that in a case where the patent could be amended to conform with the inventor's real invention only by a narrowing of claims. as distinguished from the elimination of claims, the patentee would be forced to a reissue which would involve the surrender of all accrued rights under valid claims in his patent. That objection has, however, been removed by the act of May 24, 1928.

Respectfully submitted.

WILLIAM H. DAVIS.
JOHN F. NEARY.

The CHAIRMAN. We are now going to call on Mr. Neave, a very eminent patent attorney. Please give your full name to the stenographer.

STATEMENT BY CHARLES NEAVE, PRESIDENT NEW YORK PATENT LAW ASSOCIATION, NEW YORK, N. Y.

Mr. NEAVE. That is very courteous of you, Mr. Chairman, we will be very pleased to cooperate with you and the members of the committee.

I want to speak every approval-all the qualifications go in approval testimony-I am in favor of H. R. bill 10154, permitting single signature in patent applications and validating joint patent for sole invention, of Congressman Rich. I am in favor of Congressman Goodwin's bill H. R. 10155, to abolish the statute permitting renewal of patent applications. I am in favor of Congressman Kelly's bill H. R. 10156, to limit inventors to priority of two years before filing applications for patent. There is a good deal of opposition on a number of bills; of them I am expressing my personal favor: Congressman Dies's bill, H. R. 10157, to expedite prosecution of patent applications pending more than three years. The Vestal bill, H. R. 7245.

I am entirely in favor of the substitute that Mr. Davis has proposed for section 973, Revised Statutes, as a rule, disclaim, disclaiming, and claim. I will not try to change it; if you want to change it it should be made by rules.

Mr. Davis, as I understand, made a suggestion to you in an objection at length. The objection, as I see it, allows an assignee to file an application on oath of the inventor and prior application is filed, the proposal disclosed.

The CHAIRMAN. The bill as introduced is exactly as the American Bar Association handed it to the committee. This is their bill; if you want to amend it, we can do that.

Mr. NEAVE. My objection is there is a great deal disclaimed when the inventor has to prove the background; if he is smart, he can prove what he has in it, but when he makes a claim he has to give the proof.

The CHAIRMAN. He ought to be put on oath if he is not.

Mr. NEAVE. That is perfectly true; the assignee ought not make that oath; the claimer must make it, and he must make oath to the claim. He always makes oath to the supposition; it is necessarily something more. I do not think where an inventor has not sworn to a particular claim as being his invention, the assignee ought to swear to it. It puts the assignee in a much better position than the position he was in formerly.

In the Sirovich bill, H. R. 10153, said bill to limit the life of a patent to a term commencing with the date of the application, if an applicant is to delay he must pay damage. The only question that has arisen in mind is as to whether this bill as drawn is operative, whether the delays are charged to the inventor or to other people. The CHAIRMAN. If it is charged to other people's delays, the court has discretionary power for two years; if we think we can help him, we might give him another year; that gives him three years.

It is eminently fair to give a man 20 to 23 years from the time of the application.

Mr. NEAVE. The Patent Office can not at once respond to an application when filed. They are overworked and so forth. Those delays, the commissioner has said, run into seven months.

The CHAIRMAN. They are coming down, and if we give the commissioner the additional service, he might bring it down to 60 or 90 days.

Mr. DIES. Would not three years encumber the Patent Office with delays?

Mr. NEAVE. I do not think it is intended, except to involve foreign relations or appeals; that is, from statements made here, delay should not be charged to the applicant. The general average would not be taken care of.

The CHAIRMAN. What would be; a year and a half, you state? Mr. NEAVE. No more than your bill would give them the 3-year period, but most applications are run through in quicker time than that.

Maybe I misunderstood the bill. When I saw the bill, it provided a man might have 3 years beyond the 17.

The CHAIRMAN. That is right?

Mr. NEAVE. That is true.

The CHAIRMAN. And that would take care of the Patent Office. Mr. NEAVE. And we could do a great deal more, not through his interference, but the court has a right to have two additional years added.

The CHAIRMAN. I do not know any man I love more than Karl Fenning. In order that no mistake may be made I had Mr. Fenning draft that bill. Is that right, Mr. Fenning?

Mr. FENNING. That is right.

Mr. DIES. If an applicant will not do anything to forward his application to patent issue in 20 years we ought do something to make him do it.

The CHAIRMAN. You are doing something.

Mr. NEAVE. You are doing something in your bill to abolish the renewals.

Mr. FENNING. This bill introduced as H. R. 10153 is in the words which were formulated by the committee of the American Bar Association, and as I understand it was submitted to the American Bar Association at Atlantic City.

The CHAIRMAN. Identically?

Mr. FENNING. Yes, sir; but with the addition of reference to extension by a court as suggested by you.

The CHAIRMAN. You are right.

Mr. NEAVE. It was not approved by any bar association?

The CHAIRMAN. And for your benefit, Mr. Neave, I had cooperating Mr. Spencer with me at the time in the preparation of this bill, so you see the committee availed itself of the ablest assistance,

Mr. NEAVE. That is all. We just do not want to charge to the inventor the delays of some one else. I think you ought to have a little different aspect in mind. I haven't any hesitancy in saying to do better possibly.

The CHAIRMAN. I would like to ask you a personal question: You represent the largest corporate interests in America: American Telephone & Telegraph Co., General Electric Co., Standard Oil Co., and United States Steel Corporation, almost every corporate interest. Would they be opposed to this bill?

Mr. NEAVE. NO; I have heard no opposition on their part.

The CHAIRMAN. That is what I want to bring out. Fritz Subelman-if you will read through the history of his application you will feel sorry for him as to what he had to do with his application. He prosecuted that application himself until he became ill, and that was the reason for his 36 years' application remaining in the Patent Office, because he was a very poor sick man. This bill, if it were to affect anyone, it is the poor man adversely.

Mr. NEAVE. I do not think we are protecting the poor man when we have about 20 years' applications in the Patent Office, of which I think we ought to have enough.

Mr. SWANK. These inventors are very queer people.

Mr. DIES. Nearly every one is queer.

Mr. GOODWIN. I do think you ought be very careful, the rich man can to-morrow become the poor man and vice versa; that is the only warning.

Mr. NEAVE. I do not know whether Congressman Goodwin's bill is here or not, H. R. 10155, to abolish the statute permitting renewal. of patent applications.

The CHAIRMAN. Do you want to be recorded as opposed to thisbill before the House?

Mr. NEAVE. Yes, sir; I do not understand it.

The CHAIRMAN. Thank you very much, Mr. Neave, for coming here to Washington.

The CHAIRMAN. I will now call Emory A. Bryant.

STATEMENT OF DR. EMORY A. BRYANT, WASHINGTON, D. C.

The CHAIRMAN. Who do you represent?
Doctor BRYANT. No one but myself.

The CHAIRMAN. I would ask you to be brief so we can expedite the proceedings because we have six or seven others to hear.

Doctor BRYANT. Yes, sir; I won't have but a few words to say. All I have to say is, I have looked over the bills, and in my modest. way I do not see anything wrong with them. I say I have looked over these bills and compared them carefully with the law and to the best of my ability I do not see anything wrong. I think that the restrictions on patents is a very fine thing. Now, all I have to say is, it is a matter of cause and effect. I am interested in discovery; discovery has had somewhat of hard sledding in patent litigation, so I went back to find out what was the matter. At one time I had formed the false premise and made quite a battle before Congress and before the departments due to misinformation, and in part, think I went farther than I was justified in going as the official representative of my association.

Now, in regard to process patent, the process involves the interpretation of principle and its application: If one is to go back and try to find out what is the principle involved in some inventions, as interpreted by the courts, it would be a pretty hard proposition. but I went back first to the early days of English decisions and I followed those down, and then the court decisions in the United States and followed those down 1790 to 1847 and I have here a process patent that was granted in 1791. That is just after the act of 1790 was passed. We have made very little change in the law as to patentable inventions, if any, from that time to the present.

Now this was the process patent for the making of dies, etc., it is a method, it was certified to on the 29th of January, 1791, as follows: CITY OF PHILADELPHIA, January 29, 1794.

I do hereby certify that the foregoing letters patent were delivered to me in pursuance of the act entitled "An act to promote the progress of useful arts," that I have examined the same, and find them conformable to the said act. EDWARD RANDOLPH,

Attorney General of the United States.

In those times the officials of the Patent Office, among which were the names of George Washington, with whom we are well acquainted, and Thomas Jefferson, both former Presidents of the United States appear.

Mr. DIES. And the Secretary of War?

Doctor BRYANT. Yes; in those days, the Secretary of War, the Attorney General and the President would sign all patents.