the same basic issues that the Patents Committee had had to consider. It was just a question of making a choice.

The bill was referred to the Senate Committee on the Judiciary on May 6, 1940.

C. THE TNEC STUDY

Under the authority of Public Resolution 113, 75th Congress,19 the Temporary National Economic Committee began its study of the concentration of economic power in the United States. Among other subjects, consideration was given to the question of patents.20

1. HEARINGS

Hearings on proposals for changes in the patent law and procedure were held on January 16, 17, 18, 19, and 20, 1939. The Court of Patent Appeals was mentioned by several witnesses.

Mr. Conway P. Coe, then Commissioner of Patents, testified (pp. 855-856, 860):

AS

Finally, there comes the litigation of patents. When a patent issues to an inventor we purport to give him the right, the exclusive right, for a term of 17 years to prevent others from making, using, or selling the invention covered by it. But we say that with our tongue in our cheek, for we know better you are aware, if the inventor undertakes to invoke the law for his protection he must file suit in a United States district court. If the decision of that court be objectionable to him or to the other party, the case must be taken to one of the 10 circuit courts of appeals *** But having taken this appeal, what has he gained? Hardly more than a ruling as to his rights in that particular circuit***

My conviction is that the poor inventor, and through him the public, suffers injustice precisely for the reason and to the extent that the monopoly, the exclusive right, purportedly bestowed on him is not now fully safeguarded * * * (pp. 855-856). I recommend for your consideration as a major improvement in the patent laws the creation of a single court of patent appeals (p. 860).

Dr. Vannevar Bush, representing the Carnegie Institution of Washington, made three suggestions, among which was the recommendation for a Court of Patent Appeals (p. 892).

Included in the appendix to this volume of the TNEC hearings was the summary report of the Science Advisory Board, Committee on the Relation of the Patent System to the Stimulation of New Industries, made to the President on April 1, 1935.21 Dr. Vannevar Bush was Chairman of the Board. The second major recommendation contained in this report was:

We recommend, therefore, that there be established a single court for patent appeals, in order to establish and maintain harmony and accuracy in judicial interpretations of patent questions, by confining the appellate jurisdiction in civil patent causes to one court, composed of permanent judges having the necessary scientific or technical background.

Further comments on the single Court of Patent Appeals contained in the report were:

Each judge should be learned in the law and proficient in knowledge of the industrial application of science, and should have had a reasonable experience in the trial of patent suits on the bench or at the bar. If, in order to grasp more

10 Act of June 15, 1938 (52 Stat. 705).

20 TNEC. Investigation of Concentration of Economic Power, Pt. 3. Hearings on Patents, January 16, 17, 18, 19, and 20, 1930.

21 Ibid., pp. 1139-1148.

fully special technical questions, the court wishes to call temporarily upon experts to advise and consult on difficult points, it should be enabled to do so.

In view of the importance of this court the salaries paid to the judges should be adequate to attract men of the highest stamp ***.

[Its jurisdiction should include] suits in Federal courts, other than the Court of Claims, (1) alleging infringement of a patent, (2) alleging breach of a license agreement involving a patent or invention, (3) in equity to obtain a patent, (4) in equity alleging interfering patents, or (5) under the declaratory-judgment law, involving any of the above issues.

The court should be composed of a sufficient number of permanent judges *** [and] should also hold terms at least once a year in each judicial circuit, except as these may be omitted at the discretion of the senior or chief justice of the court.

It appears desirable that there be transferred to this new court the present jurisdiction of the Court of Customs and Patent Appeals of all patent and trademark appeals from the Patent Office.

2. SUPPLEMENTARY MATERIAL

A supplementary volume, issued in 1941, contained material submitted to the committee.22 Among these items was a monograph by Senator William H. King of Utah, expressing his opinion on various aspects of patents considered by the committee, including some procedural matters. He disapproved of a separate court of patent appeals.

Senator King starts out by saying (p. 18046):

The next major recommendation for change in our patent laws has been for the creation of a separate court of patent appeals. In general this change is favored by those who oppose compulsory licensing bills.

He then gave a short review of the history of the proposal, beginning with the bill introduced in 1903, and ending with the then pending bill (S. 2687, 76th Cong.), introduced by Senator Bone. He then summarizes the points made in favor of the bill in the report of the Senate Committee on Patents, and later proceeds to show why he disagrees with them. Thus (p. 18048):

Briefly, the report of the Committee on Patents states that the various circuit courts of appeal vary greatly in the treatment of patents; that the various circuit courts are guilty of inconsistent rulings in patent matters and "a patentee is not assured of universal recognition of his patent, nor is the public assured of universal invalidity of the patent, in the case of one held invalid, until after numerous suits in various jurisdictions." ***

It is further stated in the committee report that the same patent may be the subject of suit in several jurisdictions, and the result often is disagreement among the appellate courts as to the facts and the interpretation of the law. *** The committee report finally states that it often requires years of litigation in the various circuit courts to obtain anything approaching a final result. *** As to the first contention of the Committee on Patents, he pointed out (p. 18049):

Courts of appeals are bound by the record of the court below, and many of the alleged conflicting decisions probably could be traced directly to the fact that new evidence was produced in a second trial which was not available to the court in a prior suit.

His comment on the committee's second contention as to the desirability of universal validity, was (p. 18049):

A decree in a patent suit operates in personam only, and not in rem. A decree in one suit in favor of the plaintiff would not be binding on a new and

22TNEC. Investigation of Concentration of Economic Power, Pt. 31-A. Hearings, supplemental data (1941).

subsequent defendant. That defendant would be entitled to his day in court. *** To preclude him the right to do so would be contrary to established concepts of justice and to the common law. * * *

[As to the universal invalidity of a patent] * there is an easier, a simpler, and a cheaper solution to it than the creation of a single court of patent appeals. I refer to the proposal that the law be amended to provide that where a plaintiff has unsuccessfully prosecuted one suit and his patent has been declared invalid that he shall thereafter be barred from prosecuting additional suits based on the same patent in different jurisdictions.

As to the last contention of the committee, Senator King pointed out (p. 18050) that testimony of Commissioner Coe before the TNEC showed that in the 4 fiscal years 1935 to 1938 inclusive, there had been 3,953 patent cases in the district courts of which only 538 were appealed to the circuit courts of appeal, or approximately 12 percent. It seemed to him unnecessary, therefore, to set up a single court of appeal to handle so few cases.

3. REPORT

In its final report, published in 1941, the Temporary National Economic Committee approved the establishment of a single court of patent appeals.23 The recommendation, which was unanimous, read:

Single Court of Patent Appeals.-In order to improve the existing mechanism for the issuance of patents and the determination of disputes relating thereto, we recommend the creation of a single court of patent appeals with jurisdiction coextensive with the United States and its territories. Such a court would replace the present 11 different and independent jurisdictions and should do much to assure uniform treatment of patents and to reduce the time and cost of patent litigation.

23 TNEC, final report, p. 37 (1941).

APPENDIXES

APPENDIX A

STATEMENTS OF AMERICAN BAR ASSOCIATION

STATEMENTS ON A SINGLE COURT OF PATENT APPEALS CONTAINED IN THE ANNUAL REPORTS OF THE AMERICAN BAR ASSOCIATION SECTION OF PATENT, TRADEMARK AND COPYRIGHT LAW

1899

[The following material is not so much bibliographic as informative. It is intended to trace the history of the advocacy by the association of the idea of a single court of patent appeals. The association, which was about the earliest group to advocate such a court, pressed for its adoption until approximately 1920. Page references are to the proceedings of the association unless otherwise indicated.]

The section of patent, trademark, and copyright law established a committee to look into the question of a patent court of appeals, and to report on their study the following year.

1900

The chairman of the committee (Mr. Frederick P. Fish) reported that before the passage of the courts of appeals act in 1891, patent appeals had to be taken directly to the Supreme Court. The circuit courts of appeals have not remedied the situation, but only complicated it, because divergent opinions have caused divergent decisions.

"The reason why there should be one court of appeals in patent matters is because each patent covers the whole United States and a suit on it is in reality one between the patentee and all the people of the United States, the issue being the right of the patentee to exclude the public for the time being from the use, without his consent, of the thing patented or alleged to be patented" (p. 507-510).

An extensive report was brought in by the committee to the section of patent, trademark and copyright law. This report was signed by Messrs. R. S. Taylor, L. L. Bond, and Edmund Wetmore. After reviewing, in extenso, the confusion brought into the law by having patents adjudicated in nine different circuit courts of appeals, the committee suggested a single court of patent appeals according to the following plan:

"1. The name of the court to be "The Court of Patent Appeals,' or some such designation, its sittings to be at Washington, its jurisdiction to be confined to patents, unless it should be thought best to include copyright and trademark cases, and to be final in those cases, except that when the court finds itself in disagreement with a decision of the Supreme Court it shall certify the question to the Supreme Court for reconsideration, and except also, that the Supreme Court shall have power to order any case decided by it to be sent up for review. "2. Its membership to consist of a chief justice and some number, say six, judges; the chief justice to be appointed for life by the President, with the advice and consent of the Senate, from the circuit judges in office at the time of the passage of the bill, and the acceptance of the appointment to vacate the appointee's office as circuit judge.

"3. The other judges to be selected and designated by the Chief Justice of the Supreme Court from among the circuit judges, to sit for the stated periods of 2, 4, and 6 years (assuming the number to be 6) at the outset, and after that for periods of 6 years, as the original period expires.

39

"4. In case of the inability of any judge to sit, by reason of sickness of himself or family, interest in the suit or other cause, the chief justice" to have power to designate another circuit judge to sit in his place for a stated time, or for the trial of a particular cause or causes.

"5. The judges of the circuit courts to receive, while sitting in the court of patent appeals, the salary and allowance provided for the justices of the Supreme Court, less $1,000 or some such sum, per annum; and the chief justice to receive the same salary and allowances provided for the Chief Justice of the Supreme Court, less a like amount.

"6. All appeals and writs of error in patent, and possibly, also, in copyright and trademark cases, to lie directly from the trial court to the Court of Patent Appeals" (pp. 543-552).

1903

The section of patent, trademark and copyright law is reported as having adopted the recommendation of the committee respecting the Court of Patent Appeals (pp. 57-84).

1904-13

The reports of the section of patent, copyright and trademark law show consistently favorable consideration of the idea, and outline various bills in Congress which have been supported by the representatives of the section.

1918

It is intimated in the report of the committee on patent, trademark and copyright law, that "Federal legislation and administration have since the last report of this committee been concentrated upon and congested by matters actually or ostensibly relating to war exigencies that the pending bills mentioned in that report and several since introduced ** have for the most part remained in abeyance. It has not been an opportune time to press remedial legislation. (American Bar Association Journal, July 1918, p. 481).

1919

In the report of the committee on patent, trademark and copyright law, the chairman, at length, replied to the motion of Mr. Edson made at the previous meeting that he had been derelict in his duty in not supporting the concept of a single court of patent appeals. The chairman pointed out, among other things, that past efforts had not been acted on favorably by Congress so there was no point in continuing such endeavors. Further, "In our opinion, the advantage of having appeals in other cases originating in the district courts will more than counterbalance any likely to accrue from diverting them to the proposed Court of Patent Appeals." (American Bar Association Journal, July 1919, pp. 440-446).

1920

The section of patent, trademark and copyright law adopted a resolution stating that "no legislation is desirable in the direction of substituting a special court of patent appeals for the appellate jurisdiction now existing; for reasons stated in the report adverse to such legislation submitted by the standing committees [of the section]” (p. 398 of the proceedings of the ABA).

1927

The section went on record as favoring the jurisdiction bill (H. R. 16222, 69th Cong.) transferring patent appeals from the Court of Appeals of the District of Columbia to the Court of Customs and Patent Appeals.

1931, 1932, 1936, 1938, 1939

The section went on record as opposing a single Court of Patent Appeals. 1940

At the midwinter meeting, the section (item 13) authorized disapproval of H. R. 234, providing for an administrative court which would include the Court of Customs and Patent Appeals, and (item 21) disapproved the proposal made by the section in San Francisco that a single Court of Patent Appeals be established (p. 411, et seq.).

There have been no further comments noted.

24 It is not clear whether the term "chief justice", as used here, refers to the chief justice of the patent court of appeals, or to the Chief Justice of the Supreme Court, but it probably refers to the latter.