that a 2-year delay on account of interferences and appeals is adequate. You will note that it has not been adequate in the interference with which I have illustrated my point. The experiences of numerous patnt attorneys with whom I am acquainted, as well as my own experience, has indicated that it is not unusual for a contested interference between two parties to require four or five years before the interference is finally terminated. Moreover, in interferences involving more than two parties the time is frequently prolonged beyond four or five years. BRUCE K. Brown.

Yours very truly,

BENNETT & STORY INTERFERENCE No. 59970

DOCKET

May 29, 1930: Interference declared.

July 16, 1930: Stip. filed-extension of time-P. S.

August 19, 1930: Request by Egloff requesting five days' extention from August 25, 1930-P. S.

August 21, 1930: Request granted-date reset-preliminary statements filed. October 28, 1930: Preliminary statements of B. & S.; Hyman & Ayers; and Rather et al., approved.

November 24, 1930: Stip. filed requesting extension.

November 28, 1930: Stip. approved-times reset.

December 24, 1930: Motions to add counts filed by Rather et al.
December 27, 1930: Motions to dissolve filed by B. & S.

December 29, 1930: Motions to dissolve and amendment filed by Hyman & Ayers.

January 2, 1931: Motions to be considered Friday, February 6, 1931, 1 p. m. January 29, 1931: Stip. filed by Hyman, et al.-postponed date of hearing. January 31, 1931: Stip. approved and date of hearing postponed to March 16, 1931.

March 7, 1931: Election of counts filed by Hyman & Ayers.
March 8, 1931: Election of counts filed by Bennett & Story.
March 9, 1931: Election of counts filed by Rather et al.

March 11, 1931: Beyer and Egloff adjudged not to be the first inventors. March 16, 1931: Briefs filed: Rather et al,. in support of their motion to amend. Rather et al., re motions to dissolve filed by B. & S. and Hyman & Ayers. Brief for Hyman & Ayers. Memo for B. & S., on their motion to add counts. Memo. in behalf of B. & S. relative to Hyman & Ayers motion to add counts. Memo. on behalf of B. & S. on their motion to dissolve and also in opposition to Rather et al's motion to amend.

May 18, 1931: Decision of Ex. as to Hyman & Ayers, Rather et al., and B. & S. Limit of appeal set for June 18, 1931.

June 15, 1931: Stip. filed extending time of appeal. Motion by Rather et al. extending time of appeal and notice relative thereto.

June 16, 1931: Asso. P/A Dallas R. Lamont to Henry Arsdale, Rather et al. Affidavit of D. R. Lamont.

June 16, 1931: Memo. for B. & S. opposing motion of Rather et al. for extension of time for appeal.

June 17, 1931: Asso. P/A-Dallas R. Lamont accepted.

June 18, 1931: Ex's decision-Stip. filed June 15, 1931-accepted and approved-appeal set July 3, 1931.

July 2, 1931: Appeal filed by Ayers-disclaimer and affidavit by Hyman; Ayers inven. of subject matter of application. Amend. filed by Ayers.

July 2, 1931: Appeal filed by B. & S. Amendment under rule 109 adding claims of Hyman et al to B. & S. application.

July 2, 1931: Appeal filed by Rather et al. Hearing on appeal set for November 11, 1931. Hearing postponed to January 28, 1932.

January 27, 1932: Briefs filed: Brief on behalf of Rather et al. Brief for Ayers, jr. Memo. relating to points of appeal of the party Rather et al. Brief for Ayers, jr. (Memo. relating to points of appeal of B. & S.) Brief for Ayers, jr. Rather, Reiff & Beard appeal. Brief on behalf of B. & S. Ayers appeal. Brief on behalf of B. & S. Bennett & Story appeal. Memo. for B. & S.

February 10, 1932: Affidavit by Ayers-swearing back of Bjerregaard patent. February 1932: Protest by B. & S. against entry of aff. of Ayers (not

filed).

--

February 29, 1932: Decision of the board of appeals.

Dr. WILLIAM I. SIROVICH,

Chairman Committee on Patents,

House of Representatives, Washington, D. C.

DEAR DOCTOR SIROVICH: Judge Tuttle, in his opinion in Fruehauf Trailer Co. v. Highway Trailer Co. (54 Fed. (2d) 691), in which he so lucidly described the prevailing abuse of the disclaimer statute, said of disclaimers (p. 692):

66

They are becoming more and more common. They are getting to be not the unusual, but the usual, thing to find in patent suits, and, as their use becomes more common, their form is becoming extreme and complicated."

Some question was raised as to whether statistics would confirm this expression of opinion and, if so, to what extent. For that reason I had some of the young men in my office undertake an examination of the disclaimers issued by the Patent Office, and the number litigated, in the last 10 years, and I inclose herewith their report with the tabulated figures.

You will observe that they show over the last 10 years a marked increase in the number of disclaimers filed in relation to the number of unexpired patents. In 1931 there were 128 disclaimers filed as against 33 in 1922. This is an increase of 288 per cent. However, the number of unexpired patents on July 1, 1931, was only 13.2 per cent greater than on July 1, 1922. This increase seems to be particularly noticeable since 1926.

I am sending a copy of this letter to Mr. Fenning.
Very truly yours,

WILLIAM H. DAVIS.

MEMORANDUM PREPARED BY MR. R. F. DAVIS, MARCH 29, 1932

I have studied the disclaimers filed during the past 10 years (January 1, 1922, to January 1, 1932), and have attempted to classify these disclaimers according to types, with the hope that the number of disclaimers falling within the various classifications would give us some statistical indication of the trend of this phase of the practice.

A total of 554 disclaimers were filed during the 10 years, and a study of these gives some pertinent statistics upon which several inferences may be based; but the statistics are not very regular and, therefore, the inferences can not be said to be highly conclusive.

The first inference is that the number of disclaimers being filed is increasing more rapidly than is the number of outstanding patents. In 1931 there were 128 disclaimers filed, as against 33 in 1922. This is an increase of 288 per cent. However, the number of unexpired patents on July 1, 1931, was only 13.2 per cent greater than on July 1, 1922.

The percentage of the disclaimers which disclaim whole claims has remained nearly constant, being 60 per cent in 1922, 74 per cent in 1926, 54 per cent in 1929, and 67 per cent in 1931. There may be a small increase in the percentage, but the figures are not conclusive as to this.

The percentage of the disclaimers which limit claims in some way also shows no definite change, being approximately 40 per cent for both 1922 and 1931, and varying on both sides of this figure during the intervening years.

The percentage of disclaimers which completely rewrite the claims is negligible, there being only 6 in the 10 years. It is noteworthy, however, that 5 of these were filed in the last 2 years and that 1 has already been filed this year. This might indicate a minor tendency toward such disclaimers.

Disclaimers relating to the specification, canceling limitations from claims, and changing the subject matter of claims are rarities and need not be discussed.

An analysis of the disclaimers which limit claims has been attempted, but is exceedingly difficult because there is no natural classification and any attempt to classify must be along rather artificial lines. Certain of the disclaimers add a limitation to the claim-of course, all of this type of disclaimers do so in one way or another, but some of the disclaimers do so indirectly, and the first group of the classification has been reserved for those which directly add a limitation. A second group has been reserved for those disclaimers which limit a certain term or element or step in the claim rather than the whole claim, and a third group to those which define what is meant 117104-32- -9

by some expression in the claim. A fourth group contains disclaimers which disclaim particular structures or processes from the scope of the claim, and the fifth group includes those disclaimers which limit the application of the claims to a certain field or art.

Changes are taking place among these groups, the first group (those which add limitations) seems to be growing and probably the second and fifth groups are also growing, but the inference is not at all plain.

I append a chart showing the distribution of the disclaimers through the various classes, and I have a list of the disclaimers themselves, should further data prove desirable.

EXPLANATION OF DISCLAIMER ANALYSIS

For the purpose of analysis, the disclaimers have been divided into several groups, and perhaps a little further description may be in order as to what is included within each of the groups on the foregoing chart.

Group 1 consists of disclaimers which disclaim whole claims.

Group 2 consists of disclaimers which limit the claims in some way, but do not disclaim the claims as a whole.

Group 2(a) consists of those disclaimers which directly add a limitation to the claim.

Group 2(b) consists of those disclaimers which add a limitation to some particular element of the claim.

Group 2(c) consists of those disclaimers which define the meaning of some term or terms in the claim.

Group 2(d) consists of those disclaimers which exclude from the scope of the claim certain constructions or processes.

Group 2(e) consists of those disclaimers which limit the application of the claim to a particular art or field.

Group 3 consists of those disclaimers which entirely rewrite the claim as by disclaiming all of the old claim except what is defined in a new claim written into the disclaimer.

Group 4 consists of those disclaimers which disclaim only a part of the specification.

Group 5 consists of those disclaimers which disclaim a part of the specification, incidentally to a disclaimer relating to the claim.

Group 6 includes a single disclaimer in which the court held that the disclaimer changed the subject matter of the claim and was, therefore, invalid. Group 7 includes a single disclaimer which appears to cancel a limitation and thus broaden the claim.

When a disclaimer has had parts which fell into different groups, it has been counted in both groups so that the total number of disclaimers will be somewhat less than the sum of the disclaimers in the various groups.

Disclaimer analysis

Year

First

1922 1923 1924 1925 1926 1927 1928 1929 1930 1931 quarter,

1932

GENERAL REVISION AND AMENDMENT OF PATENT LAW 127

Hon. WILLIAM I. SIROVICH,

ROCHESTER, N. Y., April 18, 1932.

Chairman Committee on Patents, House of Representatives.

Washington, D. C.

DEAR DOCTOR SIROVICH: Your committee has before it at the present time, I understand, two different proposals for remedying the evil of long-pending patent applications. These are H. R. 10153 and H. R. 10157. To my mind there are serious objections to both measures. I have an alternative proposal to make which I believe should accomplish the purpose and be more satisfactory in operation than either of the two measures mentioned.

I have written the editor of the Patent Office Society Journal, as per copy inclosed, with the purpose of endeavoring to ascertain sentiment of the Patent Office and of the profession toward my proposal. Under ordinary circumstances, I should prefer to await the reaction of the readers of the Journal before pressing the matter further, but as your committee may be considering action on either H. R. 10153 or H. R. 10157 in the near future, I have considered it advisable to lay my proposal before you now.

You will note that in the last paragraph of page 2 of my letter, I have dismissed without comment the provisions of H. R. 10153 and H. R. 10157 which, in effect, date a divisional or continuing application from the filing of any application disclosing the same invention. Further consideration of the matter leads me to believe, however, that from a theoretical standpoint at least, these two bills do not appear workable.

Under Patent Office Practice (rules 41 and 42) an applicant can not take an interlocutory appeal from a final requirement of division. He has to wait until final action on the group of claims prosecuted and then take his appeal from the requirement of division. Now the prosecution of the parent application itself will take on the average three years. Add to this a year or two on the average for the time required to determine the appeal as to division. We see, then, if applicant is finally required to file a divisional application, under H. R. 10157, such divisional application would immediately be subject to an order to put it in condition for final action, while under H. R. 10153, if we add the time required for prosecution of the divisional application to the four or five years required for prosecution of the parent application, it is evident the patent issued on the divisional application will have very little effective life. Yours very truly,

GLEASON WORKS,

B. E. SHLESINGER, Patent Attorney.
APRIL 15, 1932.

EDITOR JOURNAL OF THE PATENT OFFICE SOCIETY,

Washington, D. C.

DEAR SIR: Two bills (H. R. 10153 and H. R. 10157) have been introduced in Congress having as their purpose to remedy the evil of long-pending patent applications. To my mind, there are serious objections to both measures. I have, therefore, a proposal to make which I believe offers a better method of attaining the desired results. I would like to submit it through your journal for the consideration of the office and of the profession.

First, let us examine H. R. 10153. This bill proposes to limit the term of a patent to not more than 20 years from the date of filing of the application (or of any application disclosing the invention). Presumably 20 years was selected because the present term of a patent is 17 years from issue and because 3 years is the average time of pendency of an application in the Patent Office. It has been assumed that the average applicant who is reasonably diligent in prosecuting his application will obtain, therefore, as much protection under the new law as under the present. I do not think, however, it will work that way. Experience with applications in foreign countries, which employ the examination system and which date patents from filing, indicates that there is a psychological difference between the office attitude where the patent dates from filing and the office attitude where the patent dates from issue. In the latter case, it is the office itself which has the urge to close up the application to protect the public, but in the former case, the urge is taken off the office, there is a tendency to let the application drag along and it is the applicant and not the office who is most frequently fighting for issuance. Proponents of H. R. 10153 may say this would be a change for the better, but anyone who has had to fume and fret impotently, while a competitor was flooding a foreign

market with products infringing his pending application and while the life of his application was being frittered away in the foreign patent office, can predict that the change will prove a not unmixed blessing.

H. R. 10153 is objectionable, too, because it makes no adequate provision to compensate for loss of protection to an applicant who becomes involved in interference. It recognizes that something should be done, but the compensation proposed will be only partially effective. The maximum extension which can be granted a patent which has been involved in interference is two years. At present, however, it takes on the average four years or more to carry even the simplest interference through to final decision and this, too, through no fault of the applicant, but primarily because of the heavy dockets of the office and of the court of appeals. The average applicant who becomes involved in interference, then, is liable under H. R. 10153 to lose two years of protection. It probably will be more than that, for the parties will not be slow to realize that by prolonging interferences they can clip time off of the effective life of a competitor's patent.

H. R. 10157 attacks the problem in an entirely different way. It proposes to give the commissioner power, after an application (or any application disclosing the invention) has been pending three years, to fix a date (within not less than 30 days) within which the application must be put in condition for final action. The principal objection to this bill is that it places too arbitrary a power in the hands of the examiner. When an application has been pending three years, all of the specific claims have been disposed of, it is only the broad claims, the claims lying in the "twilight zone of invention which still require settlement. This is the time when examiner and applicant should be striving to harmonize their views in the interest of the public and in the interest of the inventor. This is not the time for precipitate action. Arbitrary termination of a case can lead only to undigested actions and more appeals.

H. R. 10157 takes no cognizance at all of interferences. Yet very frequently an application becomes involved in interference after it has had only one office action or before it has had any office action at all. If the interference lasts more than three years, then under H. R. 10157, such an application will be subject to an immediate order that it be put in condition for final action. It may be said that the bill leaves enforcement of its provisions to the discretion of the commissioner and in a given case, he would certainly exercise that discretion to prevent injustice. H. R. 10157 is simply an attempt to write into law what Commissioner Ewing attempted to accomplish unsuccessfully by his order No. 2210 of June 28, 1915, making 3-year applications special. Order No. 2210 did not work because too many exceptions were made to it. If H. R. 10157 is to accomplish its purpose, namely, to end the evil of longpending applications, it must be practically exceptionless. It must be assumed that in practically every case the commissioner will exercise the arbitrary power given him under the act and on this basis its merit must be weighed. Both H. R. 10153 and H. R. 10157 are alike in that they seek to introduce a new practice as regards divisional or continuing applications. Each makes a divisional or continuing application date from the filing date to the parent application. They broaden the already highly controversial field of original disclosure. Whether this innovation in practice will be an improvement is a matter which I have not the space to discuss in this letter and moreover, I do not want to start but one argument at a time.

Instead of attacking the evil of long-pending applications by either of the methods of H. R. 10153 or H. R. 10157, my proposal is to change the present law, which allows six months for amendment, so that after an application has been pending three years, only two months will be allowed for response to an office action.

The Patent Office already has power to make an application special. If it would make cases pending more than three years special, at least to the extent that action on them would be assured within two months after an amendment was filed, and if, as proposed, the time for amendment in a 3-year case were reduced to two months, it would be possible to have three office actions and three amendments in the fourth years of pendency of an application. That ought to be enough to wind up any application in the fourth year and wind it up, too, not by an arbitrary action but only after proper and thorough consideration.

These 2-month amendment periods would be no hardship for either office or attorney. The number of cases which extend beyond the 3-year period is small as compared with the number of cases the attorney is prosecuting. Two