Opening Statement of Rep. Tom Campbell (R-CA).
Re: patent reform legislation.
Hearing: House Courts and Intellectual Property Subcommittee.
Date: March 25, 1999.
Source: Tech Law Journal transcribed the following from its audio recording of the hearing. Rep. Campbell speaks softly and is hard to transcribe. Several words were inaudible, and there may be errors in this transcription.

Chairman Coble, you have been exceptionally gracious in our dealings on this bill. I am most grateful for your time and that of your staff. Mr. Glazer in particular has met with me.

And I want also to say that last night I heard from the Patent and Trademark Office that they were interested in meeting with me. I was in the midst of working on Kosovo, so I was not able to. But, just because PTO is represented in the room today, I want them to know that I would be anxious to meet with them as well.

Here are my two points, and I think I will be under five minutes. Hopefully, then, I will yield back.

There is no reason I have yet figured out for the prior commercial use. And I checked with as many a high tech company as I can, and the prior commercial use exception that you have written in the bill, at page 19, Title II.  And what is says basically is that, if you have invented first, and you are commercially using the technology, then, even though somebody patents first, you can continue that commercial use. And I don't want to over-estimate it, but I have got to say, high tech companies with which I spoke in preparation for my testimony today, said that this undermines the whole idea of encouraging people to file for a patent.

Now, last year when when the bill came to the floor, what I said was, the argument to give the prior commercial user is what ________________ [inaudible phase] continue to do what we were doing. But the rebuttal was very strong. The rebuttal said, hey, that is what you get when you patent.

The idea here is to get people to patent, so that it is not secret. And if you allow an exception, which is spelled out in Title II, for prior commercial use, it undermines that incentive in an important way. Last year what I offered on the floor was an amendment, which might serve, if I am -- I don't think I will be -- we will be working together, Mr. Chairman. I am very confident that you will present a bill that will incorporate what little contribution I can make. If we do have to go to compromise, what I thought was, if there is some argument that the prior commercial user should be entitled to continue that commercial use, then don't let the use expand. Limit it to the scope.

And the real issue here is small commercial user, somebody else patents it, small commercial user sells it to behemoth corporation, and behemoth corporation then takes what was intended to make ten units a month to make a thousand units a month.

So, if you need to have a prior commercial use, and it seems out of some sense of fairness, although I confess again, it has not convinced me, but if that is the notion, out of some sense of fairness directly, then don't let it expand. Limit it to the scope of the present prior commercial use. OK, that was my first point.

Second, I don't understand why we continue to meet the 18 month disclosure. If, we take your group, Mr. Chairman, on a twenty year maximum from date of application. The argument for the eighteen month disclosure for those patents not filed overseas, the argument was, this is a submarine patent. an inventor who hides his or her invention waiting for somebody else to commercialize it, and then when somebody else has put in all the effort to commercialize it, surface it, and get the patent as first to file, having hidden it all these years by motions to extend, and other dilatory tactics. But in taking care of that, it seems to me, by saying that in no event are you going to get twenty years from the date of filing -- and what we say is that three years is presumptively -- any more than three years in the Patent Office is presumptively dilatory. So you end end up with a seventeen year effective patent term. That seems fine. But that to me solves the submarine patent issue.

Lastly. Oh, last point on this one, and then I have only one final point. If I am wrong on that -- Lord knows I could be -- you nevertheless have made one slight, I think, overdraft, in, at, you say, eighteen months, disclosure will apply, if you file overseas. This is fair, because overseas there is mandatory disclosure after eighteen months. So why shouldn't Americans have the publication as well? But you say, not only if you file overseas, but unless you give up your right ever to file overseas. Let me to repeat that. Not just if you file overseas, but if you fail to give up your right ever to file overseas, that requires ____, and that isn't necessary, it seems to me, because if you are filing overseas, fine, then it is going to be publicly disclosed, but it no reason why you should not have to disclose it here in America after eighteen months. But, if you decide to file overseas, many years from now, under economic conditions that have changed, you shouldn't have to precommit that possibility now, at this point, while _____. Just a small wording change can be adjusted, I think.

And lastly. I don't have any lastly. I do if you give me one more minute. If have already spent it now, maybe I should not throw myself on the mercy so early in our ... [laughter]

Chairman Coble. It is early in the day, so we will be tolerant.

Rep. Campbell. I am grateful. I talked to small ventures, and high tech firms, and there is concern. I don't think that this is unworkable. I think it can be worked out. But there is concern that the re-exam process should not be another bite at the apple, but should very clearly, stay patent infringement litigation. Because otherwise, what you are doing is just setting up new way to challenge a patent. If the idea of the bill is to expedite and make more efficient challenges to the grant of a patent under prior art, which is the purpose of the re-exam, then you ought to stay litigation during the pendency of the re-exam. Otherwise, you have put the challenger to the patent in the position of being able to choose his or her forum. And you create one extra opportunity to challenge. You ought to at least stay the proceeding. Thank you for your time.