From a portrait in oil in the State House, Augusta, Maine Through the courtesy of H. E. Dunnack, Esq. (See article on "Patent Act of 1836," Page 203) OF THE Patent Office Society Published monthly by the Patent Office Society Office of Publication 1315 Clifton St., Washington, D. C. Subscription $2.50 a year Single copy 25 cents EDITORIAL BOARD. E. D. Sewall, Chairman, Publicity Committee. G. P. Tucker, Editor-in-Chief. J. Boyle. A. W. Davidson. W. I. Wyman. W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 1315 Clifton Street, Washington, D. C. Phone Col. 290. Entered as second class matter, September 17, 1918, at the post office at Washington, D. C., under the act of March 3, 1879. Copyright, 1919, by the Patent Office Society. Publication of signed articles in this journal is not to be understood as an adoption by the Patent Office Society of the views expressed therein. The editors are glad to have pertinent articles submitted. VOL. I. JANUARY, 1919. No. 5 EDITORIAL. In his report for the year 1916 Commissioner Ewing said: "The Congress by withholding adequate appropriations to this office is, in effect, transferring our system into the old system of granting patents on registration, while at the same time the safeguards of a registration system necessary to the public interest are not provided." On another page of this issue is an article dealing with the readoption of the examination system of patent grants by the enactment of 1836, after a forty-three years' trial of the registration system, that, in the opin ion of Congress, revealed the unsuitability of that system to the needs of a free people. The article discloses a deliberate purpose in the minds of the framers of the law of 1836 to have the validity of the grant reasonably guaranteed by a careful examination made by a body of experts prior to the grant, and a confident expectation of the fulfillment of that prpose; to the end that the courts should be relieved of a great deal of labor, the public relieved of uncertainty with respect to their rights, and large sums of money previously expended in the unproductive labor of courts and lawyers saved for productive uses. In a registration system the burden of claiming more than he has a right to claim is borne by the patentee, and he must be on his guard; if he claims too much the courts may invalidate his entire patent, so that all infringers of that which the patentee had a right to patent will be excused because of the patentee's greed in claiming more; whereas, in an examination system, the people undertake in advance of the grant to determine how much an applicant is entitled to, and the patentee takes no chance of loss by claiming too much, since the court will hold as infringers all who have made use of that which is defined by claims the patentee is entitled to, and merely invalidate the claims he is not justified in making. Any theory by which the Patent Office shifts onto the courts the burden of determining any questions of patentability is out of harmony with an examination system of patent grants. Whenever conditions are such that the Patent Office cannot determine patentability with reasonable efficiency it is time to inquire whether the nation shall not revert to the discredited registration method with the checks appropriate to it, rather than continue an ineffective examination system. That the fundamental distinction between the two systems, elemental as it is, is not always appreciated, is apparent from the frequently expressed advocacy of a practice whereby the Patent Office shall not refuse any claims insisted upon by an applicant, but merely print upon the patent the references thought by the Patent Office to negative a right to the claim. This advocacy has never contemplated transferring the aforesaid burden, however, from the public to the patentee under those circumstances. Even if the duty of the Patent Office were not made clear in the enactment of 1836 the Supreme Court has made it clear in Keystone Bridge Co. vs. Phoenix Iron Co. by this language. "Since the act of 1836 the patent laws require that an applicant for a patent * 'shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery'." This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. The duty is now cast upon the Patent Office. Thus his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. Every person charged with the duty of granting patents ought to bear in mind this elemental distinction between a registration law and the examination law now in force, lest the application of the principles of the former to the latter prove so costly in proportion to the benefits derived as to wreck the system. The needs of the Patent Office, so ably presented in the speech of Ex-Commissioner Ewing before the Atlantic City Conference, reported elsewhere in these columns, is a subject of continuing interest. Discussion should go on, but should soon eventuate in action. Resolutions like those adopted at the conference are distinct and encouraging signs of outside recognition of these needs, but unless used as a basis for further effort, will amount to nothing. The presentation of these needs, begun at the Atlantic City Conference and continued at the Southern Commercial Congress at Baltimore and the session of the American Economic Association at Richmond, will be extended, it is expected, to future appropriate conventions and conferences. So far, so good-but the time seems ripe for the formulation of a definite plan on which needed legislation may be based. It is expected that a report will soon be made by the special committee of the National Research Council appointed to deal with the subject. |