PARTIES IN GENERAL.

By Chas. E. Tullar, Examiner.

(Delivered before the fourth assistant examiners.)

Before taking up the particular situations arising under Rules 25, 26 and 28, a brief consideration of the question who may obtain a patent is in order. The questions as to who may make the application and swear to the specification will be taken up in detail under the rules referred to. The question as to who may be the grantee of a patent will be taken up in connection with the subject of assignments under Rules 26 and 183 to 189, inclusive. Section 4886 upon which Rule 24 is based extends the right to obtain a patent to any person who has made an invention within certain subjects matter of invention provided certain conditions are fulfilled and certain requirements complied with.

In the United States a valid patent can be obtained when it is based upon the right of an original inventor only. Such inventor need not be the first to make the invention although at the time of making application he must be able to make oath that he believes himself to be the original and first inventor. (Sections 4892 and 4923, Revised Statutes.) It is only where there are rival claimants for the same invention that the question of priority of invention arises and when it arises it is determined by an interference proceeding under Section 4904, Revised Statutes. (Rules 93 to 132, inclusive.) Even where it has been clearly established in an interference proceeding that one party is not the first inventor, he may under the patent law receive a valid patent for his invention as is shown by the case of De Ferranti v. Lindmark, 134 0. G., 515; 1908 C. D., 353, 30 App. D. C., 417, where De Ferranti obtained priority over Lindmark although Lindmark's foreign and domestic filing dates, respectively, anticipated the foreign and domestic filing dates of De Ferranti. This resulted from the fact that the Act of March 3, 1903, gave De Ferranti the benefit of his foreign filing date, but, since it did not apply to pending applications, gave Lindmark no such benefit.

The "person" contemplated by Section 4886 must be a natural person as distinguished from a corporation.

It has been held that the invention of a slave can not be patented by him or his master. (9 Op. Atty. Gen., 171.) Presumably this opinion was based upon the idea that a slave was a mere chattel and therefore not a "person" in contemplation of the statute.

The law gives the right to a patent to an inventor whether sui juris or under disability. A married woman, an infant or a person under guardianship may be an inventor or the assignee of an inventor. (Fetter v. Newhall, 25 O. G., 502; 1883 C. D., 429; 17 Fed., 841, C. C. S. D. N. Y.)

A convict serving a term in the penitentiary may apply for and receive a patent for an invention made by him.

The personality of the inventive act may reside in two or more individuals, in which case the application must be a joint application. The subjects of joint invention and joint application are treated in detail under Rule 28.

Where the inventor dies or becomes insane after completing his invention his legal representatives may make the application and receive the patent. (Section 4896, Revised Statutes.)

Aliens:

The original patent act of 1790 placed aliens on the same footing with citizens of the United States. The Act of 1793 limited the right of applying for a patent to citizens of the United States. The Act of 1800 extended the right to aliens who at the time of making application had resided for two years within the United States. The Act of 1832 gave the right to every alien who at the time of making application had declared his intention of becoming a citizen. His patent was to be absolutely void, however, if he did not become a citizen at the earliest time the law permitted. Furthermore, his patent was to be void if he did not introduce his invention into public use in the United States within a year from the granting of his patent, and also if at any time after such introduction he failed to continue such use for a period of six months.

Since the Act of 1836 the United States has by law recognized the right of a foreign inventor to a patent for his

invention. That law discriminated against the foreign inventor in the matter of fees. The fee for a British subject was five hundred dollars, for all other foreigners three hundred dollars, while for citizens or residents of the United States the fee was thirty dollars. This discrimination was done away with by the Act of 1861. Since that date the foreign inventor has been accorded the same rights as are accorded citizens of this country. Under the "Trading with the Enemy Act" of Oct. 6, 1917, 243 O. G., 1070, an enemy or ally of an enemy may file and prosecute applications in this country. Government Employees Generally:

A person in the employ of the United States may apply for and receive a patent for an invention made by him during his employment. (Gill v. United States, 160 U. S., 426.) Where, however, a person is employed to devise or perfect a means to accomplish a prescribed result his invention belongs to his employer and there is no difference between the Government and any other employer in this respect. (Solomons v. United States, 137 U. S., 342.)

Under the Act of March 3, 1883, Chapter 143 (U. S. Statutes XXII, page 625) a patent may be granted to any officer of the Government except officers and employees of the Patent Office, without payment of fees, provided the applicant states in his application that the invention if patented may be used by the Government or any of its officers or employees in the prosecution of work for the Government, or by any other person in the United States, without the payment of any royalty, which stipulation shall be included in the patent. The preparation of an application under this statute is sometimes assigned to the examiner in whose class this invention would be classified.

The Act of June 25, 1910, (36 Stat., c. 423, p. 851; quoted in 1912 C. D., 637) giving the right to sue for reasonable compensation whenever the United States uses a patented invention without license from the owner, does not extend such right to any device invented by a Government employee during his term of service.

Patent Office Employees:

Officers and employees are incapable during their employment of acquiring except by inheritance or bequest, any interest in a patent issued by the office, Sec. 480, Rev. Stat. The intent of Congress was to prevent persons from taking any undue advantage of the opportunities they have, as a result of their connection with the office. Applications filed in contravention of the statute are returned together with the filing fee. (26 O. G., 637; 1884 C. D., 12.) No steps can be taken to acquire an interest in a patent, and an application any of the parts of which are filed by an employee cannot be completed. (Ex parte McElroy, 80 O. G., 966; 1897 C. D., 40.) A person taking employment in the Patent Office does not forfeit or dedicate to the public any invention made by him before such employment. (Page v. Holmes Burglar Alarm Telegraph Co., 17 O. G., 737; 1880 C. D., 345; 1 Fed., 304, C. C.) If, however, he has any applications on file at the time he accepts employment, the prosecution of those applications for his interest can not continue. It is customary to assign all right, title and interest in such applications before reporting for duty.

An employee may obtain patents on his inventions, made during his employment, after he leaves the office, and any such invention may be given its true date. (Foote v. Frost et al., 14 O. G., 860; 1878 C. D., 421; 3 Ban & A. 607, Fed. Cas. No. 4910.) The disability is, however, self imposed and, in case of interference, diligence cannot commence before resignation from the office. (Ex parte McElroy, 140 O. G., 1207; 1909 C. D. 52.)

An applicant who is an ex-employee of the office will be regarded as having made his invention in the light of all applications pending at the time of his employment for the same reason that any applicant is conclusively presumed to know the prior art. It would be impossible to prove whether or not he did in fact see any particular application, and therefore he must be presumed to have knowledge of them all. While the examiner was directed to reject on copending applications in ex parte McElroy, 80 O. G., 1123, it would nevertheless appear that such procedure presents difficulties since the applicant cannot well be permitted access to pending applications to deter

mine whether or not such rejections are well founded. When attacking the validity of a patent granted to an ex-employee of the office for an invention made during his employment it would seem that patents granted on prior copending applications might be pleaded under the third, rather than the fourth, defense set forth in Sec. 4920 Rev. Stats.

There is another aspect of the situation which must not be overlooked, and that is that an applicant has a right to keep his invention secret, under the present rules, until his patent issues. This right should not be violated by an employee of the office. If, however, an examiner makes an improvement on a pioneer invention disclosed only in a pending application it will probably be impossible to obtain a patent on the improvement without disclosing the subject matter of the pending application to the public. It will therefore be seen that an ex-examiner who makes application for improvements on devices of which he has obtained confidential information through his employment must exercise the very highest type of good faith, if necessary jeopardizing his own rights, to safeguard the rights of others.

DECISION OF THE SOLICITOR FOR THE DEPARTMENT OF THE INTERIOR.

Under date of September 20, 1918, the Solicitor for the Department of the Interior rendered a decision on the question as to whether "persons who have entered and are actually engaged in the military or naval service of the United States, whether as officials or privates, are ineligible to practice as attorneys representing applicants for patent before the Patent Office".

The decision, based on Sec. 113 of the Penal Code, Act of March 4, 1909 (35 Stat., 1088-1109), holds that commissioned officers of the Army and Navy can not receive or agree to receive compensation for acting as such attorney, but may so act without compensation. An enlisted man may act as such attorney and receive compensation.