Commentary on the New Patent Act*
P. J. Federico**
THE PATENT OFFICE (PART I)
PATENTABILITY OF INVENTIONS AND GRANT
PATENTS AND PROTECTION OF PATENT RIGHTS (PART III)
APPLICATION OF NEW LAW TO PRIOR PATENTS
Author's Note. After the new patent act [this title] was approved the writer was called upon to address various patent groups for the purpose of acquainting them with the details of the new law and with the revisions in the procedure of the Patent Office made in consequence thereof. These talks ranged form several series of three or four lectures covering the entire act in detail to single shorter ones for a more general nature or dealing with only particular phases of the act. The talks before the Los Angeles Patent Law Association, the Patent Law Association of Chicago, the New York Patent Law Association, the Patent Section of the American Bar Association and the American Patent Law Association were recorded and transcribed. The present essay is a consolidation and revision of these various transcriptions, with some condensation and a certain amount of added material.
While patents are creatures of statute, the entire body of patent ' law is much fuller than the statute itself, including a vast amount of case material on subjects such as invention and infringement which are dealt with by the statute only in general terms. Consequently a discussion of the statute alone cannot be a complete dissertation on patent law. Moreover, a treatment of a new act such as this will necessarily dwell on changes introduced by the new act at greater length than would ordinarily be warranted by the subject matter of some of the changes. This paper should be considered only as a survey of the patent statute, with the main objective of pointing out the changes which have been made by the new act. In such an extended discussion it is obviously impossible to avoid expressions, either consciously or unconsciously, of personal opinion and it should be understood that the paper contains some opinions and views of the writer even though not always labeled as such.
It must be emphasized that any views or opinions expressed are not necessarily the views of the office in which the writer is employed or of any of its officials.
Prior Patent Acts
For the fist time since 1879 [Act July 8, 1870, c. 230, 16 Stat. 198], the patent statutes have been completely rewritten, by the statute approved July 19, 1952 [this title] which came into force on January 1,1953. Before describing this new statute and its provisions, something will be said of the prior acts and of the manner in which the new act came about. The patent laws are enacted by Congress in accordance with the power granted by the eighth clause of Section 8 of Article I of the Constitution, which provides that:
"The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."
This provision was adopted by the Constitutional Convention following suggestions for Federal jurisdiction over both patents and copyrights which had been made in the Convention by James Madison of Virginia and Charles Pinckney of South Carolina. Each proposed separate provisions relating to patents and to copyrights which were merged by the Drafting Committee of the Convention into the general statement we now have, which was adopted without any dissenting voice.
The Committee Report on the new act states that the background, the balanced construction, and the usage current then and later, indicate that the Constitutional provision is really two distinct provisions merged into one sentence. The purpose of the first provision is to promote the progress of science by securing for limited times to authors the exclusive right to their writings, the word "science" in this connection having the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries. The first patent law [Act April 10, 1790, c. 7, 1 Stat. 109] and all patent laws up to a much later period were entitled "Acts to promote the progress of useful arts". While derived from two separate concepts it should be noted that the words "patent" and "copyright" are not used, and that the single provision is very general in its terms, leaving to Congress full discretion, except that the time must be limited, in the manner in which the granted power is to be exercised.
When the first Congress met after the adoption of the Constitution, its attention was quickly called to the subject of patents and copyrights by the filing of petitions for exclusive rights by authors and inventors and a general bill, the tenth one of the first session, was introduced in the House of Representatives. In his first message to Congress, recommending various subjects to the attention of the Congress, President Washington stated "I cannot forbear intimating to you the expediency of giving effectual encouragement... to the exertions of skill and genius in producing" new and useful inventions. The first patent law was enacted shortly thereafter, on April 10, 1790 [c. 7, 1 Stat. 109].
The first patent law vested jurisdiction to issue patents in a Board consisting of the Secretary of State, the Attorney General, and the Secretary of War. The leader of the group was the Secretary of State, Thomas Jefferson, who was personally deeply interested in the subject matter of patent law. Jefferson was never himself a patentee, but he was the inventor of a number of devices, most of them of the "gadget" type.
While the Board, and particularly Thomas Jefferson, was quite favorable to the granting of patents, and granted them with great consideration, the other duties of members of this Board, in view of their high offices, made it impossible for them to devote much time to this work, and as a result the law was changed in 1793 to make the granting of patents a clerical function. Under the Act of 1793 [February 21, 1793, c. 11, 1 Stat. 318] patents were granted to anyone who applied and fulfilled the formal requirements such as filing the necessary papers and payment of the required fee.
This law continued in force until 1836 when the dissatisfaction with the granting of patents without any examination as to novelty or other matters led to the appointment of a select Committee by the Senate, which reported a bill which became the new law upon enactment on July 4, 1836 [c. 357, 5 Stat. 117]. This new law contains the fundamental principles of our present patent law. It created a Patent Office with a Commissioner of Patents at its head, and gave it the function of examining applications for patents with the power to refuse patents, which was not present in the previous law. The law had many other provisions in it relating to details of procedure, enforcement of patents, and matters of that sort, which need not be summarized here.
After the Act of 1836 the patent law was amended at various times by new enactments, the principal ones being in 1837, 1839, 1842 and 1861. The Act of 1861 [March 2, 1861, c. 88, 12 Stat. 246] introduced numerous changes among which may be mentioned the provision for an appeal to three examiners-in-chief in the Patent Office, the abolition of various discriminations against foreigners, and the fixing of the term of a patent at seventeen years. Prior to this time the term of a patent was fourteen years, but the Act of 1836 provided for an extension of seven additional years which could be obtained by any patentee who could comply with the requirements. The bill which resulted in the Act of 1861 contained nothing in it relative to the term when it passed the House of Representatives, but the Senate, passed the bill with an amendment repealing the seven year extension. The report of the conference committee, which was appointed to consider the differences between the House and Senate, contained a section changing the term of patents to seventeen years, with no extensions. The present tern of seventeen years is hence assumed to be a compromise between the House bill which retained the fourteen year term with a possible extension of seven more years, and the Senate amendment which would make the term fourteen years with no extension.
The last general revision of the patent laws prior to the recent one was the Act of July 8, 1870 [c. 230, 16 Stat. 198], which came out of a program to revise and consolidate all the laws of the United States then under way. In 1866 Congress passed a law [Act June 27, 1866, c. 140, 14 Stat. 74] providing for the revision and consolidation of the statutes of the United States of a general nature. The Commission which was appointed to perform this work prepared a preliminary draft of the part relating to patents and copyrights in 1868, and a second preliminary draft in 1869. The following year a draft of the statutes relating to patents and copyrights as revised, simplified, arranged, and consolidated by the Commission was reported to Congress. This draft was referred to the Committee on Patents and the Chairman introduced a bill a few days later.
The object of the Commission on revision of the laws was only to revise, arrange, and consolidate the statutes in force and the draft reported from the Commission presumably was for this purpose only. The probable reason for separately reporting the patent and copyright part and referring the matter to the Committee on Patents was that during this same period there had been suggestions for amending the patent laws, and also the copyright laws, in substance, and the bill coming from the Committee on Patents had many changes over the existing law. The bill thus introduced was enacted on July 8, 1870 [c. 230. 16 Stat. 198] and included the subject of copyrights and trade-marks as well as patents.
The work of revising all the statutes of the United States continued, resulting in the enactment, on June 22, 1874, of the Revised Statutes of 1874, a codification of the laws of the United States in force on December 1, 1873. The patent sections of the Act of 1870 became sections 475 to 496 and 4883 to 4936, and a few other sections, of the Revised Statutes.
From 1874 to 1952 over sixty Acts of Congress relating to patents have been passed; these amended various sections of the Revised Statutes or made new enactments not related to any section of the ,, Revised Statutes. Since the sections of the Revised Statutes relating to patents were a compilation of the Act of July 8, 1870 [c. 230, 16 Stat. 198], our recent patent law was essentially the Act of 1870 with subsequent amendatory and supplemental enactments.
History of the New Act
The patent act of 1952 [this title] stems from two movements, one to amend the patent laws, and the other to revise and codify the laws of the United States.
For some time there was agitation for a modern complete restatement and codification of all laws of the United States, inasmuch as the only prior codification, the Revised Statutes of 1874, had become generally outmoded on all subjects. In 1926, after many years' effort on the part of the Committee on the Revision of the Laws of the House of Representatives, the Congress adopted the United States Code, which was a codification of the existing general and permanent laws of the United States arranged in 50 titles according to subject matter, and which was declared to be prima facie evidence of the law. Because of the large size of this Code, it was not enacted into positive law, but left as a compilation and rearrangement of the statutes, with, however, Congressional approval making it prima facie evidence of the law. Subsequently a comprehensive program of separately revising and enacting into law each of the titles of the United States Code was adopted. Up to the present time nearly a dozen of the fifty title of the Code have been revised and enacted into law, and consideration or preparation of bills relating to a number of additional titles is in process. The Committee on the Judiciary of the House of Representatives is now charged both with this program of the revision of the laws and with the consideration of bills relating to patents.
In 1949 it was suggested to the Subcommittee of the Committee on the Judiciary having jurisdiction over patents that it undertake a complete study of the patent laws with the view toward their comprehensive amendment at one time if found necessary or desirable, rather than proceeding by the consideration from time to time of individual bills on isolated topics. At the same time, in view of the fact that the same Subcommittee then also had jurisdiction over revision of the laws from the standpoint of codification (present jurisdiction is in different subcommittees), it was suggested that the Subcommittee also begin work on the revision and enactment of Title 35, the patent section of the Code.
These projects were combined and initiated by the preparation and publication of a preliminary draft of a "Proposed Revision and Amendment of the Patent Laws," which was distributed by the House Committee on the Judiciary early in February, 1950, as a "Committee Print." This preliminary draft consolidated two objectives. First, all the Acts of Congress dealing with patents, from the Revised Statutes of 1874 to the date of preparation, were collected and studied, and were reorganized into a comprehensive restatement of the patent statutes, to serve as the basis for codification of Title 35. Second, proposed amendments to the patent laws were collected from (1) all the bills relating to patents which had been introduced in Congress during the preceding twenty-five years, (2) the reports of various official investigating committees such as the Science Advisory Board (1935), the Temporary National Economic Committee (1941) and the National Patent Planning Commission (1943, 1944, 1945), (3) reports and recommendations of private groups such as bar associations, and (4) miscellaneous sources such as books and articles in periodicals. A large number of proposed changes, gathered from these sources, were incorporated in the preliminary draft in one form or another to bring the particular topic up for discussion. The foreword by the Chairman of the Subcommittee, the late Joseph R. Bryson, invited suggestions, comments, and criticisms to assist the Subcommittee in formulating its views and recommendations.
The preliminary draft was widely distributed and many reports were received by the Subcommittee. As a result of the comments received from the patent bar, the public and other interested groups, it was decided to omit many of the proposed changes as being obviously too controversial for inclusion in one bill. Taking into consideration the suggestions and criticisms and other comments which had been received, a bill was prepared and introduced in the 81st Congress, H.R. 9133, dated July 17, 1950. This bill was widely distributed (over six thousand copies were sent out) and again comments were solicited and received. As result, the bill was revised and reintroduced in the 82nd Congress as H.R. 3760, April 18, 1951.
Hearings were held on H.R. 3760 in June, 1951 (Patent Law Codification and Revision. Hearings before Subcommittee No. 3 of the Committee on the Judiciary, House of Representatives, Eighty-second Congress, First Session, on H.R. 3760, "A bill to revise and codify the laws relating to patents and the Patent Office, and to enact into law title 35 of the United States Code entitled 'Patents'," June 13, 14, and 15, 1951, 230 pages). Representatives of Government departments, representatives of bar and other associations, and private individuals appeared at the hearing and presented their views of the changes in the law proposed by the bill.
As a result of the hearings and further material received by the Subcommittee, the bill was again revised and reintroduced as H.R. 7794, on May 12, 1952. The Committee on the Judiciary, which considered the bill following its consideration by the Subcommittee, reported the bill in its revised form and recommended that it be passed by the House. The Committee Report (82nd Congress, House Report No. 1923, May 12, 1952) need some description. It is a printed document of seventy-two pages. The first part (pages 1 to 10) consists of a preliminary and general statement giving some information concerning the bill and its development, and also a general description of the bill and its contents (parts of this general statement are quoted or paraphrased in this paper). The next part of the Report (pages 11 to 31) consists of what are called "Revision Notes." These notes are arranged in order according to the sections of the bill; they give the citation of the old law from which a particular section is derived, or state that the section is new when it has no counterpart in the old statute, and they point out or explain revisions which have been made. (The revision notes are reproduced in U.S.C.A. following each section of Title 35.) While these parts of the Report leave something to be desired from the standpoint of explanation and discussion in a few instances, it may be remarked that the Report is much fuller in detail than reports of Congressional Committees ordinarily are. The next part of the Report (pages 33 To 67) gives the complete text of all statutes which are repealed, with a reference to where their counterpart may be found in the new statute. The last part of the Report consists of four tables, the first two showing where the subject matter of prior statutes and of the sections of old Title 35 may be found in this new Title 35. The third table lists the laws omitted and repealed, with a brief statement of the reason for the omission and repeal. The last table lists the laws omitted from Title 35 but which were not repealed.
The bill was passed by the House of Representatives, by unanimous consent, on May 19, 1952. In the Senate it was referred to the Committee on the Judiciary, from which it was reported favorably, with a few formal amendments, on June 27, 1952 (82nd Congress, Senate Report No. 1979, June 27, 19521). One of the amendments was to correct a typographical error and the others will be referred to in connection with the appropriate section. The text of the Senate Report varies in only a few minor particulars from the House Report; in the main the language and contents are the same as the House Report and references to either will be made simply as the Committee Report.
The bill came up for consideration in the Senate on July 3, when it was first passed by unanimous consent, but later it was reconsidered and placed at the foot of the calendar at the request of a Senator who objected at that time. It came up again on July 4 and was passed by unanimous consent, the Senator who had had it reconsidered not raising any objection. At this time one Senator asked, in the alternative, "Does the bill change the law in any way or only codify the present patent laws." An incomplete answer, "It codifies the present patent laws," was first given by the Chairman of the Committee but he immediately inserted a more complete prepared statement, which appears on the same page of the Congressional Record (page 9534, Vol. 98, No. 120, July 4, 1952), in which it was pointed out that changes were made, "In view of decisions of the Supreme Court and others as well as trial by practice and error there have been some changes in the law of patents as it now exists and some new terminology used." The Senate Committee Report of course details the changes.
The amendments made by the Senate were concurred in by the House on the same day and the bill as thus passed was signed by the President on July 19, 1952.
General Description of Act
The title of the Act is "An Act to revise and codify the laws relating to patents and the Patent Office, and to enact into law title 35 of the United States Code entitled 'Patents' " and its complete citation is Public Law 593, 82nd Congress, 2nd Session, Chapter 950, 66 Stat. 792, approved July 19, 1952. The Act consists of five sections. Section 1 of the Act (which does not bear a number) enacts the patent law at Title 35 of the United States Code, the opening words reading "That title 35 of the United States Code, entitled 'Patents', is revised, codified, and enacted into law, and may be cited "Title 35, United States Code, section ---, as follows:" Then follows the text of new Title 35 containing ninety-five sections numbered from section 1 to section 293, with gaps in the numbering. Section 2 of the Act (this immediately follows section 293 of the Code without any marks of separation in official prints of the Act, which has thus led to some confusion) amends section 21 of the Trade-Mark Act of 1946 (15 U.S.C.A. § 1071) to change references to certain sections of the patent law. Section 3 of the Act is a severability clause, section 4 states the time of taking effect and also contains a number of provisions relating to the effect of the Act, and section 5 is the section which repeals prior statutes. (Sections 3, 4 and 5 of the Act are printed as notes preceding section 1 of Title 35, U.S.C.A.) The distinction between sections of the Act and sections of Title 35 must be kept in mind.
The new Act has two objectives, one, the making of various revisions and amendments in the patent law, and the other the codification of the patent statutes and some prior case law. The aspect of codification involves organization, language, arrangement, and matters of that sort, which make the new patent law easier to follow and understand, and hence a better working tool, than the prior statutes.
New Title 35 is divided into three parts. The first part contains the sections of the law relating to the Patent Office, its organization, officers, powers, and duties, and some related matters. The second part collects the sections relating to the requirements and conditions for obtaining a patent, and the procedure in obtaining patents. The third part contains the sections relating to issued patents and the protection of rights under patents, and a few added matters. Stated generally, these three parts relate to, first, the Patent Office, second, obtaining a patent, and third, the patent itself. This three-part division is not always strictly maintained, and there may be some overlapping of the three phases of the subject.
In each part the sections are divided into a number of chapters of more or less homogeneous subject matter, with chapter headings. The organization of the title and the arrangement and numbering of the sections are such that future amendments can readily find their place. Headings, subheadings and section headings are provided for convenience of reference.
THE PATENT OFFICE (PART I)
Part I of this title contains the section relating to the Patent Office as such, its general functions, duties, officers, and related matters together with some other things not fitting into the other parts.
Establishment, Officers, Functions (Chapter I)
Section 1 is a restatement of the section of the old statute establishing the Patent Office. Since the Patent Office was established some time ago the new act uses the words "shall continue." Some changes in language have been made and the phrase "and to trade-mark registrations" has been added. The general sections of this part relating to the Patent Office would apply to the trade-mark functions of the Patent Office as well as to the patent functions unless the specific language indicates otherwise.
Section 2 is merely a restatement in revised language of the old section relating to the seal of the Office, with the addition of the reference to trade-mark registrations.
The first paragraph of section 3 is a restatement of the old section providing for the Commissioner of Patents, assistant commissioners, and examiners-in-chief in the Patent Office and referring generally to other officers and employees of the Office. A new provision is added to the effect that the first assistant commissioner or, in the event of a vacancy in that office, the assistant commissioner senior in date of appointment, shall fill the office of Commissioner during a vacancy in that office until a Commissioner is appointed and takes office. There was no such provision in the old statute and a vacancy in the Office of more than thirty days under general statutes (5 U.S.C.A. § 7).
Reorganization Plan No. 5 of 1950 (64 Stat. 1263) [5 U.S.C.A. § 133—15] vested all functions of the various bureaus of the Department of Commerce, including the Patent Office, in the Secretary of Commerce, and authorized delegation of such duties by the Secretary of Commerce. The Secretary promptly on the coming into effect of this Plan delegated all functions and duties of the Patent Office back to the officers who had hitherto been authorized and were performing the duties. Reorganization Plan No. 5 had to be taken into account in the revision of Title 35 and this was done by including a provision substantially equivalent to it as the second paragraph of section 3, thereby enabling the wording of the various sections of the Title to be made in terms of the officers whose titles and duties have become familiar and to whom the functions presently stand delegated.
Ever since 1836, officers and employees of the Patent Office has been disqualified from obtaining any right or interest in a patent issued by the Office, except by inheritance or bequest, during their terms of office. Section 4 of this title restates this disqualification, at the same time making a number of changes. The inability to apply for a patent, which was included in the old language by necessary implication, is made explicit, and the period of disability is increased to include the year after termination of the appointment of the officer or employee. A further restriction is added in that no priority date earlier than one year after leaving the Office may be claimed. The new one year provision is made inapplicable in the case of applications which may have been pending on January 1, 1953, when the revised title went into effect, by section 4(g) of the Act.
Section 5 relating to the bond of the Commissioner and other officers, section 6 relating to the general duties of the Commissioner, section 7 relating to the Board of Appeals, section 8 relating to the library, section 9 relating to the classification of patents, section 10 relating to furnishing certified copies of records, section 11 relating to publications of the Patent Office, section 12 relating to the ex-change of copies of patents for those of foreign countries, section 13 relating to the furnishing of copies of patents to public libraries, and section 14 relating to the annual report of the Commissioner, represent restatements of corresponding sections or provisions of the prior statutes with greater of less revision in language and in a few instances some minor other change. It is not considered necessary to discuss any of these sections in detail.
Proceedings in the Patent Office (Chapter 2)
Sections 21 to 24 relate to several details of proceedings in the patent Office of general application. Section 21 is a revision of the prior statute which provided that when the day or the last day fixed by statute for taking any action or paying any fee in the Patent Office fell on Sunday or on a holiday within the District of Columbia, the action could be taken or the fee paid on the next succeeding business or secular day. The revision of this section had added Saturday to Sunday and holidays as a day on which action need not be taken. The phrase "fixed by statute" has been omitted as unnecessary. As a result of the change in the statute relating to Saturday, the Patent Office, since January 1,1953, no longer receives applications or other papers on Saturday, on which day the Patent Office rule [§ 1.7, Rules of Practice in Patent Cases, Appendix I to this title] now provides generally "When the day, or the last day, fixed by statute or by or under these rules for taking any action or paying any fee falls on Saturday, Sunday, or on a holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a holiday."
Section 22 is a revision of this prior statute giving the Commissioner authority to require papers filed in the Office to be printed, with the words "or typewritten" added after "printed," in addition to simplification of language.
Section 23 is a restatement of the old statute authorizing the Commissioner to establish rules for taking affidavits and depositions required in cases in the Patent Office.
Section 24 is a consolidation of three sections of the old statute relating to subpoenas and witnesses for taking testimony for use in contested cases in the Patent Office. The language has been revised and a few other changes made. The old statute corresponding to the first paragraph on the new section stated that "the provisions of section 869 of the Revised Statutes relating to the issuance of subpoenas duces tecum shall apply to contested cases in the Patent Office." This section of the Revised Statutes was repealed and omitted in 1948, when the new Judicial Code (Title 28 U.S.C.A.) was enacted, for the reason that it had been superseded by Rule 45 of the Federal Rules of Civil Procedure, 28 U.S.C.A. and accordingly, section 24 refers to the Federal Rules of Civil Procedure instead of to the repealed statute, in the sentence "The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office." The reference in this sentence to the attendance of witnesses is a substitute for the statement in the old law that "no witness shall be required to attend at any place more than forty miles from the place where the subpoena is served upon him"; Rule 45 of the Federal Rules of Civil Procedure, 28 U.S.C.A., also contains provisions relating to subpoenas requiring the attendance of witnesses within certain distances from the place of service, which provisions now became substituted for the old one. In the third paragraph of section 24 the provision that a witness is not guilty of contempt for refusing to disclose any secret invention or discovery made or owned by him has been replaced by the provision that a witness shall not be deemed guilty of contempt for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.
Practice before the Patent Office (Chapter 3)
The old section of the statute relating to practitioners before the Patent Office has been divided into two sections, section 31 relating to power of the Commissioner to establish regulations for agents and attorneys representing applicants or other parties before the Patent Office, and section 32 relating to the suspension or exclusion of persons from practicing before the Office. Only some changes in language have been made and no changes in substance. The phrase in the old statute mentioning the word "advertising," concerning which there has been some difference of opinion as to its interpretation, has been retained and the difference of opinion not settled.
Section 33 is a considerable condensation and simplification of the old statute prohibiting unauthorized representation as a practitioner before the Patent Office. This is a criminal provision and the penalty specified in the old statute has been revised by omitting the minimum fine and increasing the upper limit of the fine.
Patent Fees (Chapter 4)
Sections 41 and 42 relate to Patent Office fees. Other than rear-rangements and changes in language no changes have been made in the fees except that the fee for appeal to the Board of Appeals was changed from $15 to $25, the fee for a certification was changed from 50 ¢ to $1 to correspond to the same fee in the trade-mark statute [15 U.S.C.A. § 1113], the fee for reissue was changed slightly, and a new fee corresponding to a new provision in the code was added. An obsolete fee was eliminated and a general provision added authorizing the Commissioner to establish charges for copies of records, publications or services furnished by the Patent Office when such charges are not specified in the statute. In view of this general provision two minor items of the former schedule of fees were omitted.
PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS (PART II)
Part II of this title deals with the patentability of inventions and the conditions and procedure for obtaining a patent. It opens with a section of definitions the first of which states that "The term 'invention' means invention or discovery." This and other definitions illustrate the fact that definitions in a statute are not necessarily of the same character as dictionary or other definitions which explain the meanings of words, but are usually merely means of avoiding the use of several words or long phrases. The old statutes used the phrase "invention or discovery," "invented or discovered," and the like in many places, and the purpose of the first definition is to enable a single word to be used instead, but with the same meaning as the longer phrase. Two of the other definitions will be referred to under an appropriate section.
There are definitions of a general nature in Title 1, General Provisions, U.S.C.A., some of which may have application in considering particular sections of this title. It is provided in 1 U.S.C.A. § 1 that "in determining the meaning of any Act of Congress, unless the context indicates otherwise,-words importing the singular include and apply to several persons, parties, or things; words importing the plural include the singular; . . . words used in the present tense include the future as well as the present; . . . the words 'person' and 'whoever' include corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals; . . . 'oath' includes affirmation, and 'sworn' includes affirmed; . . . " and 1 U.S.C.A. §§ 3 and 4 define "vessel" and "vehicle". Some of these definitions aid in interpreting certain sections of this title and a few will be referred to in connection with some sections.
Patentability of Inventions (Chapter 10)
Subject matter for patent (section 101). One of the basic and most important sections of the old statute was R.S. 4886 [section 31 of former Title 35, U.S.C.A.], which specified the subject matter for which a patent could be obtained and recited conditions for patentability. In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.
Section 101 provides that "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this
title." This language (other than the terminal phrase) closely follows the wording of the corresponding part of the old statute, with the exceptions that the reference to plant patents has been omitted for inclusion in another section, and the word "process" is used in place of the word "art" which appeared in the old statute. The word "art" in the corresponding section of the old statute had been interpreted by the courts as being practically synonymous with process or method, and the same word also appeared in several other sections of the statute but with somewhat different connotations (it still appears in two other sections of the new code, with different meanings). The word "process" has been used in section 101 as its meaning is more rapidly grasped than "art" which would here require some interpretation. The first part of the definition of process in section 100(b) states that the word "process" means process or method, as these words have long been interchangeably used in patent law, and through same superabundance of caution by someone who feared that there might possibly be some loss of a shade of meaning in dropping the word "art", it was restored in the definition so that it reads "The term 'process' means process, art or method, . . . “
The remainder of the definition of "process" in section 100(b) reads "The term 'process' . . . includes a new use of a known process, machine, manufacture, composition of matter, or material." This phrase has caused some discussion and misunderstanding, particularly with respect to the patentability of so-called new uses. The Revision Notes state, as to this part of the definition, that it "clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied." The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable. To this extent the decision is affirmed by the statute, although some of the statements made in the decision are not completely defensible. Remarks have appeared in a few decisions and elsewhere that new uses are not patentable. When such remarks are made with reference to a patent for a machine or a manufacture or a composition, which machine, manufacture or composition is in fact old as such, and the argument is made that that the patentee has discovered a new use or application of the old machine, manufacture or composition, there can be little to criticize in such remarks other than possibly a looseness of expression. But if such remarks are interpreted to mean that a new use or application of an old machine, manufacture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law. As stated in the Revision Notes, a process which involves merely the new use of a known machine, manufacture, composition of matter or material may be patented provided the conditions for patentability are satisfied.
It is believed that the primary significance of the definition of method above referred to is merely that a method claim is not vulnerable to attack, on the ground of not being within the field of patentable subject matter, merely because it may recite steps conventional from a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process.
In one sense every invention is nothing but the result of new uses of old materials. But discussions of the patentability of new uses are usually concerned with the simple situation in which a discovery has been made that a known substance or thing has some hitherto unknown property, or can be used to obtain a particular result for which is had not been used before. If the new use results in a new machine, or a new manufacture, or a new composition of matter, or an improvement on any of these, a patent may be issued for any of these things provided the necessary conditions can be met. Difficulties arise when no new or improved machine, manufacture or composition of matter has resulted. Since there is no new or improved object produced, the only things left to consider are the acts performed, which leads to a process or method and the statute, as has been said, recognizes a process or method which involves only a new use of an old material, as within the field of subject matter capable of being patented.
The reference to the new use of a known machine or manufacture in the definition merely means that processes may utilize old machines or manufactures and the reference to the new use of a known process simply indicates that the procedural steps in a patentable process might be old.
The methods, however, will still have to satisfy other conditions of the statute in order to be patentable, and the condition expressed in section 103 would rule out many such methods.
Novelty and other conditions for patentability (section 102). The remainder of old R.S. 4886, which stated some of the conditions for patentability, is incorporated in section 102, in which section are also assembled some further conditions. Paragraphs (a), (b) and (c) are restatements of the conditions in R.S. 4886 with no changes other than in language due to their being placed in a separate section and in separate lettered paragraphs. Paragraph (a) defines the condition that an invention must be new in order to be patentable. The word "invent", as used in section 101 for example, does not incorporate "new" within its meaning (section 101 states "Whoever invents . . . any new . . . machine, etc."), but novelty is a separate requirement. The novelty required is not novelty in an absolute sense, as the statute defines what is to be looked to in order to show that an invention is not new. The general part of the Committee Report states that section 102 "may be said to describe the statutory novelty required for patentability, and includes, in effect, an amplification and definition of 'new' in section 101." In the language of paragraph (a), an invention is not new if it "was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent." The Committee Report both in the general part and in the Revision Notes recognizes that the interpretation of this condition is somewhat more restricted than the actual language, stating "the interpretation by the courts excludes various kinds of private knowledge not known to the public," and the narrowing interpretations are not changed. The first clause of paragraph (a) indicates that prior knowledge or use in a foreign country will not defeat the right to a patent; a separate section, R.S. 4923 [section 72 of former Title 35], in the old statute duplicated this provision and this old section has been omitted as its provisions are covered here and elsewhere.
Paragraphs (b), (c) and (d) recite conditions under which a once existing right to a patent may be lost, although there is some overlap in paragraphs (a) and (b). Paragraph (b) provides that a patent may not be obtained if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the data of the application for patent in the United States.” For the purpose of this paragraph, it is immaterial when the applicant made his invention. Paragraph (c) restates the condition that the invention must not have been abandoned.
Paragraph (d) is based on the first paragraph of old R.S. 4887 [section 32 of former Title 35, U.S.C.A.] but the condition has been changed. Under the old law, if an application for patent had been filed in a foreign country more than one year before the application had been filed in the United States, and if the foreign patent was granted before the United States patent issued, even if the foreign patent was granted after the United States application was filed, then the United States patent could not be granted or would be invalid if granted. Under the new law the United States patent is barred for the reason mentioned only if the foreign patent is granted before the reason mentioned only if the foreign patent is granted before the United States application is filed; if the United States application is filed before the foreign patent is granted, the foreign patent may thereafter issue at any time without affecting the right to a United States patent. By section 4(b) of the Act, this change in the law does not apply to patents existing and application pending on January 1, 1953, but the old law applies to such cases.
Paragraph (e) is new in the statute and enacts the rule of the decision of the Supreme Court in Alexander Milbum Co. v. Davis-Bournonville Co., 46 S.Ct. 324, 270 U.S. 390, 70 L.Ed. 651, under which a United States patent disclosing an invention dates from the filing of the application for the purpose of anticipating a later inventor, whether or not the invention is claimed in the patent.
Paragraph (f) states that a person shall not be entitled to a patent if ''he did not himself invent the subject matter sought to be patented." This paragraph is perhaps unnecessary since under section 101 it is ''Whoever invents . . . " who may obtain a patent and later sections provide that the inventor must apply for the patent and execute an oath of inventorship. However, it emphasizes that the inventor must be the one to apply for a patent. The words ''invent” and "inventor" as used in sections 101 and 102, as has been stated, do not in themselves import any meaning of novelty, and are used in the sense of "is the author of' and "author", respectively, as distinguished from copying from another. Since later sections permit certain persons to apply for a patent in place of the inventor under special circumstances, such as when the inventor is dead or insane or in certain cases when unavailable to execute the application, paragraph (f) would have to be interpreted in such cases as referring to the person named as inventor in the application.
Paragraph (g) relates to prior inventorship by another in this country as preventing the grant of a patent. It is based in part on the second defense in old R.S. 4920 (see under section 282), and retains the rules of law governing the determination of priority of invention developed by decisions.
Patentable novelty or invention (section 103). The Committee Report state, in the general part, that one of the two "major changes or innovations" in the new statute consisted in "incorporating a requirement for invention in section 103." Section 103 states that "A
patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."
In form this section is a limitation on section 102 and it should more logically have been made part of section 102, but it was made a separate section to prevent 102 from becoming too long and involved and because of its importance. The antecedent of the words "the prior art," which here appear in a statute for the first time, lies in the phrase "disclosed or described as set forth in section 102" and hence these words refer to material specified in section 102 as the basis for comparison.
The general part of the Committee Report states with reference to section 103:
"Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of the courts and in writing. Section 103 states this requirement in the title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented.
"That provisions paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases."
The Revision Notes further state, under section 103:
"There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention of lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out."
As pointed out in the Committee Report, it has been recognized for well over a hundred years that not everything which is new is capable of being patented. The newness, that is the difference over what was previously known, must be sufficient in character, or in quantity, or in quality, in order that the new thing may be patented. This requirement has commonly been referred to as the requirement for the presence of invention; when the requirement is not present it is stated that the subject matter involved lacks invention. The comparison is between the subject matter claimed to be patentable and what is disclosed or described in the available statutory prior art material, and it is irrelevant whether the claimant knew or did not know this prior art material. The inventor may indeed have made an invention in the psychological sense, but it would nevertheless not be patentable if the quantum of novelty over the prior art material of which he may have been in total ignorance was not sufficient. This requirement for invention with which we are here concerned is more of a legal concept than a psychological one.
The source of the requirement under the prior statute has been variously attributed. The opening clause of old R.S. 4886 which specified the classes of patentable subject matter (see section 101), began "Any person who has invented or discovered any new and useful art, machine, etc." Two requirements may be found here: novelty (although novelty is further defines to referring to the conditions which defeat novelty), and utility (which condition is not further defined). The use of the word "invented" in this phrase has been asserted as the source of the third requirement under discussion. However, a different origin, with which the language and arrangement in the new code are in harmony, has also been stated. This is that the requirement originally was an extension of the statutory requirement for novelty. Expressions such as "patentable novelty" and "patentable difference over the prior art" have been often used as synonyms, and the problem involved is in fact an assessment of the quantum or quality of the novelty present. The famous "doorknob case" in the Supreme Court, Hotchkiss v. Greenwood, 52 U.S. (Dec. term, 1850), is usually cited as the first case to make requirement. It is commonly stated that this case involved the question of invention in making a doorknob from clay or porcelain, but this was not the actual question involved, and the decision of the court plainly implies that if the patentee had been the first to make a doorknob of clay or porcelain there would have been no question as to the validity of the patent involved. The actual facts were that doorknobs made of clay or porcelain were old and that doorknobs made with a certain shaped hole for attachment of the shank, but made of metal, were also old; the doorknob of the patent had the old shape of the metal doorknob and was made of clay or porcelain, the old material for making other doorknobs. There would be very little question today as to the unpatentability of a device with such a difference over the prior art. The Supreme Court, with a dissenting opinion, found the patent invalid as involving no more "ingenuity and skill" than possessed by "an ordinary mechanic acquainted with the business." Although other language is also used, one quotation from the decision is significant, "No one will pretend that a machine, made, in whole or in part, or materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent." This would place the matter on the basis of novelty, the new machine cannot be distinguished from the old, hence it is the same, and is not novel in the sense of the patent law. Even before the date of this decision, expressions such as essentially anticipated, not essentially new, substantially alike, and not materially new, are found in some decisions.
Despite the fact that the requirement had been part of the law for at least nearly a century, the patentee in The Cuno Engineering Corp. v. The Automatic Devices Corp., 62 S-Ct. 37,314 U.S. 84, 86 L.Ed. 58 (1941), urged before the Supreme Court that it was unwarranted. This explains the concluding paragraph of the decision, “Such considerations prevent any relaxation of the rule of the Hotchkiss case as respondent would seem to desire." The Court's conclusion in first stated "It is our opinion that the Mead device was not the result on invention but a 'mere exercise of the skill of the calling,' an advance 'plainly indicated by the prior art' ", but the following discussion and the language used, particularly in referring to a "flash of creative genius" (which may have been a rhetorical flourish rather than anything else), produced a flood of commentary concerning a new and stricter standard of invention announced by the Supreme Court, and likewise (perhaps the commentaries more than the decisions itself) produced considerable effect on the lower courts.
There has been some discussion as to whether section 103 modifies the so-called standard of invention (which itself is an unmeasurable quantity having different meanings for different persons) in the courts and it may be correct to state that the printed record does not show an explicit positive command to the courts. While it is not believed that Congress intended any radical change in the level of invention or patentable novelty, nevertheless, it is believed that some modification was intended in the direction of moderating the extreme degrees of strictness exhibited by a number of judicial opinions over the past dozen or more years; that is, that some change of attitude more favorable to patents was hoped for. This is indicated by the language used in section 103 as well as by the general tenor of remarks of the Committees in the reports and particular comments. Weight should be given to the terms used in the section since a variety of expressions used in decisions were available, including some stated with an extreme degree of strictness, which could have been used as the model for the phraseology to be adopted, but the language selected was of the more moderate variety. The Committee Report, in the general part, states that the section "should have a stabilizing effect and minimize great departures which have appeared in some cases"; the departures of which complaint has been made in the recent past are all departures in the direction of greater strictness and hence these would be what the report indicates should be minimized. Early decisions under the new act, however, have taken the view that no change was intended but in some of these decisions there may have been no necessity for actually determining the matter and some arose at such a stage (as on rehearing or on appeal in cases originally decided prior to the coming into effect of the new act) where a court would normally be disinclined to seek a change, or a change would have had to be more distinct and well defined to in itself produce a reversal of a specific decision of the court. It may be considered still too premature to conclude from the remarks in decisions thus far rendered that new section 103 may not have the influence on the courts which was anticipated by its enactment.
The problem of what is obvious and hence not patentable is still of necessity one of judgment. The statute does not purport to categorize the particular criteria according to which the judgment is to be exercised, in fact, the Revision Note under section 103 indicates that the section would also serve as a basis for the addition at a later time of some criteria which may be worked out.
The last sentence of section 103 states that "Patentability shall not be negatived by the manner in which the invention was made. "The Revision Note adds in explanation that it is immaterial whether it resulted from long toil and experimentation or from a flash of genius. This sentence in the section further indicates the attitude of Congress in enacting the new patent act and should have a bearing on the interpretation of section 103 as a whole.
Inventions made abroad (section 104). By sections 102(a) and (g) prior knowledge or use, or prior invention by another, in a foreign country, does not defeat the right to a patent. Section 104 provides, on the other hand, that prior knowledge or use, or other activity, in a foreign country, will not aid a person in obtaining or upholding a patent (except as provided in section 119), by stating "In proceedings in the Patent Office and in the courts, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country, except as provided in section 119 of this title." It should be noted that proof of acts abroad is not barred when the object is not to establish a date of invention, that is when the object is not to antedate a printed publication or public use or the date of invention of another; in a case where an applicant for patent, in an interference, is trying to show that the adverse party was not an inventor at all but derived the invention from him, the fact that the events took place in a foreign country would be immaterial.
Section 104 is a restatement of section 9 of an act passed August 8, 1946, 6 Stat. 943 [section 109 of former Title 35, U.S.C.A.] which was enacted to eliminate the anomalous situation pointed out by the Supreme Court in Electric Storage Battery Co. v. Shimadzu
et al., 59 S. Ct. 675,307 U.S. 5, 83 L. Ed. 1071. The language has been revised and the proviso in the old statute exempting persons domiciled in the United States and serving abroad in connection with the prosecution of the war from the operation of the section has been broadened to refer to persons serving abroad in connection with operations by or on behalf of the United States.
Application for Patent (Chapter 11)
The twelve sections of chapter 11 relate to the application for patent and various requirements concerning the application; five of these sections are new.
Section 111 is partly based upon old R.S. 4888 [section 33 of former Title 35, U.S.C.A.] and serves as an introductory section to this group. It specifies that the application for patent must be made by the inventor (except when otherwise provided) and that the application shall include (1) a specification as prescribed by section 112, (2) a drawing as prescribed by section 113, and (3) an oath as prescribed by section 115. Further, the application must be signed by the applicant and be accompanied by the required fee. Only one signature to the application is required.
Specification (section 112). The provisions of former R.S. 4888 relating to the specification are set out in section 112, except that the sentence relating to plant patents has been transferred to section 162 and the requirement that the specification be signed has been omitted in view of the general requirement for a signature to the application
in section 111.Also changes in arrangement and in language have been made.
The specification must contain "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." This language is the same as in the old statute with only some slight reduction in wording. The clause in the old statute relating to machine patents and requiring the best mode in such cases has been omitted as unnecessary and a clause has been added requiring that the specification "shall set forth the best mode contemplated by the inventor of carrying out this invention." Although not the same, this requirement is partly derived from and replaces the first defense specified in old R.S. 4920 (see under section 282) as well as being a revision and extension of the old clause which related only to machines. This requirement, it should be noted, is not absolute, since it only requires disclosure of the best mode contemplated by the inventor, presumably at the time of filing the application.
In the old statute the requirement for a claim pointing out what the applicant regarded as his invention appeared as a clause in the same sentence relating to the description, which led to some confounding of the nature of the two requirements in a few decisions. In the new statute the clause relating to the claim has been made a separate paragraph to emphasize the distinction between the description and the claim, and the language has been modified. The possible existence of more than one claim in a patent is recognized in the new language.
The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined. The language specifies "an" element, which means "any" element, and by this language, as well as by application of the general rule that the singular includes the plural, it follows that more than one of the elements of a combination claim may be expressed as different "means" plus statements of function. The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word "cover"), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which "reads on" the prior art.
Section 113 restates the requirement for a drawing, but the necessity for the drawing to be signed, specified in the old statute, has been omitted. The rules of the Patent Office do not require a signature when the drawing accompanies the other parts of the application.
The authority of the Commissioner to require a model or specimens is stated in section 114. As to models, the language of the old statute has simply been revised, while as to specimens the authority has been broadened so that specimens or ingredients may be required in a wider variety of cases than before. However, models or specimens are very seldom required by the Patent Office in any case.
Oath of applicant (section 115). An inventor when applying for a patent must make an oath of inventorship, declaring that he believes himself to be the original and first inventor of the subject matter sought to be patented. This requirement of the old statute is restated in the first sentence of section 115. The requirements of the content of the oath specified in the statute are only two, one has just been mentioned and the other is a statement of citizenship. This latter is primarily a relic of a time nearly a hundred and more years ago when certain requirements of the statute were different for aliens than they were for citizens, but which was retained after the discriminations were abolished; it sewed a useful purpose during and after the last war. The Patent Office by rule requires a number of additional averments in the oath, mainly statements negativing the existence of conditions which would defeat patentability. The statements required by statute, and those imposed by Patent Office rule should be distinguished as to status and source of authority.
The second sentence of section 115 recites the officers before whom an oath may be taken. Some change in language has been made in the recitation of the officers in a foreign country before whom the oath may be taken, the new language being more general in terms. The last clause of this sentence provides that the oath shall be valid if it complies with the laws of the state where made. This refers to the execution of the oath and the purpose of the clause is to set aside, in so far as Patent Office matters are concerned, decisions of the courts of the District of Columbia which had held that part of a statute for the District of Columbia relating to notaries applied to oaths taken outside of the District for use in Government departments within the District. The part of the statute referred to provided, among other things, that a notary could not administer an oath in a case in which he was attorney. Under the new statute a notary attorney for the applicant, may administer the oath, provided it is not contrary to the laws of the state where the oath is made. The old restriction on notaries would still apply to oaths taken within the District of Columbia.
The last sentence of section 115 relates to the special cases provided in subsequent sections, in which a person other than the inventor may make an application for patent, and provides that in such cases the required oath may be varied in form so that it can be made by the applicant. Specimen forms illustrating the variations are included in the Patent Office rules.
Joint inventors (section 116). By necessary implication from the language of the old statute, when an invention was made by two or more persons jointly, they had to apply for a patent jointly, as joint inventors, and each sign the application and make the required oath. Section 116, which is a new section not having a counterpart in the old statute, states this requirement explicitly in the first paragraph, and further enacts some new provisions with respect to cases of joint inventorship. The third paragraph provides for the correction of certain errors in determining joint inventorship. If a person is joined an application for patent as joint inventor, or a joint inventor is not included in an application, through error arising without any deceptive intention, the Commissioner may permit the application to be appropriately amended to remove the name of the person not a joint inventor or to include the omitted joint inventor, as the case may be. The Patent Office rule under this section requires a verified statement of the facts and a new oath, and also contained a requirement for diligence. The consent of the assignee, if the application is assigned, is also required [§ 145, Rules of Practice in Patent Cases, Appendix I to this title]. By application of the rule of construction that the singular includes the plural, more than one erroneously joined person may be omitted, or more than one erroneously omitted inventor may be added. Patent Office practice permits the simultaneous omission of an erroneously joined person and addition of an erroneously omitted inventor in an application; thus an application filed by A and B as joint inventors can under the appropriate circumstances be amended to become an application of A and C as joint inventors, but an application filed by A as inventor, or by A and B as joint inventors cannot be amended to become an application of C as inventor, either by one or two steps. While the omission of a joined person was possible under Patent Office rule prior to the new act, the addition of joint Inventors was not heretofore possible. Section 266, discussed later, treats of similar questions arising after a patent is granted.
The second paragraph of section 116 represents the first relaxation of the rigid requirement of the prior statute that the inventor must be the person to apply for the patent (except when dead or insane). This paragraph takes care of situations in which a joint inventor refuses to join in an application for patent, or cannot be found or reached after diligent effort. In such cases, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Commissioner is authorized on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, to issue the patent to the inventor who made the application, subject to the same rights which the omitted inventor would have had if he had been joined.
Section 117 represents a considerable condensation and simplification of the section of the old statute relating to the filing of an application by the executor or administrator of a deceased inventor and by the guardian of an insane inventor. "Legal representative" in this section does not mean an attorney or agent, but is a broad expression for executor, administrator, guardian, etc., referred to in the old statute. There is a definition of the word insane in 1 U.S.C.A. § 1.
Filing by other than inventor (section 118). The other relaxation of the prior rigid requirement for the filing of an application by the inventor, is contained in section 118 which provides for the filing of an application by a person other than an inventor in certain special situations. If the inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention, or who can show sufficient proprietary interest in the matter to justify such action, may apply for the patent on behalf of and as agent for the inventor. He must prove the facts and show that such action is necessary to preserve the rights of the parties or to prevent irreparable damage. The purpose of this section is to permit an application to be filed in time to prevent loss of rights and not to settle disputes, and is restricted in scope. The patent, if granted, is granted to the inventor and not to the person who made the application. If the applicant claims a right to an assignment he must still take the necessary steps to obtain an assignment of the patent if he wishes the patent to issue him as assignee or if he wishes to own the patent. The Commissioner is not directed to issue a patent in cases under this section, but is given the discretion to issue the patent, and a patent will not necessarily be granted; the Patent Office rule requires a showing satisfactory to the Commissioner before the patent can be granted. The inventor may subsequently join in an application filed under this section by filing signed and executed application papers in which event the application would thereafter be treated in the same manner as other applications.
Right of priority of foreign application (section 119). Under certain conditions, an application for patent in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country, for the purpose of antedating intervening publications or acts which might affect the right to a patent in the United States. This so-called right of priority was provided for in the second paragraph of R.S. 4887 which is the basis for the first paragraph of section 119 of this title. The conditions under which this right of priority may obtain are (1) the foreign application must be one filed in "a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States," (2) the foreign application must have been filed by the same applicant (inventor) as the application in the United States, or by his legal representatives or assigns, (3) the application in the United States must be filed within twelve months from the date of the earliest such foreign filing, and (4) the foreign application must be for the same invention as the application in the United States. The new statute made no changes in these conditions of the corresponding part of the old statute except to revise the language slightly, remove the reference to designs for inclusion in another section, and revise the opening clause quoted above as the first condition to accord with actual practice and the requirements of the treaty under which the right was first founded.
The right to rely on the date of a foreign application originated in a multilateral treaty of 1883, to which the United States adhered in 1887, and which has since been revised several times, the last revision being that of London of 1934 (53 Stat. 1748). There is another treaty between the United States and some Latin American countries which also provides for the right of priority, and a foreign country may also provide for this right by reciprocal legislation. At present there are fifty-two countries with respect to which the right of priority is recognized. It should be observed that it is the country of the foreign filing which determines the right and not the citizenship of the applicant.
The application in the foreign country may have been filed by the assignee, or by the legal representative or agent, of the inventor, rather than by the inventor himself, which is permitted in many foreign countries.
In computing the twelve months, the first day is not counted, that is, the United States application is in time if filed on the anniversary date of the foreign filing. If the last day of the twelve months is a Sunday or a holiday within the District of Columbia, the United States application is in time if filed on the next succeeding business day. After January 1, 1953, the Patent Office has not received applications on Saturdays and if the twelve months expires on a Saturday, the application may be filed on Monday. As stated, the twelve months is from the first foreign application which fulfills the other requirements. The language of the statute referring to this, "if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed," would be clearer if the word "any" appeared before "such."
The last clause of the first paragraph of section 119 provides in effect that the one year bar of section 102(b) dates from the actual filing in the United States and not from the foreign filing date; the right of priority has no relation to acts occurring before the foreign filing.
The second paragraph of section 119 introduces some new requirements for securing the right of priority. The old statute contained no requirements for obtaining the right, it existed in favor of any applicant or patentee whenever the conditions specified in the statute obtained and the applicant or patentee was not required to do anything until and unless he wished to assert the right. Patents granted prior to January 1, 1953 are still subject to the old law in this respect. Under the new statute a person who wishes to secure the right of priority must comply with certain formal requirements within a specified time. These requirements include the filing of a claim for the right and a certified copy of the original foreign application upon which it is based, within a certain time limit. The maximum time limit specified in the statute is that the required papers must be filed before the patent is granted, but the statute gives the Commissioner authority to specify an earlier time, not earlier than six months after the filing of the application in the United States. The statute also gives the Commissioner authority to require a translation of the papers filed if not in the English language, and such other information as he may deem necessary. The Patent Office rules specify that the latest date on which the papers may be filed is the date the final fee is paid (see section 151) except that under certain circumstances, as in case of interference or when necessary to overcome the date of a reference, they are required at an earlier date. No special language is required by the Patent Office in making the claim for priority and any expression which can reasonably be interpreted as claiming the benefit of the foreign application is accepted. The certified copies of the foreign application are of the same nature as have been customarily filed and accepted in the past. Ordinarily the Patent Office merely acknowledges receipt of the papers; no examination of the merits is made (but attention might be called to formal defects) unless it is necessary to do so as, for example, to overcome the date of an otherwise applicable publication or in an interference. The heading of the printed copy of the specification, when the patent is issued, carries the country and date of the foreign application the benefit of which is claimed.
The consequence of failure to file the necessary papers within the time required is that the right of priority is lost; the patent may still be granted, and sustained if granted, provided the application can stand on its filing date in the United States.
Continuing applications (section 120). Under certain circumstances an application for patent is entitled to the benefit of the filing date of a prior application of the same inventor filed in the United States. This was not specified in the old statute but was developed by decisions of the courts beginning with a decision of the Supreme
Court of 1864, Godfrey v. Eames, 68 U.S. 317.
Section 120 of this title is a new section which enacts the right to rely upon the date of a prior application. As specified in the statute, three conditions must obtain, (1) the second application (which may be called a continuing application) must be an application for a patent for an invention which is also disclosed in the first application (which may be called the parent or original application), the disclosure of the invention in the first application, and obviously in the second application also, must be sufficient to comply with the requirements of the first paragraph of section 112, (2) the second application must be "copending" with the first application, and (3) the second application must contain a specific reference to the first application. When these three conditions obtain the second application is entitled to have the same effect as though filed on the same date that the first application was filed, with respect to an invention disclosed in both applications. The first two requirements specified are substantially the same as existed under the prior case law, although in crystallizing these requirements into statutory form it is possible that some variations may have been introduced. Copendency, referred to in the second condition, is used to refer to the requirement that the second application must be "filed before the patenting or abandonment of or termination of proceedings on the first application." If the first application issues as a patent the second application, in order to be copending with the first, must have been filed before the issuance of the patent on the first application. If the first application is abandoned the second application must be filed before the abandonment for it to be copending with the first. The term "abandoned" includes abandonment for failure to prosecute, see section 133, although if such an abandoned application is revived by the Commissioner it becomes reinstated as a pending application and the preceding period of abandonment has no effect. An application may also be abandoned by an express abandonment filed by the applicant, and an application in which the final fee has not been paid within the time specified (see section 151), and usually referred to as a forfeited application, is also referred to as an abandoned application.
The expression "termination of proceedings" is new in the statute although it had previously appeared in the rules of the Patent Office. Termination of proceedings is a broad expression and would overlap and include abandoned and forfeited applications but more specifically it refers to situations in which all claims in a case have been adversely adjudicated as by a decision in an appeal or a decision in an interference involving all claims, and the time for seeking further review has expired.
The term "continuity" may be used to express the relationship of copendency of the same subject matter in two different applications of the same inventor and the second application may be referred to as a continuing application. This terminology has recently been used in Patent Office publications. Continuing applications include those applications which are sometimes referred to as divisions, continuations, and continuations-in-part, the latter term being used when the second application contains additional matter not disclosed in the first. The right under the statute is not concerned with the particular term used to describe a situation. The statute is so worded that the first application may contain more than the second or the second application may contain more than the first, but in either case the second application would be entitled to the benefit of the filing date of the first case with respect to the common subject matter.
The third requirement of the statute is that the second application must contain a specific reference to the first application. In view of this requirement the right to rely upon a prior application may be waived or refused by an applicant by refraining from inserting a reference to the prior application in the later case, although it is difficult to imagine a situation in which this right would be deliberately waived. The reference to the first application may be in the specification or in the oath (but if it appears in the oath alone the Patent Office will require a reference in the specification also) of the second application, and may be added by amendment before the patent issues. The printed copies of the specification of the patent which are made when a patent issues carry a reference to the prior application.
Continuing applications are utilized in a number of different situations; for example, in the case of a requirement to restrict an application to a single invention a second application might be filed for the invention excluded from the first application as explained in connection with the next section of the law, or a second application might be filed for a separable invention even though no requirement was made. A continuing application with the disclosure the same as a first application might sometimes be filed for procedural reasons with the first application thereafter being abandoned. And a continuing application with added subject matter may sometimes be filed when the inventor has additional details relating to the invention which he wishes to disclose in the application; in such cases the second application would be entitled to the date of the first application only as to the common subject matter.
Requirements for the oath made by the rules of the Patent Office may be varied with respect to certain allegations in a continuing application and the forms accompanying the rules give samples illustrating such variations.
Multiple inventions in one application (section 121). In the prior statute there was no explicit requirement that an application for patent be directed to only one invention, but such a requirement was considered implied and the power of the Patent Office to require an applicant to limit his application to one invention was recognized by the courts. A body of case law, mainly decisions of the Patent Office and of the courts in review of such decisions, has, been developed. Section 121 of this title is a new section which deals with this subject. The opening sentence of section 121 states that "if two or more independent and distinct inventions are claimed in one application, the Commissioner may require the application to be restricted to one of the inventions." This makes statutory the power of the Patent Office, but an important change is introduced in that the matter is, made discretionary with the Commissioner. This is indicated by the use of the word "may" in the quoted sentence, by the separate references to requirements and rejections in section 132 and the provision for appeal only from rejections in section 134, and the explicit statement made in the Revision Notes, that "Division is made discretionary with the Commissioner," in pointing out the changes introduced by this section. Division is the old name used for the requirement, which was styled a "requirement for division"; in view of the language of the statute it is now more appropriately referred to as a "requirement for restriction" in the rules and practice of the Patent Office. Under the old practice, the requirement was equivalent to a rejection, that is, a refusal of a patent, and was subject to appeal from the action of the examiner to the Board of Appeals, and then subject to further review by the courts. The decision of the Supreme Court in U.S. ex rel. Steinmetz v. Allen, 24 S.Ct. 416, 192 U.S. 543, 48 L.Ed. 555, which established this right of appeal is now obsolete. Under the present practice there is no appeal to the Board of Appeals or to the court; the requirement is made in the first instance by the examiner and the rules of the Patent Office provide for an internal review by the Commissioner from a repeated requirement. Curiously enough, the proportion of requirements for restriction has decreased under the new practice.
In keeping with the changed view that the whole matter is one of form and procedure in the discretion of the Patent Office, section 121 provides, in effect, that the making of a requirement to restrict an application shall not affect the validity of either of the resulting patents if more than one patent issues as a result of the requirement. The section also provides, in the last sentence, that the failure of the Commissioner to require an application to be restricted to one invention shall not affect the validity of the resultant patent.
After a requirement to restrict an application is made, the applicant may file a second application for the invention which was not elected to be retained in the first application. This second application, which is referred to in the statute as a divisional application (but in practice the term divisional application is not restricted to applications filed after a requirement), is entitled to the benefit of the filing date of the first application if it complies with the requirements of section 120. The Commissioner is given authority to dispense with signing and execution by the inventor if the divisional application is directed solely to subject matter described and claimed in the original application as filed. This authority has been exercised by the rule which, in its latest form, permits a divisional application to be filed merely by filing a Patent Office certified duplicate copy of the original application as filed, together with a proposed amendment canceling the claims or other matter irrelevant to the divisional application (and the filing fee).
The third sentence of section 120 is the one which provides that neither the original or divisional application (or patent), resulting from a requirement for restriction, shall affect the validity of the other merely because of their being divided into several applications or patents as a result of the requirement; however, the divisional application must be filed before the issuance of the patent on the other application. This sentence is rather awkwardly worded. It stated that neither shall be used "as a reference" against the other and the Revision Notes state that "neither of the resulting patents can be held invalid over the other merely because of their being divided in several patents," and the meaning and intention are believed clear. The provision obviously would not apply to matters having no relation to the particular requirement for restriction which was made. From the language of the sentence it would appear that if two or more divisional applications are filed as a result of a multiple requirement for restriction, they each must be filed before the original application is patented in order to obtain the benefit of this provision.
Confidential status of applications (section 122). Section 122 is a new section which enacts as part of the statute the rule of secrecy of patent applications which has been in the Patent Office rules in one form or another for about a hundred years. The section provides that "Applications for patent shall be kept in confidence by the Patent Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner." This sentence makes no distinction between pending applications and abandoned applications, it should be noted. Several sections of this title require the disclosure of applications, for example, in cases of interferences section 135 requires the giving of a notice to each party and at an appropriate stage in the proceedings the applications of the adverse parties are made available to each other by the Patent Office. In the case of an appeal to the court (section 141) the application will become available to the public since a copy is made of record in the court and the court records are public. Section 181 requires and directs the Commissioner to make certain applications available for inspection by defense agencies for security purposes, and the Atomic Energy Act [42 U.S.C.A. § 1801 et seq.] requires the Commissioner to notify the Atomic Energy Commission of applications for patent relating to fissionable materials and atomic energy and to give the Commission access to such applications. When a patent is issued all the application papers are open to the public and the Patent Office rule provides that any abandoned application which is referred to in the patent is also available for inspection by anyone.
Examination of Application (Chapter 12)
Section 131, the basic section for examination of patent applications by the Patent Office, provides that the Commissioner shall cause an examination to be made of the application and the alleged new invention, and if on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent.
Several revisions have been made over the corresponding old section. A specific reference to examination of the application has been added, for completeness. This refers to examination of the application to determine if it complies with section 112, and matters of that kind. The clause appearing in the old statute "that the same [the invention] is sufficiently useful and important" has been omitted as unnecessary since the requirements for patentability of an invention are stated in sections 101, 102 and 103. The meaning of this old phrase was obscure and it had seldom been resorted to either in the Patent Office or in the courts. Usefulness, usually referred to as utility, is a requirement under section 101.
Section 132 relating to the notice of rejection and the right of the applicant to a second examination has been revised in language and amplified to explicitly incorporate some practice under the old law; the second paragraph which appeared in the old statute has been transposed to section 135 of this title.
The old statute provided for a notice to the applicant of the rejection of claims; this has been amplified to also refer to objections and requirements. After the notice, the applicant may persist in his claim for a patent, with or without amendment, and the application is re-examined. A sentence has been added stating that "No amendment shall introduce new matter into the disclosure of the invention," which represents no departure from the practice under the old statute.
To be entitled to the re-examination provided for by section 132, the applicant must take some action within the time specified in section 133. If no action is taken within the time specified the application is regarded as abandoned, but the Commissioner may revive such abandoned application on a showing to his satisfaction that the delay in responding was unavoidable. The notice to the applicant of the action of the Office is stated in section 133 as "given or mailed"; the date of the mailing of the notice starts the period for response as had been the interpretation under the old statute. Section 133 omits the opening clause of the old statute relating to incomplete applications, as having no meaning or value at the present time; and the proviso relating to government applications has been transposed to section 267.
The section on appeals to the Board of Appeals, section 134, is a restatement of the old statute with minor changes in phraseology. The reference in the old statute to reissues has been omitted in view of the general provision in section 251 relating to reissues. The fee for appeal has been raised to $25 by section 41(a)6. It should be noted that the appeal is provided when claims are rejected, but no appeal to the Board of Appeals is provided from objections or requirements made by an examiner. Internal review of such matters by an interlocutory appeal to the Commissioner, called a petition to the Commissioner, is provided in the Patent Office rules.
Section 135 on interferences between pending applications and between an application and a patent to determine priority of invention and the consequent right to a patent is largely a restatement of the old statute with minor changes in language, but several new provisions have been added. An explicit statement that the decision of the board of patent interferences adverse to an applicant constitutes the final refusal by the Patent Office of the claims involved, has been added. The last sentence of the first paragraph provides that a final judgment adverse to a patentee, subject to appeal or other review provided, constitutes cancellation of the claims involved from the patent. This is new in substance and is made possible by the amplification of the right of review of the patentee provided for in section 146.
The sections just mentioned, 131 to 135, deal with procedure in the Patent Office, of which only a small part is reflected in the statute. The rules of the Patent Office are considerably fuller and more detailed, but their subject matter will not be summarized here.
Review of Patent Office Decisions (Chapter 13)
Decisions of the Patent Office in refusing to grant patents, and in interferences, are reviewable by the courts in either of two ways, one is by an appeal on the record to an appellate court, and the other is by a civil action (formerly bill in equity) filed in a United States District Court. In the ex parte case, the applicant elects the form of review; in an interference the losing party in the Patent Office may either appeal or file a civil action, but if he appeals the appellee has an option of having the appeal dismissed and requiring a civil action to be filed instead, in other words, there is an appeal if both parties desire the appeal and a civil action if either party wishes this form of review. Two forms of review, varying in details, have been provided since the Patent Act of 1836 [Act July 4, 1896, c. 357, 5 Stat. 117]. For some time both forms of review were available successively, the appeal first and a bill in equity thereafter but the bill in equity could not be filed until after appeal had been taken and decided, but since 1927 they have been mutually exclusive.
Sections 141 to 144 relate to the appeal to the United States Court of Customs and Patent Appeals from decisions of the Board of Appeals and of the board of patent interferences. These sections follow the corresponding sections of the old statute with some changes in language and a few other changes. The old statute provided that the Commissioner specify the time for appeal, this is retained in new section 142 with the addition that the time is to be not less than sixty days from the date of the decision appealed from. Section 143 relating to proceedings on the appeal has been revised to provide that the court give the notice of hearings to the parties, rather than the Commissioner as in the old statute, and to state more explicitly details relating to the filing of copies of papers and of the evidence. The old section corresponding to section 144, relating to the decision on appeal, contained a sentence stating that the decision of the court did not preclude any interested person from contesting the validity of the patent in any court in which the same might be called in question. This sentence was omitted as superfluous, a similar sentence did not appear in the old section relating to review by civil action and in either case the validity of the patent could be questioned.
The review by civil action is provided in sections 145 and 146, which are derived from old R.S. 4915 [section 63 of former Title 35, U.S.C.A.]. The old section has been divided into two parts, section 145 relating to the civil action following a decision of the Board of
Appeals and section 146 relating to the civil action in the case of an interference. This separation has resulted in some simplification and clarification, and the language has also been changed.
The old statute provided that the civil action ("bill in equity" was used in the statute) was to be filed within six months from the decision; in both sections 145 and 146 this has been changed to a time to be set by the Commissioner, not less than sixty days, using the same language which is used in section 142 relating to the time for appeal (section 146 has an added clause relating to the time when an election is made). The Commissioner has by rule [§ 1.304 Rules of Practice in Patent Cases, Appendix to this title] fixed a uniform time of sixty days for filing either the appeal or the civil action, with an allowance when a request for reconsideration or rehearing has been filed within a specified time.
A number of changes have been made with respect to the civil action in the case of an interference. Under the old statute the civil action was restricted to an applicant, and a patentee who lost an interference in the Patent Office was not able to thereupon have recourse to this remedy. This has been changed by section 146 which provides that "Any party to an interference" may have remedy by civil action, and a losing patentee now has the same remedy as a losing applicant.
Under the old statute considerable difficulties arose with respect to the party defendant in the civil action. It was not uncommon for the party who lost an interference to file a civil action against his opponent in the Patent Office and then, when it was too late to file a new action, to have the action dismissed because of the absence of a necessary party whose interest had not been recorded in the Patent Office. One judge even suggested in one of his decisions that the complainant should first file a bill of discovery to find out who were the necessary parties, and then file the civil action. The first sentence of the second paragraph of section 146 takes care of the situation by providing that the suit may be instituted against the party in interest as shown by the records of the Patent Office at the time of the decision in the interference, and that any party in interest may become a party to the action. Obviously recourse may be had to 28 U.S.C.A. § 1404 for change of venue.
A new provision has been added in section 146 to prevent a civil action in the case of an interference from being filed against the Commissioner as a defendant. However, the Commissioner is to be notified of the filing of the suit by the clerk of the court and has the right to intervene.
Issue of Patent (Chapter 14)
Sections 151, 152 and 153, relating to the time and manner of issuance of the patent, follow the provisions of the old statute with some changes in language and otherwise very little change. After a notice that the application is allowed, a final fee is due in six months, but it may be accepted by the Commissioner within a further period of one year. The patent may be granted to the assignee of the inventor upon the application made and sworn to by the inventor. Patents are issued in the name of the United States of America, under the seal of the Patent Office, and are either signed by the Commissioner or have his signature printed thereon and attested by an officer of the Patent Office designated by the Commissioner.
The contents and term of the patent are specified in section 154. The patent contains a short title of the invention, a grant to the patentee of certain rights for the term of seventeen years, and a copy of the specification and drawings forming a part thereof. In the language of the old statute the grant was "of the exclusive right to make, use and vend the invention or discovery . . . throughout the United States and the Territories thereof." This has been changed in wording to the grant "of the right to exclude others from making, using, or selling the invention throughout the United States," following the language of court decisions explaining the nature of the right conferred by a patent; for example in Crown Dye and Tool Co. v. Nye Tool and Machine Works, 43 S.Ct. 254, 261 U.S. 24, 67 L.Ed. 516, the Supreme Court said of the rights granted a patentee "in its essence all that the Government conferred by the patent was the right to exclude others from making, using or vending his invention". The exact rights conferred by a patent were difficult to understand and explain under the old language. The phrase "and the Territories thereof' which followed "United States" in the old statute has been omitted in the new section since "United States" is defined in section 100 (c) as meaning "the United States of America, its territories and Possessions." It should be noted that the territorial scope of the patent is now more broadly and more definitely stated. The old statute required "a short title or description of the invention or discovery, correctly stating its nature and design"; this has been shortened to merely "a short title of the invention" since the title is of no legal significance.
Plant Patents (Chapter 15)
Several provisions relating to the patenting of certain distinct and new varieties of plants which appeared in the old statute in sections dealing with patents in general have been made into separate sections. Section 161 provides that such plants may be patented, and incorporates by reference provisions of the title relating to patents for inventions. (This section was amended on September 3, 1954, by Public Law 775 [Act Sept. 3, 1954, c. 1259, 68 Stat. 1190] to somewhat broaden its scope as to the plants which could be patented.) Section 162 restates a provision of the old statute relating to the completeness of the description, and adds a new sentence stating that the claim shall be in formal terms to the plant shown and described, which represents what has been the practice in connection with plant patents. Section 163 states that in the case of a plant patent, "the grant shall be of the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced." In the old statute the right conferred was stated in a parenthetical expression in the section relating to the contents and term of the patent (now section 154), and there was some doubt as to exactly what was intended. While the Revision Notes merely state that the provision has been amended in language, the new language, to the extent that it resolves hitherto undetermined ambiguities, may have effected some change. Section 164, relating to the assistance of the Department of Agriculture in plant patent cases, is merely a restatement in modified language of the corresponding section of the old statute.
Design Patents (Chapter 16)
Three sections relating to patents for designs have been placed in a chapter on Designs, without making any substantive changes. Section 171 is the basic section providing for the patenting of any "new, original and ornamental design for an article of manufacture," it omits the detailed conditions set out in the corresponding section of the old statute and incorporates by reference provisions relating to patents for inventions. Section 172 specifies the period for the right of priority (section 119) and the period specified in section 102(d) as being six months in the case of designs, making a separate section of these details of the old statute. Section 173 on the term of design patents is the same as the corresponding section of the old statute with minor changes in phraseology.
Another section relating to design patents is in the chapter on remedies for infringement of patents. Section 289, providing an additional remedy for infringement of design patents, is a consolidation of two sections of the old statute with some revision in language. While the Revision Notes merely state that language has been changed, the phrase "knowing that the same has been so applied" which appeared in the old statute has been omitted.
Secrecy of Certain Inventions and Filing Applications in Foreign Country (Chapter 17)
Shortly before and during the war there were passed several acts of a temporary nature relating to maintaining in secrecy inventions the publication of which would be detrimental to the national security and withholding the grant of patents in such cases. The existing patent acts on this subject were replaced by a new secrecy act of permanent effect on February 1, 1952 [c. 4, 66 Stat. 3.] Sections 181 to 188 of this title set forth the corresponding sections of that secrecy act, with only a few editorial changes to fit them in as part of the code and a few other changes which are noted. In several places the words "Secretary of Commerce" have been replaced by "Commissioner of Patents," in view of the general provision in the last paragraph of
section 3. The first sentence of the last paragraph of section 181 has been revised over the prior corresponding sentence to make its meaning clearer. The last sentence of the first paragraph of section 184 has been revised over the corresponding sentence of the old section to replace a reference to a non-existing antecedent by another phrase. The substance of sections 181 to 188 is not described, but it may be pointed out that the rules of the Patent Office under these sections [Title 37 Code of Federal Regulations, §§ 5.1-5.23, set out as a note under section 188 of this title] are of considerable value in studying their meaning and application.
PATENTS AND PROTECTION OF PATENT RIGHTS (PART III))
Part III of this title consists of five chapters dealing with matters relating to the patent itself after it has been granted by the Patent Office, and the first of these, Chapter 25, treats of the amendment and correction of patents.
Amendment and Correction of Patents (Chapter 25)
Reissues (section 251). An issued patent can be amended or corrected in several different ways, the most important of which is by reissue, which is the grant of a new patent to replace the original patent for the balance of its unexpired term. Sections 251 and 252 are derived from one section of the former law dealing with reissues and make a number of changes and additions; section 251 deals with the conditions under which a reissue may be obtained and section 252 deals with the effect of a reissue.
The old statute provided that "Whenever any patent is wholly or partly inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a patent for the same invention, and in accordance with the corrected specification, to be reissued to the patentee or to his assigns or legal representatives, for the unexpired part of the term of the original patent." A number of changes have been made in this language. First, the phrase "if the error has arisen by inadvertence, accident or mistake, and without any fraudulent or deceptive intention" has been replaced by "through error without any deceptive intention." There is no indication in the printed record that this change in language was intended to effect any change in substance and, since the old phrase was usually rather liberally construed, except when the reissue sought to recapture claims cancelled during the prosecution of the original patent, this question would be of minor significance except in connection with the situation mentioned. As to this situation there would be a large body of precedent to overcome, but one commentary urges that there is a liberalization in this respect.
The next change to which attention is directed is the insertion of the words "or less" in the phrase which in the new statute reads "by reason of the patentee claiming more or less than he had a right to claim in the patent." The old statute had been interpreted and applied so as to permit a patentee to claim more in a reissue than he had claimed in the original patent, that is, to correct the error of having claimed less than he had a right to claim and so broaden the patent, and the new statute so provides explicitly.
While the old statute stated that the patent is reissued "for the same invention," the new statute states that the patent is reissued "for the invention disclosed in the original patent." Here, again, there is no indication in the printed record that any change was intended, although a slight broadening effect has been argued.
In the old statute one of the grounds of reissue was stated to be "a defective or insufficient specification" whereas the expression in the new statute is "a defective specification or drawing," but the room for correction here is not very great since new matter cannot be introduced. In the clause prohibiting the introduction of new matter, a provision relating to models and drawings has been omitted as obsolete.
A new provision has been added permitting the assignee of a patent to apply for a reissue provided the reissue does not seek to enlarge the claims of the original patent.
While the old statute began with the word "Whenever" and no time limitation was expressed, the courts developed a rule of laches according to which a broadened reissue could not be applied for more than two years after the grant of the original patent except under extraordinary circumstances excusing the delay, and the delay was seldom excused. This rule of laches had been applied in a few instances when the delay was less than two years, and, since 1939, when the former public use period of two years which sewed as an analogy for the time under the laches rule, was changed to one year, the period of laches has been taken as one year in some cases. The new statute enacts a fixed period of two years from the grant of the original patent, within which to apply for a reissue "enlarging the scope of the claims of the original patent." Such a reissue cannot be obtained on an application filed more than two years after the date of the original patent, and presumably is timely if applied for within two years as far as the reissue requirements are concerned. The statute does not define a broadened reissue, or a reissue which enlarges the scope of the claims of the original patent, but the cases indicate that the general rule is that if a claim of a reissue can hold something as an infringement which would not be an infringement of any of the claims of the original patent (not considering the validity of such claims), then the particular claim of the reissue enlarges the scope of the claims of the original patent, and that a claim is broadened if it is broadened in any respect.
Effect of reissue, intervening rights (section 252). The first paragraph of section 252 on the effect of a reissue is a restatement of the corresponding portion of the old statute, but the second paragraph is a new provision dealing with the protection of intervening rights in reissues. The term intervening rights in reissues is used to refer to situations such as may be illustrated by the following example: assume that a patent has been obtained for a machine, that someone else makes or otherwise acquires a machine which does not infringe the patent, and that the patentee thereafter obtains a reissue of the patent with broadened claims which are infringed by the existing machine of the intervenor. The problems have been concerned with whether or not the continued use of the machine by the intervenor after the grant of the reissue should be held liable for infringement, and if not on what basis. From the time of the first reissue statute in 1832 up to the present patent act there have been three successive different treatments of situations such as that mentioned. During the first period the intervenor was held liable as an infringer, literally applying the language of the statute which in its present form reads that the "reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form"; the continued use of a machine, or the sale thereof, would be a cause of action thereafter arising. During the second period, the reissue would be held invalid if the intervening rights situation were present, the invalidity not always being grounded on this fact, however. During the third period, the patent would not be held invalid (unless invalid for some other reason) but the intervenor would be excused from liability for infringement. The cases during this third period are somewhat confusing, there is no sharp point of demarcation from the preceding period and the reasoning is not always very logical.
The second paragraph of section 252 is not entirely a codification of the case law relating to the protection of the intervening rights since it varies in some respects from the case law and should be considered on its own terms. The paragraph provides that the reissued patent shall not abridge or affect certain rights of those who acted before the reissue was granted when certain conditions are present. First it should be noted that the critical date is the date of the grant of the reissue. If the intervenor has acted before the grant of the reissue he is protected under the circumstances mentioned in the statute. It is immaterial how long before the date of the reissue he started, if he started before the grant of the original patent he is still protected by the language of the statute. The statute gives a simple test for determining when intervening rights cannot be present and this is whether claims of the original patent which are repeated in the reissue are infringed. If the reissued patent has valid claims in it which were also in the original patent, and these claims are infringed, then the question of intervening rights cannot arise. The question of intervening rights can only arise when the only claims infringed are claims of the reissued patent which were not in the original patent. This test is very simple to apply, especially since the specifications of reissued patents for some time have been printed in such a manner as to show which claims are repeated from the original patent; if the defendant infringes repeated original claims he is liable for infringement, if he does not infringe repeated original claims but infringes only new or amended claims, then the question of intervening rights may be raised. This test not only applies in the case of broadened reissues, but it extends the protection of intervening rights to so-called narrowed reissues which marks another departure from the case law. Assume an original patent with a broad claim which might have been infringed in terms, and a reissue which omits this broad claim and contains a new narrower claim which is infringed by the intervenor, he will be protected under the statute since he does not infringe a repeated original claim.
With respect to the character of protection, the new statute provides two different degrees of protection, one is absolute and the other is within the discretion of the court. The specific things made before the date of the reissue, which infringe the new reissue claims, are absolutely free of the reissued patent and may be used or sold after the date of the reissue without regard to the patent; in the language of the statute, the reissued patent shall not abridge or affect the right of any person "to continue the use of, or to sell to others to be used or sold, the specific thing" made, used or purchased prior to the grant of the reissue. This absolute protection extends only to the specific objects actually made before the grant of the reissued patent and does not extend to the making of additional objects of identical or like kind. With respect to the latter the court is given discretion to act. When the specified conditions obtain, the court has the power to permit (1) continuation of the manufacture of things made before the grant of the reissue (that is, the manufacture of additional objects), and their use or sale. (2) the continued manufacture, use or sale when substantial preparation was made before the grant of the reissue, and (3) the continued practice of a process patented by the reissue practiced, or for the practice of which substantial preparation was made, before the grant of the reissue. This power is to be exercised to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
Disclaimer (sections 253 and 288). There are two sections relating to disclaimers in patents, 253 and 288, as there were two sections in the old statute. A disclaimer was a paper filed by the patentee and recorded in the Patent Office, by means of which the real or apparent scope of a patent was restricted. The new statute makes two radical changes which completely change the status of disclaimers.
Section 253 provides that a patentee may "make disclaimer of any complete claim." Under the prior statute a disclaimer could either have the form of cancelling a claim from the patent, or it could revise a claim by restricting its scope. While disclaimers of the latter type had not met with much success in recent times, there can be no question but that they were permitted by the statute, and they were often sustained in the past. Under the new statute a claim cannot be revised by a disclaimer; the patentee is left to the reissue section if he desires to revise his claim and, it should be noted, the assignee alone may apply for a reissue when its purpose is to narrow the claims.
The theory of disclaimers under the old statute was based upon an implied common law rule that if a patent was invalid in part it was invalid in whole, that is, if any one claim of a patent was invalid the entire patent fell. In order to save the patent then, the disclaimer statute (first enacted in 1837 [Act March 3, 1837, c. 45, 5 Stat. 191]) provided in effect that if the invalid part (claim) were disclaimed without unreasonable neglect or delay, suit could be maintained upon any other part (claim) which might be valid. This led to such confusion and uncertainty in the past in certain situations, that the new statute has simply eliminated the question. The common law rule that if a patent is invalid in part it is completely invalid has been abolished (except when deception or fraud is involved) by the opening sentence of section 253 which reads "Whenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid" and the opening sentence of section 288 which provides "Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid." Furthermore the necessity of disclaiming an invalid claim in order to recover on valid claims is eliminated.
This leaves the invalid claims in the patent, with the possibility that the patentee may sue on them again after they have once been held invalid by a court. However, this was true under the prior statute, and the probability of a patentee again suing on claims once held invalid is believed to be no greater than it has been in the past. The provision in section 285 relating to the award of attorney fees, the provision in section 288 relating to costs, and other factors, would so deter such second suits that it is not believed that there will be any significant increase in the incidence of such suits.
The Committee Report states, in the general part, with respect to sections 253 and 288:
"Section 253 relates to another form of correction of a patent known as the disclaimer. The patentee files a paper in the Office which is recorded. He disclaims certain things from the scope of his patent or disclaims certain claims. This subject of disclaimers, in the present law, has resulted in a great deal of confusion and uncertainty in certain situations in the law which at times are almost ridiculous. Consequently, the bill in two sections, 253 and 288, has introduced certain changes relating to disclaimers. One of these changes is that only a whole claim can be disclaimed; a patent can not be rewritten by filing a paper in the Patent Office.
"The second change relates to the situation when a patent has two or more claims and one of them may be discovered to be invalid. There is now a provision in the statute under which an invalid claim must be disclaimed without unreasonable delay in order to save the rest of the patent. What delay is unreasonable is presently quite confusing, and the present law does not, as a matter of fact, prevent the patentee from suing again on the invalid claim if he so wishes.
"The bill has eliminated that requirement. It has left the situation so that if one claim of a patent is invalid, the patentee may take it out. He may sue on the remaining claims which have whatever validity they may have on their own merits. That is, one bad claim does not affect the other claims, unless they are also bad for similar reasons.
"Other provisions of the bill take care at least as well as is done in the present law of the possibility of a patentee suing again after his patent has been held invalid. That can be done today and no change is made in that situation, except that certain provisions tend to deter doing such a thing."
The second sentence of section 288, that "The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent Office before the commencement of the suit,” is a restatement of the corresponding provision in the old statute, an a similar provision appears in section 1928 of Title 28, U.S.C.A. by the operation of these provisions, a patentee who secures a favorable judgment on some claims of the patent cannot recover costs if a claim of the patent is found invalid. Despite the fact that this provision has appeared in two different statutes, the patent statute and the judicial code, it has been frequently overlooked or disregarded.
The second paragraph of section 253 is new and provides that "in like manner" a patentee may disclaim, or dedicate to the public, the entire term or any terminal part of the term, of a patent, and such action may also be taken by the applicant before the patent is granted. The Patent Office has interpreted the phrase "in like manner" as including the payment of a fee as required in the first paragraph, see Rule 21 (8). Under this provision a patentee, either before or after the issue of the patent, may, for example, disclaim the last two or three years of the term of the patent, or may disclaim all the term of the patent after a specified date. No specific reason for this provision appears in the printed record, but its proponents contemplated that it might be effective in some instances, in combatting a defense of double patenting, to permit the patentee to cut back the term of a later issued patent so as to expire at the same time as the earlier issued patent and thus eliminate any charge of extension of monopoly.
Other corrections (sections 254, 255, 256). Section 254, relating to certificates of correction issued by the Patent Office to correct its own mistakes when the patent as granted does not correspond to the records of the Office, is a restatement of the prior corresponding provision, with the omission of an obsolete sentence relating to such certificates issued by the Patent Office prior to March 4, 1925, and the addition of the last sentence which is new. Under this last sentence the Patent Office may, if the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, issue a corrected patent as a more appropriate form for making the correction. This is seldom done, however.
Section 255 is new and provides for the correction of some minor clerical errors of the applicant not due to the Patent Office, by means of a certificate of correction. Heretofore such errors, if they were to be corrected, could only be corrected by a reissue.
Section 256 which is entirely new is a companion to section 116, relating to the issued patent whereas section 116 relates to the same situations at the application stage. The first paragraph refers to a patent issued on the application of two or more persons as joint inventors where it appears that one of them was not in fact a joint inventor, and the second paragraph to the case in which a joint inventor had not joined in the application. In either case, if the inclusion or exclusion occurred by error and without any deceptive intention, the Commissioner of Patents may correct the patent by a certificate deleting the name of the erroneously joined inventor, or adding the name of the erroneously omitted inventor, as the case may be. All the parties, including the assignee, must concur in applying for such correction. If they do not concur, the correction can only be made on order of a court as provided in the third paragraph. It would not be possible under this section to change a patent which was issued with A as the sole inventor to one naming B as the sole inventor.
The third paragraph of section 256, states that the misjoinder or nonjoinder of joint inventors shall not invalidate a patent if the mistake is one that can be corrected under the section, that is, arose by error and without deceptive intention, and gives a court authority to order correction.
Ownership and Assignment (Chapter 26)
Section 261 is a revision of the section of the old law relating to assignments of patents and applications for patents. It begins by a new paragraph declaratory of the fact that patents have the attributes of personal property. Aside from changes in language in the remaining paragraphs, there is a specific addition in the third paragraph of a clause permitting an officer authorized to administer oaths in a foreign country to execute certificates of acknowledgement of assignments, provided his authority is proved by a certificate of a diplomatic or consular officer of the United States, and the language in same paragraph relating to the officers who may execute certificates of acknowledgement has been simplified and made uniform with corresponding language in section 115.
Section 262 is but a partial statement of the rights of joint owners of a patent as found in the case law. It would have been more useful and effective if it were more complete, in particular as to the rights of joint owners with respect to the granting of licenses and the disposition of their interests.
Government Interests in Patents (Chapter 27)
Two provisions of the old statute relating to Government interests in patents are placed in Chapter 27 which is somewhat out of logical order in view of its present content. The first section, 266, relating to the issuance of patents without payment of fees in the case of inventions made by Government employees, has been broadened so as to include design patents which were not included by the language of the former statute, and changes in language have been made. The second section, 267, relates to the time for taking action in the case of applications owned by the United States and has been simplified in language.
Infringement of Patents (Chapter 28)
The prior statute had no section defining or dealing with what constitutes infringement of a patent. Paragraph (a) of section 271 for completeness and other reasons, declares that “Except as other wise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent."
Paragraphs (b), (c) and (d) of section 271 are of considerable importance and the Committee Report characterizes them as one of the major changes or innovations in the title. The general part of the report states in part, with respect to these paragraphs:
Paragraphs (b), (c), and (d) relate to the subject referred to as contributory infringement. The doctrine of contributory infringement has been part of our law for about 80 years. It has been applied to enjoin those who sought to cause infringement by supplying someone else with the means and directions for infringing a patent. One who makes a special device constituting the heart of a patented machine and supplies it to others with directions (specific or implied) to complete the machine is obviously appropriating the benefit of the patented invention. It is for this reason that the doctrine of contributory infringement, which prevents appropriating another man's patented invention has been characterized as "an expression both of law and morals." Considerable doubt and confusion as to the scope of contributory infringement has resulted from a number of decisions of the courts in recent years The purpose of this section is to codify in statutory form principles of contributory infringement and at the same time eliminate this doubt and confusion.
The Revision Notes to section 271 state:
Paragraphs (b) and (c) define and limit contributory infringement of a patent and paragraph (d) is ancillary to these paragraphs, see preliminary general description of bill. One who actively induces infringement as by aiding and abetting the same is liable as an infringer, and so is one who sells a component part of a patented invention or material or apparatus for use therein knowing the same to be especially made or especially adapted for use in the infringement of the patent except in case of a staple article or commodity of commerce having other uses. A patentee is not deemed to have misused his patent solely by reason of doing anything authorized by the section.
These paragraphs have a legislative history antedating the first of the bills which resulted in the new patent act. A bill was introduced in the 80th Congress, H.R. 5988, March 24, 1948, with the title "A bill to provide for the protection of patent-rights where enforcement against direct infringers is impracticable, to define 'contributory infringement,' and for other purposes." Hearings on the bill were held in May 1948 (Contributory Infringement of Patents. Hearings before Subcommittee on Patents, Trade-Marks and Copyrights of the Committee on the Judiciary, House of Representatives, 80th Congress. 99 pages), but no further action was taken. The bill was reintroduced in the next Congress, without change, as H.R. 3866, March 29,1949, and hearings were again held, in May and June 1949 (Contributory Infringement. Hearings before Subcommittee No. 4 of the Committee on the Judiciary, House of Representatives, 81st Congress. 91 pages). Again no action was taken except that the five sections of the bill were incorporated with a few changes as five paragraphs in the infringement section of the first patent revision and codification bill, H.R. 9133, introduced July 17, 1950, in the same Congress. In the second revision and codification bill one paragraph was eliminated as redundant and two paragraphs were merged into one, resulting in three paragraphs which, with a revision made as a result of the hearing on this bill, became paragraphs b, c and d of section 271 of this title.
Paragraph (c) deals with what the Committee Report characterized as "the usual situation in which contributory infringement arises". Contributory infringement under this paragraph requires the presence of the following factors:
1. The thing sold must be "a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process." The thing sold is presumably not itself patented since if it were patented the question of contributory infringement, as distinguished from direct infringement, would scarcely arise and the paragraph would have little or no apparent purposes.
2. The thing sold must constitute a material part of the invention, that is, of the patented invention.
3. The thing sold must be especially made or especially adapted for use in an infringement of the patent.
4. The seller must have knowledge of factor 3.
5. In addition the thing sold must not be "a staple article or commodity of commerce suitable for substantial noninfringing use."
Proof of compliance with all of the foregoing factors would be necessary to establish liability under paragraph (c).
Paragraph (b) is a broad statement and enactment of the principle that one who actively induces infringement of a patent is likewise liable for infringement. The Committee Report in several places refers to this paragraph as relating to contributory infringement. There is apparently some looseness in the use of terms “infringement” material in construing the section. Paragraphs (b) and (c) are independent as written but, in connection with the sale of such things as noninfringing use, which fall withing the specific exception of paragraph (c), clearly something more than mere knowledge of an intended infringing use would have to be shown to make out a case of active inducement under paragraph (b).
The object of paragraph (d) is broadly indicated in the above quotation from the Revision Notes. As there stated, it is “ancillary to” paragraphs (b) and (c) and was included primarily to except from the doctrine of patent misuse, developed by court decisions, those acts of the patentee corresponding to acts which, if performed by another without his consent, would give rise to liability. Paragraph (d) makes such exceptions to the case law of misuse as are necessary to render the section effective as a basis of recovery. Furthermore it provides that the licensing of others to perform acts which would otherwise give rise to liability or the bringing of a suit based on such acts shall not constitute misuse or illegal extension of the patent right.
Section 272, which is new, providing that use of a patented invention in a vessel, aircraft or vehicle of a foreign country temporarily in the United States shall not constitute infringement, follows a provision in the International Convention for the Protection of Industrial Property, to which the United States is a party, and also codifies a holding of the Supreme Court that use of a patented invention on board a foreign ship does not infringe a patent. The general definition of vessel and vehicle in 1 U.S.C.A. §§ 3 and 4 would be applicable here.
Remedies for Infringement of Patent (Chapter 29)
The last chapter of this title deals with judicial remedies for infringement of patents, and certain other actions.
Three sections of the old statute (Rev.Stat., Secs. 4919, 4920, 4921 [sections 67, 69, 70 of former Title 35, U.S.C.A.]) dealt with actions for infringement of patents. They were somewhat confused and the language in some respects archaic. In the new statute they have been subdivided and rearranged, with changes in language and some additions.
Section 281 states that "A patentee shall have remedy by civil action for infringement of his patent." In using the modem term "civil action" in place of the old terms "action on the case" and "bill in equity," the Committee Report indicates that there was no intention of eliminating a jury trial in those cases in which there was a right to a jury trial under the old statute.
The first paragraph of section 282 declares that a patent shall be presumed valid and that the burden of establishing invalidity of a patent shall rest on a party asserting it. That a patent is presumed valid was the law prior to the new statute, but it was not expressed in the old statute. The statement of the presumption in the statute; should give it greater dignity and effectiveness.
The defenses which may be raised in an action involving the validity or infringement of a patent are specified in general terms, by the second paragraph of section 282, in five numbered items. Item 1 specifies "Noninfringement, absence of liability for infringement, or unenforceability" (the last word was added by amendment in the Senate for greater clarity); this would include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands. The second item specifies "Invalidity of the patent or any claim in suit on any ground specified in Part II of this title as a condition for patentability"; this would include most of the usual defenses such as lack of novelty, prior publication, prior public use, lack of invention. The third item specifies "Invalidity of the patent or any claim in suit for failure to comply with any requirement of section 112 or 251 of this title"; the first section mentioned would include the defense of insufficient disclosure, and the second sentence mentioned would include reissue defenses. The fourth item merely specifies "Any other fact or act made a defense by this title." All the defenses usually listed in textbooks on patent law may be placed in one or another of the enumerated categories, except a few which are no longer applicable in view of changes in the new statute.
The second paragraph of section 282 is derived from the first paragraph of old R.S. 4920 [section 69 of former Title 35, U.S.C.A.] which enumerated five specific defenses. These defenses were not exhaustive and the reason for enumerating them was obscure. The first of the old stated defenses was "That for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect." This has been omitted. Since intention to deceive the public was an element of this defense it was seldom raised; failure to give a description of the invention as required by section 112 is a defense without regard to intention. The second defense stated in the old statute was "That he [the patentee] had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same." The interpretation of this phrase is what led to the rule of diligence in determining priority of invention which has been incorporated in section 102(g). The third and fifth defenses are conditions for patentability stated in section 102(b) and (c) and the fourth defense in modified form is also included in the conditions for patentability.
The last paragraph of section 282 relating to the giving of notice of various details relating to certain defenses is based on part of the last paragraph of old R.S. 4920, with modifications. The old provision was in fact superseded by the Federal Rules of Civil Procedure [28 U.S.C.A.] but, as modified, has been reinstated.
Section 283 relating to the power of the court to grant injunctions is the same as the corresponding provision in the old statute with minor changes in language.
Section 284 relates to the damages which may be recovered by a patentee and consolidates provisions in two sections of the old statute with some changes in language. The opening phrase of the first paragraph was amended in the Senate.
Section 285, providing for the recovery of attorney fees by the prevailing party, is substantially the same as the corresponding sentence of the old statute, with the addition of "in exceptional cases" to express the intention of the old statute as shown by its legislative history and as interpreted by the courts.
The first paragraph of section 286 expresses the six year period of limitations in recovering for infringement of the old statute. A clause has been added clarifying the application of the six year period in the case of a counterclaim for infringement, the six years is counted from the filing of the counterclaim and not from the filing of the original complaint.
The second paragraph of section 286 is new; it extends the period of limitations with respect to suits against the Government in the Court of Claims by not counting time that administrative settlement proceedings were pending as part of the six years.
Section 287 provides that a patentee who makes or sells articles shall not recover damages if he has failed to give notice to the public that the articles made or sold are patented by marking them as specified, unless the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice; the filing of the infringement action constitutes a notice. This section restates the old statute with changes in language and some minor changes or clarifications of substance.
Section 288 has been mentioned in connection with section 253, and section 289 has been mentioned under design patents. Section 290, requiring the clerks of courts to send notices of patent suits to the Patent Office, is a restatement of the corresponding provision of the old statute with minor changes in language.
Section 291 relates to interfering patents. When there are interfering patents, the owner of one may file a civil action against the owner of the other and the court may adjudge either or both the patents invalid. The new section has considerably condensed the language of the old statute. Under the old statute, interfering patents arose mostly if not always when a second patent for the same invention, with identical claims, was granted to another inventor who had won an interference with the first patentee in the Patent Office. The losing patentee could not file a civil action against the winning applicant, but could file an interfering patents suit against the winning applicant after the second patent had been granted. In view of the change in the civil action to review an interference decision which Permits a losing patentee to file such action (section 146) and the change in the interference section relating to cancellation of the claims of a losing patentee when the interference decision becomes final (section 135), the mentioned occasion for interfering patents will no longer arise, and there will be little or no use for section 291.
The old statute contained a section establishing a penalty for falsely marking articles as patented, one-half of the penalty to go to the person suing for the same and the other to the use of the United States. Section 292, the second criminal provision in this title, is a revision of the old statute with changes in substance as well as in language. Under the old statute the false marking had to be on the article itself whereas the new statute includes false advertising in the offenses. The new statute also adds a new offense relating to false marking or false use of "patent applied for," "patent pending" or equivalent expressions. Under the old statute the penalty was stated to be "not less than $100", for each offense, which minimum had been interpreted by the courts as a maximum; the new statute provides a maximum fine of $500 for every offense. Section 292 is divided into two subsections, subsection (a) is written in the same form as the sections of the criminal code (Title 18, U.S.C.A.) establishing criminal offenses and the offense of false marking is now an ordinary criminal offense which can be prosecuted in the same manner as others. However, subsection (b) of section 292 retains the informer (qui tam) action as additional, presumably alternative, to the ordinary criminal action.
The last section of this title, section 293, is a new provision for obtaining service on nonresident patentees. Such a patentee may, if he wishes, designate a person residing in the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If no such person is designated, or if he cannot be found at the address given in the last designation, the United States District Court for the District of Columbia is given jurisdiction and summons may he sewed by publication or otherwise as the court directs. In either case the court has the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court. This new provision fills a gap which existed in the old statute. It will enable, for example, jurisdiction over a patentee residing in a foreign country to be obtained in a declaratory judgment action involving the validity or infringement of the patent.
APPLICATION OF NEW LAW TO PRIOR PATENTS
As has been stated, the new Act contains five sections; section 1 enacts the entire new Title 35 and contains all the sections of the title. Section 2 of the Act makes some changes in a section of the Trade-Mark Act (15 U.S.C.A. § 1071) to change references to sections of old Title 35 to the corresponding sections of this title. Section 3 of the Act is a severability clause. Section 4 of the Act specifies the effective date of the Act as January 1, 1953, and contains a number of specific provisions as to its applicability. Section 5 of the Act repeals prior acts which are identified by a schedule of acts repealed. (Sections 3, 4 and 5 of the Act are printed as notes preceding section 1 of this Title.)
Certain specific provisions concerning the application of the new law to patents issued and applications filed prior to the date it came into force are made in the Act and other questions may arise in connection with old patents. In view of the fact that the Act is largely a codifying act and a large part of it is the same in substance as the old law, and many of the changes are procedural only, actually the problems involved in applying the new Act to old patents are comparatively few in number, although they might loom important at the beginning in particular cases.
The first sentence of section 4(a), which concerns the time of taking effect, after specifying the date, continues, "and shall apply to all applications for patent filed on or after such date, and to all patents granted on such applications." This emphasizes the fact that there are no exceptions to the application of the new code in the case of new applications and patents granted on them. There never was an old law for these cases, there is just one law-the new one.
The next sentence of this section 4(a) continues to state that the new law "shall apply to further proceedings on applications pending on such date [January 1, 19531 and to patents granted on such applications except as otherwise provided." Thus, the new law applies to applications pending on January 1 and to the patents that result from those pending applications, but there are some exceptions. Then the next sentence of section 4(a) states that the new law "shall apply to unexpired patents granted prior to such date except as otherwise provided." So the new law applies to existing patents—patents existing before January 1, 1953, and unexpired on that date—but there are some exceptions. Nothing is said in this paragraph or anywhere else about expired patents—patents which expired before January 1, 1953—but such an expired patent that may come up for adjudication would be governed by some of the principles as to what law governs which will be referred to.
The exceptions to the general application of the new code are of two kinds. One kind consists of exceptions which are specifically enumerated by the statute and the other of those which are not specifically numerated but which follow from general provisions of the statute or from general principles not expressed in the statute.
Section 4 of the Act, in the paragraphs following paragraph (a), enumerates certain specific exceptions. Paragraph (b) relates to the change made in the law as to the statutory bar of prior foreign patenting by section 102(d) of this title and specifically states that this new provision "shall not apply to existing patents and pending applications, but the law previously in effect, namely the first paragraph of R.S. 4887 [set out as a note under section 102(d) of this title], shall apply to such patents and applications." The reason for this exception is that at the beginning of the work on the bill it was felt that its omission would give rise to controversies which it was desired to avoid. The same change in the law had come up a number of years before, and in conferences discussing it, controversy arose over the application of the change to existing patents and applications.
Section 4(c) relates to the new requirement for obtaining the right of priority of foreign applications, namely, the filing of certain papers before the patent issues (section 119 of this title). This requirement, by the terms of section 4(c), does not apply to existing patents. It does apply to pending applications and new cases, since these are not excepted.
Section 4(d) preserves the two-year period for certain statutory bars in the case of applications filed before August 5, 1940 and patents granted on such applications. At the time that the period was changed from two years to one year, the two-year period was preserved for prior cases and that preservation is necessarily continued.
Section 4(g) relates to the one-year period specified in section 4 of this title on the disability of examiners in applying for patents. The new provision--the one year part of the section--is not applied in the case of applications filed before January 1, 1953.
Section 4(f) provides that the new law shall not affect any provision of the Atomic Energy Act of 1946 [42 U.S.C.A. § 1801 et seq.], that is, the prohibition of the patenting of certain inventions and the other patent provisions of the Atomic Energy Act were not modified by the new patent Act.
Section 4(h) merely preserves the continuity of the prior secrecy act which was incorporated as sections 181 to 188 of this title and is mentioned to complete the description of section 4. Section 4(e) will be mentioned later.
This summary exhausts the enumerated exceptions. As far as pending applications are concerned, there would be no other exceptions.
The possible remaining exceptions to the applicability of the new law deal only with patents granted before January 1, 1953, and this is where there is apt to be the greatest difference of opinion and what follows in this part of this commentary expresses primarily one possible theory.
There may be exceptions to the operation of the new law which are not specifically enumerated, but which would follow from certain general provisions, or from general principles of law. In this connection, section 5 of the Act must be first considered.
Section 5 is the repeal section, and in the first sentence it repeals certain sections and parts of sections of prior acts, these sections constituting the main body of the patent statutes. The second sentence of this section states "Any rights or liabilities now existing under such sections or parts thereof shall not be affected by his repeal." This is a general saving clause-the saving of existing rights to the extent mentioned. It must be pointed out first that this sentence has no bearing on applications pending when the new law came into effect and on patents resulting from such applications, since there are no rights in existence until the patent is granted. Then in the second place, the word "affected" in this clause should be taken to mean "adversely affected." Third, it should be noted that this clause refers only to the repeal of the old law as not affecting existing rights and liabilities. This sentence would apply not only to the rights and liabilities of the patentee but also to existing rights and liabilities of others. Rights and liabilities refer to substantive matters and usually do not refer to matters which are procedural only. Existing rights ordinarily do not include inchoate rights.
A simple application of this sentence may be illustrated by the provision that abolishes limiting disclaimers, section 253 of this title. Prior to January 1, 1953, a limiting disclaimer, that is a disclaimer which restricted the scope of a claim, was permitted and could be proper under the statute. In the case of a patent which issued before January 1, 1953, and which has a limiting disclaimer filed before that date, the repeal of the law which permits limiting disclaimers would have no effect on the rights of the patentee, the rights the Patentee might have in his patent with its limiting disclaimer.
A similar example is that of a broadened reissue obtained before January 1, 1953, on an application filed more than two years after the original patent was granted. Such a reissue might conceivably be valid under the old law; if it were, the repeal of the statute would not affect the validity.
Expired patents are taken care of by this sentence in section 5. Existing rights in and liabilities under such patents would not be affected by the repeal of the statute under which they were granted.
This general provision of section 5 appears in other codification statutes. It is the same language that appears in the laws which enacted Title 28, Judiciary and Judicial Procedure, Title 18, Crimes and Criminal Procedure, and other titles enacted in the last decade.
In addition to the general principle expressed in section 5, there are a number of other propositions to be considered in dealing more specifically with patents.
The first proposition is that Congress may legislate with respect to pending applications and affect them in any way it pleases, within its power to legislate on patents, even to the extent of abolishing the right to obtain a patent.
The second general proposition is that Congress cannot adversely affect patent rights already granted, without just compensation when taken for public purpose. By adversely affect is meant either to repeal them or to reduce them in scope.
Both these propositions are illustrated in the Atomic Energy Act of 1946 which made certain inventions unpatentable and revoked existing patents for such subject matter (18 U.S.C.A. § 1811(a) (1)). The bar applied to pending applications for the specified subject matter and, while provision was made for the payment of just compensation for the revoked patents, no compensation was necessary in the case of pending applications. The same act (18 U.S.C.A. § 1811 (b)) decreased in terms the rights of patentees in certain respects and, similarly, a right to compensation was provided for in the case of existing patents but not in the case of patents resulting from pending applications.
A third proposition which has to be considered in dealing with these transitional problems is that Congress has power to validate invalid patents. Throughout history, going as far back as 1802, there have been instances of special acts of Congress which removed some disability or waived some condition in connection with obtaining a patent, or in connection with a patent already granted, which revived and extended expired patents, etc. To give a suppositious example typical of some of the things that have been done, suppose that a patent was granted and it thereafter was discovered that there had been several years prior public use, and the patent was invalid for this reason. Congress can pass an act declaring that this patent is valid notwithstanding the several years prior public use. What happens in these cases may not have been completely developed in decisions since they are not very great in number, but these validated patents are perfectly good at least with respect to infringements occurring after they have been validated, although questions might arise as to the effectiveness of such a validated patent as a basis for recovering for infringements before the patent was validated.
A word must be said about reissue applications. Congress has full power to legislate on reissues of existing patents, that is, a patent issued prior to the new Act would be subject to the new law as to reissue matters if a reissue were applied for after it came into effect. Similarly a reissue application pending on January 1 would be subject to the new law as to reissue matters. However, the new law states (in section 252 of this title) that every reissued patent "shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, " (a similar provision appeared in the old law). In view of this a reissue granted today would be treated under the new law as to reissue matters, but as to other matters it would be in the same status as a patent granted before January 1. For example, take a patent granted in 1939 when the bar of prior printed publication and public use was two years. A reissue of this patent granted today under the new law would still be subject to the two year bar rather than the one year bar now the law.
These are general principles that may be used in determining transitional problems which might arise in the case of patents which were issued prior to January 1, 1953, including reissue patents, and which come up for adjudication after that date.
The major part of the new law makes no change but there are certain provisions in the new statute which change the substantive law; in particular, there are several provisions which may have the effect of validating a patent which would be invalid under the old statute, and there are some provisions which might have the effect of changing the liability for infringement from what it would have been under the old statute. Four types of situations may be distinguished:
1. A patent would be valid under the old statute but invalid under the new.
2. A patent would be invalid under the old statute but valid under the new.
3. No infringement, or unenforceability of the patent, would exist under the old law, whereas under the new law the patent would be infringed or enforceable.
4. The patent would be infringed under the old law but not infringed under the new.
The first type of situation probably does not exist (a remote possibility might arise in the case of a broadened reissue), but if it did the new law could not be applied to invalidate the patent since patent rights already granted cannot be thus revoked.
As an example of the validating type of situation, consider section 288 of this title. This section states that when one claim of a patent is invalid, an action for infringement may be maintained on other claims of the patent which may be valid. The new statute abolishes the obligation to disclaim an invalid claim within a reasonable time in order to preserve the validity of the remaining claims, which requirement existed under the old statute. Under the old statute, if a patentee, after one claim of the patent was found invalid, did not disclaim the invalid claim within a reasonable time, his entire patent would be invalid by virtue of the operation of a common law rule that required that a patent was void completely if any part of it was void. Under the new statute, this old common law rule is, in effect repealed, and the patentee in positive terms is given the right to sue on valid claims, notwithstanding that other claims may have been held invalid before.
Assume a patent in which a claim was found invalid many years ago and no disclaimer was filed, so that there was an unreasonable delay in disclaiming under the old law. If that patent had come up for adjudication prior to January 1, 1953, under the old law the court would have held that the patent was invalid because of the unreasonable delay in disclaiming. If that same patent now comes up for adjudication under the new law, the court could not hold the patent invalid for delay in disclaiming. The new statute would thus validate this patent. It is believed that the court would have to apply the new statute in determining the validity of the patent as to this ground, since the old statute stands repealed, the language of section 288 of the new code [this title] in positive terms eliminates the old ground of invalidity, section 4(a) of the Act declares that the new law applies to existing patents, and there is nothing that excepts the application of the new statute in this particular situation. As to this last statement there is no special exception found in the Act, and Congress, as has been stated, has the power to validate an invalid patent and can be considered to have done so in this case.
While there may not be any question as to the validity of the patent as to claims which are intrinsically valid, the liability of the infringer must be considered separately since he will point to section 5 of the Act and urge that his rights cannot be adversely affected or his liabilities increased. The court, while holding the patent not to he invalid, might still conceivably hold that it was unenforceable against a particular defendant or against particular acts, for some special reason. In considering liability for infringement, let us treat three separate situations; first, assume that all infringing acts of the defendant occurred after the patent was validated, second, assume that all infringing acts occurred before, and third, assume that there were continuing acts of infringement, beginning before and continuing thereafter.
With respect to the first situation the infringer should obviously be held liable. To do otherwise would make the validation of the patent entirely meaningless. The infringer, having begun his infringing activities under the validation of the formerly invalid patent, would have no valid reason for complaint.
In the second situation the infringing acts are assumed to have taken place before the patent was validated, during the time that a patent was in existence but which patent was invalid and unenforceable. The defendant in such a case would have a good argument in his favor and it may he that he would not be held liable for infringement. There is some room for disagreement here and the contrary view has been expressed; it should be noted that the result suggested is inconsistent with the retroactive operation in the past of claims amended by limiting disclaimers and possibly a few older precedents also.
The third situation is a combination of the first two and if the results suggested here for the first two were also combined the solution would he that the patentee could not recover for the infringing acts occurring during the period that the patent was invalid, but that he could recover for the infringing acts occurring thereafter. This result would be in harmony with the results in some older decisions in analogous situations. It is possible, nevertheless, in the second and third situations just discussed, that a limited theory of intervening rights might be urged in favor of the defendant, analogous in some respects to what was done in cases of reissues under the old law.
There are a few other instances in which a patent might be invalid under the old statute and would be valid under the new statute. One example is section 256 of this title, relating to misjoinder and nonjoinder of inventors. The new statute states that the patent is not invalid when there has been such an error, under certain circumstances. Such a patent would have been held invalid in the past, it is believed, and this would be another instance of validation by the new law. This and other situations that can be thrown into the validation category could be resolved in a similar way, although considerations of intervening rights might not be pertinent in some.
The preceding examples are cases in which invalidity under the old statute and validity under the new is clear cut and involve little or no question of judgment. Many arguments will probably arise in cases in which validity under the old statute is a question of judgment which might vary with the particular individual deciding the case, and the same with validity under the new statute, and with those additional variables there is apt to be some confusion.
Consider now situations in which liability for infringement may be changed by the new law; that is, situations where the rights of the patentee might be enlarged or diminished, assuming a valid patent under either law. In cases in which a patentee might have greater rights under the new law than under the old, the situation might be treated in a manner similar to the validation situation as to the increased rights.
Liability for infringement might possibly be increased in the case of a contributory infringement situation under section 271. Assume that an act which did not create liability for contributory infringement before January 1, 1953, does so if occurring after this date. Here the liability of the infringer would be affected if the new law is applied, since he would be subject to a liability for infringement which did not exist under the old law. This situation could be treated by reasoning similar to that adopted before, the coming into effect of the new law on January 1 being analogous to the validating act, so to that extent the patent could be considered as validated. But the infringer again could urge section 5 in arguing that he should not be adversely affected, and here the adverse effect would be only on the acts committed before January 1, 1953, so that the same results would apply here. Thus the results could be similar, and the infringer protected for the period during which he was not liable for infringement under the old law.
Consider now a situation somewhat related to the above. Assume that the conduct of the patentee before January 1, 1953, was such that the court would hold that he was guilty of misuse, and would hence hold the patent unenforceable. Now assume that under the provisions of section 271 the same conduct would not constitute misuse. Here the liabilities of the infringer would be affected if the new law is applied, since he would be subject to liability for infringement, whereas under the old law--and here it is not the old statute, which introduces a complication,--the infringer would be excused from liability for infringement since the patent would be held unenforceable. This situation cannot be treated completely in the manner just mentioned. The coming into effect of the new law cannot be considered equivalent to an act validating a patent, although as to acts of infringement occurring after January 1, 1953, the analogy could be applied and the same results follow, since with respect to acts of infringement occurring before this date there was a valid patent in existence and its scope covered the infringing acts.
The result in this situation can be arrived at in another manner. Under the theory of unenforceability of a patent because of misuse, it has always been open for the patentee to correct his conduct, and thereafter be no longer subject to the penalty for misuse. Under the old law, when the patentee changed his conduct, he would have an enforceable patent and could at least recover for infringements occurring after his conduct has been remedied. The result would be the same where the statute has the effect of legitimatizing his conduct or purging him of his misuse. Whether under the old law a patentee who had reformed his conduct could recover for infringements occurring during the period of misuse does not appear to have been decided, although there is one case that may suggest this, but the result should be the same under the statute. In England, under a statute relating to this type of misuse, the courts have held that after the patentee has remedied his conduct, he might recover for infringements occurring during the period of misuse.
There is possibly one situation in the new law where it might be stated that liability for infringement is decreased, or put another way, that the rights of the patentee are curtailed. This relates to intervening rights, as provided in section 252 of this title. Protection of intervening rights as defined in the new statute may be broader than might be considered to have been the case under the old law. Assume that under the old law certain things would not be protected, certain persons would be held liable for infringement, whereas under the new law, due to the provision protecting intervening rights, there would be no liability for infringement. Speaking only of reissues granted before January 1, 1953, in this situation the rights of the patentees would be curtailed by application of the new law, and it has been stated that Congress cannot adversely affect the rights of a patentee, rights already granted. Applying this principle, the reissue patentee's rights could not be curtailed. But the application to a particular case would be difficult since the boundaries of the protection of intervening rights have not been adequately or accurately determined in the past. If somebody with an old reissue attempts to escape the protection of intervening rights as provided by the new statute, there might be a redetermination of what the old law may have been and there are enough conflicting old decisions on almost any point in reissues to give almost any result.
No attempt has been made to mention all the changes made by the new law in this connection. Most of them are of such a nature that problems in connection with application of the new law to prior patents will not be likely to arise, but there are other changes besides the ones mentioned where questions may arise. Most of the problems in these transitional cases will have to be settled individually from the special facts in the particular case and the particular sections and changes involved. Two sections of the new code [this title], 33 and 292, it should be noted, are criminal statutes. They do not involve any questions of patent law as such and the transitional effect of the changes made by these sections would presumably be determined by the same principles which would apply to changes made by the new Criminal Code (Title 18, U.S.C.A.).
The operation of the new law on pending suits has not been included in the above discussion. The general tenor of the early decisions is to the effect that the new law does not affect suits pending when it came into effect.
In the above discussion reference to section 4(e) which provides that nothing in the new Act "shall operate to nullify any judicial finding prior to the effective date of this Act on the validity of any patent by a court of competent jurisdiction," has been omitted. This section is of a type which has been used in prior acts which had the effect of validating certain patents. A provision practically identical in wording appears in the Boykin Act (Public Law 690, 79th Congress, 60 Stat. 940, sec. 15 [section 114 of former Title 35, U.S.C.A.]), and similar provisions have appeared in bills. In the Boykin Act the report of the Committee indicates that its purpose was merely to prevent the reopening of adjudicated cases. (In Senate Report 1502, 79th Congress, it is stated that the section "is intended to prevent the reopening of patent cases in which decrees have been rendered.") The words "judicial finding” may not mean findings in the sense of "findings of fact," but may refer to the judgment of the court, and in this respect then the purpose of this paragraph would be merely to prevent the reopening of prior adjudicated cases.
Omitting some possible qualifications and exceptions, the following summary may be stated:
1. With respect to new applications and patents granted thereon, the new law applies completely without exception.
2. With respect to the applications pending on January 1, 1953, (including reissue applications as to reissue matters) and patents granted on such applications, the new law applies, with only the exceptions that are specifically enumerated in the statute, and no other exceptions.
3. With respect to unexpired patents granted before January 1, 1953, including reissues granted before this date, the new law applies with the exceptions that are specifically enumerated, and with further possible exceptions, either general or limited to particular situations, determined from other considerations.
The new statute repealed and omitted a number of sections of the old patent law, and omitted several prior statutes from Title 35, but without repealing them.
The omitted and repealed sections are noted first.
R.S. 496 [section 19 of former Title 35, U.S.C.A.] relating to the disbursing officer of the Patent Office was repealed with a note in the Committee Report that it had been superseded in 1933 by an Executive Order transferring the function of disbursement to the Department of the Treasury.
R.S. 4899 [section 48 of former Title 35, U.S.C.A.] relating to an invention purchased from the inventor, or made with his knowledge and consent, prior to the grant of a patent, was repealed with a note in the Committee Report that it was "redundant and unnecessary." This implies that results similar to that expressed in the repealed section would follow for some other reason.
Section 7 of the Act of March 3, 1887, 29 Stat. 694 [section 43 of former Title 35, U.S.C.A.] relating to applications made special at the request of a Government department was repealed with a note in the Committee Report that it "has no apparent meaning."
The Act of March 3, 1921, 41 Stat. 1313 [sections 80-87 of former Title 35, U.S.C.A.] was repealed as obsolete; this was the Nolan Act providing for temporary extensions of times etc., after World War I.
The Act of May 31, 1928, 45 Stat. 1012 [sections 40a-40d of former Title 35] was repealed as executed and obsolete; this was an act providing for extensions of patents of veterans of World War I.
Section 5 of the Act of May 23, 1930, 46 Stat. 376 [section 32a of former Title 35, U.S.C.A.] was repealed as obsolete; this was a section of the plant patent act providing that a plant which had been introduced to the public prior to May 23,1930 could not be patented.
A number of acts which were included in old Title 35 were omitted from new Title 35 but were not repealed; these remain as independent enactments and one has been codified in another title of the U.S. Code. Following is a list of unrepealed acts not included in Title 35.
The Boykin Act, Public Law 690, 79th Congress, August 8, 1946, 60 Stat. 940, provided for temporary extensions of the time for filing patent applications, for taking action in the Patent Office, and other things. Sections 1 to 8, 10 to 12, 14 and 15 appeared as sections 101 to 108 and 110 to 114 of old Title 35 and were omitted from new Title 35 because of their temporary nature. (Some of these sections are printed as a note to 35 U.S.C.A. § 119 for convenience of reference.)
Public Law 220, 80th Congress, July 23, 1947, 61 Stat. 413, extended the limiting date of the Boykin Act. (This Act is printed as a note to 35 U.S.C.A. § 119.)
Public Law 380, 80th Congress, August 6, 1947, 61 Stat. 794, extended the Boykin Act to citizens of Italy, Bulgaria, Hungary and Rumania, provided for resumption of normal patent relations with these countries and also provided for granting of patents to citizens of Germany and Japan with certain restrictions. (This Act is printed as a note to 35 U.S.C.A. § 119.)
(Public Law 619, 83d Congress, August 23, 1954, 68 Stat. 764, extending the Boykin Act to nationals of Germany and Japan is also printed as a note to 35 U.S.C.A. § 119.)
Public Law 598, 81st Congress, June 30, 1950, 64 Stat. 316, amended July 1, 1952, 66 Stat. 321, provided for the extension of the terms of patents of veterans of World War II. It formerly appeared as sections 115 to 118a of former Title 35. (This Act is printed in the Appendix to this title as sections 115 to 118a of Repealed Title 35).
The Royalty Adjustment Act, Public Law 768, 77th Congress, October 31, 1942, 56 Stat. 1013, amended October 31, 1951, ch. 655, sec. 54, 65 Stat. 728, which formerly appeared as sections 89 to 96 of old Title 35, was omitted from new Title 35 for the stated reason that it expired by its own terms.
An Act passed August 16, 1950, ch. 710, 64 Stat. 448, providing for the cancellation of certain licenses granted to the Government by private owners of patents, which formerly appeared as section 118 of former Title 35, now appears as section 2371 of Appendix to Title 50, U.S.C.A.
* Reprinted with permission from Title 35, United States Code Annotated (1954 Ed.), Copyright © 1954 by West Publishing Company.
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