Mr. WALTER. Suppose that the squadron would discover that the Edgewater adapter did not operate properly at the 50-millimeter gage, and suppose someone should invent a modification of the adapter; and let us assume, further, that one of the men participated in the invention and, after leaving the Navy, applied for a patent, do you mean to say that the fact that very article had been used would not be a defense?

Captain ROBILLARD. Oh, yes. In that case, regardless of what the circumstances are, in an invention made by a Government employee, we would either have a free license under it or he would be estopped from bringing suit by the act of 1910, which says that you cannot sue the Government for anything invented while in Government service.

Mr. WALTER. So this proposed legislation has only to do with those things invented that are similar or the same as those that might have been obtained by the services?

Captain ROBILLARD. Yes, sir.

Mr. BRYSON. And in respect of which the Government has disclosure?

Captain ROBILLARD. It must be exactly the same as a prior publication or public use. It cannot be an indefinite disclosure. It would be as though A was suing B in Federal court and B was able to establish a public or a prior use. This is not public or prior use, because it is exclusively in the office of the Government, but we are permitted to set it up as that in a defense purely and simply for the Government in a suit brought to recover royalties under that patent. It does not in any way affect the validity of the patent.

Mr. LANE. Have you any idea of the number of cases the Government has been called upon to pay royalties as a result of the present situation. Captain ROBILLARD. I looked into that but cannot give figures, because it is always a case where they had it and had to pay and nothing could be done about it. I understand it has repeatedly come up in the airplane industry and particularly in the development stages where the Navy would be developing an idea. They would come up to a certain point, and they either did not have an appropriation to make the planes, and, later, that idea would be picked out and put into a new plane. Meanwhile, someone else had perfected the same design. Mr. LANE. That happens frequently?

Captain ROBILLARD. Yes; and in this case with the 1,800 disclosures and I have not the faintest idea when we will get them filed-I can see it coming up more often in the future than in the past. That becomes all the more true because we are doing so much more research now than in the past.

Mr. WALTER. The fact of the matter is that the Navy maintains an experimental station, and much of what they produce is never published?

Captain ROBILLARD. The great portion is never published.

Mr. LEWIS. That is not the material covered by this bill, or is it? Captain ROBILLARD. It would be. Yes, sir.

Mr. LEWIS. That is where someone working clearly outside the Government invents something that the Government later uses and claims to have had knowledge of. That is the only case covered in this bill? Captain ROBILLARD. Yes. Where a later-issued patent is produced and we can establish that we had a complete disclosure a year prior to his filing or that we were in reality the first inventor.

Mr. LEWIS. It seems to me this is very fundamental. The patent system is based upon the Constitution, of course, and that, in turn, upon the theory that everybody profits by the protection of inventions. Now, the Government is seeking by this bill to obtain a preferred position; and, frankly, I cannot see the necessity of it. We fought a world war without it, and it seems to me you are simply undermining the whole patent system.

Captain ROBILLARD. Mr. Lewis, if a patent issued to me tomorrow and I bring suit against John Doe, he can go into the Patent Office, and if he can find a publication which is 40 or 50 years old which shows that invention, my patent is worthless. We are not asking that. We are merely asking if we can show that this was old so far as the Government is concerned, then the Government should not be required to pay royalties on it.

Mr. LEWIS. I do not see the principle behind this.

Mr. WALTER. You are overloking one fundamenal thing; that is, the originality of the idea.

Mr. LEWIS. That is right. But the Government is not any different in that respect than the inventor that hit upon the same idea simultaneously. One gets to the Patent Office first and files. It is his invention.

Captain ROBILLARD. No, sir; if another inventor gets there later and can prove priority in an interference, it is the second one who gets the patent.

Mr. LEWIS. Then, if that is so, you can have the same rights now under the law and you are fully protected?

Captain ROBILLARD. No, sir; we cannot have the same right because there is a distinction between the fact that the defense must be established on a public use or a public knowledge. What we are relying on is not a public use or public knowledge but a use or knowledge known only to the Government.

Mr. LEWIS. Then, I misunderstood you and my first answer was incorrect. If the first man who gets there and files first gets the patent and someone else comes along and claims he had the same idea, he is out. Isn't that so?

Captain ROBILLARD. Only if he happens to get into the Patent Office while the two applications are pending and an interference is declared. After it has issued for more than 1 year he cannot get his claims in. Therefore, he has to establish a defense against the patent if he is sued on the patent for infringement. His defense must be predicated on public use or public knowledge of prior use.

Mr. LEWIS. What I cannot see is why the Government should be in any preferred position on these patents. This puts you in the preferred position that no citizen occupies. That undermines the whole patent system. It is an attempt to make exceptions and to give certain people preferred claims, the Government included. If we do that it undermines the whole system.

Captain ROBILLARD. Mr. Lewis, we are confronted by this situation also. Assuming I invent something that goes into a radar set, of itself the device may not have any real security. However, anyone skilled in the art may be able to look at that gadget and device and know exactly what we are doing with it and what is going to happen. As a result, we are forced to put it in a security classification. In some

instances, it is of such high security that we do not even feel we should file in the Patent Office because of it.

If someone independently, say 2 years later, hits on that and files in the Patent Office and a patent issues, there is no question about it that the Government, whoever their inventor was, was the prior inventor. Fundamentally, the basis of our patent law situation is that the first inventor gets the patent. However, for security reasons we do not permit him to file; or, if the Government has permitted him to take title, we do not file. Then, 5 years later, when security can come off, we suddenly discover that someone has a patent and therefore we are penalized and have to pay him royalties simply for the protection of the national interest, and that goes to the protection of the public. For that reason, we have to keep it in the secrecy class. Why should the public have to pay taxes or royalties on something we have known and something which, in the interests of national defense, it was necessary to keep secret. That is one of the big things about it.

Mr. LEWIS. That may be an illustration of what you are trying to do, but it seems to me that the fundamental reason why there is a patent system is the complete answer to everything you have said. If you do not believe in the patent system, then wipe it out. If you make as many exceptions as possible you undermine the whole thing. I cannot see any reason at all, except the question of the royalties which they have to pay-which the taxpayer pays everybody pays. But the founders of the country in their wisdom under the Constitution said it is best to protect the individuals in their original right and by that means build up the country. It seems to me you are striking at the very foundation of the whole system.

I think the foundation of it all is national security. Remember, this has never been the law. We have had two wars without its protection, and it seems to me that there is no necessity for it.

Mr. WALTER. I cannot see why we should pay thousands or millions of dollars a year for the protection of devices for national security and then wake up some day to find that we have paid for all these experts from the Public Treasury only to find someone has hit on the same thing and then have to pay that person a royalty for what we have used.

Mr. LEWIS. It seems to me to be a question whether the rights of the individual are to be preferred to the rights of the Government. Captain ROBILLARD. Mr. Lewis, you said it goes to the originality. It does, in a sense. I am fully in favor of the patent system. I do not know whether I am a patent lawyer with military training or a military man with patent training, but I am wholly in favor of the patent law. On originality, the law provides the patent should go to the first inventor, and all we are asking here is that we recognize the first inventor was the Government. In that case the Government should not have to pay royalties, and this bill enables that to be raised as a defense for the Government, not as against anybody else. Mr. CHADWICK. If it gets to the state of invention and use, isn't use in military activity a public disclosure?

Captain ROBILLARD. Not so long as we keep it classified.

Mr. CHADWICK. What do you mean "classified"? Suppose a man has a gadget on a rifle he carries on his shoulder down the street. I suppose that would be removed from the classification?

Captain ROBILLARD. If it can be interpreted as public use. There are a good many things in radar and cryptology, and so forth, where possibly two men on board ship can operate the device but have no idea of the guts of it.

Mr. CHADWICK. May I say for myself that we are in the position of having to analyze the equities there are to be considered. If something of this sort is not done, then art developed at the expense of the public may have to be paid for to someone else.

Mr. LEWIS. When you get into the field of very special inventions which would have been patented except for security reasons, I see force in that proposition. But, I honestly believe until I understand the mental operations of the Army or Navy that if you fellows could find some sketch in your Office which you did not appraise for its value or potentialities and ruthlessly bring it out and use it against a citizen, it would be highly unfair.

Captain ROBILLARD. Not in accordance with the bill as it is presently written, sir. The bill specifically states, on page 2, beginning at line 22

which disclosure constitutes a sufficient description of the article, material, or process manufactured or used by or for the Government upon which the suit is based to enable others to make or use the said article, material, or process. Mr. CHADWICK. What do you think that means?

Captain ROBILLARD. It means it must be a sufficient disclosure to the man skilled in the art. He cannot just have a sketch or some statement that we would certainly like to have a gadget which does so-andSO. It must be more than that. It must be sufficient to show we have the gadget and that it does so-and-so.

Mr. CHADWICK. You do not associate the words "article, material, or process used by the Government" with the controls of the act, so that, to be effective, it must be something which the Government had theretofore manufactured and used?

Captain ROBILLARD. No, sir. A complete disclosure is sufficient. Mr. CHADWICK. That is to say, all that is necessary to prevent the collection of royalties would be 15 lines in pencil in your files?

Captain ROBILLARD. No, sir. It would have to be some kind of a disclosure which would constitute the evidence of a prior publication in a suit.

Mr. CHADWICK. That is what I said; exhaustive in substance.

Captain ROBILLARD. It has to be complete. You cannot invalidate a patent on prior publication which is not a very, very complete showing, so a man skilled in the art could take that publication and make the article or perform the manufacture or follow the procedure.

Mr. CHADWICK. Yes. That could be on one side of a letterhead written by a party. You have given yourself lots of protection. I am not trying to argue the question. I am trying to follow it through.

Wouldn't you suggest that you would have some instances of cases in which it could operate to the detriment of the public?

Captain ROBILLARD. Colonel Gardes has one outstanding case, sir. Mr. LEWIS. How many examples do you have now?

Captain ROBILLARD. As I say, Mr. Lewis, I cannot very well give you any specific examples, because the difficulties have been that we were sued; and when we went into the files and found out that we had the invention, it was of no avail to us, so there was no occasion to com

pile the information. However, the counsel for BuPer states that there are about 15 cases he knows of and there were probably many more in the air industry.

Mr. LEWIS. That was the industry that had the most?

Captain ROBILLARD. Yes, sir.

Mr. LEWIS. Any other questions? Thank you very much, Captain. Dr. Hayes?

Captain ROBILLARD. Unfortunately, Mr. Chairman, Dr. Hayes took sick last Friday and cannot attend.

Mr. LEWIS. Who is your next witness?

Captain ROBILLARD. That is all for the Navy.

Mr. LEWIS. Dr. Hayes is the Director of the Patent Division of the Navy Department?

Captain ROBILLARD. Yes, sir.

Mr. LEWIS. All right; Colonel Gardes.

STATEMENT OF COL. GEORGE W. GARDES, JAGD, CHIEF, PATENT DIVISION, DEPARTMENT OF THE ARMY

Colonel GARDES. Mr. Chairman and gentlemen of the committee, I would like to state first that the views I expressed here have not been cleared with the Bureau of the Budget so they do not involve any commitment as to the program of the President. You have a copy of my statement, so I will not read the statement in full. I would like to say, generally, the Department of the Army concurs fully with the views expressed by Captain Robillard.

To save you time, I would like to comment as to why we feel this legislation is desirable.

Considering first the case of the unclassified developments where inventions arise out of research projects: Because of limited personnel patent applications can be filed on only relatively few of the more important inventions. Those inventions selected for filing normally have a relation to the research program carried on or else bear a relation to the current procurement. However, inventions of lesser importance which are not patented may later on turn out to be of more importance because of subsequent developments. We have to use our best judgment in protecting the Government's interests to the extent possible with the personnel available.

As to those inventions on which patent applications are not filed, the next best step is taken to protect the Government's interests, in that, under Executive Order 9568, the report of the invention is sent to the Department of Commerce, where it is published and becomes part of the prior art as of the date of that publication, so that a subsequent patent application would be faced by that publication, which would act as a bar to the issuance of a patent.

The publication is not a complete defense, because it may well be that the independent inventor can swear back of the date of the publication of that particular invention. For example an invention may have been made by the Government in 1944 but not published until 1947. An independent inventor who discovers the invention in 1945 or 1946 may come to the Patent Office and file an application on the same invention 2 or 3 months after the publication date and yet swear back of the publication when it is cited against him as a reference. Thus, it will be seen that the system of publishing does