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he shall, if and when he ultimately received a patent, have the right to sue for compensation in the Court of Claims, such right to compensation to begin from the date of the use of the invention by the Government. Act of Oct. 6, 1917 (40 Stat. 394); 35 U. S. C. 42.
Notes of Decisions In general.—No recovery can be had for gineering Corp. v. U. S. (1929), 68 Ct. Cl. compensation for Government use under 301. this section unless a secrecy order as there- Formal proceedings by an applicant for in provided for has been made. That an patent in the making of a tender to the Gov. inventor has kept his invention secret in ernment for the use of his invention under war time without such an order is not suffi. the act of October 6, 1917, were not neces. cient. Rodman Chemical Co. v. U. S. (1928), sary to entitle him to compensation for its 65 Ct. Cl. 39; certiorari denied (1928), 277 use under the statute, and a letter from him U. S. 592.
to the Government with information as to Where an inventor, whose claim has been the application and as to the invention and allowed, and against whom a secrecy order its manufacture and sale liy others, and an has been issued under the act of October 6, offer to the Government of the right to use 1917, instead of taking out letters patent the invention, was a suficient tender under upon revocation of the order forfeits his the statute. Barlow v. U. $. (1936), 82 Ct. case and renews the application, he may Cl. 360. not, by enlargement of his claim, render If an inventor's application for patent was the Government liable for infringement of placed under a secrecy order under the act the enlarged claim prior to the renewal of of October 6, 1917, and was allowed, he the application, Gathmam v. U. S. (1931), could avail bimself of the provisions of the 71 Ct. Cl. 680.
act, for compensation for use of the invenThe 'right under the act of October 6, tion by obeying the order, paying the final 1917, to sue the United States for compen- fee and receiving the letters patent; but if sation for the use of an invention whose this was not done, his rights and remedies secrecy is enjoined, is dependent upon an for use of the invention reverted to and express tender of such use', disclosing were governed by other applicable statutory sufficient to put the United States' upon provisions. Martin v. U. S. (1936), 84 Ct. notice that to use the invention involves Cl. 41. liability to pay compensation. Ord. En
1369. Inventions by military or civilian personnel of the Government. The Commissioner of Patents is authorized to grant, subject to existing law, to any officer, enlisted man, or employee of the Government, except officers and employees of the Patent Office, a patent for any invention of the classes mentioned in section 4886 of the Revised Statutes, without the payment of any fee when the head of the department or independent bureau certifies such invention is used or liable to be used in the public interest: Provided, That the applicant in his application shall state that the invention described therein, if patented, may be manufactured and used by or for the Government for governmental purposes without the payment to him of any royalty thereon, which stipulation shall be included in the patent. Act of Mar. 3, 1883 (22 Stat. 625); act of Apr: 30, 1928 (45 Stat. 467); 35 U. S. C. 45.
* Prorided, That hereafter no money shall be expended at said armories in the perfection of patentable inventions in the manufacture of arms hy officers of the Army otherwise compensated for their services to the United States. Sec. 1, act of Mar. 3, 1875 (18 stat: 155); 50 U. S. C. 84.
Provided, That any invention or discovery made by virtue of and incidental to such service by an employee of the Government of the United States serving under this section, or by any employee of the Corporation, together with' any patents which may be granted thereon, shall be the sole and exclusive property of the Corporation, which is hereby authorized to grant such licenses thereunder as shall be authorized by the board: Provided further, That the board may pay to such inventor such sum from the income from sale of licenses as it may deem proper. Sec. 5, act of May 18, 1933 (48 Stat. 62); 16 U. 8. O. 851d.
The corporation referred to in the above provision is the “Tennessee Valley Authority," established by 1975, post.
R. S. 4886, mentioned above, prescribes the articles which may be patented, upon payment of fees required.
Notes of Decisions
In general.—The first paragraph of this sec- (2) That the Government acquires no imtion is applicable to those who are actually plied license in the invention referred to in the service of the Government, whether herein which was designed by an employee of permanently or temporarily, at the time the the contractor ; right to apply for a patent accrues.
(3) That the Government acquires no imEligibility for its benefits is not affected- plied license to future manufacture, use, and (1) By death or separation from the sale of inventions designed by employes of
service subsequent to filing ap- the contractor and subsequently assigned to
Under the statement of facts set forth in (2) By the fact that the iny connection with the formal development or
was made prior to employment der, held,
of inventor by the Government; (1) That the Government has no implied (3) By the fact that, because of tech- license for the future manufacture, use, or
nical work involved, the applica sale of inventions designed by employees of
(2) That the Government has no implied The statute is not applicable,
license to the future manufacture, use, or (1) To employees who have acquired sale of inventions designed by the contractor ;
patent rights by contract with in- (3) That the Government is not entitled ventors not in the service of the to manufacture, use, and sell inventions re. United States ;
sulting from such development contract, not (2) To Joint inventors, one or more of withstanding the elimination of Sections 2, 3, whom is without Government con
4, 5, and 6 of said contract. (1921) 32 Op.
Atty. Gen. 556. nection,
Government held entitled to irrevocable (1936) 38 Op. Atty. Gen. 402, Rights of Government. Where Govern
license to use naval officer's patented method
and apparatus for delivering submarine torment employee's invention is made at Government expense, his personal interest in in- pedves from airships. Moffett v. Fiske (App.
D. C., 1931), 51 F. (20) 868; certiorari devention belongs to Government. Selden Co.
nied (1931), 284 U. S. 662. 1. National Aniline & Chemical Co., Inc.
Rights of public.--When a patent issues (D. C., 1930), 48 F. (20) 270.
under the provisions of the act of March 3, Government, as employer, has no greater 1883 (22 Stat. 625), relating to the issuance right to inventions made by its employees of patents to officers of the Government, no than other employers. U. S. v. Dubilier
dedication to the public results, bút any per. Condenser Corporation (D. C., 1931), 49 F.
son in the United States, including Govern(2d) 306.
ment officers and employees, may use the in United States held not entitled to inven
vention disclosed in the patent without the tions made by technical research employees payment of royalty provided the use be in of Bureau of Standards, where work which
the prosecution of work for the Federa) resulted in inventions, though within gen-Government. (1920) 32 Op. Atty. Gen. 145. eral field of employment, was not specifi
Acts of Government employee held, indecally assigned. U. S. v. Dubilier Condenser pendently of this section, an abandonment Corporation (C. C. A., 1932), 59 F. (20)
of his rights to the public. Selden Co. v. 381, affirming (D. C., 1931), 49 F. (20) 306,
National Aniline & Chemical Co. (D. C.. aud affirmed (1933), 289 U. S. 178.
1930), 48 F. (20) 270. By an informal development order and a Assignment.--Where Government chemists formal development order, the United States under statute were granted patents without Government directed the General Electric paying fees, no assignable interests were reCo, to design a mobile generator unit. tained, except rights to foreign patents, and
Under the statement of facts set forth in rights of Government and public became connection with the informal development vested on ruling of applications. Selden order, held
Co. v. National Aniline & Chemical Co., Inc. (1) That the General Electric Co. stands (D. C., 1930), 48 F. (20) 270. as regards the Government as an independent License under Government-owned.--Where contractor ;
un invention by an employee of the United 136307-40 -42
States, patented under the first paragraph | States to acquire and hold patents, and li. of this section, has been assigned to the Sec- censes under Government patents bare here retary of the Interior as trustee for the use tofore been issued to private persons. The and benefit of the people of the United issuance of such licenses" is consistent only States, the Secretary of the Interior as with the view that there is no authority for trustee holds the entire right, title, and in- private persons to use inventions covered by terest in such patent and has power to grant Government-owned patents in the absence of licenses to commercial interests to use the a license. patented invention. (1933) 37 Op. Atty. If a proper case warranting such action Gen, 180.
should arise, the Government ought to unThe Secretary of the Treasury is author. dertake to maintain in the courts the excluized to grant a revocable, nonexclusive, and sive right of the United States under a duly nontransferable license to a private corpora- acquired patent. (1936) 38 Op. Atty. Gen. tion to manufacture and sell life-line pro- 425. jectiles covered by a Government-owned An ordinary assignment of a patent to the patent, either upon some expressly stated United States pursuant to a contract of purconsideration or upon a determination that chase cannot reasonably be construed as inthe issuance of such license would further tended to effect a dedication to tbe public a public interest. (1936) 38 Op. Atty. Gen. An assignment to the United States as 534.
represented by a designated officer cannot ac When an invention is made by a Govern-complish a result unattainable by a direct ment employee under such circumstances that assignment to the United States. (May 10, the invention is the property of the United 1938), 39 Op. Atty. Gen. No. 44. States, it is customary procedure to have the Effect of amendment of 1928.-The amend. patent covering the invention issue to the ment of 1928 to this section was not retroUnited States, as represented by a desig- active as to rights previously dedicated to nated officer, upon assignment executed by public. Selden Co. v. National Aniline & the employee, either before or after the ap- Chemical Co., Inc. (D. C., 1930), 48 F. (20) plication is filed.
270. It is an established practice for the United
1370. Remedy for unlicensed use of inventions by the United States.--That whenever an invention described in and covered by a patent of the United States shall hereafter be used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, such owner's remedy shall be by suit against the United States in the Court of Claims for the recovery of his reasonable and entire compensation for such use and manufacture: Provided, however, That said Court of Claims shall not entertain a suit or award compensation under the provisions of this Act where the claim for compensation is based on the use or manufacture by or for the United States of any article heretofore owned, leased, used by, or in the possession of the United States: Provided further, That in any such suit the United States may avail itself of any and all defenses, general or special, that might be pleaded by a defendant, in an action for infringement, as set forth in Title Sixty of the Revised Statutes, or otherwise: And provided further, That the benefits of this Act shall not inure to any patentee who, when he makes such claim, is in the employment or service of the Government of the United States, or the assignee of any such patentee; nor shall this Act apply to any device discovered or invented by such employee during the time of his employment or service. Act of June 25, 1910 (56 Stat. 851); act of July 1, 1918 (40 Stat. 705); 35 U. 8. C. 68.
Notes of Decisions
In general.--This section does not apply the collection and distribution by it of spec. unless a patent has been issued. Rodman | ified royalties from manufacturers and users Chemical Co. v. U. S. (1928), 65 Ct. Cl. 39 ; of the patented devices. The Government, certiorari denied (1928), 277 U. S. 592. with full knowledge of the cross-license
At the suggestion of the Government, a agreement, and with the knowledge and ac cross-license agreement was entered into by quiescence of the plaintiff, but without an the owners of certain airplane patents, which, express agreement for manufacture or use by among other things, provided for the con- | it, manufactured and used the devices of trol of such patents by the plaintiff and the patents. Held, that the facts gave rise
to an implied contract for such' manufacture, confined the patent owner to 8 suit against and use, and for compensation by the Gov- the United States in the Court of Claims ernment therefor; and that the plaintiff bad for “recovery of his reasonable and entire the right to sue for such compensation. compensation for such use and manufacture," Manufacturers Aircraft Assn. v. U. 8. (1933), the claim of the patent owner against the 77 Ct. Cl. 481.
United States for manufacture and use occurIn a suit for compensation for manufac- ring since the date of the Act, is assignable ture and use of a patented invention by the with the patent, notwitbstanding the sweepGovernment, the question of the validity ing terms of 701, ante. Richmond Screw of the patent is eliminated where such manu- Anchor Co. v. U. S. (1928), 275 U. S. 331, facture and use were under express license reversing (1925) 61 Ct. C. 397. therefor. Barlow v. U. S. (1936) 82 Ct. Ci. Patents by officers or employees.
Army officer cannot sue under this section A license agreement between the Govern except by aid of a special act, without resignment and the owner of inventions for which ing his commission, though the patent was patent applications were pending for the granted before he entered the Government rights of manufacture and use of such in-service. Van Meter v. U. S. (C. C. A., 1931), ventions by the Government was not abro- | 47 F. (20) 192, modifying (D. C., 1930), 37 gated or set aside by a subsequent contract | F. (20) 111. between the parties for the manufacture of The petition insofar as it related to resuch inventions by the owner for the Gov- issue patent No. 12,168 covering the radioernment for a different consideration from sending apparatus was dismissed by this that provided in the license agreement. Id. court on defendant's motion on the ground
Amount of recovery. - Statute allowing that the benefits of this section did not inure "entire" compensation for Government's un- to the owner of reissue patent No. 12,168 belicensed use of patented invention held to al- cause the inventor thereof was in the emlow claimant interest on amount fixed as ploy of the United States Government at the damages. Waite v. U. S. (1931), 282 U. s. time the application for patent was filed, 508.
National Electric Signaling Co. v. U. s. Under special act permitting employee to (1933), 77 Ct. Cl. 87, 102. recover from United States for patent in- Res adjudicata.--Where a suit for infringefringement, manufacturer's profits. not rea- ment of patent is by the same plaintiff, sonable royalty,
recoverable. Van against the same defendant, and for infringeMeter v. U. S. (C. C. A., 1931), 47 F. (20)ment of the same patent as in a prior adjudi192, modifying (D. C., 1930), 37 F. (2d) 111. cated suit, the rule of res adjudicata does This section depriving patent owner of rem- not apply unless the alleged infringing strucedy against infringing Government con- ture is the same as in the adjudicated case. tractor secured to owner exact equivalent of While a plaintiff can bring only a single what it took away. Id.
suit for one individual cause of action, he is Assignment of claims.-Under this section, not required to unite in one suit several indeprior to the amendment of 1918, where a pendent causes of action; and where the patented article was made for the United cause of action in a case is different from States by a contractor, unauthorized by the that in a prior adjudicated case, the rule of patent owner, and used by the United States, res adjudicato is not applicable even though the patent owner had an assignable right of both causes of action could have been united action for infringement against the con- in the prior case. Richardson v. U. S. tractor; and a claim against the United (1933), 78 Ct. Cl. 580. States for reasonable compensation for the Review.--District Court judgment adjudiuse, assertable in the Court of Claims, but cating employees' claim for infringement of subject to the provisions of 701, ante, for- patent against United States under special bidding assignments. But under the amend- act held reviewable by appellate court. Van ment of 1918, which did away with the rem- Meter v. U. S. (C. C. A., 1931), 47 F. (2d) edy against the contractor in such cases, and | 192, modifying (D. C., 1930), 37 F. (20) 111.
1371. Inventions made by persons serving abroad with the forces of the United States. That where an invention was made by a person while serving abroad, during the war, with the forces of the United States, civil or military, the inventor thereof shall be entitled, in interference and other proceedings arising in connection with such invention, to the same rights of priority with respect of such invention as if the same had been made in the United States, and where an application became abandoned or forfeited, during the time the applicant was serving with the forces of the United States, by reason of his failure to take action or pay a fee within the time now required by law, such action may be taken, or the fee paid, within six monthis from the passage of this Act. Sec. 6, act of Mar. 3, 1921 (41 Stat. 1314); 35 U. S. C. 85.
1371a. Inventions in connection with chemistry.That the American Chemical Society shall, whenever called upon by the War or Navy Department, investigate, examine, experiment, and report upon any subject in pure or applied chemistry connected with the national defense, the actual expense of such investigations, examinations, experiments, and reports to be paid from appropriations which may have been made for that purpose by Congress, but the society shall receive no compensation whatever for any services to the Government of the United States: Provided, That the title to any and all inventions and discoveries made in the course of such investigations, examinations, and experiments that, in the opinion of the Secretary of the Navy or the Secretary of War, involve the national defense, shall vest in the Government of the United States, and the Government of the United States shall have unlimited license under all other inventions and discoveries. Sec. 4, act of Aug. 25, 1937 (50 Stat. 799).
1371b. Procurement of patents by War Department.-The appropriations made in this Act for the purchase or manufacture of equipment or material or of a particular class of equipment or material shall be available for the purchase of letters patent, applications for letters patent, and licenses under letters patent and applications for letters patent that pertain to such equipment or material for which the appropriations are made. Sec. 1, military appropriation act of June 11, 1938 (52 Stat. 653).
A similar provision in previous appropriation acts was applicable to Air Corps appropriations only. This provision has been repeated in subsequent appropriation acts.