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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 therein provided for has been made. That an inventor has kept his invention secret in war time without such an order is not sufficient. Rodman Chemical Co. v. U. S. (1928), 65 Ct. Cl. 39; certiorari denied (1928), 277 U. S. 592.

Where an inventor, whose claim has been allowed, and against whom a secrecy order has been issued under the act of October 6, 1917, instead of taking out letters patent upon revocation of the order forfeits his case and renews the application, he may not, by enlargement of his claim, render the Government liable for infringement of the enlarged claim prior to the renewal of the application. Gathmann v. U. S. (1931), 71 Ct. Cl. 680,

Formal proceedings by an applicant for patent in the making of a tender to the Government for the use of his invention under the act of October 6, 1917, were not necessary to entitle him to compensation for its use under the statute, and a letter from him to the Government with information as to the application and as to the invention and its manufacture and sale by others, and an offer to the Government of the right to use the invention, was a sufficient tender under the statute. Barlow v. U. S. (1936), 82 Ct. Cl. 360.

If an inventor's application for patent was placed under a secrecy order under the act of October 6, 1917, and was allowed, he could avail himself of the provisions of the act, for compensation for use of the invention by obeying the order, paying the final fee and receiving the letters patent; but if this was not done, his rights and remedies for use of the invention reverted to and were governed by other applicable statutory provisions. Martin v. U. S. (1936), 84 Ct. Cl. 41.

The right under the act of October 6, 1917, to sue the United States for compensation for the use of an invention whose secrecy is enjoined, is dependent upon an express tender of such use, disclosing sufficient to put the United States upon notice that to use the invention involves liability to pay compensation. Ord. En1369. 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.

* Provided, That hereafter no money shall be expended at said armories in the perfection of patentable inventions in the manufacture of arms by officers of the Army otherwise compensated for their services to the United States. Sec. 1, act of Mar. 3, 1875 (18 Stat: 455) ; 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. S. C. 831d.

The corporation referred to in the above provision is the "Tennessee Valley Authority," established by 1975, post.

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R. S. 4886, mentioned above, prescribes the articles which may be patented, upon payment of fees required.

Notes of Decisions

(2) That the Government acquires no implied license in the invention referred to herein which was designed by an employee of the contractor;

In general. The first paragraph of this sec-
tion is applicable to those who are actually
in the service of the Government, whether
permanently or temporarily, at the time the
right to apply for a patent accrues.
Eligibility for its benefits is not affected-plied
(1) By death or separation from the
service subsequent to filing ap-
plication but before issue of
patent;

(2) By the fact that the invention
was made prior to employment
of inventor by the Government;
(3) By the fact that, because of tech-
nical work involved, the applica-
tion is not actually filed until after
termination of employment.

The statute is not applicable→→
(1) To employees who have acquired
patent rights by contract with in-
ventors not in the service of the
United States;

(2) To Joint inventors, one or more of
whom is without Government con-
nection.

(1936) 38 Op. Atty. Gen. 402.

Rights of Government.-Where Government employee's invention is made at Government expense, his personal interest in invention belongs to Government. Selden Co. v. National Aniline & Chemical Co., Inc. (D. C., 1930), 48 F. (2d) 270.

Government, as employer, has no greater right to inventions made by its employees than other employers. U. S. v. Dubilier Condenser Corporation (D. C., 1931), 49 F. (2d) 306.

(3) That the Government acquires no imlicense to future manufacture, use, and sale of inventions designed by employes of the contractor and subsequently assigned to the latter.

Under the statement of facts set forth in connection with the formal development order, held,

(1) That the Government has no implied license for the future manufacture, use, or sale of inventions designed by employees of the contractor;

(2) That the Government has no implied license to the future manufacture, use, or sale of inventions designed by the contractor;

(3) That the Government is not entitled to manufacture, use, and sell inventions resulting from such development contract, not withstanding the elimination of Sections 2, 3, 4, 5, and 6 of said contract. (1921) 32 Op. Atty. Gen. 556.

Government held entitled to irrevocable license to use naval officer's patented method and apparatus for delivering submarine tor pedoes from airships. Moffett v. Fiske (App).

(2d) 868; certiorari de

D. C., 1931), 51 F.
nied (1931), 284 U. S. 662.

Rights of public. When a patent issues under the provisions of the act of March 3, 1883 (22 Stat. 625), relating to the issuance

of patents to officers of the Government, no dedication to the public results, but any person in the United States, including Govern ment officers and employees, may use the in United States held not entitled to invenvention 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 Federal resulted in inventions, though within gen-Government. (1920) 32 Op. Atty. Gen. 145. eral field of employment, was not specifically assigned. U. S. v. Dubilier Condenser Corporation (C. C. A., 1932), 59 F. (2d) 381, affirming (D. C., 1931), 49 F. (2d) 300, and affirmed (1933), 289 U. S. 178.

By an informal development order and a formal development order, the United States Government directed the General Electric Co. to design a mobile generator unit.

Under the statement of facts set forth in connection with the informal development order, held

(1) That the General Electric Co. stands as regards the Government as an independent contractor;

136307-40-42

Acts of Government employee held, independently of this section, an abandonment of his rights to the public. Selden Co. v. National Aniline & Chemical Co. (D. C.. 1930), 48 F. (2d) 270.

Assignment.Where Government chemists under statute were granted patents without paying fees, no assignable interests were retained, except rights to foreign patents, and rights of Government and public became vested on ruling of applications. Co. v. National Aniline & Chemical Co., Inc. (D. C., 1930), 48 F. (2d) 270.

Selden

License under Government-owned.--Where an invention by an employee of the United

States, patented under the first paragraph | States to acquire and hold patents, and li

of this section, has been assigned to the Secretary of the Interior as trustee for the use and benefit of the people of the United | States, the Secretary of the Interior as trustee holds the entire right, title, and interest in such patent and has power to grant licenses to commercial interests to use the patented invention. (1933) 37 Op. Atty. Gen. 180.

The Secretary of the Treasury is authorized to grant a revocable, nonexclusive, and nontransferable license to a private corporation to manufacture and sell life-line projectiles covered by a Government-owned patent, either upon some expressly stated consideration or upon a determination that the issuance of such license would further a public interest. (1936) 38 Op. Atty. Gen. 534.

When an invention is made by a Government employee under such circumstances that the invention is the property of the United States, it is customary procedure to have the patent covering the invention issue to the United States, as represented by a designated officer, upon assignment executed by the employee, either before or after the application is filed.

censes under Government patents have heretofore been issued to private persons. The issuance of such licenses is consistent only with the view that there is no authority for private persons to use inventions covered by Government-owned patents in the absence of a license.

If a proper case warranting such action should arise, the Government ought to undertake to maintain in the courts the exclusive right of the United States under a duly acquired patent. (1936) 38 Op. Atty. Gen. 425.

An ordinary assignment of a patent to the United States pursuant to a contract of purchase cannot reasonably be construed as intended to effect a dedication to the public. An assignment to the United States as represented by a designated officer cannot accomplish a résult unattainable by a direct assignment to the United States. (May 10, 1938), 39 Op. Atty. Gen. No. 44.

Effect of amendment of 1928.-The amendment of 1928 to this section was not retroactive as to rights previously dedicated to public. Selden Co. v. National Aniline & Chemical Co., Inc. (D. C., 1930), 48 F. (2d) 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 (36 Stat. 851); act of July 1, 1918 (40 Stat. 705); 35 U. S. C. 68.

Notes of Decisions

In general. This section does not apply unless a patent has been issued. Rodman Chemical Co. v. U. S. (1928), 65 Ct. Cl. 39; certiorari denied (1928), 277 U. S. 592.

the collection and distribution by it of specified royalties from manufacturers and users of the patented devices. The Government, with full knowledge of the cross-license At the suggestion of the Government, a agreement, and with the knowledge and accross-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 and use, and for compensation by the Government therefor; and that the plaintiff had the right to sue for such compensation. Manufacturers Aircraft Assn. v. U. S. (1933), 77 Ct. Cl. 481.

confined the patent owner to a suit against the United States in the Court of Claims for "recovery of his reasonable and entire compensation for such use and manufacture," the claim of the patent owner against the United States for manufacture and use occursince the date of the Act, is assignable with the patent, notwithstanding the sweeping terms of 701, ante. Richmond Screw Anchor Co. v. U. S. (1928), 275 U. S. 331, reversing (1925) 61 Ct. Cl. 397.

In a suit for compensation for manufac-ring ture and use of a patented invention by the Government, the question of the validity of the patent is eliminated where such manufacture and use were under express license therefor. Barlow v. U. S. (1936) 82 Ct. Cl. 360.

A license agreement between the Govern ment and the owner of inventions for which patent applications were pending for the rights of manufacture and use of such inventions by the Government was not abrogated or set aside by a subsequent contract | between the parties for the manufacture of such inventions by the owner for the Government for a different consideration from that provided in the license agreement.

Id.

Amount of recovery. - Statute allowing "entire" compensation for Government's unlicensed use of patented invention held to allow claimant interest on amount fixed as damages. Waite v. U. S. (1931), 282 U. S. 508.

Under special act permitting employee to recover from United States for patent infringement, manufacturer's profits. not reasonable royalty, were recoverable. Van Meter v. U. S. (C. C. A., 1931), 47 F. (2d) 192, modifying (D. C., 1930), 37 F. (2d) 111. This section depriving patent owner of remedy against infringing Government contractor secured to owner exact equivalent of what it took away. Id.

Assignment of claims.-Under this section, prior to the amendment of 1918, where a patented article was made for the United States by a contractor, unauthorized by the patent owner, and used by the United States, the patent owner had an assignable right of action for infringement against the contractor; and a claim against the United | States for reasonable compensation for the use, assertable in the Court of Claims, but subject to the provisions of 701, ante, forbidding assignments. But under the amendment of 1918, which did away with the remedy against the contractor in such cases, and

Patents by officers or employees. An Army officer cannot sue under this section except by aid of a special act, without resigning his commission, though the patent was granted before he entered the Government service. Van Meter v. U. S. (C. C. A., 1931), 47 F. (2d) 192, modifying (D. C., 1930), 37 F. (2d) 111.

The petition insofar as it related to reissue patent No. 12,168 covering the radiosending apparatus was dismissed by this court on defendant's motion on the ground that the benefits of this section did not inure to the owner of reissue patent No. 12,168 because the inventor thereof was in the employ of the United States Government at the time the application for patent was filed, National Electric Signaling Co. v. U. S. (1933), 77 Ct. Cl. 87, 102.

Res adjudicata.-Where a suit for infringement of patent is by the same plaintiff, against the same defendant, and for infringement of the same patent as in a prior adjudicated suit, the rule of res adjudicata does not apply unless the alleged infringing structure is the same as in the adjudicated case.

While a plaintiff can bring only a single suit for one individual cause of action, he is not required to unite in one suit several independent causes of action; and where the cause of action in a case is different from that in a prior adjudicated case, the rule of res adjudicata is not applicable even though both causes of action could have been united in the prior case. Richardson v. U. S. (1933), 78 Ct. Cl. 580.

Review. District Court judgment adjudicating employees' claim for infringement of patent against United States under special act held reviewable by appellate court. Van Meter v. U. S. (C. C. A., 1931), 47 F. (2d) 192, modifying (D. C., 1930), 37 F. (2d) 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 months 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.

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