REPORT OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1860
United States Patent Office
Sir: In compliance with the fourteenth section of the act, entitled "An act in addition to the act to promote the progress of science and the useful arts," approved March 3, 1837, I have the honor to submit a report of the operations of this office during the year 1860.
No. 1 Number of applications during the year 7,653 Number of patents granted, including designs, reissues, and additional improvements 4,819 Number of caveats filed 1,084 Number of applications for extension of patents 74 Number of patents extended 29 Number of patents expired, 31st December 1860 614 Of the patents granted there were To citizens of the United States 4,781 To subjects of Great Britain 21 To subjects of the French Empire 12 To subjects of other foreign governments 5 No. 2 Statement of moneys received during the year, namely On applications for patents, reissues, additional improvements, extensions, caveats, disclaimers, and appeals $240,867.00 For copies, and for recording assignments 15,485.59 __________ Total $256,352.59 ========== No. 3 Statement of expenditures from the patent fund during the year, namely: For salaries $100,685.55 For amount paid under the fifth section of the act of June 25 9,887.15 For contingent expenses 60,296.01 For temporary clerks 51,497.93 For withdrawals 28,960.00 For refunding money paid into the Treasury by mistake 302.50 For judges in appeal cases 1,075.00 ___________ $252,704.14 =========== No. 4 Statement of the condition of the patent fund Amount to the credit of the patent fund, 1st January 1860 $85,905.62 Amount paid in during the year 256,352.59 __________ Total $342,258.21 Deduct expenditures during the year 252,704.14 __________ Which leaves in the Treasury, 1st January 1861, the sum of $89,554.07 No. 5 Table exhibiting the business of the office for twenty four years, ending December 31, 1860 Years Applications Caveats Patents Cash Cash Filed Filed Issued Received Received 1837 435 $29,289.08 $33,506.98 1838 520 42,123.54 37,402.10 1839 425 37,260.00 34,543.51 1840 765 228 473 38,056.51 39,020.67 1841 847 312 495 40,413.01 52,666.87 1842 761 391 517 36,505.68 31,241.48 1843 819 315 531 35,315.81 30,766.96 1844 1,045 380 502 42,509.26 36,244.73 1845 1,246 452 502 51,076.14 39,395.65 1846 1,272 448 619 50,264.16 46,158.71 1847 1,531 553 572 63,111.19 41,878.35 1848 1,628 607 660 67,576.69 58,905.84 1849 1,955 595 1,070 80,752.78 77,716.44 1850 2,193 602 995 86,927.05 80,100.95 1851 2,258 760 869 95,738.61 86,916.93 1852 2,639 996 1,020 112,656.34 95,916.91 1853 2,673 901 958 121,527.45 132,869.83 1854 3,324 868 1,902 163,789.84 167,146.32 1855 4,435 906 2,024 216,459.35 179,540.33 1856 4,960 1,024 2,502 192,588.02 199,931.02 1857 4,771 1,010 2,910 196,132.01 211,582.09 1858 5,364 943 3,710 203,716.16 193,193.74 1859 6,225 1,097 4,538 245,942.15 210,278.41 1860 7,653 1,084 4,819 256,352.59 252.820.80
It will be seen by the foregoing statement of the operations of this office during the year 1860, that under the protection of the laws provided by Congress, deficient as they are in many respects, the inventive genius of our countrymen has been active beyond precedent, and that the business of the office has increased in a corresponding ratio.
Although the patent laws of this country, as revised by the act of July 4, 1826, and still further modified by the acts of March 3, 1827; March 3, 1829; August 29, 1842; May 27, 1848; and August 30, 1852, are believed to embrace the most perfect system of patent jurisprudence known to the world, yet they are far from approaching that standard which experience has shown is necessary to place them beyond reproach. Many of the defects inherent in the law have been so clearly and forcibly set forth by the various able and distinguished gentlemen who have been at the head of the office, that I find nothing to add, in the way of argument, to show the necessity of their correction to the effective administration of the affairs of the office. Were it otherwise, I should find myself relieved of this duty, since it is understood that a bill has already passed one branch of Congress, which, if it shall succeed in the other, will have a remedial effect that will go far to prevent the grant of worthless patents, to the detriment of the country, and to secure the allowance of valid claims as a reward to the meritorious inventor. I can but hope that the bill will pass at an early day. It has in its main features received the sanction of gentlemen whose legal training and experience lend to their judgment that respect and dignity which are generally concomitants of, and grace, profound attainments. It meets my own cordial approbation.
There are, however, other imperfections in the existing laws which I believe the pending bill does not propose to cure, and which, as far as my information extends, have not been heretofore the subject of communication to the legislature.
By the seventh and eighth sections of the act of July 4, 1836, an appeal lay from the decision of the Commissioner of Patents refusing a patent, and in interference cases, to a board of examiners, composed of three disinterested persons, who were appointed for that purpose by the Secretary of State; and they, or a majority of them, were empowered, on examination and on consideration of the matter, "to reverse the decision of the Commissioner, either in whole or in part; and their opinion being certified to the Commissioner," he was to "be governed thereby in the further proceedings to be had on such application."
But this board, temporary in its nature, its members being appointed for each occasion, and their services inadequately remunerated, experience proved to be an entire failure; and hence, by the eleventh section of the act of 1839, it was abolished, and the appellate jurisdiction transferred "to the chief justice of the district court of the United States for the District of Columbia." This was a step in advance. It was a decided improvement upon the original tribunal, and gave rise to no complaint, until the year 1850, when Chief Justice Cranch announced to this office that he was unable, by reason of the infirmities of age, to discharge the duties imposed upon him by the acts of Congress. From this period up to the 30th of August, 1852, a defeated party had no remedy from an adverse decision of the Commissioner; and the act of Congress of the latter date, which was designed as a remedy for this state of things, was only partial in its effect, for the right of appeal to the chief justice still remained; its remedial agency consisting only in the provision that appeals might "also be made to either of the assistant judges of the circuit court of the District of Columbia." The evils resulting from this condition of affairs were grievous, as might have been expected. In ex parte proceedings, a disappointed applicant, who might be disposed to obstruct the ends of justice, could, although conscious of the substantial correctness of the official decision, by appealing to the inform chief judge, secure to himself the right to manufacture and sell the thing invented during that official's lifetime, if during his lifetime he should be unable, as he was, to discharge the duties imposed on him. Many appeals had been taken to Judge Cranch, before the passage of the remedial act of 1852, by parties aware of his inability to act. Some of the applicants refused to transfer their cases to one of the associate judges. In such cases, where there was no opposing party, the evils resulting were such as have just been portrayed; but when the contest was between two bona fide and independent inventions, they were still worse. The applicants were not only permitted to make and vend the article invented with impunity so long as the chief justice should live, and thus secure a monopoly for more than fourteen years if they should finally secure their patents, but they were enabled to prevent the issuing of patents to the other and successful parties, who were willing and anxious to put the public in immediate possession of the fruits of their genius, which is one of the considerations for the grant of a patent.
Commissioner Hodges was prompt in his energies to meet and crush these great wrongs. He accordingly issued his orders that in all cases where appeals had been taken to the chief justice in cases of interference, the appellants should amend by transferring them to one of the assistant judges; and that all appeals in like cases that should thereafter be brought should be taken to the same officers.
Commissioner Mason was anxious to support his predecessor; but he doubted the competency of the Commissioner of Patents to limit the right of appeal, however strong the necessity. In a case then before him, he said he had every disposition to do this if he had the power. The matter was, therefore, laid before Attorney General Cushing for his advice, who, in pronouncing his opinion, said: "I perceive the inconvenience involved in the fact, that the party against whom the Commissioner has decided, in a case of interference, may, by an appeal to the chief justice, which he by infirmity is unable to hear and determine, purposely delay and obstruct the final decision in the case in favor of the rightful claimant to the patent, and thus injustice be done. But Congress, and Congress alone, has, in my opinion, power to remedy the evil."
I have been thus minute in tracing the working of the several statutes giving the right to an appeal, for the purpose of stating with the more emphasis that the act of 1852, devolving upon the chief justice and either of the associate judges of the circuit court of the District jurisdiction in appeal cases from the adverse decisions of this office, is still in force; that since the demise of Judge Cranch in 1855, we have had a recurrence of the inconvenience resulting from the act, in the inability of one of the associate judges to attend to the duties of his office for about a year; and that a similar contingency may arise at any day, when, of course, such appeals as may have been taken to the disabled judge must await the issue of events, to the injury alike of the public and of individuals.
Another serious objection to the act of 1852, and in which particular it should, in my opinion, be amended, flows from the rate and manner of compensating the judges for their services. By the thirteenth section of the act of the 3d March, 1839, the chief justice was paid annually out of the patent fund, in consideration of the duties therein imposed, the sum of $100. But this section was repealed by the act of 1852, and the Commissioner of Patents was required to pay to the chief justice, or assistant judges, according as the appeal might be taken to either, the sum of twenty-five dollars, required to be paid by the appellant in the Patent Office by the eleventh section of the act of the 3d of March, 1829.
The reason of this enactment it is now difficult to discover; but the evils resulting from it must, I think, be apparent to every reflecting mind, and are very forcibly stated by the Hon. Secretary of the Interior, in his annual report to the President of the United States for 1857.
"The appellant not only selects the judge who shall try the case, but also pays the fee of twenty-five dollars allowed him. The amount of compensation thus received will depend upon the number of cases brought before him; that number will inevitably be influenced by his course of decision. The judge is thus placed in a position of embarrassment, if not of humiliation, alike to be deplored by himself and the country."
There is still another point in which the act allowing appeals imperiously calls for amendment. The eleventh section of the act of March 3, 1839, requires the commissioner to "lay before the said judge all the original papers and evidence in the case, together with the grounds of his decision fully set forth in writing, touching all the points involved by the reasons of appeal to which the revision shall be confined." This "evidence" most commonly consists of the records of the office, the drawings, specifications, and models of patented and rejected applications, which are needed always in the office for the transaction of its current business, and yet this law requires that with every appeal, the commissioner shall transmit to the selected judge that portion of the records appertaining thereto, which, as proceedings are at chambers, means to the residence of the judge. In the meantime, these records are withdrawn from public inspection and instances have occurred, in which applications for patents have been suspended for months, in consequence of the danger of acting upon them in the absence of a portion of the records relating thereto.
Such are the evils incident to the laws of appeal, as they now exist. There is no difficulty in the way of their amendment, and, in my opinion, no time should be lost in applying the proper remedies. Why could not appeals from the adverse decision of the Commissioner of Patents be taken to the Circuit Court of the District of Columbia, instead of the individual judges? Why could not each judge for the duties thus imposed be allowed an annual compensation of, say $500, and when a patent cause should be heard, why not require the Circuit Court to sit in the Patent Office, in a room to be provided for that purpose? I confess I can see no objection to an amendment of this nature, and respectfully recommend that such a law be enacted. It would obviate all the defects above explained, and it is confidently believed, would meet with the approbation of the judges.
Previous to the month of December, 1857, it was the practice of the Commissioner to hear appeals in person from the adverse action of the examiners; but it was soon found, from the natural increase of the business of the office, that this was becoming a physical impossibility; and hence was adopted the alternative of deputing temporary boards of examiners, which, in some measure, relieved the Commissioner of the burden thrown upon him. But the plan soon developed its own imperfections. Each board had its own principle of action, and, in many instances, this differed from the rules prescribed by the Commissioner. As a corrective, it was at length determined by Commissioner Holt to establish a permanent board of appeal within the office, whose members, three in number, should be taken from the examining corps, and whose duty it should be to examine all ex parte rejected cases, and submit their report and reconsideration, as to their final disposal, to the Commissioner for his approval. This board has now been in existence for over three years, and the wisdom of its creation is a matter placed beyond all doubt. Guided in its principles of action by the doctrines established by the courts, and illustrated by such eminent Commissioners as Mason, Holt, Bishop, and Thomas, whose confidence it has always enjoyed, "the result of its action," as stated by Mr. Holt, in his report for 1858, continues to be eminently satisfactory, and "to command, it is believed, the entire confidence of the country."
Since its establishment the board of appeals has revised 1,790 cases, 748 of which it has reported for final rejection, while 271 have received its partial action. Of those rejected, only forty-two have been carried up on appeal to the judges of the circuit court of the District. It is confidently believed that no other tribunal of a like nature can exhibit such evidence of public approbation.
Prior to the 1st July, 1860, interferences were declared, examined, and the results reported to the Commissioner, by the separate examiners to whose class they belonged. While the business of the office was comparatively light, and the number of examiners few, there was not much objection to this course; but as the number of applications and examiners increased -- the former, however, in a greatly augmented ratio to the latter -- it was found to be impossible for the examiners to attend to their current duties in an intelligent manner when they were subject continually to be called off, to devote, in many instances, a week at a time, to the hearing and determination of questions arising between contesting applicants. But this perhaps was not the greatest evil. The examiners had increased in the course of a few years from two in number to twelve; and as each examiner disposed of his own interferences, there were as many different sets of rules and principles established as there were differently constituted minds. The want of harmony, the confusion, in short, resulting from such a state of things, was a source of great complaint, and involved the office practice in a mist so impenetrable that the most acute became discouraged in their search for a clear and well-defined guide to the path they sought. A remedy seemed to be imperative; and as the only resource within his power, Commissioner Thomas deputed one of the most practiced and competent examiners to discharge this duty, whose action, characterized by great industry and ability, it is believed has given eminent satisfaction.
I would suggest that Congress make the designation permanent with reference to this particular service, giving sanction of positive enactment to a rule eminently successful, if not imperatively required, in the future conduct of the business of the office.
S. T. SHUGERT
Acting Commissioner of Patents
Hon. John C. Breckenridge
Vice President United States