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SECTION OF PATENT, TRADE-MARK AND COPYRIGHT LAW. 847

Parkinson advocated the elimination of ex parte appeals to the Board of Examiners-in-Chief and the Commissioner of Patents, and suggested that Section 4915 of the U. S. Revised Statutes is now superfluous in view of the appeals now allowed in interference causes to the Court of Appeals of the District of Columbia.

Thereupon, by request, Otto R. Barnett read a paper by Douglas Dyrenforth, of Chicago, Illinois, entitled "The Law's Promise to the Patentee and its Fulfillment."

After further discussion a recess was taken until August 26, 1908, at 2 P. M.

August 26, 1908, 2 P. M.

On motion of Wallace R. Lane the following resolution was unanimously adopted:

Resolved, That a committee of three be appointed by the Chairman from among the members of the Patent Section to consider and report to the Section at the next meeting upon the subject of Interference Procedure and Appeals therein in the Patent Office, to include also in the discretion of the committee the subject of ex parte appeals by applicants.

The Chairman then stated that he would later announce the membership of the committee authorized by the foregoing resolution.

On motion of Melville Church, duly seconded and unanimously adopted, Robert S. Taylor, of Fort Wayne, Indiana, was re-elected Chairman and Otto R. Barnett, of Chicago, Illinois, was re-elected Secretary of the Section.

On motion the Section then adjourned sine die.

OTTO R. BARNETT,

Secretary.

CERTAIN PHASES OF THE PRIMA FACIE RIGHTS

OF THE PATENTEE.

BY

WALLACE R. LANE,

OF DES MOINES, IOWA.

In 1788 the Constitution of the United States granted to Congress "the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries."

Under Section 4883 and 4884 of the Revised Statutes, the patentee has a "grant” . . . . of the exclusive right to make, use and vend the invention or discovery throughout the United States and territories thereof; . . . for the term of seventeen years.

The Supreme Court of the United States, through Justice Brewer, has held, in substance, that

"A patentee has two kinds of rights in his invention; he has the right to make, use and sell specimens of the invented thing, and he has the right to prevent all other persons from doing either of those acts.

"The first of these rights is wholly independent of the patent laws, while the second exists by virtue of these laws alone." Daniel Webster has said that

"The American Constitution does not attempt to give an inventor a right to his invention, or an author a right to his composition. It recognizes an original pre-existing inherent right of property in the invention, and authorizes Congress to secure to inventors the enjoyment of that right, but the right exists before the Constitution and above the Constitution, and is, as a natural right, more than that which a man can assert in almost any other kind of property."

And Judge Baker, speaking for the Circuit Court of Appeals in the case of

The Victor Talking Machine vs. The Fair, 123 Fed., 426, says:

"Without applying to the Patent Office, one may make and use and sell the device that embodies his invention; that is his natural right. All that the government can and does grant him is the right to exclude others from practicing his invention without his consent. Within his domain the patentee is Czar. The people must take the invention on the terms he dictates or let it alone for seventeen years. This is a necessity from the nature of the grant. Cries of restriction of trade and impairment of the freedom of sales are unavailing because for the promotion of the useful arts, the Constitution authorizes this very monopoly."

In view of such strong language and unmistakable terms used by these eminent authorities, it would seem that the inventor, who has gone through the ordeal, and oft-times the extremely arduous task of obtaining a patent for his invention, should have a prima facie right to the exclusive use of the invention, described and claimed in his patent, such as would enable him to assert this right immediately, whenever manufacturers see fit to appropriate to their own use the patented device for sale throughout the United States.

In order that I may bring clearly before you the phases of the rights of the patentee, to which I am directing your attention, I shall presume somewhat upon the time of those present by calling attention to the procedure and various appeals provided by the United States statutes for the inventor, in procuring a patent, whether opposed simply by the Patent Office (if we can term the work of this office opposition to the grant), or whether there is an interference contest, between the inventor and a rival claimant for the honor of inventorship.

Sections 4909 to 4911, inclusive, provide for appeals: 1st, from the primary examiner to the examiners in chief in the Patent Office; 2d, from the examiners in chief to the commissioner in person; 3d, from the commissioner to the Court of Appeals of the District of Columbia.

In the event that the applicant for a patent is unable to secure his ex parte or contested (by interference) grant, through the medium of the foregoing appellate procedure, Section 4915 of the Revised Statutes provides for a bill in equity being filed in the proper Circuit Court of the United States asking for

"an adjudication holding him entitled to the patent, and if the adjudication is favorable, the commissioner is authorized to issue such patent, after certain requirements have been complied with."

From an adverse decision by the Circuit Court, in such case, the applicant has his appeal to the Circuit Court of Appeals, within the circuit where the decision was rendered, and the matter might possibly be taken to the Supreme Court of the United States on certiorari. Thus every applicant for a patent may have seven tribunals pass on the question of whether or not he is entitled to a patent before he is definitely certain that he has secured the prima facie rights to which he is entitled. And the government, out of its very fairness in providing so many courts, by which the applicant may be heard, before he is precluded from his grant, has provided such an expensive machine that it is impossible for the average inventor to take advantage of this machine, and in the event that the application is contested by an adverse claimant, the procedure is often-times extremely costly, and it puts in the hands of a strong financial institution owning an application a decided advantage, disastrous to the person of limited means.

Assuming that the patentee has been able to traverse the entire course of procedure open to him and has been held entitled to the broad claim for which he is contending by the tribunal to which he last appeals in his efforts to obtain his rights, and that the matter is a contested one between rival claimants for the title to inventorship, the applicant has his application for a patent again subjected to re-examination and new references may be cited by the Patent Office, as anticipating the invention claimed, and if the reference is a pertinent one, the entire procedure may be repeated, leaving, in theory, at least, no final termination to the matter, until the applicant has exhausted his energies and finances.

Within my personal experience an applicant whom we were representing was ruled adversely to, in an interference case, by the three tribunals of the Patent Office, and on appeal to the Court of Appeals of the District of Columbia, the entire action

of the Patent Office was reversed by a ruling that we were entitled to a decision of priority of invention on a technical question of reduction to practice.

In this particular case this ended the interference proceeding; but upon presenting the application to the examiner for re-examination, prior to the allowance of the patent, new references were brought out, undiscovered during the preliminary examination and in the interference proceeding, upon which the case was again rejected, necessitating a further expensive proceeding. McCormick vs. Robinson, 128 O. G., 209.

In another case with which I am acquainted, an equity suit is now pending in the Seventh Circuit, as the thus far defeated party in the interference proceeding has exhausted the four appeals, and I am informed if the decision is adverse in the Circuit Court, this party will appeal to the Circuit Court of Appeals for the Seventh Circuit, and then, if possible, take the matter up on certiorari to the Supreme Court of the United States, in which event there will have been seven tribunals pass upon the questions involved in the granting of the patent.

After the patentee has gone through the long procedure sometimes necessary in procuring a patent, what is his prima facie right?

Normally, under the statutes and court rulings set out at the commencement of this article, the patentee and his heirs have the exclusive right to make, use and vend the invention or discovery throughout the United States and its territories for a period of seventeen years under government grant.

It will be seen from the above language, and particularly from the decision of Judge Baker, above referred to, that the patentee has, as a basis of his prima facie privileges, the right to advertise, sell, license, fix prices and control the sale of his article, in an almost unlimited way, even to the entire restriction of the sale, whether the patent is valid or invalid, for he is, in the language of Judge Baker, "Czar for these purposes "; but in the usual patent case, and assuming that he is trying to obtain immediate relief against infringers by applying for a temporary injunction,

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