[Congressional Record Volume 143, Number 42 (Thursday, April 10, 1997)]
[House]
[Pages H1406-H1408]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




       THE 18-MONTH PUBLICATION PROVISIONS CONTAINED IN H.R. 400

  The SPEAKER pro tempore. Under a previous order of the House, the 
gentleman from North Carolina [Mr. Coble] is recognized for 5 minutes.
  Mr. COBLE. Mr. Speaker, the Constitution charges Congress with the 
responsibility of creating an incentive for inventors to share their 
inventions with society by granting a monopoly for a limited amount of 
time in which the inventor alone can prosper from the success of the 
invention.
  Why was this incentive necessary? Because the Founding Fathers knew 
that our country would not achieve progress in science and the useful 
arts without effective disclosure of the inventions of our citizens. 
This straightforward point, which is integral to the understanding and 
promoting the beneficial patent changes set forth in H.R. 400, is 
regrettably lost on some of the critics of the bill.
  Disclosure through publication provides many benefits. It allows 
other inventors to discover what inventions have already been applied 
for and encourages them to invest their time and

[[Page H1407]]

efforts in other inventions which further benefit our country. It 
serves as a ``Do Not Tread On Me'' flag for the inventor who submitted 
the application, so that others know not to try to copy the invention 
or they will be found liable for infringement. It allows venture 
capitalists the opportunity to consider financing an invention which 
may lead to the financial success of the inventor, and it benefits 
society so that we can continue to move forward in science and 
technology instead of keeping cherished knowledge hidden below the 
surface.
  What does an inventor get in exchange for publication? The inventor 
receives the constitutional monopoly over his or her invention granted 
by Congress and enforced through the courts. The entire patent system 
is based on bringing new inventions into the public light and avoiding 
secrets.
  If an inventor chooses to keep his invention secret, he should not 
apply for a patent, because he is not willing to exchange disclosure of 
his invention for Federal protection. Instead, he may keep his 
invention as a trade secret, which is protected under the State trade 
secret and unfair competition laws. That is the deal. In order to get 
Federal patent protection, disclosure must occur. It occurs now when a 
patent is granted. Most are granted within 20 to 22 months.
  Why disclosure at 18 months? There are several good reasons to 
publish patent applications in 18 months. First, with disclosure comes 
protection against infringement. Inventors will be protected earlier if 
patent applications are published at 18 months. Now, patents are 
published when they are granted. The term ``patent pending'' on an 
invention may serve to warn that protection will ensue when the patent 
for the invention is issued, but it does not provide true protection.
  By publishing applications at 18 months, inventors are protected 
before their patent is issued and may enforce their patent rights from 
the publication date. Under current law, a small business or 
independent inventor could go bankrupt by investing everything it has 
in a project that another entity has claimed in an earlier, secret 
application.
  Publishing in 18 months also prevents some applicants from gaming the 
current system to purposely delay their patent and keep their invention 
secret in violation of the constitutional exchange of disclosure for 
protection. These inventors want the best of both worlds. They want to 
keep their invention secret forever, like a trade secret, but still 
receive the Federal grant of a patent.
  This was not the intention of the Founding Fathers and does not 
benefit society. These types of applicants are called submariners, and 
they are protected by the opponents of H.R. 400 which will be on the 
floor imminently, probably next week. They file submarine patents which 
destroy competition and stifle technological innovation.
  Submariners purposely delay their applications and keep them hidden 
under the water until someone else, who has no way of knowing of the 
hidden application, invests in the research and development to produce 
a new consumer product only to have the submariner arise above the 
surface and sue them for their innovation. Submariners do not invest in 
the American economy, they do not hire American workers, they do not 
market their inventions, and they do not make money from selling their 
inventions.
  There are more benefits as well, Mr. Speaker, to publication at 18 
months. It would finally treat our patent applicants more fairly 
relative to foreign entities which apply for protection in the United 
States. Under current conditions, a U.S. inventor filing abroad has his 
or her application published at 18 months in the language of the host 
country. This means that foreign competitors may review, but not steal, 
the U.S. application.
  Mr. Speaker, I urge all of my colleagues to examine H.R. 400 very 
carefully and very meticulously, and I appreciate the support of my 
colleagues.
  One final point, Mr. Speaker. Those who oppose H.R. 400 are entitled 
to their convictions, misguided as they are. They are not, however, 
entitled to misrepresent the contents of my bill by lowering the level 
of discourse on this subject. Patent law is complex and arcane; it is 
not sexy and engaging when seriously discussed, especially on 
television. This would explain the current controversy surrounding the 
legislation. My patience has been tried in this regard, but I will 
resist the temptation to respond in like manner.

  Statement of the Honorable Howard Coble, Chairman, Subcommittee on 
  Courts and Intellectual Property, Committee on the Judiciary, U.S. 
    House of Representatives on the 18-Month Publication Provisions 
                         Contained in H.R. 400

       Article I, Section 8, clause 8 of the Constitution charges 
     Congress with the responsibility of creating an incentive for 
     inventors to share their inventions with society by granting 
     a monopoly for a limited amount of time in which the inventor 
     alone can prosper from the success of the invention. Why was 
     this incentive necessary? Because the Founding Fathers knew 
     that our country would not achieve progress in ``Science and 
     the Useful Arts'' without effective disclosure of the 
     inventions of our citizens.
       Disclosure through publication provides many benefits. It 
     allows other inventors to discover what inventions have 
     already been applied for and encourages them to invest their 
     time and efforts in other inventions which further benefit 
     our country; it serves as a ``Don't Tread On Me'' flag for 
     the inventor who submitted the application so that others 
     know not to try to copy the invention or they will be found 
     liable for infringement; it allows venture capitalists the 
     opportunity to consider financing an invention which may lead 
     to the financial success of the inventor; and it benefits 
     society so that we can continue to move forward in science 
     and technology instead of keeping cherished knowledge hidden 
     below the surface.
       What does an inventor get in exchange for publication? The 
     inventor receives the Constitutional monopoly over his or her 
     invention granted by Congress and enforced through the 
     courts. The entire patent system is based on bringing new 
     inventions into the public light and avoiding secrets. If an 
     inventor chooses to keep his invention secret, he should not 
     apply for a patent because he is not willing to exchange 
     disclosure of his invention for federal protection. Instead, 
     he may keep his invention as a trade secret, which is 
     protected under state trade secret and unfair competition 
     laws. That's the deal--in order to get federal patent 
     protection, disclosure must occur. It occurs now when a 
     patent is granted. Most are granted within 20-22 months.
       Why disclosure at 18 months? There are several good reasons 
     to publish patent applications at 18 months. First, with 
     disclosure comes protection against infringement. Inventors 
     will be protected earlier if patent applications are 
     published at 18 months. Right now patents are published when 
     they are granted. The term ``patent pending'' on an invention 
     may serve to warn that protection will ensue when the patent 
     for the invention is issued, but it does not provide true 
     protection. By publishing applications at 18 months, 
     inventors are protected before their patent is issued, and 
     may enforce their patent rights from the publication date. 
     Under current law, a small business or independent inventor 
     could go bankrupt by investing everything it has in a project 
     that another entity has claimed in an earlier secret 
     application.
       Publishing at 18 months also prevents some applicants from 
     gaming the current system to purposely delay their patent and 
     keep their invention secret, in violation of the 
     Constitutional exchange of disclosure for protection. These 
     inventors want the best of both worlds. They want to keep 
     their inventions secret forever, like a trade secret, but 
     still receive the federal grant of a patent. This was not the 
     intention of our Founding Fathers and does not benefit 
     society. These types of applicants are called 
     ``Submariners.'' They file ``Submarine Patents'' which 
     destroy competition and stifle technological innovation. 
     Submariners purposely delay their applications and keep them 
     ``hidden under the water'' until someone else, who has no way 
     of knowing of the hidden application, invests in the research 
     and development to produce a new consumer product, only to 
     have the submarine rise above the surface and sue them for 
     their innovation. One recent suit earned a Submariner $450 
     million at the expense of consumers. Submariners do not 
     invest in the American economy, they do not hire American 
     workers, they do not market their invention and they do not 
     make money from selling their invention. They have seemingly 
     one purpose, and that is to make money by clogging the courts 
     with litigation and suing those who do hire our workers and 
     invest in our economy. They purposely file very broad 
     applications and hope that another company or inventor will 
     invest in technology similar to that contained in the patent 
     application. Because there was no disclosure, the innocent 
     company or inventor had no idea the technology was protected. 
     Had the innocent company or investor known of the 
     application, it could have invested elsewhere to contribute 
     to consumers and society in a different way. When a 
     Submariner hits ``the jackpot,'' he sues as many parties as 
     possible, hoping that his patent, which may have been pending 
     secretly for years, will pay off in infringement actions. In 
     many cases, a Submariner will sue parties he knows are not 
     truly violating his patent in hopes of achieving a 
     ``nuisance'' settlement. Unfortunately, this activity forces 
     higher consumer costs and does not lead to American 
     technological progress.

[[Page H1408]]

       There are more benefits to publication at 18 months. It 
     would finally treat our patent applicants more fairly 
     relative to foreign entities which apply for protection in 
     the United States. Under current conditions, a United States 
     inventor filing abroad has his or her application published 
     after 18 months in the language of the host country; this 
     means that foreign competitors may review (but not steal) the 
     U.S. application. Since our system lacks this feature, 
     however, a foreign entity never reveals the subject of its 
     application until the patent issues. Publication after 18 
     months in the United States will allow an American company to 
     review foreign applications here in English. Under no 
     circumstances does 18-month publication create newfound 
     opportunity for an American or foreign competitor to steal 
     the contents of a published application. Just as is the case 
     when a patent is granted, any competitor who appropriates an 
     invention after publication but before grant must pay damages 
     to the patent applicant.
       H.R. 400 provides for 18-month publication, but allows an 
     inventor to avoid publication if it is unlikely he will 
     receive a patent. Under the provisions of H.R. 400, any 
     inventory who is applying for a patent exclusively in the 
     United States has up to three months after an initial 
     determination by the Patent and Trademark Office to decide 
     whether or not he wishes to proceed. If the PTO determines 
     that the applicant will not likely receive a patent, the 
     applicant may withdraw his application and seek protection 
     under trade secret and unfair competition laws. If the patent 
     is likely to be issued and the applicant proceeds, it will be 
     published and protected after 18 months.
       H.R. 400 carries out Congress' special obligation under the 
     Constitution to provide protection in exchange for disclosure 
     and will serve to benefit America's inventors. H.R. 400 is 
     necessary for the Progress of Science and the Useful Arts.

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