Mr. YEAGER. But I was wondering if that additional discretion which NASA has asked for and which they have testified would be very beneficial and would not require them to construe their waiver provisions as they do now, that this provision-do you think that would be a workable one?

Mr. PAGE. It is very much better than the other one.

Mr. YEAGER. Thank you.

Mr. CARSTARPHEN. No questions.

Mr. MITCHELL. Thank you very much, Mr. Page, for your testimony and appearance.

Mr. PAGE. Thank you.

Mr. MITCHELL. We have had a request by Mr. James P. Burns that he make a supplementary statement.

Mr. Burns, would you desire to make that in person, or to file a written supplementary statement?

Mr. BURNS. I think it might be well for us to get it in the body of the record, Mr. Chairman.

SUPPLEMENTARY STATEMENT OF JAMES P. BURNS, CHAIRMAN OF THE GOVERNMENT PATENT POLICY STUDY COMMITTEE OF THE NATIONAL COUNCIL OF PATENT LAW ASSOCIATIONS Mr. BURNS. First, with respect to the incentive given by Russia: The will to survive is the first law of nature. In a regime where ple can be relegated to concentration camps at the whim and will of a dictatorship, there is a great-I don't know whether you call it incentive or fear.

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One of my famous progenitors said "Tis the fear o' hell and the hangman's whip that holds the wretch in order." I believe if I were a scientist working under the Russian regime, that the hope that my family would survive and have reasonable, decent living conditions would go further to induce me to put forth effort, creative effort, than about any other type of inducement.

Now, Congressman King asked the question about whether a patent could function to foreclose experimentation in a laboratory. About 1860, way back in the Federal cases before the present Federal reporting system, before Federal No. 1, there was an attempt made by a patent owner to enforce a patent against experimentation, and an injunction was denied. Injunctions have since been denied in that area. Realistically, the Patent Office puts out a publication weekly known as the Official Gazette. It carries one claim representative of each patent issuing that week. Every research laboratory in this land is a subscriber to that Official Gazette, and the executive committees of those research laboratories, either themselves or through delegates, review that Official Gazette religiously week by week to keep abreast of the current technology, the work of their competition, and that instrumentality is one of the greatest stimulants to creative effort in the research field that we have.

Now, a further question went, from Mr. Yeager the other day: What would happen if some overriding invention such as a cancer cure came out of some of this research?

Well, in the first place, under the patent statutes themselves, the Commissioner issues patents which are only patents in the public in

terest. There would be no patent issued. And if through inadvertence it did issue, I think that your Department of Health, Education, and Welfare, which is so alert about cranberries, would move in awfully fast to take over and have produced the cancer cure, and probably distribute it free, and the patent owner would be left to his remedy in the Court of Claims to seek his just compensation. I think the cancer cure, of course, was overglamorized

Mr. MITCHELL. Mr. Burns, if you would, go into more detail why a patent would not be issued.

Mr. BURNS. Because under the patent statutes, themselves, the Commissioner has the authority to refuse a patent, the granting of which would be contrary to the public interest. That is a statutory authority presently vested under our patent laws in the Commissioner.

Mr. MITCHELL. Is it your view, then, the issuance of a patent for the hypothetical question that Mr. Yeager propounded would be contrary to the public interest?

Mr. BURNS. I would believe that the Commissioner would so hold. In fact, I have had a little experience in this field and I will tell you: Any applicant who is working in that area is extremely cautious to see that all he claims for his product is a pain alleviant. He never, if he is represented by astute counsel, lets creep into his application any indication whatever that this thing is a cure. So to do will stop

Mr. MITCHELL. All right, no patent is issued. What happens to this discovery? If the inventor says, "If I can't get a patent to it, I will just burn the formula."

Mr. BURNS. It will go like Salk vaccine did; I think it will be taken over.

Mr. MITCHELL. Is that not a possibility, if he cannot get a patent, he just will not give the public the benefit of the use of it?

Mr. BURNS. No; I think you are wrong in the matter of your presupposing a pretty vicious type of character, Mr. Chairman. I don't believe we have in our system people so subversive that if they came up with a thing as significant as a cancer cure

Mr. MITCHELL. I may be presupposing such an individual, but we must deal in possibilities. Is that not a possibility?

Mr. BURNS. I think not; I think not.

Mr. MITCHELL. You think he would do what with his invention, then?

Mr. BURNS. I think that it would be published; I think it would be brought to the attention of the industry. He might attempt to obtain protection of various types. He might try to obtain protection on methods of producing such a thing. Conceivably he might get some semblance of protection, but it would not be of the character that would be overriding. I picked this situation about the cancer cure because I think it was picked here to glamorize the situation. Let's take your overriding invention. Of course, it has no bearing on this question that is before you on the Government research, because the Government has the full, complete right anyway. And if this thing is in the public interest to the extent of a thing like a cancer cure, I don't believe that any court in the land would say that the production of that product was not for a governmental purpose, even as to the civilian supply of such a product.

Certainly it is governmental purpose to take care of its civilian employees, its military employees, their families. And I don't believe any court in the land would hold that it was not a governmental purpose. If it is a governmental purpose to do what the Health, Education, and Welfare now presently does, I don't think there would be any question in the world but that it would be so held.

Mr. YEAGER. Isn't it possible that there would be a distinction in that cancer is not of the plague nature of polio, not in the nature of influenza, or smallpox, which is where the primary health and safety factor comes in giving authority to HEW to distribute it to the public? In spite of the great importance of the cancer cure, it seems to me there might at least be a question as to whether the authority existed in that instance.

Mr. BURNS. Let's say they don't have any authority and they go ahead and do it anyway. What happens? The only remedy the patent owner has is a suit in the Court of Claims for his just compensation, and he has there to prove his damages and the Congress has to approve the payment after the Court of Claims gives him an award. So you have got a pretty good control over him in the situation of the inadvertent issuance of such a patent by the Patent Office. And this latter course applies to any of the so-called overriding patents that have been mentioned by various members of this committee during the course of these hearings. The Government can always, even with respect to a patent produced under private sponsorship, with no Government contract whatever, an individual's invention, the Government can take and use it. The individual cannot enjoin. His sole and only remedy is for his just compensation by suit in the Court of Claims, which, as was pointed out here the other day, was allowed by the act of 1910, which relinquished the sovereign right of the Nation to the extent of permitting patent owners to sue the Government for the tort.

Mr. MITCHELL. Now, Mr. Burns, on somewhat that same point, we have been told, and I know you have heard other witnesses state this, that the fact that Government would take title to a particular invention will hamper its marketability, that other manufacturers will just say, "Since it is going to be open to competition, we will not seek to produce it." Do you feet that way insofar as the hypothetical question that we are discussing about the cancer cure?

Mr. BURNS. No. I think that we have a pretty farsighted Government that will step in and see to it, in a situation of that kind, that something that overrides the

Mr. MITCHELL. Not the Government, but private pharmaceutical houses. Do you think that if the Government took title to this paricular discovery, that there would be many who would be anxious to manufacture that particular drug?

Mr. BURNS. I think they would

Mr. MITCHELL. Feeling that they could receive a profit?

Mr. BURNS. I think they would always be concerned that the basis under which they manufactured it yielded some profit. I think they probably would not look to obtain from that type of thing the same degree of profit that they would in others of their production. I think that even if the Government took it over and contracted out to have it produced by a pharmaceutical house that had the qualifica

tions to do it, that they should be given a reasonable profit in the fulfillment of their contract.

Mr. MITCHELL. Mr. Yeager?

Mr. YEAGER. I think I have one question, which is not related to this hypothetical situation. We have tried all through these hearings to find instances of an occasion where it might be beneficial for the Government to take title. These arguments against them have been certainly numerous, and I gather from what the members have said that many have been persuasive. Is there a possibility that Government ownership would be of any use as a setoff to an infringement claim? Of course, I don't know, to start with, how often infringement suits are filed against the Government.

Mr. BURNS. Well, I can tell you that there is only 1 out of 17 that ever prevails, and they are not filed frequently. My answer to you would be this: That the very rare possibility of such an offset is so remote that the contrary results of taking ownership by the Government of the patent property so transcends, in importance, that very possible rare occasion as to reduce it to a de minimis status. Mr. YEAGER. Thank you very much.

Mr. CARSTARPHEN. I have no questions.
Mr. MITCHELL. Thank you very much.

Mr. BURNS. I appreciate your courtesy, Mr. Chairman.

Mr. MITCHELL. Is there any data that counsel seeks to have inserted in the record at this point?

Mr. YEAGER. No, sir, I think we already have the permission we need to file such additional statements.

Mr. MITCHELL. That being so, then the hearings are adjourned. (Whereupon, at 1:30 p.m., the hearing was closed.)

(Additional statements submitted to the Subcommittee on Patent Law of the Committee on Science and Astronautics follow :)

WALTER KIDDE & CO., INC., Belleville, N.J., December 1, 1959.

Hon. ERWIN MITCHELL,
Chairman of the Subcommittee on Patents and Scientific Inventions,
Washington, D.C.

DEAR SIR: We are most concerned about the National Aeronautics and Space Act of 1958 (Public Law 85-568, 85th Cong., H.R. 12575, July 29, 1958) because of its impact upon our time-honored system of rewarding inventors by the is suance of letters patent for their inventions. Following upon the heels of the Atomic Energy Act, this new statute appears to drive still another wedge into our patent system. As you undoubtedly know, the American patent system with its rewards in the form of royalties and other types of remuneration has long been an incentive to research and development and has benefited not only the inventors and the owners of the patents but our Nation as a whole, both in times of war and of peace.

If there was any question up to this time as to whether our patent system is in jeopardy, all doubt has been resolved by the Space Act. The all-inclusive definition of “aircraft, missiles, satellites, and other space vehicles, manned and unmanned, together with related equipment, devices, components, and parts" contained in section 103 (2) of the act and the almost unlimited power of the Administrator to obtain exclusive ownership and control of all patent rights in this field granted by section 305 practically preclude the formation of any other conclusion.

Speaking from our own experience as developers and manufacturers of aircraft and missile parts and components, and specialized fire-fighting apparatus and safety equipment, our company has spent, over the period of the past 40 years, large sums for research and development and, as might be expected, has come up with many new and valuable ideas. The heart of the incentive for

such research and development work, much of which brings no real return but serves merely as a steppingstone in industrial progress, is the patent protection our company has been able to obtain through the years.

What is true of our company is true for most, if not all, organizations which devote substantial efforts to the development of new ideas, products, methods and processes which contribute to the growth of our national economy and to an increasing preparedness in the face of cold war threats and pressures. Statutes such as the Space Act of 1958 appear to indicate that our Nation is responding to these threats and pressures by destroying, bit by bit, the patent system which our country has built and nourished since the founders of our Nation first realized the need and desirability of such protection.

Whatever short-term gains may result from such a course will certainly be more than offset in the long run by the detrimental effects that are bound to result from the destruction of the incentive to research and development afforded by our patent laws. We trust that this will not occur and that the trend to governmentalize discoveries and inventions made by individual inventors and private industry will be reversed and that we may once again return to the system which has operated so successfully in the past, a system which permits individual inventors and private industry to grow under the protection of our patent system as our Nation's economy and preparedness grow.

We trust that the hearing being conducted by the House Space Committee will convince the Congress of the United States that a return to pre-Atomic Energy Act and pre-Space Act treatment of patents for inventions is imperative for the welfare of the Nation.

We respectfully request your consideration of this matter.

Very truly yours,

WALTER KIDDE & CO., INC.,
By J. WILLIAM CARSON,

General Patent Attorney.

THE GENERAL TIRE & RUBBER CO.,
Akron, Ohio, December 2, 1959.

Re patent provisions of the National Aeronautics and Space Act of 1958 (Public
Law 85-568)-Statement on behalf of the General Tire & Rubber Co.
Hon. ERWIN MITCHELL,

House of Representatives, Committee on Science and Astronautics,
Washington, D.C.

SIR: Due to my inability to appear personally to testify in connection with the public hearings being conducted relative to possible modifications of section 305, commonly referred to as the patent section of the subject act, I would like to respectfully request that this statement be entered in the record as representing the views of the General Tire & Rubber Co. on this matter.

The legislative history of the National Aeronautics and Space Act of 1958 shows quite clearly that the patent provisions contained in section 305 thereof were introduced just shortly before the passage of the bill in its final form. No public hearings were held on section 305 of the act; and no views were solicited, to our knowledge, from the patent bar or the members of industry likely to be most vitally concerned. The earlier drafts of the bill contained no patent provisions, which indicates strongly that it was the probable intention of the drafters of the law that the patent provisions of the then-existing armed services procurement regulations would, in general, be applicable and adequate to protect both the interest of the Government and the contractors. In any event, and for whatever the reasons, section 305 was introduced into the act at a very late stage, to the shock and amazement of those of the patent bar and the members of industry directly concerned.

There is felt to be no need for me to add to the length of this statement by restating the provisions of section 305 but, suffice it to say, the implications of the language of this section go far beyond anything heretofore promulgated of this nature, and this applies even to the Atomic Energy Act which was passed in an atmosphere of concern and near hysteria for the safety and wellbeing of the country in maintaining its supremacy in the field of atomic energy. Section 305 of the Space Act is entitled, "Property Rights in Inventions;" and provides that all such inventions, as defined in the opening subparagraphs (a) (1) and (2), shall be the exclusive property of the United States and any patents granted thereon shall be issued to and in the name of the United States.