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should the patentee be allowed to advertise that he intends to bring just such suits as the courts say he can be restrained from bringing?

Where is there merit in the one theory without there being merit in the other?

If the patentee can be enjoined in the proper action from bringing a multiplicity of suits against users, after the manufacturer has been sued, there certainly is no truth in advertisements and statements issued by him that he intends to and will commence suits against such users.

These statements, in view of such court rulings, must have their foundation in fraud, intended solely for the purpose of injuring and destroying the business of the alleged infringer to his irreparable damage and injury.

The prima facie right to advertise, which the courts have seemed inclined to give the patentee, whether his patent be valid or not, and of notifying and warning the unsuspecting public concerning a number of infringement actions already brought, has been sanctioned by a large number of our patent lawyers in the prosecution of patent suits, and should, in my judgment, be limited by national legislation.

Why the holder of a patent should be allowed fraudulently to destroy the business of a competitor through the sanction of the United States government and its courts on assumed prima facie rights, granted through his patent, to me is incomprehensible, but as I have said before, this advertising of unmeritorious patents has, in my judgment, been brought about (to a great extent) because of the system now in vogue at the Patent Office in granting patents, and the reluctance of the United States courts to give credence to the work of the Patent Office, on account of the large number of patents held to be invalid when tested.






It is often said that Americans are a litigious people, the spirit of fight being a dominant national characteristic. The ember of resistance enkindled in pre-revolutionary days is ever ready to spring into flame the moment there is the slightest trespass upon what we regard as our rights. Inventors are no exception to the rule; indeed, they typify the spirit, and in them it finds its strongest expression. As we all know, an inventor can discern an appropriation of his rights when it is not visible to the analytical expert or to the astute lawyer or to the most liberally-inclined judge. He is ever prepared to assert his rights, and oftentimes will exhaust his resources and suffer financial ruin in an effort to maintain them.

It is doubtless due to this characteristic of the American inventor that there are so many bitterly-contested interference causes in the Patent Office. When an applicant for a patent is advised that another is making claim to the same invention the spirit of contest arises in all its intensity. The true merit of the invention in issue is then lost to sight, and a fictitious valuation becomes fixed in his mind. He is convinced that if the invention were not valuable the other applicant would not claim it; frequently he believes that the other is seeking unlawfully to appropriate his invention, and without calmly weighing the situation, or following the advice of his counsel, will embark on long and expensive litigation.

Interference proceedings in the Patent Office are increasing at a rapid rate. They are fought through the various tribunals of the Office and then in the Court of Appeals, at an expenditure of thousands of dollars, and, after the fight is won, it not

infrequently transpires that neither the public nor the successful contestant is ever the gainer; in many instances the invention proves to be without value, and the victor's sole reward is the judgment of priority in his favor.

The reason for the present large number of interferences may, as some assert, be due to the increase in the number of applications for patents; and, on the other hand, it may, as others contend, be chargeable to the practice which sprang from the decision in Hammond vs. Hart, C. D., 1898, p. 52, of suggesting to an applicant claims made by another applicant. cause what it may, the fact is that during the ten years following that decision, the increase was nearly fifty per cent over the same period preceding the adoption of the rule authorized. by that case.

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There is a wide divergence of opinion as to the legality and propriety of an examiner's presenting to an applicant the claims of a rival inventor. Those opposed to the practice assert that it is against the spirit of the law, since each applicant is required by the statute to point out specifically that which he claims as his invention, and, failing to assert as his own that which is claimed by another, the Patent Office should not arrogate to itself the right to disclose the claims of the latter. Those who favor the present practice contend that if an applicant shows but does not claim the invention, it is the duty of the Office to suggest patentable claims presented in a co-pending case. That the Office has the right to do so has never been judicially determined; possibly it never will be, since the action is taken in camera, and thereafter it is too late to seek relief by writ of injunction.

Regardless of how interferences are brought about, it is undeniable that the present practice is truly sui generis and is totally dissimilar to any course of legal procedure in this country. The system as a whole has become so complex that the Court of Appeals of the District of Columbia, in Allen vs. Lowry, 116 O. G., 2253, took occasion to express the opinion it entertained for the procedure in the following terms:

"From the simple and summary mode first adopted for determining the question of priority of invention, that proceeding, by system of Patent Office rules, has grown to be a veritable old man of the sea, and the unfortunate inventor who becomes involved therein is a second Sinbad the sailor. It is known to all who are familiar with the practice in interference proceedings that by motions, petitions and appeals of every conceivable character that the ingenuity of the skilled attorney can devise, interferences can be and are prolonged for years, to the injury of the public, and often to the financial ruin of the parties."

There is no proceeding known to the law that for complexity, multiplicity of motions, hearings and appeals, equals that which obtains to-day in interference causes in the Patent Office.

First, we have the jurisdictional issues presented by motions to dissolve, with appeals in certain cases, and petitions in others, involving delays extending over many months and sometimes years. When these questions are finally determined, if the parties in interest still have the necessary funds, testimony to prove priority is taken. It would be more proper to say that the taking of testimony is then begun, since what appears as an apparently smooth road is more often than otherwise changed into one of almost insurmountable barriers. Motions frequently succeed motions, with the usual train of appeals, before the proof is finally adduced. Even in the taking of testimony there exists a line of procedure unknown to the courts or to writers on the law of evidence. The rules as to what is and is not admissible frequently appear to have been forgotten, if, in fact, they were ever known. This may be due in part to the fact that many practitioners before the Patent Office are not lawyers, and have no acquaintance with the rules of evidence. Then, too, pages upon pages of the record are filled with verbose remarks of counsel, which would not be tolerated in any court of justice. The objections of counsel more frequently than otherwise take the form of arguments which are not only manifestly improper but are relied upon to take the place of evidence. To many of the judges who sit on the Court of Appeals of the District of Columbia this method of "proving" a case has been a revelation. The court has condemned the practice in strong terms and has

sometimes indulged in strictures more general in their application than are warranted. Yet this is no cause for wonderment when the many aggravations are considered. The absurdities so frequently presented by interference records have led the Bench uniformly to ignore everything falling outside the breastworks of evidence.

In one recent case, involving a record of over 1400 pages, made up largely of idle, time-consuming objections and speeches, the court took occasion to remark that it had been compelled to read not only page after page of testimony for which no possible excuse could be suggested, but also a cross-examination of one witness occupying fourteen days made up of repetitions and immaterial matter; all of which led the court to sugggest that a record one-third the size would have presented every opportunity for the fullest investigation, and would have rendered unnecessary a brief of over three hundred and fifty pages.

That these abuses and weaknesses in interference procedure are bringing the practice into disrepute and contempt is realized by the friends and well-wishers of our patent system.

At the meeting of this Section of the American Bar Association in 1905, Joseph B. Church, Esq., urged reforms in reference to all matters involving jurisdictional issues. He pointed out the evil arising from vesting in the primary examiner, by whom interferences are declared in the first instance, the power of trying jurisdictional questions. Motions to dissolve are, in consequence, passed upon by prejudiced persons; and instead of a single tribunal, namely, the examiner of interferences, we have a multitude of tribunals represented by forty odd divisions of the Patent Office, with natural divergence in practice, procedure and rules of interpretation. Mr. Church urged that the authority to determine all jurisdictional issues should be placed where it logically belongs, that is, with the examiner of interferences, who should have the right, at his discretion, to refer such issues to the primary examiner for a preliminary hearing after the manner of a master in chancery, his findings and conclusions being subject to exceptions before the examiner of interferences, whose decision would be final.

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