OTTO B. ROEPKE. Otto B. Roepke was born in Minneapolis, Minn., on Jan. 3, 1884. He attended the public schools and high school of that city, and then entered upon an engineering course at the University of Minnesota, graduating with the degree of Electrical Engineer in June 1906. After several months in the field on experimental lightning protection for transmission lines he entered the Patent Office as a fourth assistant examiner on Dec. 1, 1906. His initial service was in Div. 15 and then served successively in the Classification division, Division 42 and 37, and the Interference division. He was promoted to Principal Examiner on Sept. 1, 1921, and shortly thereafter organized his present Division, No. 48, to take over a part of the electrical work of the office. He is a graduate in law and a member of the Supreme Court and Court of Appeals of the District of Columbia. CHARLES O. DURAS. Charles O. Duras was born in Crete, Nebraska, educated in the Nebraska public schools and the University of Nebraska, the National University Law School, and George Washington University of Washington, D. C. He was appointed an assistant Examiner in the Patent Office on June 27, 1902, and was made Prncipal Examiner in November, 1921, serving in Division 24 substantially the entire period. THE COURTS ON PATENTS AS CONTRACTS By EDWARD THOMAS Member Appellate Federal Bars of In building up a digest to serve as a desk compendium of patent law the writer has noted the attention given by the courts to patents as contracts or grants. This view of patents seems to furnish a simple explanation for many of the rulings of the courts to which some attorneys have taken exception. From his digest comprising some fifteen thousand citations and excerpts, the writer has found it possible to select a few excerpts which are so quotable as to need no explanation and yet which seem to adequately state this basis of patent law. Believing this group of thirty-odd excerpts may prove suggestive to examiners and attorneys they are set forth below without comment other than to quote what was said by others and quoted with approval by Commissioner Doolittle in Chambers and Mendham v. Duncan, Wilson and Lauder, 10 O. G. 787; 1876 C. D. 233: "It is impossible that an executive officer should regard that as an objection to the grant of a patent which the courts of law are bound to overrule as unavailable The United States Courts are the authoritative expositors of the patent law, and it is, therefore, the manifest duty of the Commissioner of Patents to refuse a patent which he is clearly convinced the courts would declare invalid if granted." * What The Courts Have Said. "A patent is that which brings out from the realm of mind something which never existed before and gives it to the country." Rubber Tire Wheel Co. v. Milwaukee Rubber Works Co. 142 Fed. at 537. "An American patent is a written contract between an inventor and the government. This contract consists of mutual, interrelated considerations moving from each party to the other for such contract. The consideration given on the part of the inventor to the government is the disclosure of his invention in such plain and full terms that any one skilled in the art to which it appertains may practice it. The consideration on the part of the government to the patentee for such disclosure is a monopoly for seventeen years of the invention disclosed to the extent of the claims allowed in the patent. The right to a patent is statutory." Fried. Krupp AktienGesellschaft v. Midvale Steel Co. 191 Fed. at 594. * * A patent ** arises out of an offer of the United States to warrant to an inventor, in consideration of his making, reducing to practice, and giving to the public a new and valuable invention forever after, the exclusive right to use and vend it for a few years, this offer must be followed by an acceptance by the inventor, not by words, but by the actual making, publishing, and reducing to beneficial use of such an invention and by proof thereof to the satisfaction of the United States before the patent can issue; ** the patent, when issued, is the written evidence that such proof has been made to the satisfaction of the United States, and also of a contract of the United States to the effect that during the term of the patent it will secure to the patentee the exclusive right to vend and use the machine, device, or combination described and claimed in his patent." Minneapolis, St. Paul and S. S. M. Ry. Co. v. Barnett and Rec. Co., 257 F. at 313. "A patent is granted by the government in consideration of an exchange for the information or disclosure afforded by the patentee of details of a new and therefore secret improvement in the art, and this disclosure, or information is embodied in the specifications, the filing of which is a necessary condition precedent to the grant of the patent. The consideration for the grant is a complete disclosure by the inventor of his invention, so that when the statutory right to exclude others from the use of that invention has expired, the public generally may exercise its natural rights to make, use, and sell anything of which it has sufficient knowledge, provided, of course, that this natural right is not temporarily restrained by some other existing patent or permanently restrained for some other legal reason." Waterbury Buckle Co. v. G. E. Prentice Mfg. Co., 286 Fed. at 360. "The settled purpose of the United States has ever been, and continues to be, to confer on the authors of useful inventions an exclusive right in their inventions for * the time mentioned in their patent. It is the reward stipulated for the advantages derived by the public for the exertions of the individual, and is intended as a stimulus to those exertions. The law ought to be construed * to execute the contract fairly on the part of the United States, where the full benefit has been actually received; if this can be done with out transcending the intention of the statute, or countenancing acts which are fraudulent or may prove mischievous. The public yields nothing which it has not agreed to yield; it receives all which it has contracted to receive. The full benefit of the discovery, after its enjoyment by the discoverer for fourteen years, is preserved; and for his exclusive enjoyment of it during that time the public faith is pledged. That sense of justice and of right which all feel, pleads strongly against depriving the inventor of the compensation thus solemnly promised, because he has committed an inadvertent or innocent mistake." Grant v. Raymond, 6 Pet. at 241. "The inventor is rewarded, not for making the discovery, but for disclosing his secret to the public. The patent, therefore, is in the nature of a contract. The disclosure of his secret by the inventor is the consideration for the grant of a monopoly by the Government." Rosenthal v. Goldstein, 183 N. Y. S. at 583. "The suffciency of the disclosure and the novelty and utility of the result are the sufficient consideration for the grant." Hemolin Co. v. Harway Dyewood and Extract Mfg. Co., 138 Fed. at 55. "The patent for an invention conveys nothing which the Government owns or its predecessors ever owned. The invention is the product of the inventor's brain, and if made known would be subject to the use of any one, if that use were not secured to him. Such security is afforded by the Act of Congress when his priority of invention is established before the officers of the Patent Office, and the patent is issued. The patent is the evidence of his exclusive right to the use of the invention; it therefore may be said to create a property interest in that invention. Until the patent is issued there is no property right in it, that is, no such right as the inventor can enforce. Until then there is no power over its use, which is one of the elements of a right of property in anything capable of ownership." Marsh v. Nichols, Shepard and Co., 128 U. S. at 611. "The right of property which a patentee has in his invention, and his right to its exclusive use, is derived altogether from the statutory provisions; and this court has always held that an inventor has no right of property in his invention, upon which he can maintain a suit, unless he obtain a patent for it, according to Acts of Congress; and that his rights are to be regulated and measured by these laws, and cannot go beyond them." Brown v. Duchesne, 19. How. at 195. "An inventor** has no right to his invention at common law. He has no right of property in it originally. The right which he derives is the creature of statute and of grant." Rein v. Clayton, 37 Fed. at 357 (quoting Judge Shepley). "The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, ** But the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute in the manner which the law ** requires. But the thing assigned ** is the monopoly which the grant confers; the right of property which it creates. And when the party has acquired an inchoate right to it, and the power to make that right perfect and absolute at his pleasure, the assignment of his whole interest, whether executed before or after the patent issued, is equally within the provisions of the act of Congress. The monopoly did not exist at common law, and the rights therefore, which may be exercised under it cannot be regulated by the rules of the common law. It is created by the Act of Congress; and no rights can be acquired in it unless authorized by statute, and in the manner the statute prescribes." Gayler v. Wilder, 10 How. at 493. ** |