the terms of the treaty should be disposed of oy scrapping. The contracting parites also undertook not to dispose of, by gift, sale or any mode of transfer, any vessel of war in such a manner that such vessel might become a vessel of war in the navy of any foreign power.

The treaty between the United States of America and other Powers for the limitation and reduction of naval armament, signed at London on Apr. 22, 1930 (46 Stat. 2858), provided for the disposal of vessels of war in the following ways: (a) by scrapping. (sinking or breaking up); (b) by converting the vessel to a hulk; (c) by converting the vessel to target use exclusively; (d) by retaining the vessel exclusively for experimental purposes; and (e) by retaining the vessel exclusively for training purposes.

Applicability of statute.- Where a board of survey recommended that a steel barge, reported to be in an unserviceable condition and unfit for use, be disposed of by consigning it to the navy yard scrap heap and expended from the books without replacement, held, that if the barge covered by the survey is, in fact, a naval vessel carried in the Navy Register as such, it comes within the purview of the act of Mar. 3, 1883, ch. 141, 22 Stat. 599600. (File YC684/L11-3 (20) (400525) S, July 1, 1940, C. M. 0. 2-1940, p. 249.)

Effect of failure to comply with statutory requirements.- "The failure of the Government to comply with statutory requirements relative to public contracts enacted for the sole protection of the Government does not render such contracts void, but only voidable at the Government's option, and only the Government can take advantage of such failure. *** It is clear that the requirements of the act of March 31, 1883, that vessels stricken from the Navy Register shall be appraised and that such vessel shall not be sold at less than the appraised value unless otherwise directed by the President are for the protection of the United States, and not for the protection of purchasers of the vessels." (38 Op. Atty. Gen. 328, 331, Oct. 11, 1935.)

Mandamus will not lie, at the instance of one who in response to advertisement has made the highest bid for a vessel, to compel the Secretary of the Navy to deliver the vessel. "The United States is the owner in possession of the vessel. It cannot be interfered with behind its back and, as it cannot be made a party, this suit must fail." (United States ex rel. Goldberg v. Daniels, 231 U. S. 218, 221-222, Dec. 1, 1913.)

Authority of the President to direct departure from the statute.- "The Act of 1883, § 5, provides for an appraisal and an advertisement for three months setting forth the appraised value and that the vessel will be sold to the offerer of the highest price above the appraised value, &c. The section concludes 'But no vessel of the Navy shall hereafter be sold in any other manner herein provided, or for less than such appraised value, unless the President of the United States shall otherwise direct in writing.' The power of the President to direct a departure from the statute is not confined to a sale for less than the appraised value but extends to the manner of the sale. word 'unless' qualifies both the requirements of the concluding clause." (Levinson v. United States, 258 U.S. 198, 200-201, Mar. 13, 1922.)

The

"So far as concerns this statute, in my opinion it leaves the President as Commander in Chief of the Navy free to make such disposition of naval vessels as he finds necessary in the public

required by law and prosecute his application for patent as any other inventor." (37 Op. Atty. Gen. 180, 182-183, July 11, 1933.)

"In filing an application for patent under the provisions of the Act of March 3, 1883, the inventor recognizes the right of the Government and its agents to use the invention without the payment to him of any royalty." (37 Op. Atty. Gen., supra, at 183.)

"The Act authorizes the granting of a patent without payment of any fee, but also mentions the application, and thus recognizes the fact that patents are issued only upon applications previously made, and fees now $30 plus $1 for each claim in excess of twenty) are chargeable both on the filing of the application and on the issuing of the patent. (U.S. C., Title 35, Secs. 33, 36, 78.) There has been no suggestion of doubt that the Act waives both fees if the inventor is in the Government service at the time of the filing of the application and also at the time of the issuance of the patent. The uncertainty in this connection has arisen in cases where the inventor is in the service of the Government when one fee is payable but is not in such service when the other fee is payable.

"The statute pror ides, as a condition of the waiver of fees, that the applicant shall state in his application that the Government may use the invention. 'if patented', thus also recognizing the obvious fact that there may be applications in cases where no patent will be granted because the invention is not patentable; and, furthermore, it makes the application or non-application of the statute dependent upon the insertion of the required stipulation for Government use in the application for the patent (assuming, of course, that there is also the necessary certification by the head of the department or bureau that the invention is used or liable to be used in the public interest).

"Therefore, while the statute, in terms, authorizes the granting of patents, it really contemplates applications for patents which may or may not result in the actual granting of a patent, and must contemplate the meeting of all requirements at the time the application is made, not only with respect to the applicant's agreement and the certification by the head of the department or independent bureau, but also with respect to the status of the applicant, determinative of his right to proceed under the stat

ute.

"In the light of the foregoing, and with such additional observations as appear pertinent, I answer the questions submitted by you as follows:

(1) In order that an application for a patent may be received and a patent granted, without payment of fees, the invention covered by the application must have been made by an 'officer, enlisted man, or employee of the Government, except officers and employees of the Patent Office.' It would make subterfuge possible and violate the spirit of the Act to accord the statutory benefits with respect to inventions in which Government employees have acquired rights merely by contract with inventors not in the service of the United States.

"(2) Each applicant for a patent must be in the service of the United States and within one of the classes prescribed by the statute at the time the application for a patent is filed, or the right to file an application accrues in cases such as hereinafter indicated.

(3) The statutory waiver of fees is not affected by the fact that the employee, after filing his application in due compliance with the statute, dies or leaves the service of the Government before the patent is actually granted. The statute is to be understood as waiving the fees upon applications by persons whose eligibility and consequent rights

and burdens are fixed as of the time of the application. The legislation being purposed to further the acquisition by the Government of rights in desirable inventions made by employees, it would be an anomaly if an employee might accept the Government's offer, file his application without payment of fee, perhaps permit it to be prosecuted at Government expense (a common practice and a necessary one, if any patent is to be obtained, in cases where the employee perceives no pecuniary benefit to be had through commercial exploitation), and then defeat both the ful- · fillment of his contractual obligation and the accomplishment of the statutory purpose by leaving the service before the patent is issued.

"The view has been advanced that the employee is bound by his stipulation, unless released by the Government, but must pay the final fee before the patent can issue. It would, however, be unduly harsh and conflict with the ordinary presumptions in contract matters to hold the employee bound by his undertaking and, yet, deny him the full consideration for which the stipulation was made, particularly if his leaving the Government service came about through dismissal. Also, of course, the former employee (or his personal representative, if deceased) would not pay the final fee, and would have no interest in doing so, in cases such as those mentioned by the Secretary of War, in which the invention has no commercial value and the Government alone is interested.

"(4) As I have indicated, the eligibility of an applicant for a patent to proceed without payment of fees is ordinarily to be determined as of the time of the application. However, an application for a patent covering a complex invention is a highly technical document, requiring time and care in its preparation. It sometimes happens that an employee just about to leave the service will disclose an invention which he has made during his employment, perhaps wholly or partly during his normal hours of duty, and as a result of opportunities afforded by his employment--with resultant equities in favor of the Government recognized and admitted by the employee, although the circumstances and provable facts are not quite sufficient to bring the case within the rule that the invention is the sole property of the United States--and the employee consents that the United States may have the rights provided by the Act of March 3, 1883, as amended. If the matter is a simple one and an application can be filed at once there can be no question--but it is unthinkable that the public interest, and the purpose of the legislation, must be defeated because of inability to prepare and file an application for a patent before the employee leaves the service.

"In such a case it may fairly be said that everything of substance contemplated by the statute has been accomplished--the employee has made and disclosed the invention, has consented to its use by the United States, and the head of the department or bureau concerned has determined that the invention is 'used or liable to be used in the public interest. His agreement that the United States may use the invention is an authorized contractual undertaking contemplated by the Act of March 3, 1883, as amended-for a meeting of the minds necessarily precedes the filing of the application under the statute--and the consideration there for is the statutory permission to file the application and to cbtain a patent, if the invention is found patentable, without payment of fees.

"I have in mind, of course, an actual, provable agreement that the United States may use the invention; but if both the employee and the United States, through its authorized representatives, concede the existence of the agreement and no other parties are concerned, the agreement may ordinarily be taken es established. Nevertheless, the agreement ought to be reduced to writing. It ought to provide clearly

that the invention (described as accurately as the exigencies permit) may be manufactured and used by or for the Government for governmental purposes, if patented, without payment of royalty; that the head of the Department or bureau has determined and has certified, or will certify, that the invention is used or liable to be used in the public interest; and that an application for a patent is to be prepared and filed under the Act of March 3, 1883, as amended by the Act of April 30, 1928, with such other detail as the circumstances warrant.

"As I have hereinbefore indicated, the statute necessarily contemplates such an agreement, such a meeting of the minds, for it cannot be supposed that the head of the Department is to make the determination and certification blindly--an idle thing unless the employee is willing to enter into the arrangement--and, on the other hand, it cannot be supposed that the employee is to file an application containing an unqualified stipulation for use of the invention by the Government, if patented, without some understanding that the required certification will be made and that he will receive the consideration which the statute provides.

"We have, then, an authorized agreement by the employee that the United States may use his invention, if patented, and a promise by the United States, which is the consideration for his agreement, that he may file and prosecute his application for a patent without payment of fees. The statute does not provide that the validity of the undertaking or its due performance shall depend upon the retention of the employee in the service until the application can be prepared and filed--contrary to the public interest in some cases and at great inconvenience to the employee in others. I must conclude that the individual who has made such an agreement remains subject to removal and, likewise, free to tender his resignation, or to leave at the end of his enlistment period, etc., yet I cannot conclude that the discontinuance of his official connection, with the effect of removing him from the status of an 'officer, enlisted man, or employee' before the application can be prepared, must have the effect of vitiating his contract concerning the ve ion.

"It is, therefore, my opinion cha an agreement such as I have indicated may be carried out and the inventor permitted to file and prosecute his application without payment of fees notwithstanding that his services with the Government may be discontinued prior to the actual filing of the application.

to its use by the Government, either he has not offered the invention to the Government, and thus has rejected the statute (expressly or impliedly), or he has offered the invention and his offer has been rejected. In either case the matter may be regarded as definitely closed, and I perceive no reason why it should thereafter be reopened when the inventor has, perhaps long since, ceased to be of the class of persons to whom the statute is applicable.

"I have considered a suggestion that it might come within the spirit of the statute to permit the filing of an application under the Act of March 3, 1883, as amended, by a former employee upon the mere showing and certification that his invention, used or liable to be used in the public interest, had been made during his prior service with the United States. If it be conceded that this would come within the spirit of the law, that, however, is not in itself sufficient. We may look to the apparent purpose in order to explain and qualify words actually used, but we cannot go beyond this and add to the statute words which are not therein contained. The statute refers clearly to officers, enlisted men and employees and, while it appears reasonable to fix the status of an individual as of a time during his service when the statute was invoked and the procedural machinery set in motion, I think it would be going beyond justifiable limits to construe the words 'officer, enlisted man, employee' as including all former officers, enlisted men and employees. If an employee has made an invention which belongs to him as his own property under the rules laid down by the courts, and has left the service without agreeing

"(5) With respect to the questions concerning the eligibility under the statute of particular employees and classes of employees, neither the letter nor the spirit of the law warrants any distinction based upon permanent or temporary status, or duration of service, so long as the individual is actually in the service of the United States when the invention is made and the necessary steps are taken to insure the application of the status. Eligibility is dependent upon service as an existing fact, and not upon past service or possible future service." (38 Op. Atty. Gen. 402, 408-413, Jan. 14, 1936.)

Rights in inventions made by Government personnel. "The government has no more power to appropriate a man's property invested in a patent than it has to take his property invested in real estate; nor does the mere fact that an inventor is at the time of his invention in the employ of the government transfer to it any title to, or interest in it. An employé, performing all the duties assigned to him in his department of service, may exercise his inventive faculties in any direction he chooses, with the assurance that whatever invention he may thus conceive and perfect is his individual property. There is no difference between the government and any other employer in this respect. But this general rule is subject to these limitations. If one is employed to devise or perfect an instrument, or a means for accomplishing a prescribed result, he cannot, after successfully accomplishing the work for which he was employed, plead title thereto as against his employer. That which he has been employed and paid to accomplish becomes, when accomplished, the property of his employer. Whatever rights as an individual he may have had in and to his inventive powers, and that which they are able to accomplish, he has sold in advance to his employer. So, also, when one is in the employ of another in a certain line of work, and devises and improved method or instrument for doing that work, and uses the property of his employer and the services of other employés to develop and put in practicable form his invention, and explicitly assents to the use by his employer of such invention, a jury, or a court trying the facts, is warranted in finding that he has so far recognized the obligations of service flowing from his employment and the benefits resulting from his use of the property, and the assistance of the coemployés, of his employer, as to have given to such employer an irrevocable license to use such invention. 19 (Solomons

v. United States, 137 U.S. 342, 346, Dec. 8, 1890.
See also: Gill v. United States, 160 U.S. 426, Jan.
6, 1896; Standard Parts Company v. Peck, 264 U.S. 52,
Feb. 18, 1924; United States v. Dublier Condenser
Corp., 289 U.S. 178, Apr. 10, 1933; Mississippi Glass
Co. v. Franzen, 143 F. 501, Feb. 2, 1906; Dowse v.
Federal Rubber Co., 254 F. 308, Dec. 6, 1918; Houghton
United States, 23 F.2d 386, Jan. 10, 1928; Moffett
Fiske, 51 F.2d 868, June 10, 1931, cert. den., 284
U.S. 662, Oct. 26, 1931; Shearer v. United States, 87
Ct. Cls. 40, Mar. 7, 1938; Gates v. United States, 87
Ct. Cls. 358, May 31, 1938; 19 Op. Atty. Gen. 407, Oct.
4, 1889; 20 Op. Atty. Gen. 329, Mar. 8, 1892; 38 Op.
Atty. Gen. 425, 426, Mar. 9, 1936.)

v.

V.

Effect of assignment to the Government.- When an invention is developed by a Government employee, specifically employed for the purpose, and letters patent thereon are obtained by him and are subsequently assigned by him to the Government, such assignment constitutes a dedication of the invention to the general public, and the Government may treat the invention as its exclusive property and exclude the public from use of the same. No authority exists for private persons to use inventions covered by

1884, May 13. Oath of office.7

Government-owned patents in the absence of a license. (38 Op. Atty. Gen. 425, Mar. 9, 1936.)

"An ordinary assignment of a patent to the United States pursuant to a contract of purchase by the United States could not reasonably be construed as intended to effect a dedication to the public; and such an assignment is neither necessary to nor the usual means of effecting such a dedication.". (39 Op. Atty. Gen. 164, 165, May 10, 1938.)

EDITORIAL NOTES

This section, except the repeal provision thereof, and the form of oath prescribed by sec. 1757, R.S., are embodied in the U.S. Code as sec. 16 of title 5.

Sec. 1756, R. S., which was repealed by this section, read as follows:

"Sec. 1756. Every person elected or appointed to any office of honor or profit, either in the civil, military, or naval service, excepting the President and the persons embraced by the section following, shall, before entering upon the duties of such office, and before being entitled to any part of the salary or other emoluments thereof, take and subscribe the following oath: 'I, A B, do solemnly swear (or affirm) that I have never voluntarily borne arms against the United States since I have been a citizen thereof; that I have voluntarily given no aid, countenance, counsel, or encouragement to persons engaged in armed hostility thereto; that I have neither sought, nor accepted, nor attempted to exercise the functions of any office whatever, under any authority, or pretended authority, in hostility to the United States; that I have not yielded a voluntary support to any pretended government, authority, power, or constitution within the United States, hostile or inimical thereto. And I do further swear (or affirm) that, to the best of my knowledge and ability, I will support and defend the Constitution of the United States against all enemies, foreign and domestic; that I will bear true faith and allegiance to the same; that I take this obligation freely, without any mental reservation or purpose of evasion, and that I will well and faithfully discharge the duties of the office on which I am about to enter, so help me God.'"

Sec. 1756 R. S., was derived from an act of July 2, 1862, ch. 128, 12 Stat. 502-503. The act of July 2, 1862, supra, was considered in the following decisions and opinions: Ex parte Garland, 4 Wall. 333, Dec. Term, 1868; United States v. Flanders, 112 U.S. 88, Nov. 3, 1884; 12 Op. Atty. Gen. 521, Nov. 7, 1868; and 13 Op. Atty. Gen. 390, Mar. 9, 1871.

thereafter the oath to be taken by any person elected or appointed to any office of honor or profit, either in the civil, military, or naval service, except the President of the United States, shall be as prescribed in section 1757, Revised Statutes;` and it is further declared that this 'shall not affect the oaths prescribed by existing statutes in relation to the performance of duties in special or particular subordinate offices and employments.'" (18 Op. Atty. Gen. 181, 184, May 21, 1885.)

Sec. 1757, R.S., and the act of May 13, 1884, ch. 46, sec. 2, 23 Stat. 22, which require generally that an officer shall take the oath of office prescribed 'before entering upon the duties of his office,' are directory only, and a deputy clerk of the United States court who accepted an office on the same day he was appointed thereto, and who subsequently took the oath of office, is entitled to compensation for that day. (4 Comp. Dec. 496, Mar. 9, 1898. Compare: 6 Comp. Dec. 41, July 17, 1899; 19 Comp. Dec. 632, Apr. 4, 1913.)

For the reasons stated in the decision in 4 Comp. Dec., 496, and many later decisions of this office, the taking of an oath of office is not a condition precedent to the vesting of title to an office, but as a rule acceptance of an office and entering on duty is sufficient. Unless an appointment is conditioned that it shall not take effect until date of oath the requirement in the appointment that an oath be taken before entering on duty, which is nothing more than a repetition of the statute, is directory only and does not prevent payment of salary from date of acceptance and entry on duty. (24 Comp. Dec. 130, 131, Aug. 21, 1917. See also: 24 Comp. Dec. 547, 548-549, Mar. 26, 1918; 4 Comp. Gen. 845-846, Apr. 11, 1925; 21 Comp. Gen. 817, 818-819, Feb. 26, 1942.)

"

"Section 1757, Revised Statutes, and the act of May 13, 1884, 23 Stat. 22, require an oath of office to be executed by 'any person elected or appointed to any office of honor or profit.' Every officer of the Government is required to take the oath as prescribed by section 1757, Revised Statutes, if by law his appointment is vested in the head of a department." (10 Comp. Ger. 544, 545, June 12, 1931, citing 4 Comp. Dec. 92, 93, Aug. 27, 1897.)

"Section 1757, Revised Statutes, and section 2 of the act of May 13, 1884, 23 Stat. 22, require an oath of office to be executed by any person elected or appointed to any office of honor or profit.' This requirement applies only to officers of the United States in the constitutional sense. That is.