ADDRESS

OF

FREDERICK P. FISH,

OF MASSACHUSETTS,

AS CHAIRMAN OF THE SECTION OF PATENT, TRADE MARK AND COPYRIGHT LAW.

In opening this session, I propose to confine myself to certain specific suggestions as to lines upon which it may be well for us to work.

It is a primary duty of this Section of the American Bar Association to consider at its meetings the laws relating to patents, trade marks and copyrights, to call attention to defects. in those laws and in the administration of them and to suggest and discuss improvements in those laws. In dealing with such questions we must, of course, avoid all personal eccentricities and consider only the general interests of the people of the United States which are so intimately involved in the patent, trade mark and copyright systems of the country. There is no doubt that there are constantly occurring to each one of us many points in which, it seems to us, the law is defective and where a change might be introduced to advantage. We should always bear in mind, however, that, taken by and large, property in patents, trade marks and copyrights. has been protected and respected at substantially its real value from the time of the earliest legislation upon the subject, while at the same time the rights of the public have been fully recognized and that we should be very certain that a change will be of substantial advantage, not to individual interests but to the community as a whole, before we commit ourselves to advocating even slight modifications of a system that has, on the whole, worked well. There are however, certain matters which as it seems to me, we should surely consider, and to those I desire to draw your attention.

A COURT OF PATENT APPEALS.

There is one matter of transcendent importance at the present time which undoubtedly requires the attention of all who are interested in the patent system of the United States. I refer to the establishment of a single Court of Patent Appeals which shall pass finally upon all patent causes throughout the United States. Such a court has always been almost a necessity to the patent system. Prior to the Act of 1891 establishing the Courts of Appeal, all patent causes could be carried to the Supreme Court of the United States and although for many years the delay involved in presenting a case on appeal to that court was most unfortunate, particularly in view of the fact that patents are granted for a limited term, the change in the law by which, outside of the District Columbia, nine independent courts of appeal were substituted for the Supreme Court, has resulted disastrously in patent matters, not only to patentees but to the public generally. The serious difficulty is not that different Courts of Appeal differ as to the scope and validity of particular patents, although there have been, in special cases, as we all know, most unfortunate divergences of opinion between the different courts, and now that the Supreme Court has determined in the case of Mast, Foos & Company vs. Stover Manufacturing Company, that "comity is not a rule of law but one of practice, convenience and expediency" and something, but little, more than "mere courtesy " having no "imperative obligation," such divergence of views as to particular patents is more likely to occur in the future than in the past. In fact, it is not at all impossible that the time may come when we shall be face to face with the intolerable situation of a number of patents that are valid and controlling as to a certain construction in one part of the United States and not in another and this evil will be mitigated to a slight extent only by the circumstance that the Supreme Court may, in its discretion, review the decisions of the lower courts by a certiorari proceeding.

The more serious defect of the present system is however, that each of the nine Circuit Courts of Appeal is sure to apply the recognized rules of law and of interpretation, in the various patent cases that come before it, from the point of view of its own special attitude on the subjects of inventions and infringement and of liberal or strict construction. A patent submitted to the court in one circuit will be sustained and the defendant held to infringe because the Court of Appeals of that circuit is inclined to resolve the doubt in any case in which the invention has been of substantial utility, in favor of the patent, while the same patent, if subjected to the ordeal of litigation in another circuit, would be held invalid or of narrow scope because the court in the circuit last referred to is inclined to deal strictly or even harshly with patent property. In both cases the courts will apply the same rules of law and in both cases their opinions, although diametrically opposite in result, will be based upon the same authorities and the same principles. But in applying those authorities and principles, the real determining influence will be the feeling of the court as to the spirit which should prevail, and as we all know, conclusions on their face sound but absolutely at variance, may easily be reached in many cases by tribunals equally competent and equally anxious to do exact justice. Even therefore if there are not many cases in which different Courts of Appeal differ as to the same patent, the spirit in which the nine courts will act in patent cases generally will be different in the different circuits, so that we shall have practically an absolute want of uniformity in the administration of the patent law, with results of the most unfortunate character. Only those especially acquainted with the facts will be able to discover, in comparing the decisions in the different circuits, that they are based upon radically different conceptions of the point of view from which courts should approach questions relating to the validity and scope of patents. But vital differences will exist, and a branch of the law which should be certain and definite and uniform in its application

throughout the whole country, will become absolutely uncertain and in effect modified in each of the nine circuits, in accordance with the special underlying views developed and applied in each circuit. The least of the misfortunes to which the patent system will surely be exposed, if the present condition of things continues, is that in no two circuits will a patentee's chances of success or defeat be the same, and the accident of the forum in which a case is tried will be a cirWhen we consider

cumstance largely controlling its outcome. in addition that the logical result of this situation will be that. in time certain patents may be capable of enforcement in one circuit and not in another, or, to put the matter differently, that a man who would be held as an infringer in one circuit might be quite safe in another, we get to a condition of things which cannot be endured.

The only relief to the situation that seems possible is the establishment of a single appellate court which will dispose finally of all patent cases in the country. It seems to me an imperative duty on the part of this Section of the American. Bar Association to deal firmly but conservatively with the problem of securing such a Court of Patent Appeals. In all probability it will have to be a new and independent tribunal inasmuch as it is not probable that Congress can ever be induced to restore jurisdiction in patent cases to the Supreme Court.

A sub-committee of this Section has given much thought to this subject and its Chairman will present to you in his paper a plan that commends itself as feasible to many who have considered it. I trust that you will all give careful attention to this paper and that something may be developed from the plan suggested which will prove to be a solution of the manifest difficulties of the present situation.

I myself have heard of no objection to an independent patent Court of Appeals except the question, asked sometimes without reflection, why there should be a special appellate court for patents if other branches of litigation can be satisfactorily

dealt with by the nine individual Courts of Appeal. The answer to this question is so obvious that I am surprised that it should ever be asked. The reason why there should be one Court of Appeals in patent matters is because each patent covers the whole United States and a suit on it is in reality one between the patentee and all the people of the United States, the issue being the right of the patentee to exclude the public for a time from the use, without his consent, of the thing patented or alleged to be patented. When brought into litigation, the patent should be dealt with once for all by an appellate court whose conclusions would be binding upon the courts and people of the entire United States. It is only in this way that the patentee and the public generally can become assured of the extent and limitation of their respective rights. Moreover, all patents should be dealt with not only in accordance with the same rules of law, but with the same spirit and from the same point of view, and this is possible only when as to all patent questions there is a single court of last resort. If such a court were quasi permanent in character, as it should be, it would soon develop a definiteness of view and a uniformity of tradition which would give to the administration of the patent laws a completeness and certainty which, to the great disadvantage of the community, does not characterize their present administration.

The same reasons, although not to the same degree, exist for a single appellate court in trade mark and copyright cases, and I should assume that such cases, as well as those based upon letters patent, would come before any single Court of Appeals that might be established for the final determination. of patent cases.

PATENT BILL H. R. 8073.

I trust that the members of this Section will give careful attention to the bill which I understand to have been prepared at the suggestion or with the approval of the Commissioner of Patents, and entitled: "A bill to provide for lessening the