PATENT EXTENSION

WEDNESDAY, MARCH 9, 1955

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE No. 3 OF THE COMMITTEE ON THE JUDICIARY,

Washington, D. C.

The subcommittee met at 10 a. m., pursuant to notice, in room 346, Old House Office Building, Hon. Edwin E. Willis (chairman of the subcommittee) presiding.

Present: Representatives Willis, Jones, Brooks, Quigley, Crumpacker, and Curtis.

Committee counsel: Cyril F. Brickfield.

Mr. WILLIS. The committee will come to order. Today we will receive testimony in connection with bills H. R. 2128, H. R. 3134, and H. R. 4700.

(The above-mentioned documents are as follows:)

[H. R. 2128, 84th Cong., 1st sess.]

A BILL To authorize the extension of patents covering inventions whose practice was prevented or curtailed during certain emergency periods by service of the patent owner in the Armed Forces or by production controls

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That (a) if at any time during any of the periods specified in subsection (d) of this section

(1) the term of any patent of the United States including time during which any individual or individuals, owning solely or jointly with his spouse or their spouses the entire interest in such patent, was or were performing honorable service on active duty in the Army, Navy, Air Force, Marine Corps, or Coast Guard, which service prevented or substantially curtailed the normal use, exploitation, promotion, or development of the patent; or (2) the normal use, exploitation, promotion, or development of the inventions described and claimed in any patent of the United States was prevented or substantially curtailed by any order of an agency of the Government prohibiting or limiting the production or use of any class of machines, articles, or materials, or the use of any class of processes or formulas; or

(3) to further the interests of the United States of America, the owner of such patent has heretofore granted a license thereunder to the United States, or to manufacturers, producers, or contractors authorizing them to produce or furnish goods or services for or to the United States, without payment of royalty, or at a nominal royalty, such license having been granted by such owner to promote any war effort, or any program of rearmament or preparation for the national defense, in which the United States has been engaged since the invasion of Poland by Germany on September 1, 1939; and since September 1, 1939, under the authority of such license, the United States, or manufacturers, producers, or contractors furnishing goods or services to the United States, have made substantial use of the invention embodied in such patent in the production or furnishing of goods or services for or to the United States, such use of said invention having been of material assistance and benefit to the United States in connection with any war effort, or any program of rearmament or preparation for the national defense, which granting of a license prevented or sub

1

stantially curtailed the normal use, exploitation, promotion, or development of the patent;

then the term of such patent may be extended in accordance with the provisions of this Act.

(b) The period of extension of a patent under this Act shall be a further term from the expiration of the original term as follows:

(1) In cases where the only grounds for extension are those described in subsection (a) (1) of this section, the further term shall equal twice the length of the active service during the applicable period or periods specified in subsection (d).

(2) In cases where the only grounds for extension are those described in subsection (a) (2), the further term shall equal the time for which (during the applicable period or periods specified in subsection (d)) the practice of the inventions described and claimed in the patent was prevented or substantially curtailed as set forth in subsection (a).

(3) In cases where the only grounds for extension are those described in subsection (a) (3), the further term shall equal the period during which the initial license granted by the owner of such patent, without payment of royalty, or at a nominal royalty, was in effect after September 1, 1939: Provided, however, That in no event shall the period of extension hereunder be greater than the period during which the normal use, exploitation or development of the patent was prevented or substantially curtailed.

(4) In cases where grounds for extension exist under more than one paragraph of subsection (a), the further terms designated in this subsection (b) shall not be cumulative but shall be determined under the applicable paragraph of this subsection (b) which results in the longest extension. (c) If the ownership of the patent at the time the circumstances, described in subsection (a), which qualify the patent for extension, first arose, is different from the ownership at the time of the filing of the application for extension under this Act, such application shall be acted upon only if the owner or owners at the time such circumstances first arose (or their legal representatives) have joined in such application.

(d) The periods during which one or more of the circumstances described in subsection (a) (1) or subsection (a) (2) must have occurred in order to qualify a patent for extension under this Act are as follows:

(1) The period beginning December 7, 1941, and ending September 2, 1945. (2) The period beginning June 26, 1950, and ending July 26, 1953. (e) For the purposes of this section, a reissue patent shall be considered to be the same patent as that which it supersedes.

SEC. 2. On the filing of an application for extension of the term of a patent hereunder, together with such information as may be required by the Commissioner, and upon payment of such initial fees as the Commissioner may from time to time prescribe, the Commissioner shall publish a notice thereof in the Official Gazette of the Patent Office. Within sixty days from such publication any person may oppose an application for extension by filing with the Commissioner a notice of opposition thereto stating the grounds therefor, which shall not include any charge that the patent is invalid. If a proper notice of opposition is filed and payment is made by the opponent of such initial fees as the Commissioner may from time to time prescribe, the Commissioner shall set a day for hearing which shall be within forty-five days of the date of the filing of such notice of opposition, and shall give not less than thirty days' notice of such hearing to the parties in interest. Upon the hearing the parties in interest shall present such evidence as they believe is relevant and such other pertinent evidence as may be required by the Commissioner. If, from all the evidence presented before him, the Commissioner is satisfied that a patent should be extended in accordance with this Act, he shall grant such extension. The Commissioner shall take action granting or denying an extension within six months after the filing of an application for extension. The Commissioner shall fix the total fees (not exceeding $150) to be paid by each applicant for extension of the term of a patent hereunder and the total fees (not exceeding $50) to be paid by each opponent to an application, the specific amount of all such fees to be determined according to the work of the Patent Office required in processing the application or in hearing an opponent thereto as the case may be, and the estimated cost thereof to the Patent Office.

SEC. 3. If any applicant for an extension is dissatisfied with the decision of the Commissioner or of any board established by the Commissioner for the determination of applications for extensions, he shall have the same remedy by

appeal to the United States Court of Customs and Patent Appeals, or suit in the District Court for the District of Columbia, as provided in the case of applications for patent.

SEC. 4. The Commissioner shall issue a certificate evidencing the granting of an extension hereunder. A notice of the granting of an extension shall appear in the Official Gazette of the Patent Office.

SEC. 5. Upon the issuance of the certificate of extension, said patent shall have the same force and effect in law as though it had been originally granted for seventeen years plus the term of such extension, except as otherwise provided herein.

SEC. 6. Except where the owner of a patent extended hereunder was entitled to royalties under said patent (whether or not such royalties were received or waived) for any class of machines, articles or materials, or for the use of any class of processes or formulas, produced or furnished exclusively to or for the benefit of the United States, or used exclusively by or for the benefit of the United States, no patent extended under the provisions of this Act shall serve as a basis for any claim by reason of manufacture, use or sale by or for the United States during the period of extension, and the rights of the United States shall remain in all respects as if such patent had not been extended.

SEC. 7. In the event that an extension is not issued until after the date of expiration of the original term of a patent or reissue thereof, the extension order shall provide that any vested rights arising out of the actual manufacture, use, or sale of the invention covered by the patent so extended, which took place after the said expiration and before the issuance of the extension order may continue during the remainder, if any, of the period of the extension upon such terms and conditions as the Commissioner may prescribe, including the payment of reasonable royalties, providing the person or persons claiming such vested rights establish such rights to the satisfaction of the Commissioner upon a hearing.

SEC. 8. In any action for infringement after the expiration of seventeen years from the grant of the patent and during the period of such extension, the defendant may plead and prove that any material statement of the application for extension required by this Act is not true in fact; and if any one or more of such statements shall be found untrue in fact, judgment shall be rendered for the defendant, with costs.

SEC. 9. Any application for the extension of the term of a patent hereunder shall be filed within one year from the effective date of this Act except for applications which are filed under subsection (a) (1) of section, 1, which applications shall be filed within one year from the effective date of this Act or within one year from the date of the applicant's honorable discharge from service.

[H. R. 3134, 84th Cong., 1st sess.]

A BILL To provide for extension of terms of patents where the use, exploitation, or promotion thereof was prevented, impaired, or delayed by causes due to war, national emergency, or other causes

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That within one year after the effective date of this Act, where the normal use, exploitation, promotion, or development of a patent has been impaired by (1) the granting of a license to the United States at a nominal or no royalty; or (2) restrictions or prohibitions imposed by the United States by reason of war or other national emergency or by other circumstances beyond the control of the owner, application for extension of the patent may be made to the Commissioner of Patents by a sole or a joint owner thereof, or by a person who during such period or at the time of the filing of the application has a right or interest, legal or beneficial, in or under the patent. SEC. 2. The applicant shall state the grounds upon which the application is made and the essential facts in support thereof, the names and addresses, insofar as known to the applicant, of all persons, firms, or corporations, if any, who at the time of the making of the application have any right or interest in or under the patent.

SEC. 3. On the filing of such an application the Commissioner of Patents shall (1) publish a notice of the filing in the Official Gazette of the Patent Office, (2) set the earliest practicable date for a hearing on such application, and (3) give at least thirty days' written notice of a hearing to the applicant and to each person named in the application as having a right or interest in or under the patent.

SEC. 4. On the hearing, the applicant shall present evidence as to the existence and the duration of the circumstances specified in section 1 of this Act. Any person named in the application as having a right or interest in or under the patent may appear for the purpose of assisting in or opposing the evidence submitted.

SEC. 5. If, from the evidence presented, the Commissioner of Patents is satisfied that a patent should be extended, he shall grant an extension for a period equal to the time during which the use, exploitation, or promotion of such patent was substantially prevented, impaired, or delayed by reason of the circumstances mentioned in section 2 of the Act.

SEC. 6. If any applicant for an extension is dissatisfied with the decision of the Commissioner of Patents or any board established by the Commissioner of Patents for the determination of such applications, he may appeal to the United States Court of Customs and Patent Appeals within thirty days after the making of the decision. The appellant shall give written notice thereof to the Commissioner specifying the grounds of the appeal. The Court of Customs and Patent Appeals, on petition, shall hear and determine such appeal in the same manner and with the same force and effect as other appeals from Patent Office decisions. SEC. 7. The Commissioner of Patents shall (1) issue a certificate evidencing the granting of an extension pursuant to a decision by him or the Court of Customs and Patent Appeals and (2) publish a notice of the granting of an extension in the Official Gazette of the Patent Office.

SEC. 8. Upon the issuance of the certificate of extension, the patent shall have the same force and effect in law as though it had been originally granted for seventeen years plus the term of such extension, except that

(1) no patent extended under the provisions of this Act serves as a basis for any claim by reason of manufacture, use, or sale by or for the United States during the period of extension, and the rights of the United States shall remain in all respects as if such patent had not been extended; and

(2) an extension granted under the provisions of this chapter does not impair the right of anyone who before the passage of this Act was bona fide in possession of any rights in patents or applications for patents conflicting with the rights in any patent extended under the Act. An extension granted under this Act does not impair the right of anyone who was lawfully making, using, or selling before the passage of this Act the invention covered by the extended patent, but any such person may make, use, or sell the invention covered by such conflicting patent, or application for patent, or continue or resume such manufacture, sale, or use during the extension of the patent, subject to the payment of a reasonable royalty for any period subsequent to the date on which the extension of the patent was granted. SEC. 9. A license under an extended patent has the option of continuing the license for the period of the extension or any part thereof on the terms contained in the existing license, or of discontinuing the license on the expiration of the original term of the patent. If an extension is not issued until after the date of expiration of the original term of the patent, any machine, manufacture, or composition of matter made after said date and before the issuance of the extension, which would have infringed the patent had the patent been in force, may be sold or used after the issuance of the extension without any liability for infringement of the patent during the extended term by reason of such making, using, or vending, nor shall anyone who, after the date of expiration of the patent and before the date of its extension, has used an art which would have infringed the patent had the patent been in force, be liable for infringement of the patent during that period.

SEC. 10. In any action for infringement after the expiration of seventeen years from the grant of the patent and during the period of extension, the defendant may plead and prove that any material statement of the application for extension required by this chapter is not true in fact; and if any such statement is found untrue in fact, judgment shall be rendered for the defendant, with costs.

SEC. 11. The Commissioner of Patents, subject to the approval of the Secretary of Commerce may, from time to time, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office under this Act, and may establish a board, acting under his direction and supervision, to hear and determine applications hereunder.

SEC. 12. This Act shall take effect ninety days after approval.

[H. R. 4700, 84th Cong., 1st sess.]

A BILL To provide for extension of terms of patents where the use, exploitation, or promotion thereof was prevented, impaired, or delayed by causes due to war, national emergency, or other causes

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That title 35, United States Code, "Patents," is amended by adding a new chapter following section 188, as follows:

Sec.

CHAPTER 18-EXTENSIONS OF PATENTS

196. Application for extension.

197. Notice.

198. Evidence.

199. Grant of extension.

200. Effect of extension.

§ 196. Application for extension

(a) When the normal use, exploitation, promotion, or development of a patent has been prevented, impaired, or delayed by reason of

(1) the granting of a license to the United States without payment of royalty or at a nominal royalty;

(2) any restrictions or prohibitions imposed by the United States by reason of a war or other national emergency; or

(3) any circumstance beyond the control of the owner or holder or resulting from the existence in the United States of a state of war or other national emergency;

application for an extension of the patent may be filed with the Commissioner of Patents, accompanied by the statutory fee.

(b) The application shall state the grounds upon which it is made, together with a statement of the essential facts in support thereof, the names and addresses, insofar as known to the applicant, of all persons, firms, or corporations, if any, who at the time of the making of the application have any right or interest in or under the patent.

(c) The application for extension may be made by (1) the then owner or owners of the patent, or (2) any person who, during the period when there existed the circumstances mentioned in subsection (a), was the sole or joint owner with others of such patent and who also, at the time of the filing of the application for such extension, has a right or interest, legal or beneficial, in or under such patent.

(d) The Commissioner of Patents, subject to the approval of the Secretary of Commerce may, from time to time, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office for extensions of patents under this chapter, and may establish a board, acting under his direction and supervision, to hear and determine applications for extensions of patents hereunder.

§ 197. Notice

On the filing of an application for extension of the term of a patent the Commissioner of Patents shall (a) publish a notice of the filing of such application in the Official Gazette of the Patent Office, (b) set the earliest practicable date for a hearing on such application, and (c) give at least thirty days' prior written notice of such hearing date to the applicant and to each of the persons, firms, or corporations, having any right or interest in or under the patent as shown by the application for the extension.

$198. Evidence

(a) For the purpose of establishing a right to an extension, the applicant shall present evidence as to the existence and the duration of the circumstances specified in section 196 of this title. Any persons, firms, or corporations having any right or interest in or under the patent may appear for the purpose of assisting in or opposing the evidence submitted.

§ 199. Grant of extension

(a) If, from all the evidence presented before him, the Commissioner of Patents is satisfied that a patent should be extended in accordance with the policy of this chapter, he shall grant such extension for a period commensurate with the extent to which the normal economic return from such patent was prevented, impaired, or delayed during the period specified in section 196 of this title and by reason of the circumstances mentioned therein.