using or selling of any patented invention within the United States during the term of the patent without authority from the patent owner, and (2) contributory infringement--i.e. the supplying of a component of the patented subject matter with the knowledge that such component was specially made or adapted for use in infringement of such patent. Since the geographic territory embraced by a patent is coextensive with the borders of the government which granted it, the owner of a United States Patent is protected against the infringing acts of another only in the United States and its territories.

25/

Inasmuch

as the right to exclude is effective for a term of seventeen years from the date the patent is granted, an infringement must be committed during this term since the property rights of a patent commence with 26/ the grant and terminate with its expiration.

The first test of infringement is to determine whether any claim

of the patent literally reads on the accused device, process, or substance in question. If the accused device falls clearly within the language of any claim when read in light of the specification and drawings, infringement is made out. However, even if the accused

251

Dowagiac Manufacturing Company v. Minnesota Plow Company, 235 U.S. 641, 650 (1915).

26/

Scott Paper Company v. Marcalus Manufacturing Co., Inc., 326 U.S. 249, 256 (1945).

device does not fall within the literal reading of the claims,

infringement may still exist if the accused device is found to be an

In accordance with common law principles, the first Patent Act of 1790 made provision for the recovery of damages from infringers

who committed a wrong, called a tort in legal parlance, by infringing

upon the patent granted by the Government.

The current patent law

provides that a patentee shall have a remedy by civil action for in

28/

29/

fringement of his patent.

Damages

may be recovered by the patent

271
The judicially evolved "doctrine of equivalents" has been defined
by the United States Supreme Court in the case of Graver Tank and
Manufacturing Company, Inc. v. Linde Air Products Company, 339 U.S.
605, 608 (1950) as follows:

...if two devices do the same work in substantially the same
way, and accomplish substantially the same result, they are
the same, even though they differ in name, form, or shape.

The doctrine is based on the need and desire to prevent an unscrupulous copier from making unimportant and insubstantial changes and substitutions in the patented device which, though adding nothing, would be enough to take the copied matter outside the claims. It is the genius of the inventor that the patent system seeks to reward and protect, and not the skill of the lexicographer.

28/

29/

35 U.S.C. $281.

35 U.S.C. $284 provides, in part: "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court."

owner for any infringement committed within the life of the patent.

30/

A court has the discretionary power to grant an injunction in accordance with the principles of equity to prevent violation of any property right 31/ secured by a patent. In a patent case, the issuance of an injunction usually has the effect of prohibiting a party from committing acts which

would infringe the patent.

30/

The extent of recovery is limited by 35 U.S.C. $286, which provides, in part: "Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."

31/

35 U.S.C. $283. "Injunctions. The several courts having jurisdiction of cases under this title may grant in junctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable."

Prior to World War II, few problems surrounded the allocation of patent rights in the inventions resulting from Government research and development (hereinafter "R&D") probably for the reason that most of the R&D was performed by government employees. Where R&D was contracted for, no established uniform patent policy was used by the government agencies. Some agencies, notably the Departments of War and Navy, developed a policy of acquiring a royalty-free license to resulting inventions for governmental purposes, leaving the contractor with title, or what might otherwise be described as exclusive commercial rights. Other agencies, primarily those more oriented toward conducting research. of interest to the public sector of our economy, such as the Departments of Agriculture and Interior, acquired title to resulting inventions, while some agencies simply ignored the existence of the issue, which had the effect of permitting the contractor to retain all rights to inventions with the Government obtaining a license or no rights at all.

32/

During World War II, as the Government's R&D programs grew, Congress began to react to this issue. In 1943, Senator Kilgore of West Virginia introduced a Bill for a Science and Technical Mobilization Act, which was designed to prevent the patent system from working against the

32/

Ordnance Engineering v. United States, 68 Ct. C1. 301 (1929); Hobbs v. United States, 376 F.2d 488 (5 Cir. 1967); 32 Op. Att'y Gen. 556 and 563 (1924).

public interest, especially by fostering industrial concentration.

This

Bill proposed to stimulate technological innovation, the commercialization of new products and processes, and small business entry into markets, in part by compelling the disclosure and nondiscriminatory dissemination of information developed in corporate laboratories.

A new Federal Office was

to be granted ownership and be empowered with the exclusive right to use or license "any invention, discovery, patent, or patent right" which had resulted from federally supported research with "any money, credit, physical facilities, or personnel" since the declaration of national emergency in 33/

1941.

This portion of Senator Kilgore's Bill provoked considerable opposition from industry, trade associations, scientists, and the military 341

departments.

By war's end, the title policy and the license policy advocates

became entrenched.

Each side marshaled a major study to bolster its position. On the side supporting the license policy, there was the

331

S. 702, 78th Cong., 1st Sess., §7 (1943); See also Collins et al., Patent Policy, Technological Innovation, and Government Contracts: A Selective Critique; California Institute of Technology, Division of the Humanities and Social Sciences, (June 1974).

341

Id.

For typical expressions of opposition, Hearings on Technological Mobilization Before the Senate Subcomm. of the Comm. on Military Affairs, 77th Cong., 2nd Sess. at 240-41, 271 (1942).