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go even further than that. I believe that they don't take out patents or didn't for a long time, at least on medical discoveries. Under one of the fellowships of the National Academy of Sciences there was developed some drug that was useful in the treatment of syphilis. That was freely disclosed and dedicated to the public. There was later imported from one of the European countries some of that drug which was not properly controlled as to purity, and it was dangerous, at least believed to be dangerous by the medical profession. Who had the responsibility then for dealing with that particular case to insure control? If there had been a patent assigned to some agency that was responsible, that situation could have been handled, but mere dedication to the public, just that gesture alone, didn't handle that situation. I think perhaps I am not competent to discuss those aspects of the problem except that I did see that during the war in the OSRD, without a restrictive patent policy, but simply with the single principle that things should be handled in the best interests of the public, there was worked out a procedure that apparently worked fairly satis factorily, and of which I happen to be the residuary legatee at the moment in finally settling the penicillin patents as between certain foreign interests and ourselves.

Mr. Brown, who is our counsel, who works on those things, is here, and he would be glad, I am sure, to expand on that, if you wish. The only thing that I fear, and this is not speaking as an expert but as one who has been fairly close to a good many of these problems, is that a simple dedication to the public, just that one phase, while it sounds nice, is not adequate to handle the kinds of situations that we have. I would rather see the Foundation given the privilege, with competent patent counsel's advice and experience, of working out its policies.

have

Mr. SADOWSKI. I think, doctor, that none of us should fear a monopoly in patents in the Science Foundation or the Government if the purpose of that monopoly would be to give widespread use of the inventions to people generally. In other words, even though you a great control over patents, suppose this Foundation has a great control over patents and new discoveries, but if they are made available to the public generally to be used to the fullest extent, then it is a good monopoly in that respect. The kind of monopoly I would fear is the kind that would get hold of these things and then not permit them to go out to the general public or so to take control over a particular industry that they would stifle all other industries in that particular field.

Dr. COMPTON. The thing should be handled so that you get the quickest and most complete and cheapest access of the public to any results.

There is one thing I would like to say, though, before leaving this that this Foundation is primarily aimed at fundamental basic research, and I think in the minds of the general public the importance of patents in that thing is greatly exaggerated. I am perhaps not a very inventive person, but I have published upward of 100 scientific papers, in the field of electronics mostly, and spectroscopy, and so forth. Before I went to MIT I was a consultant for nearly 10 years with the General Electric Co. I never took out a patent, never thought of taking out a patent. I think up until rather recently I couldn't have named a half dozen of my scientific acquaintances.

over the country that as far as I know had ever taken out a patent or ever were interested in taking out a patent. So, I think the thing is very much exaggerated.

To be sure, out of the work a lot of these scientists do there are discoveries made which some skillful inventive person can put together and produce a patentable invention, and I think that the public certainly should be properly protected. But I do think that the patents in this thing are very, very small in importance in comparison to the advantage of building up this great stock pile of fundamental scientific knowledge and of trained scientists. That is the great objective. I would hate to see the uncertainties over the handling of patents prejudice the reaching of that objective which is much the more important thing, I believe, to the public.

Mr. PRIEST. Mr. Wilson?

Mr. WILSON. At the risk of prolonging this unnecessarily, Dr. Compton, I want to read a very short paragraph that I have read in Dr. Bush's Science: The Endless Frontier on patent policy and ask you the question after I have read it whether or not it is sound, on the very subject you are talking about, the policy which relates to this broad subject.

PATENT POLICY

The success of the National Research Foundation in promoting scientific research in this country will depend to a very large degree upon the cooperation of organizations outside the Government. In making contracts with or grants. to such organizations, the Foundation should protect the public interest adequately and at the same time leave the cooperating organization with adequate freedom and incentive to conduct scientific research. The public interest will normally be adequately protected if the Government receives a royalty-free license for governmental purposes under any patent resulting from work financed by the Foundation. There should be no obligation on the research institution to patent discoveries made as a result of support from the Foundation. There should certainly not be any absolute requirement that all rights in such discoveries be assigned to the Government, but it should be left to the discretion of the Director and the interested division whether in special cases the public interest requires such an assignment. Legislation on this point should leave to the members of the Foundation discretion as to its patent policy in order that patent arrangements may be adjusted as circumstances and the public interest. require.

What do you feel about that as being sound policy on this patent angle?

Dr. COMPTON. That I believe would be sound policy; yes, sir.
Mr. WILSON. To leave it to the discretion of the Director?

Dr. COMPTON. And the Foundation; yes, sir.

Mr. WILSON. Not with an absolute requirement of assignment in all cases.

Dr. COMPTON. No. Because, as I say, I think the types are too complex to make that possible, and I believe in the bills there is a clear statement of objectives, and I think that objective ought to be sought. In many cases of important scientific discoveries, the great majority of cases, I think, there would be no point in a patent at all. Take, for example, development of the field of electronics. For 100 years there had been discoveries of one sort or another in the field of electronics, and then along about 1906, or whatever it was, Flemming came along and invented the so-called Flemming valve, and then DeForest came along a few years later and invented the three-electrode tube, and then we were off in electronics; but the whole background of scientific

discoveries that preceded that dealt with things which did not have any practical objective that could be seen at the time, and yet those are the kind of things you have to build up until you can get to the point where the common knowledge of a lot of things of that sort has, we will say, prepared the ground for specific inventions and promotion.

That is what I think most of the work of this Foundation will be, not all, and there will be some cases certainly that will come up where there must be skillful handling of the patents. It seems to me that in the hands of skilled persons, which would include people of patent experience on the legal side and inventing and industrial experience, there could be worked out a program that will give the public the advantage of that thing as cheaply and as quickly as possible, and you would have what you want.

I am afraid that just a simple statement dedicating it to the public will not always achieve that. That is the reason I would prefer to see the objective stated rather than the method.

Mr. PRIEST. Are there any further questions?

Dr. Compton, we are indeed grateful to you for your patience and your very fine presentation to this subcommittee.

Dr. COMPTON. Thank you.

Mr. PRIEST. May the Chair state at this point that we have several witnesses here. It is the hope of the subcommittee that we can conclude these hearings today with the exception of one morning session on April 26, at which time representatives of the National Patent Council will be heard. In assisting the subcommittee to proceed with expedition, if there are portions of prepared statements that witnesses may be able to brief in their presentation but include completely in the record, it will be appreciated.

The committee will next hear Mr. Harold J. Kinney of St. Paul, Minn. Mr. Kinney.

May the Chair state before Mr. Kinney starts that we hope to hear Commissioner Kingsland, Mr. Kirkpatrick, and our former colleague, Mr. Lanham, before we have concluded, unless there is a roll call which may come shortly after the House meets; but we will proceed to the best of our ability to hear all witnesses who are here this morning.

STATEMENT OF HAROLD J. KINNEY, ATTORNEY AT LAW,
ST. PAUL, MINN.

Mr. KINNEY. My name is Harold J. Kinney. I am a lawyer, practicing in St. Paul, Minn. I have been engaged with patents, specializing in patents, since the year 1930. Prior to my study of law, I received a degree in chemical engineering from the University of Wisconsin. I am patent counsel for the Minnesota Mining & Manufacturing Co. in St. Paul.

The purpose of my coming here today is to give the views of myself and a number of others on one important aspect of the National Science Foundation bill (H. R. 12) and the similar provisions of the Senate bill (S. 247).

As much as I know about the bill as a whole, I think I favor a National Science Foundation bill. I think we should proceed ahead cautiously and see how the experiment works over a period of a few years, so I think I should say I am in favor of an appropriate National

Science Foundation bill. But I am going to direct my remarks specifically to the patent section.

In the Senate bill that was section 11. In H. R. 12, it is section 12. The whole section is of course pertinent, but I call your attention to the last sentence of subsection (b), which authorizes the assigning of application for a patent not only to the Government but also to any nominee of the Government in accordance with such rules and regulations as the Director may establish.

I also refer to subsection (e) of the preceding section, which empowers the Foundation to acquire by purchase, lease, and so forth, personal property of all kinds necessary for or resulting from scientific research. It also authorizes the disposal by sale or lease of such property.

Patent rights are, of course, a species of personal property. It is therefore clear that the Foundation would be authorized to acquire patents by paying out sums of money or by other means; and, once having acquired patents, the Foundation may sell any of them to whomsoever it chooses, or it may grant licenses under any of them to whomsoever it chooses, and it may withhold the granting of patent rights to others.

I think that is clear according to the terms of the bill.

I think it is apparent that the act would thus leave at the discretion. of the governing body of the Foundation, whoever that might be, a policy which might be regarded by some as one of unfair discrimination and favoritism with respect to granting of patent rights. If such a policy as that occurred, the public reaction would be obvious.

I am going to turn immediately to what I regard as my principal theme: Why should there be any provision at all for the Foundation to own patents? Preliminarily, let us say, what is the nature of a patent right? It grants no affirmative right whatsoever. It simply grants a right to exclude others for a limited time using what is covered. by the patent.

If patent rights are to be owned and enforced by the Foundation, then presumably it will be a policy of the Government to exclude those that it does not desire to have use the patents, or what is covered by them.

I do not think that the United States Government, acting through the Patent Office, should adopt a policy of granting patents to itself, acting through the National Science Foundation. There has never been any ruling by the Supreme Court of the United States nor, I believe, by any other court, in support of the ownership of letters patent on inventions by the United States Government or one of its bureaus or agents. There has, however, been at least one decision of the Supreme Court which throws some light on the question, and you gentlemen may be familiar with the case of United States v. Dubilier Condenser Corp. (289 U. S. 178), which was decided by the Supreme Court on April 10, 1933. The suit was instituted by the United States in the district court for Delaware, asking for a declaration that Dubilier Condenser Corp., exclusive licensees under three separate patents to two employees of the Bureau of Standards, was a trustee for the United States in respect to such patents and, as such, required to assign to the United States all of its right, title, and interest in the patents.

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The district court dismissed the action, and that judgment was affirmed by the Third Circuit Court of Appeals and by the Supreme Court. The case did not attempt to decide that Dubilier had any rights in those patents which could be enforced against the United States, and my personal viewpoint is that it did not. Further, the actions did not require a decision as to whether Dubilier had rights which could be enforced against anyone, but simply whether the Government owned the patents and could compel an assignment to it. On this issue Chief Justice Hughes, though disagreeing with the reasoning of the majority opinion-the majority decided that the suit should be dismissed-Chief Justice Hughes stated:

As the people of the United States should have the unrestricted benefit of the inventions in such a case, I think that the appropriate remedy would be to cancel the patents.

You will notice that this dissenting reason does not at all suggest that the Chief Justice thought that the United States Government should be able to own and enforce patents.

In its original majority opinion the Court had included a paragraph which began

Moreover, no court could, however clear the proof of such a contract, order the execution of an assignment.

The Court went on to indicate that no statutory authority exists for the transfer of a patent to any department or officer of the Government. The Court might have gone on to add that a very serious constitutional question would be raised if the Congress attempted to provide statutory authority for such a transfer of patent to a department or officer of the Government.

The foregoing sentence and two others from the Dubilier opinion were deleted by the order of the Court a month or so later, and presumably for the reason that the Dubilier case did not require the Court to decide the basic question of whether the United States Government could ever own a United States patent. I agree that such a question should not be decided off the cuff, so to speak, but when it is decided I think the decision should be and must be that the Government may not own its own patent grants.

At that time, namely, in the year 1933, various departments or officers of the Government, such as the Secretary of Agriculture and the Department of the Interior, had various patents which were ostensibly assigned to them. Undoubtedly counsel for the Government persuaded the Court that it should not in effect prejudge the status of these patents without a hearing where it was not necessary to decide that point in order to decide the Dubilier case.

I know of only one instance in the past where the Congress has ostensibly authorized a department of the Government to own patents, and that is a rather casual provision in the bill creating the Tennessee Valley Authority. That has never been litigated, and if it were, I think it would undoubtedly be held unconstitutional.

Many others besides myself have questioned the policy of the Government going into the business of owning its own patents grants. The National Patent Planning Commission, some 3 years ago, stated:

The ownership of a patent by the Government is somewhat anomalous Commercial and industrial interests in the protection of an operating business or in recovering investment costs requires the exclusive right conferred by a

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