Extract from Mechanic's Magazine and Journal of the Mechanic's Institute, vol 7 (January 1835 - June 1835) pages 314-319 and 330-336
The following report will be found interesting to many of our readers -- and therefore we give it entire, with the proposed new organization of the department.
[Since transcribing this, I have also found it as Documenet 338 of the 24th Congress, 1st Session, Senate of the United States, April 28, 1836 -- Read, ordered to be printed, and that 3,000 additional copies be sent to the Senate. KWD]
The Select Committee Appointed to Take into Consideration the State and Condition of the Patent Office, and the Laws Relating to the Issuing of Patents for New and Useful Inventions and Discoveries, Submit the Following Report:
The promotion of the arts and the improvements of manufactures, are the objects aimed at in [sic] granting patents for inventions. All civilized nations have provided in some form for the encouragement of inventive genius. England, from whom we derived, originally, most of our notions of national polity, and who has hitherto been considered the "queen of arts," is in no small degree indebted for the distinction, to the liberality with which she has always rewarded genius and science for their inventions and discoveries. Individual munificence and the patronage of wealthy associations, have there, as in France and Germany, done much to supply whatever was wanting in the liberality of the Government. But such patronage is necessarily partial in its operation. It is limited to particular objects, if not to particular individuals. There appears to be no better way of measuring out appropriate rewards for useful inventions, than, by a general law, to secure to all descriptions of persons, without discrimination, the exclusive use and sale, for a given period, of the thing invented. In this way they will generally derive a just and appropriate encouragement proportioned to the value of their respective inventions. It is not at this day to be doubted that the evil of temporary monopoly is greatly overbalanced by the good the community ultimately derives from its toleration.
The granting of exclusive privileges was in England originally assumed as a prerogative of the Crown, from which it derived a revenue. It was at first limited to the introduction of manufactures from other countries. Afterwards like privileges were granted for new inventions made within the realm. Like all other regal prerogatives, it was subject to abuse, and Parliament found it necessary to limit and restrain it. This was done by the famous statute of monopolies, passed in the reign of James I, which defined the King's prerogative in respect to the description of grants which might legally be made, and among them were patents for inventions and new manufactures. The very brief reservation of right in the Crown contained in that statute, and the judicial decisions in cases arising under the grants of privileges made pursuant to it, constituted the whole of the English law on the subject up to 1835, when a law was passed by Parliament giving the right to file a disclaimer in certain cases, and containing some other less material provisions.
It is from those judicial decisions that we have derived most of the principles on which our laws on the subject are founded, and which have entered into and influenced the judicial expositions given to them. But the decisions of our courts have been characterized by a more enlightened and liberal application of equitable principles to cases of this description, in a just endeavor to sustain patents for meritorious inventions, instead of seeking to find, in the technicalities of law, a pretext for setting them aside.
Prior to the adoption of the Federal constitution, the States, within their narrow limits, could give very little encouragement to inventors by grants of exclusive privileges; and up to that time the arts had made very little progress on this side of the Atlantic. By the constitution of the United States that power was wisely vested in Congress.
The first act of Congress on the subject was passed in 1790. It authorized the Secretary of State, Secretary of War and the Attorney General, or any two of them, on application, to grant patents for such new inventions and discoveries as they should deem "sufficiently useful and important." Under that act the board so constituted exercised the power of refusing patents for want of novelty in the invention or of sufficient utility and importance. -- This act extended the same privilege to aliens as to citizens. In 1793, it was repealed, and another act passed, authorizing patents to citizens of the United States only, to be granted by the Secretary of State, subject to the revision of the Attorney General. In 1800, the privilege to take out patents was extended to aliens who have resided two years in this country, and made oath of their intention of becoming citizens of the United States.
The act of 1793, which is still in force, gives, according to the practical construction it has received, no power to the Secretary to refuse a patent for want of either novelty or usefulness. The only inquiry is whether the terms and forms prescribed are complied with. The granting of patents, therefore, is but a ministerial duty. Every one who makes application is entitled to receive a patent by paying the duty required, and making his application and specification in conformity with the law. The necessary consequence is, that patents have, under the act of 1793, been daily granted, without regard to the question of novelty, or even utility in the ordinary sense; for it has been settled that the term useful, as used in this statute, is only in contradistinction to hurtful, injurious, or pernicious. This construction (that no right is conferred to refuse a patent) has been given to the law by the Department charged with the duty of granting patents, no so much probably from any necessary and unavoidable import of the terms of it, as from a disinclination to exercise a power of so much importance, in cases where it is not clearly and distinctly granted. And it may be reasonably doubted whether it was the intention of Congress to confer such a power on the Secretary of State alone, since no provision is made for an appeal or other remedy for an incorrect decision adverse to the applicant. Besides, any person occupying that station might be supposed as little qualified by an acquaintance with the appropriate branches of science or of the arts, to decide such questions, as any other officer of the Government. And were he to undertake the task of such an examination as would be necessary to a decision in each case, he would have little time for other official duties.
Under the act referred to, the Department of State has been going on for more than forty years, issuing patents on every application, without any examination into the merits or novelty of the invention. And the evils which necessarily result from the law as it now exists, must continue to increase and multiply daily, till Congress shall put a stop to them. Some of them are as follows:
1. A considerable portion of all the patents granted are worthless and void, as conflicting with, and infringing upon one another, or upon public rights not subject to patent privileges; arising either from a want of due attention to the specifications of claim, or from the ignorance of the patentees of the state of the arts and manufactures, and of the inventions made in other countries, or even in our own.
2. The country becomes flooded with patent monopolies, embarrassing to bona fide patentees, whose rights are thus invaded on all sides; and not less embarrassing to the community generally, in the use of even the most common machinery and long-known improvements in the arts and common manufactures of the country.
3. Out of this interference and collision of patents and privileges, a great number of lawsuits arise, which are daily increasing in an alarming degree, onerous to the courts, ruinous to the parties, and injurious to society.
4. It opens the door to frauds, which have already become extensive and serious. It is represented to the committee that it is not uncommon for persons to copy patented machinery in the model room; and having made some slight immaterial alterations, they apply in the next room for patents. There being no power given to refuse them, patents are issued of course. Thus prepared, they go forth on a retailing expedition, selling out their patent rights for States, counties, and townships, to those who have no means at hand of detecting the imposition, and who find, when it is too late, that they have purchased what the vendors had no right to sell, and which they obtain thereby no right to use. This speculation in patent rights has become a regular business, and several hundred thousand dollars, it is estimated, are paid annually for void patents, many of which are thus fraudulently obtained.
In this collision and interference of patents, the original and meritorious inventor sees his invention, to the perfection of which he has devoted much time and expense, pirated from him, and he must forgo the reward which the law was intended to secure to him in the exclusive right it grants; or he must become involved in numerous and expensive lawsuits in distant and various sections of the country, to protect and conform his rights. If he be wise, he will generally avoid the latter, and submit to the former alternative of injustice, to which the Government, as the law now is, makes itself accessory. The practice is scarcely less reprehensible, of taking out patents for what has been long in public use, and what every one has therefore a right to use. The patentee in such cases being armed with the apparent authority of the Government, having the sanction of its highest officers, the seal of state, scours the country, and by threats of prosecution, compels those who are found using the thing patented, to pay the patent price or commutation tribute. This exaction, unjust and iniquitous as it is, is usually submitted to.
The extent of the evils resulting from the unrestricted and promiscuous grants of privileges, may be imagined, when it is considered that there are now issued, since this year commenced, at the rate of more than a thousand a year; a considerable portion of which are doubtless void for want of originality in the inventions patented, either in whole or in some of the parts claimed as new.
A necessary consequence is, that patents even for new and meritorious inventions are so much depreciated in general estimation, that they are of but little value to the patentees, and the object of the patent laws, that of promoting the arts by encouragement, is in a great measure defeated.
To prevent these evils in future is the first and most desirable object of a revision and alteration of the existing laws on this subject. The most obvious, if not the only means of affecting it, appears to be to establish a check upon the granting of patents, allowing them to issue only for such inventions as are in fact new and entitled, by the merit of originality and utility, to be protected by law. The difficulty encountered in effecting this, is in determining what that check shall be; in whom the power to judge of inventions before granting a patent can safely be reposed, and how its exercise can be regulated and guarded, to prevent injustice through mistake of judgment or otherwise, by which honest and meritorious inventors might suffer wrong.
It is obvious that the power must, in the first instance, be exercised by the department charged with this branch of the public service. But as it may not be thought proper to entrust its final exercise to the department, it is deemed advisable to provide for an occasional tribunal to which an appeal may be taken. And as a further security against any possible injustice, it is thought proper to give the applicant in certain cases, where there may be an adverse party to contest his right, an opportunity to have the decision revised in a court of law.
The duty of examination and investigation necessary to a first decision at the Patent Office is an important one, and will call for the exercise and application of much scientific acquirement and knowledge of the existing state of the arts in all their branches, not only in our own, but in other countries. Such qualifications in the officers charged with the duty, will be the more necessary and desirable, because the information upon which a rejection is made at the office, will be available in the final decision. It becomes necessary, then, to give the Patent Office a new organization, and to secure to it a character altogether above a mere clerkship. The competency and efficiency of its officers should correspond with their responsibility, and with the nature and importance of the duties required of them. When the existing organization was adopted, the granting of patents was a matter of little importance, compared with what it now is. The arts in this country were but little understood, and but little cultivated. Agriculture and commerce constituted our principal business. We had few manufactures, except those of a domestic character, adapted to ordinary domestic wants. Our work-shops were in Europe. Enterprise, in this country, ran in other channels. The war of 1812 gave it a new direction, and a new impulse, by creating an occasion for work-shops of our own. Necessity became the mother of invention, and American manufactures sprang into existence as by enchantment. Their rise and progress may be dated from that period; and a more rapid advancement in the arts, and a more astonishing development of human ingenuity, have never taken place in any other age or country. This remark will appear far from extravagant to every one who will take the trouble to examine the subject. This awakening of dormant genius to a practical and active existence, next to the arousing of the political and patriotic energies of the Union, was one of the great results of that contest. -- It opened to the country a new era. The nation entered upon a new existence. And since that period, American industry and enterprise, guided by American ingenuity and intellect, have achieved what would have taken Europe a century to accomplish. She has become all at once a manufacturing, as well as an agricultural and commercial nation. The useful arts have been cultivated with a success before unexampled, and have contributed, in no small degree, to the wonderful improvements which have spread themselves over our whole country. Who can predict the results, even in a few years, of that spirit of enterprise which pervades the Union when, aided by the Genius of Invention, and propelled onward by powers which she alone can bring into exercise? The very elements are submissive to her will, and all the endless combinations of mechanism are subservient to her purposes. She participates in almost every business and employment of man. Agriculture itself might as well dispense with fertility of soil, as with her aid in its cultivation.
The greatly increasing number of patents granted, affords some indication of the improvements which have been going on in the useful arts from year to year. The average number issued annually, from 1790 to 1800, was but 26; from 1800 to 1810 the average number was 91; from 1810 to 1820, it was 200, and for the last ten years, the average number has been 535. During the last year, there were issued 776; and there have been granted in the first quarter of the present year 274, being more in three months than were issued in the whole of the first period of ten years. In the 22 years preceding the war of 1813, the average number was 73. The first quarter of the present year indicates an aggregate for the year, of 1,096; the amount of the duties on which, will be upwards of $32,000. The whole number issued at the Patent Office, under the laws of the United States, up to the 31st of March last, is 9,731. This is more than double the number which have been issued either in England or France, during the same period. In England for ten years preceding 1830, the average number of patents granted in one year was 145.
Whoever imagines that, because so many inventions and so many improvements in machinery have been made, there remains little else to be discovered, has but a feeble conception of the infinitude and vastness of mechanical powers, or of the unlimited reach of science. -- Much as has been discovered, infinitely more remains unrevealed. The ingenuity of man is exploring a region without limits, and delving in a mine whose treasures are exhaustless. "Neither are all the mysteries of nature unfolded, nor the mind tired in the pursuit of them."
The first conceptions of ingenuity, like the first suggestions of science, are theories which require something of experiment and practical exemplification to perfect. Mechanical inventions are at first necessarily crude and incomplete. -- Time is required to develop their imperfections and to make the improvements necessary to their adaption to practical uses. Inventors generally obtain patents before they venture upon those experiments which only can test their inventions. They are apprehensive of being forestalled in their discoveries, and see no other means of protecting themselves against piracy and fraud, than by securing patents at once.
A remedy for this may be easily had in a provision authorizing caveats to be filed in the office, giving security to the right of discovery for a time sufficient for making the necessary experiments, inquiries and improvements.
Heretofore aliens not resident in this country, have not been admitted to the privileges of our patent laws. But, as American citizens are allowed to take out patents in England and in other countries, a principle of reciprocity would seem to require that foreigners should have similar privileges here, on paying a similar duty or amount of fees that is exacted of our citizens abroad. The fees payable in England, on taking out a patent, amount to $585. If a patent be taken out for the three kingdoms of England, Ireland and Scotland, they amount to $1,680. -- In France they are $309; in Spain $292; Austria, $208.
A power in the Commissioner of the Patent Office to reject applications for want of novelty in the invention, it is believed, will have a most beneficial and salutary effect in relieving meritorious inventors, and the community generally, from the serious evils growing out of the granting of patents for every thing indiscriminately, creating interfering claims, encouraging fraudulent speculators in patent rights, deluging the country with worthless monopolies, and laying the foundation for endless litigation.
In nineteen cases out of twenty, probably, the opinion of the Commissioner, accompanied by the information on which his decision is founded, will be acquiesced in. When unsatisfactory, the rights of the applicant will find ample protection in an appeal to a board of examiners, selected for their particular knowledge of the subject-matter of the invention in each case.
By this means, without danger to actual and honest inventors, the number of patents would be somewhat diminished. But there would be more confidence in those which should be granted, and as those which have been heretofore issued, should be daily expiring by their limitation, the community would begin to feel and realize the advantage of such a change. The present law waits till infringements and frauds are consummated -- nay, it even aids them; and then it offers an inadequate remedy for the injury, by giving an action for damages. It ought, rather, by refusing to grant interfering patents, to render prosecutions unnecessary. Instead of sanctioning the wrong by granting the privilege to commit it, it should arrest injury and injustice at the threshold, and put an end to litigation before it begins.
Important and interesting as the Patent Office is now considered, it is believed that, under such new organization as is contemplated by the bill presented herewith, it will contribute largely to the great interests of the country, and bear no small part in elevating our national character. American ingenuity has obtained much consideration on the other side of the Atlantic. Even the manufactures of England are not a little indebted to it for some of their most valuable improvements. Her woolen manufactures, especially, have, within a few years, undergone an entire change, by the adoption of American inventions, by which wool has been made as yielding and submissive to the power of machinery as any material whatever. Cotton machinery has also been greatly improved in the hands of our mechanics; and while England receives from us three-fourths of the cotton she uses in raw material, we furnish her also with some of the most valuable improvements in the means of manufacturing it. Indeed, what mechanism or manufacture has, for the last twenty years, been brought across the Atlantic, that has not, on being returned, borne the distinguishing marks of the superior ingenuity of American machinists? Formerly, we borrowed and copied much that was valuable from Europe. Now, Europe is borrowing and copying, with no little advantage, from us; and she must not be too much surprised if she shall soon find a formidable balance against her.
To carry fully into effect the objects which have been had in view, it will be necessary to provide larger and more commodious rooms for models, etc., than those now occupied for that purpose. -- They are insufficient for the models, etc., than those now occupied for that purpose. -- They are insufficient for the models of machinery and other inventions now deposited there, and the number will be increasing several hundred, perhaps a thousand, every year. A great number, supposed to be about five hundred, from a want of room for them elsewhere, have been stowed away in a dark garret. -- Those which occupy the rooms designed for them, are crowded together in a manner unfavorable for exhibition or examination. In such a situation, it is impossible to five them any systematic or scientific arrangement. This disorder and confusion must necessarily be increased by the addition of those hereafter furnished, or they must be consigned to the garret, the common receptacle, where, instead of promoting a taste for, and facilitating the study of, the useful arts, they will only afford evidence of the improvidence of the Government. In addition to this, the present building is too much exposed to destruction by fire. The loss of records and drawings and of the several thousands of interesting and valuable models now preserved there, would be, in a great degree, irreparable. There is no additional room to be had in the building they now occupy. The Post Office Department, in the same building, instead of having any room to spare which is now appropriated to it, requires a considerable extension of accommodations, from its increased and increasing business. It needs the whole building. The only way, therefore, of providing the necessary extension of room for the accommodation of the Post Office Department, and the city post office, and of providing the requisite accommodation for the Patent Office, is to erect a suitable fire-proof building for the latter on some one of the public lots. There are ample funds arising from duties on patents, heretofore paid into the Treasury, to the account of clerk hire in that office, which remain unexpended. A portion of that surplus fund, being now about $152,000, may well be appropriated to the construction of a building which should be commodious and comparatively safe from fire.
Such a building as this branch of the public interests requires, would do honor to the Government and the country. The Patent Office, with such accommodations, containing the records of this age of inventions, displaying in its halls and galleries numberless models of ingenious and useful mechanism, and contrivances in almost infinite variety, adapted to the mechanic arts, to manufactures, to husbandry, to navigation, steam power, horse power, water power, Railroad transportation, and, in fine, to all the common trades and mechanical pursuits of life, as well as to our rapidly multiplying and magnificent public works, would present an object of interest, and tend not a little to elevate our national character. It has been justly remarked that we can go into no mechanic shop, into no manufactory of any description, upon no farm or plantation, or travel a mile on our Railroads or in our steamboats, without seeing the evidence of our originality, and witnessing the fruits and effects of our ingenuity and enterprise. All the inventions and improvements in mechanism which have done so much towards advancing the useful arts and manufactures, should, as far as practicable, be exhibited in one view in the halls of the Patent Office. -- Such a display would attract the attention of the many thousands who annually visit the capital of the Union from all quarters of the country, and all parts of the world. No other nation has yet anything to be compared with it; neither England nor France has ever required models to be deposited of patented machinery. Collection of models and drawings have sometimes been made by private associations, but they are small in number compared with those we possess.
In addition to the models of machinery, it is proposed to embrace an exhibition of specimens of useful and elegant fabrics and of works of art, which manufacturers and artificers may place there for that purpose. It might, too, embrace a cabinet of interesting minerals, which may be received from time to time from the various parts of our widely-extended country, with polished specimens of its beautiful marbles from their different locations, illustrating the geology and many of the natural resources of the country; and, also, a collection of Indian curiosities and antiquities, many of which are now in the possession of one of the Departments, boxed up for want of some suitable place for their exhibition.
In short, the halls of the Patent Office should present a national museum of the arts, and be a general repository of all the inventions and improvements in machinery and manufactures, of which our country can claim the honor; together with such other objects of interest as might conveniently and properly be placed under the superintendence of the Commissioner. Such an institution, while it would be an object of just pride to every American, would have scarcely less influence in advancing and accelerating the progress of the useful arts and the improvement of our manufactures, than would even the encouragement afforded by granting patents for inventions or establishing high tariffs of protection.
With these views, the committee cannot hesitate to recommend an entire reorganization of the Patent Office, and several material alterations in our law of patents, suiting it to the present condition of the arts and the altered circumstances of the country.
A bill in conformity with our views is herewith submitted
[What follows is a corrected copy of the bill as passed, and there may be minor necessary connections which were not noted in order to make this match the Mechanic's Magazine version. KWD]
A Bill to promote the progress of useful arts, and to repeal all acts and parts of acts heretofore made for that purpose
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That there shall be established and attached to the Department of State, an office to be denominated the Patent Office; the chief officer of which shall be called the Commissioner of Patents, to be appointed by the President, by and with the advice and consent of the Senate, whose duty it shall be, under the direction of the Secretary of State, to superintend, execute, and perform, all such acts and things touching and respecting the granting and issuing of patents for new and useful discoveries, inventions, and improvements, as are herein provided for, or shall hereafter be, by law, directed to be done and performed, and shall have the charge and custody of all the books, records, papers, models, machines, and all other things belonging to said office. And said Commissioner shall receive the same compensation as is allowed by law to the Commissioner of the Indian Department.
SEC. 2. And be it further enacted, That there shall be, in said office, an inferior officer, to be appointed by the said principal officer, with the approval of the Secretary of State, to receive an annual salary of seventeen hundred dollars, and to be called the Chief Clerk of the Patent Office; who, in all cases during the necessary absence of the Commissioner, or which the said principal office shall become vacant, shall have the charge and custody of the seal, and of the records, books, papers, machines, models, and all other things belonging to the said office. And the said Commissioner may also, with like approval, appoint two other clerks, an examiner of patents, a draughtsman, a machinist, and a messenger. The said chief clerk shall receive the annual salary of seventeen hundred dollars; two other clerks, twelve hundred and fifty dollars each; examiner, fifteen hundred dollars; draughtsman, twelve hundred dollars; messenger, one thousand dollars; and the messenger five hundred dollars
SEC. 3. And be it further enacted, That the principal officer, and every other person to be appointed in the said office, shall, before he enters upon the duties of his office or appointment, make oath or affirmation, truly and faithfully to execute the trust committed to him. And the said Commissioner and chief clerk shall also, before entering upon their duties, severally give bonds with sureties to the Treasurer of the United States, each in the sum of ---- dollars, with condition to render a true and faithful account to him, or his successor in office, quarterly, of all moneys which shall be by them respectively received for duties on patents, and for copies of records and drawings, and all other moneys received by virtue of said office.
SEC. 4. And be it further enacted, That the said Commissioner shall cause a seal to be made and provided for the said office, with such device as the President of the United States shall approve; and copies of any records, books, papers, or drawings, belonging to the said office, under the signature of the said Commissioner, or, when the office shall be vacant, under the signature of the chief clerk, with the said seal affixed, shall be competent evidence in all cases in which the original records, books, papers, or drawings could be evidence. And any person making application therfor, may have certified copies of the records, drawings, and other papers deposited in said office, on paying, for the written copies, the sum of ten cents for every page of one hundred words; and for copies of drawings, the reasonable expense of making the same.
SEC. 5. And be it further enacted, That all patents issued from said office shall be issued in the name of the United States and under the seal of said office, and be signed by the Secretary of State, and countersigned by the Commissioner of the said office, and shall be recorded, together with the descriptions, specifications, and drawings, in the said office, in books to be kept for that purpose. Every such patent shall contain a short description or title of the invention or discovery, correctly indicating its nature and design, and in its terms grant to the applicant or applicants, his or their heirs, administrators, executors, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, using, and vending to others to be used, the said invention or discovery, referring to the specifications for the particulars thereof, a copy of which shall be annexed to the patent, specifying what the patentee claims as his invention or discovery.
SEC. 6. And be it further enacted, That any person or persons having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer; and shall desire to obtain an exclusive property therein, may make application in writing to the Commissioner of Patents, expressing such desire, and the Commissioner, on due proceedings had, may grant a patent therefor. But before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity; as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery. He shall, furthermore, accompany the whole with a drawing, or drawings, and written references, where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office; and he shall moreover furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts. The applicant shall also make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, machine, composition, or improvement, for which he solicits a patent, and that he does not know or believe that the same was ever before known or used; and also of what country he is a citizen; which oath or affirmation may be made before any person authorized by law to administer oaths.
SEC. 7. And be it further enacted, That, on the filing of any such application, description, and specification, and the payment of the duty hereinafter provided, the Commissioner shall make or cause to be made, an examination of the alleged new invention or discovery; and if, on any such examination, it shall not appear to the Commissioner that the same had been invented or discovered by any other person in this country prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale with the applicant's consent or allowance prior to the application, if the Commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor. But whenever, on such examination, it shall appear to the Commissioner that the applicant was not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented or discovered, or patented, or described in any printed publication in this or any foreign country, as aforesaid, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him, briefly, such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of the invention or discovery which is new. In every such case, if the applicant shall elect to withdraw his application, he shall be entitled to receive back ---- dollars, part of the duty required by this act, on filing a notice in writing of such election in the Patent Office, a copy of which, certified by the Commissioner, shall be a sufficient warrant to the Treasurer for paying back to the said applicant the said sum of ---- dollars. But if the applicant in such case shall persist in his claim for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, in manner as aforesaid. And if the specification and claim shall not have been so modified as, in the opinion of the Commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners, to be composed of three disinterested persons, who shall be appointed for that purpose by the Secretary of State, one of whom at least, to be selected, if practicable and convenient, for his knowledge and skill in the particular art, manufacture, or branch of science to which the alleged invention appertains; who shall be under oath or affirmation for the faithful and impartial performance of the duty imposed upon them by said appointment. Said board shall be furnished with a certificate in writing, of the opinion and decision of the Commissioner, stating the particular grounds of his objection, and the part or parts of the invention which he considers as not entitled to be patented. And the said board shall give reasonable notice to the applicant, as well as to the Commissioner, of the time and place of their meeting, that they may have an opportunity of furnishing them with such facts and evidence as they may deem necessary to a just decision; and it shall be the duty of the Commissioner to furnish to the board of examiners such information as he may possess relative to the matter under their consideration. And on an examination and consideration of the matter by such board, it shall be in their power, or a majority of them, to reverse the decision of the Commissioner, either in whole or in part, and their opinion being certified to the Commissioner, he shall be governed thereby in the further proceedings to be had on such application: Provided, however, That before a board shall be instituted in any such case, the applicant shall pay to the Commissioner the sum of --- dollars, which shall be in full compensation to the persons who may be so appointed, for their examination and certificate as aforesaid.
SEC. 8. And be it further enacted, That whenever an application shall be made for a patent which, in the opinion of the Commissioner, would interfere with any other patent for which an application may be pending, or with any unexpired patent which shall have been granted, it shall be the duty of the Commissioner to give notice thereof to such applicants, or patentees, as the case may be; and if either shall be dissatisfied with the decision of the Commissioner on the question of priority of right on invention, on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the preceding section of this act; and the like proceedings shall be had, to determine which or whether either of the applicants is entitled to receive a patent as prayed for. .
SEC. 9. And be it further enacted, That before any application for a patent shall be considered by the commissioner as aforesaid, the applicant shall pay into the Treasury of the United States, or into the Patent Office, or into any of the deposite [sic] banks to the credit of the Treasury, if he be a citizen of the United States, or an alien, and shall have been resident of the United States for one year next preceding, and shall have made oath of his intention to become a citizen thereof, the sum of thirty dollars; if a subject of the King of Great Britain, the sum of five hundred dollars; and all other persons the sum of three hundred dollars; for which payment duplicate receipts shall be taken, one of which to be filed in the office of the Treasurer. And the moneys received into the Treasury under this act shall constitute a fund for the payment of the salaries of the officers and clerks herein provided for, and all other expenses of the Patent Office, and to be called the patent fund.
SEC. 10. And be it further enacted, That where any person hath made, or shall have made, any new invention, discovery, or improvement, on account of which a patent might by virtue of this act be granted, and such person shall die before any patent shall be granted therefor, the right of applying for an obtaining such patent shall devolve on the executor or administrator of such person, in trust for the heirs at law of the deceased, in case he shall have died intestate; but if otherwise, then in trust for his devisees, in as full and ample manner, and under the same conditions, limitations, and restrictions, as the same was held, or might have been claimed or enjoyed by such person in his or her lifetime; and when application for a patent shall be made by such legal representatives, the oath or affirmation provided in the sixth section of this act shall be so varied as to be applicable to them.
SEC. 11. And be it further enacted, That every patent shall be assignable in law, either as to the whole interest, or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing presented within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office within three months from the execution thereof, for which the assignee or grantee shall pay to the Commissioner the sum of ---- dollars.
SEC. 12. And be it further enacted, That any citizen of the United States, or alien who shall have been resident of the United States one year next preceding, and shall have made oath of his intention to become [OMITTED: a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on paying to the credit of the Treasury, in manner as provided in the ninth section of this act, the sum of ---- dollars, file in the Patent Office] a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right till he shall have matured his invention; which caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the Commissioner to give notice to the person filing the caveat, of such application, who shall, within two months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings, and model; and if, in the opinion of the Commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are in this act provided in the case of interfering applications: Provided, however, That no opinion or decision of any board of examiners, under the provisions of this act, shall preclude any person interested in favor of or against the validity of any patent which has been or may hereafter be granted, [THIS DOCUMENT IS VERY CONFUSED AT THIS POINT. KWD] from the right to contest the same in any judicial court in any action in which its validity may come in question.
SEC. 13. And be it further enacted, That whenever any patent which has heretofore been granted, or which shall hereafter be granted, shall be inoperative, or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification as his own invention, more than he had or shall have a right to claim as new; if the error has, or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the Commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification. And in case of his death, or any assignment by him made of the original patent, a similar right shall best in his executors, administrators, or assignees. And the patent, so reissued, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing out of the original patent. And whenever the original patentee shall be desirous of adding the description and specification of any new improvement of the original invention or discovery which shall have been invented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars, as hereinbefore provided, have the same annexed to the original description and specification; and the Commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded; and the same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specification.
SEC. 14. And be it further enacted, That whenever, in any action for damages for making, using, or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or by any patent which may hereafter be granted, a verdict shall be rendered for the plaintiff in such action, it shall be in the power of the court to render judgment for any sum above the amount found by such verdict as the actual damages sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case, with costs; and such damages may be recovered by action on the case, in any court of competent jurisdiction, to be brought in the name or names of the person or persons interested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States.
SEC. 15. And be it further enacted, That the defendant in any such action shall be permitted to plead the general issue, and to give this act and any special matter in evidence, of which notice in writing may have been given to the plaintiff or his attorney, thirty days before trial, tending to prove that the description and specification filed by plaintiff does not contain the whole truth relative to his invention or discovery, or that it contains more than is necessary to produce the described effect; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public, or that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, or that it had been described in some public work anterior to the supposed discovery thereof by the patentee, or had been in public use, or on sale, with the consent and allowance of the patentee before his application for a patent, or that he had surreptitiously or unjustly obtained the patent for that which was in fact invented or discovered by another; or that the patentee, if an alien at the time the patent was granted, had failed and neglected for the space of eighteen months from the date of the patent, to put into operation and use in the United States and put on sale to citizens thereof, or in case the same, for any period of eighteen months after it shall have been put in operation and use, shall cease to be so used or put on sale; in either of which cases judgment shall be rendered for the defendant with costs; Provided, however, That whenever the plaintiff shall fail to sustain his action on the ground that his specification of claim is embraced more than that of which he was the first inventor, if it shall appear that the defendant had used or violated any part of the invention justly and truly specified and claimed as new, it shall be in the power of the court to adjudge and award as to costs as may appear to be just and equitable.
SEC. 16. And be it further enacted, That whenever there shall be two interfering patents, or whenever a patent on application shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent previously granted, any person interested in any such patent, either by assignment or otherwise, in the one case, and any such applicant in the other case, may have remedy by a bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge and declare either the patents void in the whole or in part, and may also adjudge that the applicant is entitled, according to the principles and provisions of this act, to have and receive a patent for his invention, as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall in any such case be made to appear. And such adjudication, if it shall be in favor of the right of such applicant, shall authorize the Commissioner to issue such patent, on his filing a copy of the adjudication, and otherwise complying with the requisitions of this act. Provided, however, That no such judgment or adjudication shall affect the rights of any person except the parties to the action and those deriving title from or under them subsequent to the rendition of such judgment.
SEC. 17. And be it further enacted, That all actions, suits, controversies, and cases arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries, shall be originally cognizable, as well in equity as at law, by the circuit courts of the United States, or any district court having the powers and jurisdiction of a circuit court; which courts shall have power, upon bill in equity filed by any party aggrieved, in any such case, to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor as secured to him by any law of the United States, on such terms and conditions as said courts may deem reasonable: Provided, however, That from all judgments and decrees, from any such court rendered in the premises, a writ of error or appeal, as the case may require, shall lie to the Supreme Court of the United States, in the same manner and under the same circumstances as is now provided by law in other judgments and decrees of circuit courts, and in all other cases in which the court shall deem it reasonable to allow the same.
SEC. 18. And be it further enacted, That there shall be provided for the use of said office, a library of scientific works and periodical publications, both foreign and American, calculated to facilitate the discharge of the duties hereby required of the chief officers therein, to be purchased under the direction of the Committee of the Library of Congress. And the sum of ---- dollars is hereby appropriated for that purpose, to be paid out of the patent fund.
SEC. 19 And be it further enacted, That it shall be the duty of the Commissioner to cause to be classified and arranged, in such rooms or galleries as may be provided for that purpose, in suitable cases, when necessary for their preservation, and in such manner as shall be conducive to a beneficial and favorable display thereof, the models and specimens of compositions and of fabrics and other manufactures and works of art, patented or unpatented, which have been, or shall hereafter be deposited in said office. And said rooms or galleries shall be kept open during suitable hours for public inspection.
SEC. 20. And be it further enacted, That all acts and parts of acts heretofore passed on this subject, be, and the same are hereby repealed: Provided, however, That all actions and processes in law or equity sued out prior to the passage of this act, may be prosecuted to final judgment and execution, in the same manner as though this act had not been passed, excepting and saving the application to any such action, of the provisions of the fourteen and fifteenth sections of this act, so far as they may be applicable thereto.
Extract from Mechanic's Magazine, vol 8, pages 118-125 (July 1836 - January 1837)
From the Journal of the American Institute
Information to Persons Having Business to Transact at the Patent Office
The former acts are repealed by the act passed 4th July, 1836.
"Patents are granted for any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter, not known or used by others before his or their discovery or invention thereof, and not at the time of his application for a patent in public use, or on sale with his or their consent or allowance, as the inventor or discoverer."
The term for which a patent is granted is fourteen years; but may, under certain circumstances, be renewed for seven years, as hereinafter mentioned.
Patents are granted to citizens of the United States, to aliens who shall have been resident in the United States one year next preceding, and shall have made oath of their intention to become citizens thereof, and also to foreigners who are inventors or discoverers.
A patent may be taken out by the inventor in a foreign country without affecting his right to a patent here, if the patent is not delayed in this country longer than six months from the time of taking it out abroad; and any publicity in consequence of such foreign patent does not affect his right to a patent in the United States. A patent is not granted upon introduction of a new invention from a foreign country, unless the person who introduced it be the inventor or discoverer. If an alien neglects to put and continue on sale the invention in the United States, to the public, on reasonable terms, for eighteen months, the patentee loses all benefits of the patent.
Joint inventors are entitled to a joint patent, but neither can claim one separately.
An inventor cannot assign his right before a patent is obtained, so as to enable the assignee to take out a patent in his own name.
The assignment of a patent may be the whole or undivided part, "by any instrument in writing." All assignments, and also the grant or conveyance, of the use of the patent in any town, county, or State, or limited district, must be recorded in the patent office within three months from the date of the same; for which record the grantee or assignee must pay three dollars to the patent office.
All applications pending on the 4th July, 1836, (the time of passing the said act,) on which the duty of thirty dollars has been paid, will be considered as presented under the new act, and will not require a new petition. In all other cases the papers will be returned for correction with this circular explanatory.
"In case of the decease of an inventor, before he has obtained a patent for his invention, the right of applying for, and obtaining, such patent, shall devolve on the administrator or executor of such person, in trust for the heirs at law of the deceased, if he shall have died intestate; but if otherwise, then in trust for his devisees, in as full and ample manner, and under the same conditions, limitations, and restrictions as the same was held, or might have been claimed or enjoyed, by such person in his or her lifetime; and when application for a patent shall be made by such legal representatives, the oath or affirmation shall be so varied as to be applicable to them."
The patent office will be open for examination during office hours, and applicants can personally, or by attorney, satisfy themselves, on inspection of models and specifications, of the expediency of filing an application for a patent.
All fees received are paid into the treasury, and constitute a fund to defray the expenses of the office; hence the law has required the payment of the patent fee before the application is considered; two thirds of which fee is refunded on withdrawing the petition.
It has hitherto been the practice for inventors to send a description of their inventions to the office, and inquire whether there is anything like it, and whether a patent can be had. As the law does not provide for the examination of descriptions of new inventions, except upon applications for a patent, no notice can be taken of such inquiries.
On the application for a Patent
No application will be considered until the fee for the patent is paid.
The application for a patent must be made by petition to the commissioner of patents, signifying a desire of obtaining an exclusive property in the invention or discovery, and praying that a patent may be granted therefor, as in the form annexed hereto, which petition should be signed by the inventor.
Description of Specification
"Before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character by which it may be distinguished from any other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery."
It is recommended in all cases where the machine or improvement is complicated, to frame the specification with reference to the drawings.
A defective description or specification may be amended any time before issuing the patent.
For a new Improvement
"Whenever the original patentee shall be desirous of adding the description and specification of any new improvement of the original invention or discovery, which shall have been invented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars, as hereinafter mentioned, have the same annexed to the original description and specification; and the commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded; and the same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specification."
"Every inventor, before he can receive a patent, must make oath or affirmation, that he does verily believe that he is the original and first inventor or discoverer of the art, machine, manufacture, composition, or improvement, for which he solicits a patent, and that he does not know or believe that the same was ever before known or used, and also of what country he is a citizen." (See form annexed.)
If the applicant be an alien, and have resided one year in the United States preceding the application, and have given legal notice of his intention to become a citizen of the United States, he must make oath to these facts before he can claim a patent, for the same sum paid by a citizen."
Of Drawings, and specimens of Ingredients
The law requires, that "the applicant for a patent shall accompany his application with drawing or drawings, and written references, when the nature of the case admits of drawings." These drawings should be according to the rules of perspective, and neatly executed; and such parts as cannot be shown in perspective, must, if important, be represented in section or detail. When the specifications refer to the drawings, duplicates of them are required, as one must accompany the patent when issued, as explanatory of it, and one must be kept on file in the office.
The drawing must be signed by the patentee, and attested by two witnesses; many drawings have been transmitted without any name or references.
Drawings are necessary, even though a model be sent.
The law requires that the inventor shall deliver a model of his invention or improvement when the same admits of a model. The model should be neatly made, and as small as a distinct representation of the machine or improvement, and its intended properties, will admit; and the name of the inventor should be printed upon or affixed to it, in a durable manner. Many models have been forwarded without a name, and therefore lost or mislaid.
Models must be forwarded at the expense of the applicant.
When the invention is of a "composition of matter," the law requires that the application be accompanied with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment.
Proceedings on applications for Patents, and on appeals from
the decision of the Commissioner
"That on the filing of any such application, description, and specification, and the payment of the duty hereinafter provided, the commissioner shall make, or cause to be made, an examination of the alleged new invention or discovery; and if, on any such examination, it shall not appear to the commissioner that the same had been invented or discovered by any other person in this country, prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale, with the applicant's consent or allowance, prior to the application, if the commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor. But whenever, on such examination, it shall appear to the commissioner that the applicant was not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented or discovered, or patented, or described in any printed publication, in this or any foreign country, as aforesaid or that the description is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification, to embrace only that part of the invention or discovery which is new. In every such case, if the applicant shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back twenty dollars, part of the duty required by this act, on filing a notice in writing of such election in the patent office, a copy of which, certified by the commissioner, shall be a sufficient warrant to the treasurer for paying back to the said applicant the said sum of twenty dollars. -- But if the applicant, in such case, shall persist in his claim for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, and in manner as aforesaid; and if the specification and claim shall not have been so modified as, in the opinion of the commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners, to be composed of three disinterested persons, who shall be appointed for that purpose by the Secretary of State, one of whom, at least, to be selected, if practicable and convenient, for his knowledge and skill in the particular art, manufacture, or branch of science to which the alleged invention appertains, who shall be under oath or affirmation for the faithful and impartial performance of the duty imposed upon them by said appointment. Said board shall be furnished with a certificate, in writing, of the opinion and decision of the commissioner, stating the particular grounds of his objection, and the part or parts of the invention which he considers is not entitled to be patented. And the said board shall give reasonable notice to the applicant, as well as to the commissioner, of the time and place of their meeting, that they may have an opportunity of furnishing them with such facts and evidence as they may deem necessary to a just decision; and it shall be the duty of the commissioner to furnish to the board of examiners such information as he may possess relative to the matter under their consideration. And on an examination and consideration of the matter by such board, it shall be in their power, or of a majority of them, to reverse the decision of the commissioner, either in whole or in part; and their opinion being certified to the commissioner, he shall be governed thereby in the further proceedings to be had on such application: Provided however, That before a board shall be instituted in any such case the applicant shall pay to the credit of the treasurer, as provided in ninth section of this act, the sum of twenty-five dollars; and each of said persons so appointed, shall be entitled to receive for his services, in each case, a sum not exceeding ten dollars, to be determined and paid by the commissioner, out of any money in his hands, which shall be in full compensation to the persons who may be so appointed, for their examination and certificate as aforesaid."
Reissue to correct a defective description
When the applicant wishes to cancel his old patent, for a mistake or inadvertence, he should state the reasons in his application, and expressly surrender the old patent, which must be transmitted to the patent office before a new patent will be issued. -- Section thirteen enacts: "That whenever any patent which has heretofore been granted, or which shall hereafter be granted, shall be inoperative or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new, if the error has, or shall have arisen by inadvertency, or accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification."
And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees, and the patent, so reissued, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form before the issuing out of the original patent.
"Whenever an application shall be made for a patent, which, in the opinion of the commissioner, would interfere with any other patent for which an application may be pending, or with any unexpired patent which shall have been granted, it shall be the duty of the commissioner to give notice to such applicants, or patentees, as the case may be; and if either shall be dissatisfied with the decision of the commissioner of the question of priority of right or invention, on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the case of applications for inventions not new; and the like proceedings shall be had to determine which, or whether either of the applications is entitled to receive a patent, as prayed for."
The law enacts, "that any citizen of the United States, or alien, who shall have been resident in the United States one year next preceding, and shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on paying to the credit of the treasury, in manner as provided in the ninth section of this act, the sum of twenty dollars, file in the patent office a caveat setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right, till he shall have matured his invention: which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein mentioned, shall be considered a part of the sum herein required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person, within one year from the time of filing such caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the commissioner to deposit the description, specifications, drawings, and model, in the confidential archives of the office, and to give notice, by mail, to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings, and model; and if, in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are in this act provided in the case of interfering applications: provided, however, that no opinion or decision of any board of examiners, under the provisions of this act, shall preclude any person interested in favor of or against the validity of any patent which has been, or may hereafter be granted, from the right to contest the same in any judicial court, in any action in which its validity may come in question."
Extension of the patent beyond fourteen years
Section eighteen enacts, "That whenever any patentee of any invention or discovery shall desire an extension of his patent beyond the term of its limitation, he may make application therefor, in writing, to the commissioner of the patent office, setting forth the grounds thereof; and the commissioner shall, on the applicant's paying the sum of forty dollars to the credit of the treasury, as in the case of an original application for a patent, cause to be published, in one or more of the principal newspapers in the city of Washington, and in such other paper or papers as he may deem proper, published in the section of country most interested, adversely, to the extension of the patent, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. And the Secretary of State, the commissioner of the patent office, and the solicitor of the treasury, shall constitute a board to hear and decide upon the evidence produced before them, both for and against the extension, and shall sit for that purpose at the time and place designated in the published notice thereof. The patentee shall furnish to said board a statement, in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit, in any manner accruing to him from and by reason of said invention. And if, upon hearing of the matter, it shall appear to the full and entire satisfaction of said board, having due regard to the public interest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault on his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the commissioner to renew and extend the patent, by making a certificate thereon of such extension, for the term of seven years, from and after the expiration of the first term; which certificate, with a certificate of said board of their judgment and opinion as aforesaid, shall be entered on record in the patent office; and thereupon the said patent shall have the same effect in law as though it had been originally granted for the term of twenty-one years; and the benefits of such renewal shall extend to assignees and grantees of the right to use the thing patented, to the extent of their respective interest therein; Provided, however, That no extension of a patent shall be granted after the term for which it was originally issued."
Fees payable at the Patent Office
All fees must be paid in advance: the amount is fixed by law, except in the case of drawings, the expense of which will be communicated on application for the same.
Every applicant must pay into the treasury of the United States, or into the patent office, or into any of the deposit banks, to the credit of the treasurer, on presenting his petition, as follows:
If a citizen of the United States $30.00 If a foreigner, who has resided in the United States one year next preceding the application for a patent, and shall have made oath of his intention to become a citizen 30.00 If a subject of the King of Great Britain 500.00 All other foreigners 300.00 On entering a caveat 20.00 On entering an application for the decision of arbitrators, after notice from the commissioner that the patent is not new, or interferes with a pending application or caveat 25.00 On extending a patent beyond the fourteen years 40.00 For recording each assignment or transfer of patent 3.00 For adding to a patent the specification of a subsequent improvement 15.00 On surrender of old patent, and new issue for mistake or inadvertence of patentee 15.00 For copies of patents, or any other paper on file, for each 100 words .10 For copies of drawings, a reasonable sum in proportion to the time occupied in making the same
N.B. The patent office does not make original drawings to accompany applications for patents, and gives only copies of the same after the patent is completed. -- Draughtsmen in the city of Washington are always ready to make drawings, at the expense of the patentees.
Communications to and from the patent office are free of postage.
All fees, if sent to the commissioner of patents, should be transmitted in gold or silver coin, when they amount to less than five dollars, as bank notes under that sum will not be received.
It is recommended to make a deposit in a deposit bank, for the fee of the patent, and remit the certificate. Where this cannot be done without much inconvenience, gold may be remitted by mail, free of postage; and this is preferred to the bills of the deposit banks, which, however, will not be refused.
In the case of deposits, made in the deposit banks, a duplicate receipt should be taken, stating by whom the payment is made, and for what object. The particular patent should be referred to, to enable the applicant to recover back the twenty dollars in case of withdrawal of the petition.
On recovering back Money paid for Patents not taken out
When a patentee relinquishes or abandons the application for a patent, he must petition the commissioner of patents, stating the abandonment or withdrawal of his petition, in which case twenty dollars will be repaid.
In case of withdrawing petition, the model deposited by law is retained.
Further remedy in Equity for Patentees
In case of interfering applications with other pending applications or unexpired patents or caveats, a hearing is had before the commissioner of patents prior to the appeal to a board of arbitrators. In other cases the decision of the commissioner on the novelty and utility of the invention is made without a hearing, and from which an appeal may be taken to a court of arbitrators.
When the decision of the board of arbitrators shall be unsatisfactory to a party interested, a bill of equity can be filed in the United States courts, whose decision will be imperative.
On filing the Specification and Drawings as a Caveat
"Whenever the applicant shall request it, the patent shall take date from the time of filing the specification and drawings, not however exceeding six months prior to the actual issuing of the patent; and, on like request, and the payment of the duty herein required, by any applicant, his specification and drawing shall be filed in the secret archives of the office until he shall furnish the model, and the patent be issued, not exceeding the term of one year, the applicant being entitled to notice of interfering applications."
A full description of the invention is required to enable the commissioner of patents to judge of interferences.
All applications will be examined, and patents issued, in the order of time in which the proper documents are completed.
Exhibitions of Model and Manufactures
Unpatented models, specimens of compositions, and of fabrics, and other manufactures or works of art, will be received and arranged in the national repository of the patent office as soon as the new building is finished.
Personal attendance of the applicant at the patent office, to obtain a patent, is unnecessary. The business can be done by correspondence (free of postage) or by power of attorney.
Any magistrate authorized to administer oaths is qualified to certify under this act.
Form of Petition
To the Commissioner of Patents
The petition of Sebastian Cabot, of Cabotsville, in the county of Hampden, and State of Massachusetts,Respectfully represents:
That your petitioner has invented a new [and improved mode of preventing steam boilers from bursting,] which he verily believes has not been known or used prior to the invention thereof by your petitioner. He therefore prays that letters patent of the United States may be granted to him therefor, vesting in him and his legal representatives the exclusive right to the same, upon the terms and conditions expressed in the act of Congress in that case made and provided; he having paid thirty dollars into the treasury, and complied with the other provisions of the said act.
Form of Specification
To all whom it may concern:
Be it known, that I, Sebastian Cabot, of Cabotsville, in the county of Hampden, and state of Massachusetts, have invented a new and improved mode of preventing steam boilers from bursting, and I do hereby declare that the following is a full and exact description:
The nature of my invention consists in providing the upper part of a steam boiler with an aperture, in addition to the safety valve, to be closed up with a plug or disk of alloy, which will fuse at any given degree of heat, to be governed by the proportions forming the alloy, and permit the steam to escape, should the safety valve fail to perform its functions.
To enable others skilled in the art to make and use my invention, I will proceed to describe its construction and operation: I construct my steam boiler in any of the known forms, and apply thereto gauge cocks, a safety valve, and the other appendages of such boilers; but in order to obviate the danger arising from the adhesion of the safety valve, and from other causes, I make a second opening in the top of the boiler, similar to that made for the safety valve, and in this opening I insert a plug or disk of fusible alloy, securing it in its place by a metal ring and screws, or otherwise. This fusible metal I, in general, compose of a mixture of lead, tin, and bismuth, in such proportions as will insure its melting at a given temperature, which must be that to which it is intended to limit the steam, and will, of course, vary with the pressure the boiler is intended to sustain. I surround the opening containing the fusible alloy, by a tube intended to conduct off any steam which may be discharged therefrom. When the temperature of the steam in such boiler rises to its assigned limit, the fusible alloy will melt, and alloy the steam to escape freely, thereby securing it from all danger of explosion.
What I claim as my invention, and desire to secure by letters patent, is the application to the steam boilers, of a fusible alloy which will melt at a given temperature, and allow the steam to escape, as herein described; using for that purpose any metallic compound which will produce the intended effect.
If the thing desired to be patented be an original machine, the title, in that part of the petition and specification between brackets, should be altered thus: [have invented a new and useful machine, etc.] and if an improvement only, thus: [have invented a new and useful improvement on a, or on the, machine, etc.]
Form of Oath
County of Hampden, State of Massachusetts, ss
On this --- day of ----- 183 , before the subscriber, a justice of the peace in and for the said county, personally appeared the within named Sebastian Cabot, and made solemn oath (or affirmation) that he verily believes himself to be the original and first inventor of the mode herein described, of preventing steam boilers from bursting, and that he does not know or believe that the same was ever before known or used; and that he is a citizen of the United States:
Signed, A.B., Justice of the Peace
If the following questions can be answered affirmatively before transmitting the papers, few applications will be returned for correction of omissions:
1. Is the fee transmitted?
2. Is the petition signed, and directed to the commissioner of patents?
3. Is the specification signed, and witnessed by two witnesses?
4. Are the drawings signed, and witnessed by two witnesses?
5. Do the drawings contain references? and if the specification refers to them, are duplicates sent?
6. Has the inventor made oath to his being a citizen, and that his invention is new, etc.?
7. Does the specification contain a specific claim?
8. If an alien and resident, is this affirmed or sworn to?
9. Has the model been sent, and how?
10. Is the name of the inventor durably affixed to the same?
11. In case of reissue, is the old patent surrendered?
12. Has the oath of invention been renewed, before applying for a board of arbitrators?
13. Have the fees under $5 been remitted in coin?
All communications should be addressed to the commissioner of patents.
Henry L. Ellsworth
Commissioner of Patents
Extract from Mechanic's Magazine, volume 8, 175-182 (July 1836 - January 1837)
From the Journal of the American Institute for August
Report from the Hon. Henry L. Ellsworth to the Secretary of State, and Transmitted to the Select Committee on the Patent Laws.
Patent Office, 1836
Sir: I have the honor to acknowledge the receipt of the inquiries made by the honorable chairman of the committee on the patent office, in the house of representatives, and referred by the honorable Secretary of State to this office for my report in part. As the answer must in some measure depend upon the organization of the office, I will respectfully reply, first, to the following inquiry, viz: "what alteration or improvement of the law, relating to the granting of patents, has experience shown to be requisite to effect all the objects which it is desirable to obtain in this department?" A brief reference to the history of the patent law, and the practice under it, will be necessary to learn the "mischief," and provide the "remedy."
It is nearly half a century since the present patent law was enacted. Previously to 1793, all petitions for patents were presented to the Secretary of State, Secretary of War, and Attorney General, who examined these, and granted or refused a patent at their discretion. This duty having been found an arduous one, and also a great interruption to other business, the law of 1790 was repealed, and the present act passed, which is more in conformity with the practice in Great Britain. -- Few alterations have been made in the existing law since 1793, if we except the extension of a privilege to a certain class of foreigners. While a laudable spirit prompted our legislators to encourage the arts, the poverty and distresses of the country forbade the passage of any law for the protection of inventors which might increase the burdens of the community. Such a tariff of fees was accordingly established as to defray, as far as possible, the expenses incurred by the government in giving patents. Hence it is not strange, that glaring imperfections now appear in the law. It has been a matter of astonishment that so important a branch of domestic polity should have been so long neglected. The time has now arrived when the amount of revenue derived from this source, the magnitude of the claims dependent upon the patent law, the great delay and embarrassment experienced by patentees at the office, all conspire to demand a thorough survey of its present organization. To insure attention to this subject, it need only be mentioned that the number of patents issued annually, for a long time, did not exceed one hundred, whereas, at present, the number is about eight hundred, and will soon increase to one thousand. Such is the desire to secure patents, that individuals have taken out more than fifty patents. The amount of fees for patents annually ($30 being the fee) is about $25,000. The present year it may exceed $30,000. To this amount fees for copies and recording are to be added, making the sum larger still; and notwithstanding the rapid increase in the business of the office within a few years, very little additional force has been allowed for its accomplishment. Patentees complain of delay, and very justly, but this delay must soon be greater than at present, without the interference of congress. It may be asked if such are the profits, why not apply the funds received to the discharge of accruing business? -- The answer is readily given. All the money received is, by law, paid over into the treasury, and although to be credited to "the account of clerk hire," cannot be appropriated to this use without a special act of congress. The superintendent has requested additional assistance, but the honorable Secretary, although anxious to afford every facility, has not felt authorized to increase the expenditures on his own responsibility. Patentees and suitors in courts have suffered much during the last year from delays in the office; cases are sometimes continued for the want of copies, which would readily be furnished at one half the lawful fees now charged if the superintendent was permitted to get the work done. A few facts need only be added, to show the propriety and importance of a revision of the patent law. The whole expenses of the patent office do not exceed one-fourth of its income. The number of applications for patents since the 10th of July (at which time my superintendency commenced) has been upwards of six hundred. The correspondence has trebled within a few years. No less than two thousand letters have been written by the superintendent since July last. More than one hundred suits are now pending in the United States courts touching rights of patentees. These suits will increase until some check is put to the fraud now openly practiced, but irremediable without the aid of congress.
Questions are frequently asked at the patent office, which require several days search to answer. Each patentee (if he is honest) wishes to know whether his patent will infringe upon others. This is apparently a simple inquiry, but only a reference to seven thousand patents can settle the question. And here, what an embarrassment must arise from the want of systematic arrangement of the papers. Previous to July last, not a single letter received was filed, and even now none are indexed. Many volumes of records are also wholly unindexed, and must remain so until more help is provided. And was not an hourly reference to these volumes and correspondence necessary, the unsystematic arrangement of papers would be less tedious and perplexing.
The injustice and inexpediency of the present law, will appear in reference for the charges made for services performed at the office, besides the fee of thirty dollars. By the law of 1793, each copy of one hundred words is charged at twenty cents, certainly twice as much as it costs to make the copy, if labor is computed at one thousand dollars or twelve hundred dollars per year for a clerk. It may be mentioned, as a singular fact, that copies of the papers in the State department, are charged only ten cents per hundred words. Each drawing, whatever its size or complexity, is charged at two dollars. A few drawings are worth less than this sum, but most of them twice as much, and some are worth forty or fifty dollars. A fair remuneration ought to be charged to each applicant. -- There are now applications pending for drawings, where the draughtsmen will be compelled to labor several days, at a salary of three dollars and thirty-three cents per day, and earn for the government but two dollars for the whole time.
So sensible are the patentees that the price is much less than the usual charge for the same thing out of the office, that they frequently apply to the superintendent to get the original drawings executed in the office at two dollars. This request is always refused, for patentees are bound to furnish original drawings,and the patent office is only required to give copies of drawings of patents granted.
The delay of patents has been alluded to. This is one of the greatest evils. Applicants are always impatient; some travel to this place from a long distance, and are anxious to carry their patents home with them; other patentees are urgent for papers to be used in courts; especially where old patents are adjudged invalid, and the right of action is suspended until a new patent is obtained; nor will an additional number of Clerks produce the desired relief, without some alteration of the present requisites. According to the existing law, the patent must be signed by the President, the Secretary of State, and the Attorney General.
The Attorney General has the right to retain the patent fifteen days for examination. It must be apparent to all conversant with public business, that there will be delay in the signatures of such high functionaries, since their time is demanded for more imperious duties. How much greater must this delay be, when the person whose signature is wanted, is absent from the seat of government; nearly one half of the patents issued since July have been transmitted more than two hundred miles for single signatures. It may be asked, how is this difficulty to be remedied? it is believed that two of the three signatures can be dispensed with; can it be necessary or useful to have the whole number?
The rights of the patentee are the same with the signature of the Secretary of State, as with the addition of the President and Attorney General. The great seal can accompany the Secretary's signature, and the patent be issued in the name of the United States. It is true the Attorney General is bound to examine the patent; but is this necessary? Among all the patents transmitted since July, only one has been returned as imperfect, and in this case the defect was not fatal to the validity of the patent. The best examination can certainly be made at the patent office, where the drawings and models are deposited. If the signature of the president and Attorney General could be dispensed with, considerable labor and much interruption would be avoided. If additional help was given to examine the patent and the signatures of the Secretary of State, and the head of the bureau, only required, it is believed that a patent might be issued in a few days, whereas now the average time is two or three months.
The present arrangements are not economical. Congress appropriated, a few years since, $14,000 to bring up the records of the office by employing clerks at a compensation not exceeding twelve and a half cents for every hundred words. A small part of this appropriation remains unexpended, and a temporary clerk is employed under the act. The employment of temporary clerks is objectionable; unskilled, they are liable to commit errors; besides, the compensation of twelve and a half cents per hundred words is much higher than the salary of a clerk at $1,000 or $1,200. It is due to those who labor in the patent office to state, that services required and performed there are not exceeded in any of the bureaus of government. Great caution, much skill, and some legal science, are requisite in issuing every patent.
Notwithstanding the superintendency is in form a separate bureau, (yet in law a clerkship,) and the superintendent charged with the whole responsibility of issuing the patents, disbursing the special appropriation of $14,000, and the contingent fee of $2,000, accountable for all the fees received in the office, and personally required to conduct the correspondence, still his compensation is lower than that of chief clerk in either bureaus of auditor or commissioner. If the patent office was placed upon the same footing with the land office or Indian bureau, the compensation allowed would secure competent assistance. And it is desirable that those who are in the office should receive a fair remuneration as an inducement to remain after they have become acquainted with its minute details. The salaries in the patent office, as compared with those of the land office, Indian bureau, or either auditor's office, will be found from thirty-three to fifty per cent less. Hence there is in the patent office a constant desire to change situations, and this comparatively low compensation will prevent able and permanent assistance. -- Will a clerk remain satisfied to labor for $1,000 in the patent office, when the same clerical services in adjoining offices bring $1.250 to $1,500. The aggregate pay of superintendent, three clerks, machinist, and messenger, in the patent office, amounts to $5,400, whereas the pay of the commissioner of Indian affairs, four clerks, and a messenger, is $8,700. One third of the revenue received from patents would defray all the disbursements for salaries, and leave two thirds to be appropriated as congress might direct.
I have alluded to frauds under the patent law. These frauds are daily practiced by persons who take out patents without making any new discovery or improvement. -- The law gives neither the superintendent nor others any juridical powers. Every applicant has a right to demand a patent if his papers are in order; and several patents are often issued for the same thing. Congress seemed to have noticed the impropriety of granting two patents for the same thing by giving the Secretary power, in case of two pending interfering applications, to order them both to arbitration to decide upon the right of patent, but under the rules established to direct the office no applications are deemed interfering unless the papers of both are complete in all respects. -- Should two applications be precisely alike, and one of them need only a trifling requisite, such as an additional witness, it then would be no interference; and as there is seldom a case when the papers of both are in the same state of forwardness, an arbitration under the law is a rare occurrence.
The oath of inventors has been too often justly compared to the "custom-house oaths." There are, however, inventions made by persons living in different parts of our country, when both can claim originality; for no sooner are the wants of the public known than men of ingenuity attempt to supply them. The late burning of baggage on railroad cars produced immediately many inventions to remedy the evil, and several interfering applications were made. The issuing of patents to those who have no claim to originality is truly a great evil. Every facility is now extended to pirates. Even copies of models are taken by visitors at the model rooms, and patents demanded of a similar kind. During the last week a patentee was explicitly told that his patent, if granted, would be a direct infringement upon previous patents: "but a patent must be had;" it was demanded, and accordingly ordered to issue. It is believed that several hundred dollars are paid annually in the United States for patents improperly obtained.
The success of past villainy has emboldened many to continue their deceptions upon the credulous. The public attach high reverence to the great seal which the patentee is careful to exhibit. Fraudulent patentees are shielded in some measure by the expense of litigation, and many, very many, pay commutation, and submit to imposition, rather than be dragged into courts of justice. How easily, for instance, can an individual take out a patent resembling one granted to a citizen of Maine, and sell the same in the south-west part of the republic! An arrest of the infringer might be uncertain, and indemnification still more doubtful. The pirate, after selling out his rights to States, counties and towns, might easily pass over the borders of our territories and be safe. There are a great number of cases arising out of the patent law before the United States courts. How much will the number be increased when the eight hundred patents granted this year shall appear with their many interfering specifications? There will be a rich harvest for the lawyers; but how many honest mechanics and inventors will be ruined by the expense of litigation. Is there no remedy?
The remarks of Mr. Jefferson, who, while Secretary of State, was one of the board of examiners of patents, is worthy of observation. In his letter to Mr. Cooper, on this subject, he writes, "instead of refusing a patent in the first instance, as the board was authorized to do, the patent now issues, of course, subject to be declared void on such principles as should be established by the courts of law. The business, however, is but little analogous to their course of reading, since we might in vain turn over all the lubberly volumes of the law, to find a single ray which would light the path of the mechanic, or mathematician. It is more within the information of a board of academical professors, and a previous refusal of a patent would better guard our citizens against harassments by lawsuits. But England has given it to her judges, and the usual predominancy of her examples carried it to ours." I would respectfully suggest the following remedy: To vest in the head of the patent bureau, or some other tribunal, a discretion to arrest a pending application for a patent, if it interferes with any prior patent, or caveat on file, and also if the application is destitute of novelty.
If scientific men could be induced to take an office in the patent bureau, as examiners of patents, their examinations, aided by a suitable library, would detect almost every interference or want of novelty. Nor is it to be believed there will be any objection to appropriate the sum necessary to obtain a good library.
To show the importance of possessing the foreign works of art, on the subject of patents, I would remark, that in looking accidentally at a German work, a discovery was there found, delineated in a drawing, which has been patented in this country, and which is now selling as a new invention. A complete collection of prints and books, in reference to the patent law, would be highly useful to patentees, and citizens in general, as well as the courts of justice. Caveats in the United States, though frequently entered, give no protection to the inventor. The existence of the caveat can be attested as evidence of certain knowledge at the date of the same, but proof furnished from the patent office gives no additional weight to the testimony. In England a caveat protects the inventor from interference for a certain period, during which time, if any interfering application is made, the person who entered the caveat is notified. An ex parte hearing is had before the Attorney or Solicitor General, who decides upon the case; if there is an interference, one of the applications is rejected.
I ought, however, to remark, that such in England is the danger of giving publicity to inventions before signing the patent, that caveats are kept secret. Indeed, so great is the anxiety to conceal from the public the discovery, that the letter of the invention is sometimes only lodged for a caveat, as for instance: "New improvements on steam engines," "spinning cotton," "navigating vessels," etc. Great importance is attached to the novelty of the invention; hence, when artists in the employment of an inventor have mentioned to a stranger the discovery, and that stranger has by dexterity set up a model of the same, even after application for a patent, and before signing it, the patent has been lost for want of novelty. Our courts have adopted a more liberal policy, and very justly decided that public experiments to test the value of the invention, do not destroy the right on the ground of publicity.
In conformity with the established decisions of this country, a caveat, if recognized by law, could be safely lodged on file, describing (as fully as possible) the whole invention, to protect the invention against interfering applications. Our law also makes novelty a requisite for a good patent. Many have supposed the example of England and other foreign governments worthy of imitation by us. Patents in England are not confined to new discoveries there, but granted upon importation, or introduction of discoveries from abroad, and this is done upon the principle, that the arts will be benefited by the encouragement afforded. On this point much might be said. When this system was adopted in England, communication with other countries was comparatively limited, and the improvements in the arts correspondingly low. But at the present time, such are the facilities of intercourse, and such the reading spirit of the people of the United States, that it is evidently better to confine patents here to new discoveries.
Scientific journals bring speedily to our shores every invention from abroad, and these inventions are introduced into immediate use, with barely the cost of manufacture. Who except the patentee would be benefited by the issue of a patent for a foreign invention? thereby increasing the prince at least thirty-three or fifty per cent. There would seem no occasion for offering further bounty to patentees. During the last sixty days, more than two hundred applications have been made for patents, a number greater than the average number issued annually in England for the last ten years.
I cannot omit noticing one thing more, viz: in the failure of the patentee to sustain his patent, if he claims more than is original, or presents a defective description. The description of the whole object, however limited the improvement, is a common error. The patentee knowing fully the extent of his own discovery, or improvement, ought certainly to specify the same with perspicuity. Cases will arise, however, where (in a large machine for instance) some small part described might not be new. Here a trifling error destroys the patent. While there is no sympathy for fraudulent patentees, who attempt to deceive the public by patented discoveries, there is some feeling for an honest mechanic, who, having published his patent and believing it to be correct, is not only deprived of recovering any damages of the infringer, but obliged to pay cost to a defendant, who has enriched himself by the discovery of the plaintiff. In England an effort is making to prevent a total failure of action for partial defects, by authorizing certain disclaimers to be put in a subsequent procedure to judgment. The principle upon which surrender of invalid patents is permitted in this country, is an expeditious mode of correcting errors arising from "mistake," or "inadvertence." And if a discretion was allowed to the court, to tax or withhold costs in favor of the defendant, our practice would be more simple than the complex pleading which disclaimers must introduce. Such is the temptation to patent in this country, that it might be well to compel each patentee to publish his specification, or at least his specific claims.
We can scarcely eat, drink, sleep or work, without using some patent. Take for instance the farmer; he dares not use a plough without paying for the patent right, when, perhaps, the only new thing claimed in the specification of the patentee who offers this fine plough, is a simple bolt. -- While cupidity induces patentees to connect their improvements with inventions of others, ostensibly claiming all as their own, it is certainly proper that the government should annex some penalty to such imposition. A judgment against the validity of the patent, is a suitable penalty. Should it appear objectionable to confer the power of arresting interfering applications on the head of the patent bureau, etc., the objection may perhaps be lessened, by referring the interference to three indifferent arbitrators, skilled in the art in question, and as the arbitrators might make an improper award, an appeal could be allowed to the Secretary of State, or other tribunal. The present mode of appointing arbitrators in interfering applications, is to allow each party to choose one, and the Secretary of State the third. This makes a court of strong bias, as each applicant generally selects a particular friend. I ought to add that, at present, there is no compensation allowed or paid to arbitrators. Each appellant might be required to pay a reasonable fee, to be fixed by law. Interferences will generally be found to arise from ignorance or fraudulent intent. Information will correct the former, while a rigid scrutiny will induce impostors to withdraw their pretensions. It should be recollected that the first applicant is not always the original inventor; those who pirate upon inventions are generally dexterous in securing their patents as soon as possible. In such case, where the honest inventor has not been guilty of gross neglect, equivalent to a legal abandonment of his right, the superintendent might allow the patent to issue, and the rights of the parties would be settled in a court of justice; these cases will, however, be of rare occurrence. Should the above remedy not be thought expedient, an entry on the patent issued that it was deemed an infringement, or was destitute of novelty, would, it is believed, go far to check improper issues, and caution the public against imposition. It has been supposed if a small part of the money received from patents was appropriated for the publication of all specifications of patents, or at least the claims under the specification, and the distribution of the same in different States, the money would be well spent. The public would then know what patents were issued, and be able to guard against spurious ones. Copies could also be easily procured without sending to the patent office, and the publication might be made with so much care as to justify the introduction of the published copies as prima facie evidence in courts of justice.
There is a common error in the assignment of patents; partial assignments for States, counties or towns, are not recognized by law; and still such a large amount of property is now held, in this manner, that it deserves consideration whether some provision should not be introduced to remedy the evil in the future, and to protect past assignments. Few patentees seem to understand the law of assignment; the present law authorizes an assignment of the whole patent, or any individual part of the same, as one-half, one-third, one-fourth, etc. But the assignee must stand in the place of the original inventor, both as to right and responsibility. In the Untied States courts, where a plaintiff averred himself the assignee of the original inventor, with the exception of three counties in one State, a non-suit was ordered, because the plaintiff, by his own showing, proved himself not to hold any legal right under the assignment. It is respectfully suggested, whether the time allowed for recording patents should not be limited. The same reasons for a limitation applies to transfers of patents as to transfers of real estate. It has been before remarked that the fee of thirty dollars is paid into the treasury. It often happens that this is the first step taken by the patentees. A farther examination satisfies the applicant that his patent could not be sustained, and he, of course, seeks to recover his money. -- This, however, having passed into the treasury, cannot be paid without an application to congress; the sum is a small one; too much to lose, and yet hardly worth the trouble and expense of recovery.
Applicants often forward the thirty dollars directly to the superintendent, supposing that he is authorized to receive the money. As he is not permitted to do this, it becomes necessary for him to return the money, however distant, for the applicant himself to pay into the treasury. It is suggested whether the head of the patent bureau could not, (by giving bonds, if required,) receive and pay over this money directly into the treasury, and save the hazard and delay of remitting it to the patentee; and it is also suggested, whether there would be any danger in authorizing the treasury to repay such patent fees as should have been received into the treasury through mistake or ignorance, upon a petition approved by the superintendent of the patent office. In answer to the inquiry, what additional room is needed for the patent office, I would observe, that the building in which the patent office is now kept, was finished for the joint use of the post office and patent office. It is evidently too small for both. The post office department needs the whole building, while the rooms allowed to the patent office are entirely too small; the model rooms are full; several hundred models are stored away in the garret. -- Those now received are piled up, waiting for better accommodations, and what shall be done with the thousand models to be received annually? While it becomes necessary to procure more room for the patent office, it is desirable that some should be rendered as secure as possible from fire. The destruction of the present models and records would produce very great embarrassment, especially as so many original patents and assignments are lost. It is a satisfaction to state that the patent office has not been, and need not be, onerous to the government. There now remains in the treasury about $150,000 to the credit of the patent office, after paying all expenses since its first organization. A part of this sum would furnish a commodious and permanent building; and should all the patents be so arranged in systematic order, to show the progress of the arts in the country, it would be an exhibition highly gratifying, as well as instructive. The present limited room prevents such an arrangement. In answer to inquiry, what additional expense would be incurred by an exhibition of the models of machinery, and specimens of fabrics and other manufactures and work of art not patented? I reply, that the keeper of the models in the patent office could superintend this exhibition without any extra charge, and when rooms were constructed for patented models, additional rooms could be made for the reception of fabrics and models unpatented, with little expense.
It is believed that there are many inventors who would delight to exhibit their improvement in machinery and manufactures, if room was allowed them, while they do not desire to take out a patent; such a collection and exhibition would be a repository of national ingenuity, and might be made highly honorable to the country. Who could fail to be instructed by such an exhibition? And who that was about to invest in machinery, would not be amply compensated by visiting the patent office. The exclusion of foreigners from the benefits of the patent law cannot fail to be noticed as an exception to that reciprocity which this government has ever cherished. Citizens of the United States are daily taking out patents in France and England, and the subjects of those countries are greatly disappointed in being refused a similar privilege here. Congress has sanctioned the principle of granting patents to foreigners who apply to that body. Should foreigners be permitted to take out patents, and pay fees corresponding to those demanded of our citizens in their countries, it would not be inequitable. The following table will show the comparative charges in several countries for patents:
In Great Britain, or England, and colonies £122 $542.21 Scotland 19 84.16 Spain 60 16s 299.97 Ireland 137 607.77 France 46 10 206.66 Austria 43 06 196.68 United States of America 6 10 30.00
It would be desirable that all foreigners should be allowed to take out patents for a fixed sum, (perhaps one hundred dollars,) since it would be difficult in some cases to ascertain what the particular country to which the patentee might belong charged for the same. By the present law, foreigners residing here two years are allowed to take out patents on the same terms as citizens. There is an evident propriety in granting patents to those who declare their intention of becoming citizens. Why visitors for two years should enjoy any privileges over other foreigners does not readily appear. I now proceed to answer more definitely the remaining inquiry. How many persons are necessary for the prompt and efficient performance of all the duties connected with the office, and what should be the respective and particular duties. -- Under the present organization two additional clerks are absolutely necessary. -- This would give the following force: one superintendent, three clerks, one examiner, one draughtsman, one machinist, one messenger.
The duties might be distributed as follows:
The superintendent to conduct the correspondence; issue the papers for patents; and exercise a general supervision. Chief clerk to keep the accounts; compare records and transfers; index caveats; file the applications for patents, and transmit the same; and aid, if required, in the correspondence. Second clerk to transcribe on parchment the specifications. Third clerk to aid in transcribing specifications; and filling up patents, and recording the same; and recording letters. An examiner, who should compare, critically, every specification, drawing and model; ascertain its interference with pending applications. The duty will be very arduous, some specifications containing ten or twelve pages of closely written matter, with many references to drawings. In this duty the examiner might be assisted by a scientific draughtsman, whose labor in drawing could only occupy part of his time. A machinist is necessary to repair the models and keep them in order; to classify and arrange them; to exhibit them to strangers; and to answer the many inquiries made respecting them by patentees and visitors. -- The models are of much value, and the large rooms should have at least one person in attendance to protect the property. A few models have already been injured by visitors. What effect the new organization might have in reducing the number of patents cannot be determined. Some present duties would doubtless be lessened by the proposed alterations; others would arise; applications would require a very strict scrutiny to detect interferences with prior patents, or a want of novelty. To avoid the embarrassment from the delay in furnishing copies where the pay is specific, it is most respectfully submitted, whether it would not be advisable to authorize the head of the patent bureau to employ (if necessary) occasional assistance in transcribing said copies, reimbursing the whole expense from the fees received. This discretionary power would dispense with the appointment of another permanent clerk, and meet the sudden exigencies as they arise, without suspending the ordinary business of the office. I have omitted to mention that a few hundred dollars will be required to procure suitable tools for the machinist to repair the models.
I am, most respectfully, yours,
Henry L. Ellsworth
Hon. Secretary of State
Extract of Mechanic's Magazine and Journal of the Mechanic's Institute, vol 9, (January - June 1837)
January 1837, pages 1-2
Destruction of the Patent Office
Our readers will hear with surprise and regret, that the entire Patent Office and its contents have been destroyed by fire.
The destruction commenced in the General Post Office, under the same roof, and could not be arrested until the entire building was in ruins.
The vast collection of models, drawings, etc., the result of the combined ingenuity of the United States for years, is thus swept from existence -- a loss never to be repaired.
What effect this accident will have upon the proceedings of the Office, we cannot say. Certainly much useless lumber is removed, for which regret in the slightest degree cannot be felt. It would be prudent in all, having unfinished business at the Office, to ascertain the position in which they are left, and repair any deficiencies caused by the fire, without delay.
It is a disgrace to us as a nation, that we cannot place our public offices, especially those of record, in buildings that are fire and water proof. Buildings for the use of the Patent Office, it is true, are now in progress, but they should have been erected long ago.
It is to be hoped, that every effort will be made to expedite their completion, while no expense should be spared in rendering the office every way suited to the wants of the department.
Extract of Mechanic's Magazine and Journal of the Mechanic's Institute, vol 9, (January - June 1837)
From a card attached to the last number of the Journal of the Franklin Institute, we perceive that Dr. Thomas P. Jones has turned his attention exclusively to the preparation of patents.
There is probably no one in this country, or elsewhere, who has such an extensive acquaintance with this subject, both in our own country and in Europe. Dr. J., by his situation as superintendent of the Patent Office, has had opportunities, for years, of informing himself of the details of patents -- and we have ever considered his criticisms, in the monthly record of Patents, contained in the Journal of the Franklin Institute, as invaluable.
The recent destruction of the Patent Office has increased the necessity of ascertaining the originality of an invention, before taking out letters patent, while the difficulty of making such investigation has become greater than ever.
A proper preparation of the specifications is necessary to the value of the patent, and sometimes a judicious consultation with good authority on such matters, may save thousands to the inventor.
If we see any more loosely prepared papers, we shall lay the fault at the inventor's own door -- no one should err in this matter, when they have the necessary information extended to them on reasonable terms.