Opinions of the U.S. Attorney General concerning patents
Opinion of the Attorney General of the United States
Philadelphia, February 10, 1796
Sir:
Upon examining the specification of Elisha Perkins, of his method of removing pains and inflammations from the human body by the application of metallic substances, I doubt whether it be so distinct, intelligible, and certain, as it ought to be before a patent is granted. In all cases, the object of the law is to acquire and distribute useful knowledge; which in no case will be obtainable, unless the invention be so explained that other persons besides the author may understand and use it; more especially, when the alleviation of human misery is intended, care should be taken to have a plain and thorough exposition of the art.
Mr. Perkins has not specified in express language --
1st. Whether all metals will produce the like effect, and if not, he should describe what sort only will produce it; and how it is to be composed, if it be a compound of metallic substances.
2nd. What shape and size the instrument ought to have, to be most operative; and whether the point ought to be very sharp, and whether it be the better for being the more sharp.
3rd. The words, "applying a pointed piece of metal to the part affected, and drawing it across and from the part to some of the muscular," etc., so vaguely describe the manner of using it, that there is danger of misunderstanding the directions; and if misused, the instruments may be very mischievous. I think it a very good rule, that a thing capable of doing good if judiciously used, may be very pernicious if misapplied. I wish Dr. Perkins to remove these doubts by a more full and particular specification.
I am, etc.
Charles Lee
To the Secretary of State
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Opinion of the Attorney General of the United States
Washington, May 26, 1802
Sir:
The authority given by law to grant patents is unquestionably confined to the citizens of the United States. The privilege is a monopoly in derogation of common right, and, as it is not, ought not to be extended to foreigners. Were it to be, it would be subject to endless abuses, privations, and embarrassments to our citizens. I have no doubt on the question.
Levi Lincoln
To Mr. Daniel Brent
[Chief Clerk of the Department of State]
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Opinion of the Attorney General of the United States
Attorney General's Office
March 22, 1812
Sir:
I had the honor to receive yesterday your letter, and the accompanying papers, relative to the application of James McDonald for a patent for a machine for making bricks; and have to state, in answer to the inquiry which it contains, that, however desirable it may be to refuse the patent, and exceptionable the conduct of the applicant would seem to be on moral grounds, the Department of State has no discretion to decline to issue the patent as applied for, in case the allegation and oath prescribed by the act of Congress have been made, a suitable specification has been filed, and a model (if required) has been deposited. The efficacy of the patent, when issued, will be for judicial cognizance.
William Pinkney
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
May 20, 1812
Sir:
In answer to your letter of the 14th instant, I have to state that I see no reason for refusing any applicant a copy of any specification of patent, or drawing of a model, lodged in the office of the Secretary of State.
I do not suppose that the officer who may be intrusted to give such copies has any concern with the purpose for which they are asked. The act of Congress has provided no means by which he could protect himself against a misrepresentation of that purpose, and, of course, did not intend that he should inquire into it. No injury can result from a free and unlimited communication of such specifications and drawings. The policy of the law rather requires than forbids it, and the letter of it looks the same way.
In England, (according to my recollection,) the specifications of all patents are regularly published in a periodical work conducted by private individuals, of which I do not at present remember the title. The security of the patentee is in the protection which the law extends to his invention, not in the secresy [sic] of the description or representation of it.
Indeed, a general knowledge of that description and representation would seem to be necessary to enable those who wish to respect the rights of the patentee to avoid an invasion of them.
Wm. Pinkney
To the Secretary of State
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Opinion of the Attorney General of the United States
Office of the Attorney General
January 12, 1820
Sir:
Doctor Thornton's communication of the 7th instant, which has just been submitted for my opinion, presents the following case and questions.
Mr. Duplat, an alien, who has resided within the United States for two years, applies for a patent for a discovery in the useful arts, of which he is the original inventor, but which he put into extensive operation in France before he came to this country. The act of the 17th April 1800, which extends the privilege of obtaining patents to aliens who have had a residence of two years among us, provides that every person petitioning for a patent shall make oath, before such patent shall be granted, that such invention hath not, to the best of his knowledge, been known or used, either in this or any foreign country; and it provides, moreover, that any patent which shall be obtained for any invention, which it shall afterwards appear had been known or used previous to such application for a patent, should be utterly void. From the facts already stated, Mr. Duplat cannot take the oath required by this law; and the question which I understand to be submitted to me, is, whether the oath required by this law can be dispensed with? or whether it can be so modified as to let the present applicant, who is confessedly the original discoverer of the invention for which he seeks a patent?
My opinion is, that the law is imperative; and that no patent can issue in the case until Mr. Duplat shall have taken the oath in the terms in which it is prescribed by Congress.
Whether Congress, in prescribing the oath in these terms, have not gone beyond their intention; whether the law ought not to be amended in this particular; and how it ought to be amended; are questions which, I presume, were not intended to be referred to me, since my province is confined to answering questions of law merely, on the laws as they stand.
I have the honor to be, sir, very respectfully, your obedient servant,
Wm. Wirt
To the Secretary of State
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Opinion of the Attorney General of the United States
Office of the Attorney General, June 20, 1820
Sir:
During my late absence in Richmond, a communication was left at this office from your department, covering a letter from Mr. Ingersoll, of Philadelphia, to you, and an answer thereto from Dr. Thornton, the superintendent of the Patent Office, endorsed on the envelope "A patent case for the consideration and opinion of the Attorney General;" from which I infer that my opinion is desired only on the particular case which has arisen.
The case I understand to be this: a defendant, sued by a patentee for an alleged violation of his patent right, has obtained, through his counsel, a copy of the specification filed by the patentee in the Patent Office, as a document material to his defence; but the copy is accompanied by a request that it may be used only for legal and necessary purposes, lest the secret of the discovery become public, and the patentee should thereby lose the benefit of his exclusive right. The counsel replies that the paper, having been procured for the defence of his client, must of necessity be shown to that client; and that, being an official exemplification of a public document, he cannot consent to hold it under any restriction or injunction of secrecy whatever. To this disclosure of the paper to the defendant, the superintendent of the patent Office is understood to object; and, if the paper is to go before the jury, he requires that it shall pass through the hands of the court only; that the jury shall have a special oath of secrecy administered to them; and, as necessary to this concealment, I presume it is intended that there shall be no open discussion at the bar on the specification, but that the whole trial shall be in secret.
However desirable it might be, in the class of cases to which the superintendent alludes, (those in which the benefit of the discovery might be used in secret,) that the law were thus, I have only to say that the law is not so written. The 6th section of the act of 1793 permits the defendant to protect himself by proving, inter alia, that the specification filed by the plaintiff in the Patent Office does not contain the whole truth relative to his discovery, or that it contains more than was necessary to produce the desired effect, etc., etc. How can he avail himself of this privilege, but by calling for a copy of the specification, so as to enable him to collect and bring his proofs to bear on it? When the law gives a privilege, it gives, by unavoidable implication, all the means of using it. Every defendant, therefore, to an action charging him with the violation of a patent right, has a right, as soon as he is made a defendant, to call for a copy of the plaintiff's specification; and the superintendent of the Patent Office is bound to furnish it on payment of the fees prescribed by the 11th section of the law; and the defendant has the same right to use the specification on the trial -- and to use it in the same way, too, as any other piece of evidence whatever; that is, not merely to exhibit it, but to illustrate by argument the purpose for which he introduces it.
As to changing the established forms of jury trials, in patent cases, by clearing the court house of the suitors, shutting the doors, silencing the counsel, and swearing the jury to secrecy, it is only necessary to say that if it were proposed, the answer from the bench would be, "Nolomus leges mutari."
I have the honor to be, sir, most respectfully, your obedient servant,
Wm. Wirt
To the Secretary of State
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Opinion of the Attorney General of the United States
Office of the Attorney General
[undated, but soon after April 12, 1825]
Sir:
I have considered the two questions which you have done me the honor to submit for my opinion, on the 11th section of the patent law; and,
1. I do not consider the proviso to this section as opening to all the citizens of the United States, indiscriminately, at their pleasure, and for any purpose that may suit them, the right to demand copies of papers respecting patents granted to others. The proviso, considered with reference to the enactment which it was to qualify, and with reference also to the essential object of the whole law, might well receive the strict construction which the superintendent of the Patent Office has been disposed to place upon it; a construction which would limit the right to demand copies to the patentee, and those who should apply by his authority for such copies. The words, however, are susceptible, without violence, of a larger construction; and they have been accordingly construed to extend to persons who have been sued for a violation of a patent right: the law itself (6th section) having expressly authorized such persons to defend themselves on the ground of the imperfection of the specification filed in the office by the patentees, as well as on the ground that the patentee was not the first inventor; to the purpose of either of which defences, it seemed but fair that the persons so sued should be furnished with copies of such specifications. To this construction, so far as it concerns defendants in suits on patents, I have heretofore given my official sanction, by an opinion which I presume is on file in the Department of State. But while I should hold it proper to furnish copies for a purpose thus expressly authorized by law, I should hold it equally proper to refuse them, not only where there was reason to suspect, or even to fear, that the purpose might be fraudulent towards the patentee, but where, without such fraudulent purpose, the disclosure might be injurious to the fair interests of the patentee, as in the case of patent medicines put up by the superintendent. The 11th section is, in my opinion, so framed as to secure to the patentee, and those claiming under him, the right to demand copies of the papers connected with his patent, ex debito justitiae; and it is at the same time, in my opinion, so framed as to refer it to the sound discretion of the department to what other persons, and on what other occasions, such copies shall be furnished or refused; there being, manifestly, occasions on which such copies ought to be refused -- as in the case of a meditated fraud; and, as clearly, occasions on which such copies ought to be furnished -- as for the purpose of a defence, expressly authorized by law. The words of the proviso are not to be considered by themselves. They are not to be considered as they might be considered if they formed a separate and substantive enactment, instead of forming a proviso. They are not to be considered as they might be considered if they related to a different subject; -- to the proceedings of a court of justice, for example; all whose proceedings being open and public, there is nothing of which justice to individuals can require the concealment. Construing the proviso secundum subjectum materiem, and in the form and connexion in which it presents itself, I conceive that the only sound exposition is that which I have had the honor to submit.
2. On the second question, I am very clearly of the opinion that it is not lawful to allow copies of any such papers, official or unofficial, to be issued from the office, for any purpose, at a less rate of expense than twenty cents "for every copy sheet of one hundred words." The law nowhere authorizes copies at any other rate, and it expressly requires that the sums accruing from this source "shall pass to the account of clerk-hire in the office of the Secretary of State." The documents are returned.
I have the honor to remain, sir, with great respect, your obedient servant,
Wm. Wirt
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
June 4, 1827
Sir:
In regard to Sealy's application for a patent for glass furniture for beer and cider pumps, it may be well questioned whether the mere substitution of one material for another be an invention, within the sense of the patent law. It seems to be considered otherwise in England. (Godson of Patents, p 68, note 6) In every case of doubt, however, it would seem to be more congenial with the policy of the law to afford the citizen an opportunity of trying the validity of his right by issuing the patent. With this view, I recommend a patent for the glass furniture, according to the amendment of the petition proposed by Mr. Blagrove, the counsel for the petitioner, in the letter addressed to me, and now sent to be filed with the other papers.
Wm. Wirt
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office, July 26, 1828
Sir:
I think your doubt is well founded with regard to Mr. Bacon's patent. There can be no fair purpose for assuming a name for his newly invented medicine, so well known as Anderson's Cough Drops.
It is calculated only to enable him to encroach on the rights of others, and to diminish the value of the sales. He has a right to a patent for his newly invented medicine, under a proper specification; and he has a right to call it what he pleases, provided he do not assume an already existing and popular name. The maxim sic utere tuo ut alienum non laedas applies in this, as well as all other rights. If, therefore, the patent have not left the office, I would withhold it till the inventor shall assume another name for his medicine.
You will excuse me for reminding you that your office is an appendage of the office of the Department of State; and the authority of the Attorney General is confined to giving opinions to the President and heads of departments. The habit of your predecessor was to submit any difficulty in the first place to the Secretary of State, who frequently removed the difficulty, without finding it necessary to refer to the Attorney General. In the absence of the head of the proper department, (as in this case,) I feel no scruple in answering questions from any subdivision of the department; but during the presence of the Secretary, the regularity of the business and the uniformity of my official action will make it more agreeable to me that any questions you may find it necessary to ask should be addressed, in the first instance, to the head of the proper department.
Wm. Wirt
To the Superintendent of the Patent Office
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Opinion of the Attorney General of the United States
Office of the Attorney General
August 7, 1831
Sir:
In reply to the questions proposed by you at the instance of the superintendent of the Patent Office, I have the honor to state --
1. That, in my opinion, the department acts rather ministerially than judicially in granting patents for useful inventions; and where a patent has been issued, and afterwards cancelled by petition of the patentee, and another bearing the same date, comprising an additional improvement, issued in his favor, I think a patent may afterwards issue for the said additional improvement alone -- taking date from the time when the second patent above mentioned was issued. I am not prepared to say that the patent for the additional improvement only would confer any right on the patentee, or secure to him the exclusive right to the additional improvement, after the expiration of the patent in which it is first mentioned. But the right he claims under the patent laws is a question proper for judicial decision; and the issuing of the patent appears to be necessary in order to enable him to try his title. A patent issues from the Patent Office upon the representation of the party, without entering into an examination on the question of right. All the proceedings are ex parte on the subject of patents, except in the case of interfering applications. And when all the forms prescribed by law have been complied with, I think a patent may lawfully issue, without inquiring whether it will confer any right on the patentee. The legal effect of the patent; and the title acquired under it, according to the true construction of the patent laws, will remain open for the decision of the court.
A contrary practice might be unjust to the inventor; for if the department refused to issue the patent on the ground that the part was not, under the patent laws, entitled to the exclusive use of the invention for the period claimed, and this opinion happened to be an erroneous one, the party has no appeal; and, although he may have a lawful right, he will yet, in such a case, be without a remedy.
2. As a patent is granted for the benefit of the party, I perceive no reason why he should not be permitted to surrender it, and take a new one, including an additional improvement, and having the same date with the original patent. Whether the new patent thus obtained would confer on him any right, would, as in the case before mentioned, be a question open for judicial decision. It certainly would not be proper to erase or obliterate the first patent from the records of the office. The records should preserve the full history of the transaction. The first patent, and the proceedings to obtain it, should remain on the records; the surrender, and the time, form, and manner in which it was made, should also appear; as well as the second patent itself, and the time it was issued, and all the proceedings by which it was obtained, and which are connected with it. The legal effect of these proceedings, taken together, and the rights acquired under them, would afterwards be a proper subject for judicial inquiry and decision.
3. No individual ought to be permitted to take copies of papers belonging to the Patent Office. The copies should be made by the proper officer, and the fee of twenty-five cents per hundred words invariably charged and received, and paid into the treasury.
4. The different acts of Congress on the subject of the fourth question are not entirely free from difficulty. But, in my opinion, the Secretary of State cannot employ any more clerks in the Patent Office than those particularly authorized by the acts of Congress, and cannot use the money received for patents, or for copies from the Patent Office, for the purpose of employing and paying other persons to be engaged in the duties of that office. By the act of April 20th, 1818, no higher or other allowance shall be made to any clerk in the departments or offices than is authorized by that act; and this provision (except in so far as the number of clerks may have been altered by subsequent legislation) is still in force, and deprives the head of the department of the power to pay money for clerk hire to any person employed in the Patent Office beyond the number names in the acts of Congress, or to any one whose compensation is not fixed by law.
R.B. Taney
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
May 15, 1832
Sir:
I think the party applying for a patent must prove to the satisfaction of the Secretary of State that he is a citizen of the United States; or, if an alien, that he has resided in the United States for two years. The authority given by the act of Congress to grant patents is a restricted one. They cannot be granted to every applicant, but only to applicants of a particular description; and the party applying must, consequently, prove to the satisfaction of the Secretary that he is one of the description of persons to whom the law authorizes him to issue a patent. And this is the more necessary because the decision of the Secretary is, in my opinion, prima facie evidence of the fact, although not conclusive.
As to the mode of proof which shall be received as sufficient by your department, it is a matter for your own regulation; and I presume some fixed rule has been established on the subject.
R.B. Taney
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
July 5, 1833
Sir:
I proceed to state my opinion on the question proposed in your letter of the 3d instant, concerning the application of Thomas C. Newton for a patent.
The petition is by Thomas C. Newton alone; and he states himself to be a joint inventor with Joseph H. Tonning, and produces a paper purporting to be an assignment of Tonning's interest to him. I should have preferred an official statement of the case from the head of the Patent Office, instead of paper A, which was presented, and which accompanies your letter. It is desirable, in a question of this sort, that I should be apprized of the difficulties which suggest themselves to the officer, and should also be informed of the usage of the office in similar cases. For, if a law, ambiguous in any of its provisions, has received in practice for many years a particular construction, such a construction ought not to be lightly departed from. And in the law in question there are several other provisions, besides the passages referred to in the statement A, which bear on the point, and which, when taken in connexion with the paragraphs quoted in the statement, involve the subject in some obscurity.
The first question proposed in your letter was verbally put to me from the Patent Office, some time ago; and I then understood that it had been the usage of the office not to grant a patent on a joint invention to one of the inventors upon the assignment of the other, but to require all who were concerned in the invention to join in the petition. And upon examining carefully the act of Congress on that occasion, I expressed my opinion that it was advisable to adhere to the interpretation of the law as heretofore practised [sic] on; and I still entertain that opinion.
The second question is one that is more proper for your decision than mine. It depends on your department to fix by regulation (when the law is silent) what evidence will be deemed sufficient to authorize one man to act as the attorney of another, in any of the bureaus under your direction. The evidence usually required in similar cases is a power of attorney sufficiently authenticated. But if you think any other evidence ought to be received by the Patent Office as sufficient proof of authority, it is for you to prescribe the form, as well as the manner, in which it must be authenticated.
R.B. Taney
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
August 20, 1833
Sir:
The application of John Goulding, the assignee of a patent originally granted to other persons, for permission to surrender the patent, on the ground of a defect in the original specifications, and to take a new one to himself on the annexed specification now offered, appears to present a new question, and one by no means free from difficulty.
In the case of Grant and others vs. Raymond, (6 Pet. Sup. Ct. Reps., 218) it was decided that a patentee may surrender a patent for the residue of the term, with a corrected specification. And the principle decided in this case was afterwards reaffirmed in the case of Shaw vs. Cooper, (7 Pet. Sup. Ct. Reps., 292.)
In these two cases, the applicant for the amended patent was the original patentee, and not the assignee. But, by the act of February 21, 1793, the assignee stands in the place of the original patentee, both as to right and responsibility; and must, therefore, possess the same right to correct errors by an amended patent. And, indeed, in the case of Shaw vs. Cooper, above mentioned, Judge McLean speaks of this right as belonging to the "holder" of a patent; and I suppose purposely uses a word which includes the assignee as well as the original grantee.
But the difficulty of the case is, in what form is this to be done? and upon what evidence? There is no provision in the law for issuing a patent, under any circumstances, to the assignee; and I understand there is no precedent of that description. In one of the cases above referred to, the moiety of the original patent had been assigned, but the new patent did not issue to the joint holders. The assignee united in the application that it should be granted to the original patentee; and it was done accordingly. And this proceeding was supported by the Supreme Court, although there does not appear to have been a reassignment of this moiety to the patentee, in order to reinvest him with the entire legal interest.
But, in whatever form the new patent is to be issued, in the case of an assignee, it seems clear that he cannot obtain it without the co-operation of the original patentee; for he cannot take the oath which I apprehend must always be necessary to support the corrected specification. The mere statement of the party, in his petition, that the invention intended to be originally patented was according to the annexed specification, can not be sufficient evidence of the fact. It must be verified by affidavit; and no one but the inventor himself can make the oath. The act of Congress requires that the inventor shall swear or affirm that he does verily believe that he is the true inventor of the art, machine, or improvement for which he solicits; and he is to deliver a written specification of his invention. The oath, therefore, must refer to the description and specification he exhibits; for it is the machine, as there described, which he swears that he believes himself to have invented. And the oath uniformly required at the Patent Office, I understand, refers to the machine as there specified and described. Now, it might be true that the party was the inventor according to the description he first presented, and yet not be the inventor according to what is called the amended description; for what is called the correction of errors in the original description, may, in effect, be material alterations, which did not suggest themselves to the patentee at the time of his original patent, and which some one else may have discovered and made known to the public. It is therefore, in my opinion, necessary, when an amended patent is asked for, that the inventor should swear to his invention as there proposed to be specified; and should also, by his oath, declare that the omission and error in the former specification was occasioned by mistake. The mere statement of what are called corrected specifications by the patentee or his assignee, cannot be sufficient. And there is no oath from the original patentee verifying the amended specification, and testifying that the additions and alterations now proposed to be made were omitted by mistake in the former patent. I think, therefore, that a new patent ought not to issue as prayed by Mr. Goulding.
R.B. Taney
To the Secretary of State
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Opinion of the Attorney General of the United States
Attorney General's Office
December 15, 1836
Sir:
In answer to the question proposed in the letter of the Commissioner of Patents, enclosed in your communication of the 31st of October last, and on which you have requested my opinion, I have the honor to reply, that, in my judgment, there is no sufficient reason for departing from the construction which was given to the corresponding part of the former patent law, and the usage which obtained under it, in respect to the issuing of several patents in lieu of one patent surrendered.
As the charge of the new patent is reduced from thirty to fifteen dollars, the Commissioner suggests that the revenue may be defrauded, if a party be allowed first to include several distinct improvements in one patent, and then to surrender the patent and take out several new ones; and, if the suggestion were well founded, it would certainly furnish a good reason for a more rigid construction of the present law than was given to the former statute. But, unless there be some error in the specification, arising from "inadvertency, accident, or mistake, and without fraudulent or deceptive intention," the new patent cannot be issued; and as in the case supposed in the objection I am considering, there is a fraudulent design to elude the payment of the legal charge, of course such a case is not within the law.
I am, sir, etc.
B.F. Butler
To the Secretary of State
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