II

The Hooper Co.'s patents.-The Hooper Co.'s patents covering the invention of the Hooper Co.'s "Fire Chief" finish or compound are as follows:

As of February 20, 1943 (the date of the free license to the Government) the Hooper Co.'s investment in the above patents, including research and development costs, has been conservatively computed from the company's books and records at approximately $500,000.

III

On February 20, 1943, the Hooper Co. gave the United States a royalty-free license to use all of its patents, "for the duration of the war and 6 months thereafter."

On or about February 20, 1943, representatives of the Office of the Quartermaster General called upon certain officers of the Hooper Co. and stated that they wanted to negotiate an agreement with the Hooper Co. wherein the Hooper Co. would grant the United States, and contractors producing goods for the United States which required the use of a finish or compound covered by the Hooper Co.'s patents, a license by the Hooper Co. to use the invention covered by the Hooper Co.'s patents. These representatives of the Office of the Quartermaster General indicated that the United States would be willing to pay the Hooper Co. a royalty for such a license, but Mr. Robert P. Hooper, president and majority stockholder of the Hooper Co., told them that the Hooper Co. did not want to exact a royalty from the United States, or from contractors producing goods for the United States which required the use of the Hooper Co.'s patents, for the use of said patents in the production of goods or compound for the United States, and that the Hooper Co. would grant the United States, and contractors producing goods for the United States which required the use of the Hooper Co.'s patents, a royalty-free license to use the invention covered by the Hooper Co.'s patents in the production of goods or compound for the United States for the duration of the war and 6 months thereafter.

Accordingly, on February 20, 1943, the Hooper Co. executed and delivered a license agreement bearing that date a true and correct copy of the said agreement being attached hereto and made a part hereof, marked "Exhibit No. 1." This instrument not only granted a royalty-free license for the duration of the war and 6 months thereafter, but also released the Government from any and all claims which the Hooper Co. had against the Government by reason of the Government's participation in substantial infringements of the Hooper Co.'s patents prior to the date of the agreement.

The Hooper Co. received no consideration whatsoever for the royalty-free license agreement dated February 20, 1943, not even the $1 consideration recited therein.

IV

The rights granted under the license were of great value to the war effort. The Hooper Co. does not know, and does not have access to the records from which it could determine, the full extent to which the United States, and contractors producing goods for the United States which required the use of the Hooper Co.'s patents, actually made use of the Hooper invention. However, the Hooper Co. does know that these parties used the inventions very extensively, probably to the extent of processing more than 500 million yards of fabric.

As a matter of fact, the United States, and contractors producing goods for the United States, had begun to make substantial use of the Hooper inventions in 1942, prior to the royalty-free license agreement of February 20, 1943, which explains why the Government wanted the release of claims for past infringements that was included in the license agreement.

V

The normal exploitation of the Hooper inventions was prevented by Government regulations substantially limiting the use of the inventions to use for the Government.

Major constituents of the patented formulas are antimony oxide and chlorinated paraffin. Both these materials were so critical during the war that the War Production Board would not permit their use except on goods carrying the highest priority rating. For example, several months before the disastrous fire which destroyed a Barnum & Bailey, Ringling Bros. Circus Co. tent in Connecticut, with a heavy loss of life, the circus company approached the Hooper Co. and wanted to place an order for its circus tents, the material in which would be treated with the Hooper Co.'s Fire Chief compound. However, the Hooper Co. was compelled to decline the order because the War Production Board would not allocate the required chemicals for this purpose, and did not do so until after the fire had occurred. So the development of industrial and commercial uses and markets came to a virtually dead stop.

VI

Legislation should be enacted under which the owner of any patent who granted the United States, and contractors producing goods for the United States, a royalty-free license to use his patent, can obtain an extension of the life of his patent for a period equal to the period during which such royalty-free license was in effect, particularly where the United States, and contractors producing goods for the United States, have made substantial use of the patent pursuant to the royalty-free license agreement.

The Hooper Co. does not propose to belabor this point, because it would seem to be unnecessary. It is submitted that the fundamental principles of common decency, fair play, justice, and equity clearly indicate that a patent owner, who voluntarily granted the United States, and contractors producing goods for the United States, a royalty-free license to use his patent during the period of World War II, is justly entitled to have his patent extended for a period equal to a period during which the royalty-free license was in effect, and especially, where the patent owner can show that the Government, and contractors producing goods for the Government, made substantial use of his patent during the period the royalty-free license was in effect. In such situations, the patent owner has supplied or furnished the quid pro quo or the consideration which should be sufficient to support his claim for such an extension of his patent.

There are of course many additional arguments which could be advanced in support of legislation under which a patent owner, who granted the United States a royalty-free license to use his patent during World War II, could obtain an extension of the term of his patent. For example, the enactment of such legislation by the Congress, indicating its adoption of the policy of extending relief to patent owners in such situations, would certainly encourage patent owners to grant the United States royalty-free licenses to use their patents in the present or future periods of emergency, and in the long run, the adoption of such a policy by the Congress might well result in very substantial savings to the United States.

Furthermore, there are many who believe that the rights of patent owners should be protected and fostered, not only to encourage inventors, but to encourage inventors to patent their inventions rather than conceal them, thus assuring the general public of the use of the patent after the expiration of its term. The enactment of the legislation suggested above would be in line with this school of thought.

The Hooper Co. believes, however, that its own case, as above outlined, fully and convincingly demonstrates the need for and justice of the legislation provided by H. R. 2128.

EXHIBIT No. 1-LICENSE

Whereas the Wm. E. Hooper & Sons Co., Woodberry, Baltimore, Md., a corporation of Maryland, hereinafter called the "Licensor," is the owner of a new and useful improvement for a fire-resistant composition and fabric, for which United States Letters Patent No. 2,299,616 was granted on October 20, 1942; and of patents numbered 2,118,787; 2,172,698; 2,178,625; 2,194,690; 2,299,612 and 2,044,176, all of which pertain to fire, water, mildew or weather-resistant finishing of fabrics; and

Whereas to further the interests of the United States and to promote the war effort, licensor desires to grant to the Government of the United States of America an unrestricted right and license to finish and to use or to finish and/or sell for use, or otherwise dispose of in accordance with law for governmental purposes, the subject matter of said inventions when used in connection with the finishing of fabrics to render them fire, water, mildew and weather resistant, for the duration of the war and 6 months thereafter; and

Whereas licensor warrants that it has the right to grant such a license; now, therefore, in consideration of the premises and of the sum of $1, receipt of which is hereby acknowledged, licensor hereby grants to the United States of America, as represented by the Secretary of War, an irrevocable, nonexclusive royalty-free license to finish or have finished, for it by contractors licensed by said Hooper Co., as hereafter provided, and to use and/or to sell any fire, water, mildrew and weather-resident fabrics finished or processed for governmental purposes, in accordance with any of the following patents: Nos. 2,299,616, 2,118,787, 2,172,698, 2,178,625, 2,194,690, 2,229,612 and 2,044,176, said right and license to extend throughout the United States, its Territories and possessions, and to all said fabrics as may be processed for and sold to or otherwise disposed of to the socalled lend-lease countries, and to last for the duration of the war and 6 months thereafter, reserving to the licensor the unrestricted use and enjoyment of all other rights not hereby expressly granted to the United States of America.

The licensor further agrees that if the Quartermaster Corps will advise contractors they must ask the company for the right to use any Hooper patents, if they intend to use any of the above patents, the licensor will grant to such contractors a royalty-free license during the period of the war and 6 months thereafter.

Licensor hereby releases the Government from any and all claims licensor may have by reason of infringement by the Government of any of licensor's patents prior to the date of execution hereof.

It is expressly understood and agreed that the acceptance of this license by the Government is not to be construed as an admission of the validity of scope of these patents, or of the titles thereto; and that the Government expressly reserves unto itself the right at any time to contest in any way the validity or scope of these patents, or of the titles thereto, without waiving or forfeiting any right under this license; and also reserves any and all defense that it may now or hereafter have in connection with the herein-licensed invention or patent; and that this understanding and agreement is binding upon licensor, and its successors, or assigns.

Witness my signature, signed at Philadelphia, Pa., this 20th day of February 1943.

Witnessed by:

WM. E. HOOPER & SONS Co.,
ROBERT P. HOOPER, President.
LOYOLA M. COYNE,

Attorney QMMG, Research and Development Branch.

HARVEY LECHNER.

Miss STEPHENS. Mr. Chairman, I wonder if I could speak for just a minute. I am a nurse and have to leave in a very few minutes to attend to other duties. I have with me this morning Mrs. Frank Heely Downs, who is the widow of Mr. Frank Heely Downs, who was my second cousin and was an inventor, whose inventions are now being used by the United States Government, and would appreciate anything you could do for these inventors.

Mr. WILLIS. You favor this legislation?

Miss STEPHENS. We are in favor of anything that you would do to help in this matter. We will be most grateful if you do anything about this.

Thank you.

Mr. WILLIS. You have a prepared statement.

Miss STEPHENS. Yes, a letter.

Mr. WILLIS. The statement will be received.

Miss STEPHENS. Thank you so much.

(The above-mentioned document is as follows.)

JUDICIARY COMMITTEE,

WASHINGTON, D. C., March 9, 1955.

Old House Office Building, Washington, D. C.

GENTLEMEN: Will continue lobbying H. R. 2128 and H. R. 3124—covering patents, inventions-in behalf of Government, as needed. Have with me this morning Mrs. Frank Heely Downs, widow of Frank Heely Downs, my second cousin, inventor, whose inventions are now being used by the United States Government.

The Lord's will be done.
Respectfully,

NELL F. STEPHENS.

Mr. HOOPER, I will endeavor to talk about the material in my statement concisely because I know it is annoying to read something when you already have it in front of you, and you have all had this subject before you so many times.

I have testified many times in the past on this subject, and in particular I would like to mention that at the 83d Congress, I testified in favor of the Scott bill, H. R. 2309, at that time. Could I refer to the testimony that is in that hearing? Is that a part of this record, or could I ask that it be made a part of this record, or is that not in order?

Mr. WILLIS. I didn't hear you, Mr. Hooper. I am sorry.

Mr. HOOPER. Is it in order to refer to the testimony at the previous hearing?

Mr. WILLIS. That is part of our files. Those hearings will be considered in our disposal of this bill. It will be considered as being before us, your testimony given in that hearing and all the testimony that we received.

Mr. HOOPER. Yes, sir. I am here speaking in favor of the passage of H. R. 2128, which is identical to Mr. Crumpacker's bill, H. R. 3534, which was passed last year, as you just mentioned.

Mr. WILLIS. As I understand, your particular interest would be covered by one of the provisions of the bill, 2128, and by Mr. Crumpacker's bill relating to the category of people whose patents were taken over royalty free, is that correct?

Mr. HOOPER. Yes, sir; that is entirely correct. In Mr. Fisher's bill, 2128, paragraph (a) (3) it states "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," a royaltyfree license under the patent to the United States. That is the first of the five things he must have done. Secondly, the license must have been used to promote the war effort or a program of rearmament or preparation for the national defense.

Thirdly, the patent must have been substantially used in the production and furnishing of goods and services for or to the United States.

Fourthly, it must have been of material assistance and benefit to the United States in connection with the war effort; and, fifthly, which is part of the amendment, I believe, Mr. Crumpacker, that came in last year, the granting of a license prevented or substantially curtailed the normal use, exploitation, promotion, or development of the patent.

They are essentially the five points in connection with article (a) (3), in which our company is particularly interested.

We granted a royalty-free license at the request of the Government. I am sorry if I hesitate a little, but I had a prepared speech, and I am just speaking now extemporaneously.

On February 20, 1943, we granted the Government this license to use our inventions, and we also granted any other concern in the country who was making these same things the permission to use our inventions royalty-free upon application for Govenment work and for the duration and 6 months thereafter.

We claim that our patents fulfill and meet all of the requirements mentioned in this 2128 bill. Practically all of the canvas used by our troops and many of our allies during the war was treated with formulations covered by our patents.

The tentage, tarpaulins, covering supplies on the ground-everything in the way of heavy goods-all those things were treated with formulations covered by our patents.

I am not going into the clothing, but tents, tarpaulins, covers which the Army, the Navy used, all their lifeboat covers, hatch covers, bridge covers everything was treated under our formulations.

We had a further peculiar situation that our patents were donated for the duration and 6 months thereafter, and it was our opinion that when we gave it for that period, that the final treaty with Japan, which occurred on April 28, 1952, and 6 months thereafter would have been October 28, 1952; but the Quartermaster took a different attitude, and in every bid that has come out right up to the present time, they have a clause in the bid stating in effect that the Hooper patents are still under a royalty-free basis to the Government, and that in effect the only recourse we have is to sue the Government in the Court of Claims, which we have not done.

We feel very definitely that the owner of a patent is entitled to a little different handling than that of a man who was working at a job and had to give up his job and go into the war, and that argument is used a lot before.

I know I can speak from both sides because it just so happened that I am a Navy veteran of the First World War, and had two Navy veterans in the Second World War; and so we did give up our jobs and we did go through the war.

However, by extending a patent, such as this 2128 would do, which is really the result of many years of study on this subject, and is particularly the result of a very comprehensive hearing and study last year, in which the Crumpacker bill was put to the test of fire. This came out as being a reasonable effort to take care of this situation. A patent does not hurt the Government. In granting an extension to this patent, the Government is protected, because you immediately give the Government a royalty-free license to use it. You also, if you have your patent extended, have to waive all prior claims that may have developed in case your patent expired, for example, for a short period while the Government was using it. You have to waive any claim that anyone else could have had.

So the actual fact is that by extending the patent you have not hurt the Government. You have not hurt anybody. You have not hurt the public, because during the period-the only reason the patent is being extended is because the 17-year period that was granted to the original patentee or patentor was interfered with, and he did not