A-56442, NOVEMBER 20, 1934, 14 COMP. GEN. 396

A-56442: Nov 20, 1934

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WHEN THE PATENT WAS APPLIED FOR. WHEN THE PATENT DEVICE WAS EMPLOYED. WHEN THE CLAIM WAS MADE. 1934: THERE HAVE BEEN CONSIDERED THE SUBMISSION OF JUNE 29. WHILE THE NORRIS DAM PROJECT IS BEING PROSECUTED ON BEHALF OF THE GOVERNMENT BY THE TENNESSEE VALLEY AUTHORITY. THE ASSISTANCE OF THOSE IN OTHER ACTIVITIES OF THE GOVERNMENT ARE MADE AVAILABLE IN SUCH CONNECTION AND IT APPEARS THE BUREAU OF RECLAMATION IN THE DEPARTMENT OF THE INTERIOR PREPARED THE NORRIS DAM PLANS HERE INVOLVED. ACKERMAN WAS CONSULTED IN SUCH CONNECTION DOES NOT APPEAR. IS STILL SO EMPLOYED. WAS ACCOMPANIED BY LETTER OF DECEMBER 5. THIS BID APPEARS TO HAVE BEEN ACCEPTED BY TELEGRAM OF DECEMBER 18. THE PATENT IN QUESTION WAS APPLIED FOR BY MR.

A-56442, NOVEMBER 20, 1934, 14 COMP. GEN. 396

PATENTS OWNED BY FEDERAL EMPLOYEES UNDER THE ACT OF JULY 1, 1918, 40 STAT. 705, THERE MUST BE DENIED THE CLAIM FOR USE BY THE TENNESSEE VALLEY AUTHORITY OF A PATENT OWNED BY A PERSON IN THE EMPLOY OF THE UNITED STATES, IN ANY BRANCH OF THE SERVICE, WHEN THE PATENT WAS APPLIED FOR, WHEN THE PATENT ISSUED, WHEN THE PATENT DEVICE WAS EMPLOYED, WHEN THE CLAIM AROSE, AND WHEN THE CLAIM WAS MADE.

COMPTROLLER GENERAL MCCARL TO THE CHAIRMAN, TENNESSEE VALLEY AUTHORITY, NOVEMBER 20, 1934:

THERE HAVE BEEN CONSIDERED THE SUBMISSION OF JUNE 29, 1934, AND YOUR LETTER OF AUGUST 31, 1934, WITH ENCLOSURES, INVOLVING THE CLAIM OF ADOLPH J. ACKERMAN IN THE SUM OF $14,000 AS ROYALTY FOR THE USE BY THE GOVERNMENT IN CONNECTION WITH THE NORRIS DAM PROJECT OF THE DESIGN OF CABLEWAY TOWERS COVERED BY HIS PATENT, NO. 1944054.

WHILE THE NORRIS DAM PROJECT IS BEING PROSECUTED ON BEHALF OF THE GOVERNMENT BY THE TENNESSEE VALLEY AUTHORITY, UNDER SECTION 5 (I) OF THE TENNESSEE VALLEY AUTHORITY ACT OF 1933, 48 STAT. 61, THE ASSISTANCE OF THOSE IN OTHER ACTIVITIES OF THE GOVERNMENT ARE MADE AVAILABLE IN SUCH CONNECTION AND IT APPEARS THE BUREAU OF RECLAMATION IN THE DEPARTMENT OF THE INTERIOR PREPARED THE NORRIS DAM PLANS HERE INVOLVED, SPECIFYING IN SUCH CONNECTION, USE OF CABLEWAY TOWERS COVERED BY MR. ACKERMAN'S PATENT. THE EXTENT TO WHICH MR. ACKERMAN WAS CONSULTED IN SUCH CONNECTION DOES NOT APPEAR, BUT THE SUBMISSION STATES HE BECAME AN EMPLOYEE OF THE TENNESSEE VALLEY AUTHORITY, IN AN ENGINEERING CAPACITY, ON NOVEMBER 5, 1933, THE DAY FOLLOWING REQUEST FOR CONSTRUCTION BIDS, AND IS STILL SO EMPLOYED. APPEARS THE BID OF THE VIRGINIA BRIDGE AND IRON CO. WAS ACCOMPANIED BY LETTER OF DECEMBER 5, 1933, STATING THE BID INCLUDED $14,000 TO COVER PATENT ROYALTIES ON THE CABLEWAY TOWERS, AND THAT THE BID COULD BE REDUCED BY THAT AMOUNT IF THE GOVERNMENT WOULD ASSUME RESPONSIBILITY FOR SUCH ROYALTIES. THIS BID APPEARS TO HAVE BEEN ACCEPTED BY TELEGRAM OF DECEMBER 18, 1933, WITH STATEMENT SUCH ROYALTIES SHOULD NOT BE INCLUDED IN THE CONTRACT PRICE. APPARENTLY, THE DEVICE COVERED BY THE PATENT HAS BEEN INSTALLED, AND MR. ACKERMAN SUBMITTED CLAIM ON JUNE 12, 1934, FOR $14,000, THE AMOUNT SO ELIMINATED FROM THE ACCEPTED BID AND WHICH HAD BEEN INCLUDED TO COVER ROYALTIES.

THE PATENT IN QUESTION WAS APPLIED FOR BY MR. ACKERMAN ON APRIL 10, 1933, AND WAS GRANTED JANUARY 6, 1934.

WHILE NO SO REPORTED IN LETTERS OF JUNE 29 OR AUGUST 31, 1934, THE PUBLIC RECORDS SHOW ADOLPH J. ACKERMAN AS EMPLOYED FROM MARCH 1, 1933, TO SEPTEMBER 7, 1933, BY THE PANAMA CANAL. THUS IT APPEARS MR. ACKERMAN WAS AN EMPLOYEE OF THE GOVERNMENT WHEN THE PATENT WAS APPLIED FOR.

THE ACT OF JULY 1, 1918, 40 STAT. 705, PROVIDES:

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.

THE PURPOSE OF THIS ENACTMENT IS CLEAR--- TO PROHIBIT RECOVERY FROM THE GOVERNMENT BY AN EMPLOYEE AS PATENTEE OR AS ASSIGNEE OF A PATENTEE, ON A CLAIM ARISING DURING SUCH EMPLOYMENT, OR FOR USE BY THE GOVERNMENT OF A PATENTED DEVICE DISCOVERED OR INVENTED DURING EMPLOYMENT BY THE GOVERNMENT.

WHILE APPARENTLY IT WAS KNOWN TO THE ENGINEER OFFICERS OF THE RECLAMATION SERVICE AND THE TENNESSEE VALLEY AUTHORITY THAT MR. ACKERMAN HAD APPLIED FOR PATENT AND THAT HE EXPECTED REMUNERATION FROM SOME SOURCE IN THE EVENT HIS DEVICE WAS EMPLOYED AND A PATENT SHOULD SUBSEQUENTLY ISSUE AS APPLIED FOR, THE FACTS ARE THAT HE WAS EMPLOYED IN THE SERVICE OF THE GOVERNMENT OF THE UNITED STATES WHEN HE APPLIED FOR THE PATENT, WHEN THE PATENT ISSUED, WHEN THE PATENTED DEVICE WAS EMPLOYED, WHEN HIS CLAIM THEREUNDER AROSE, AND WHEN HIS CLAIM WAS MADE.

CONSEQUENTLY, THERE IS NO LEGAL BASIS FOR CHARGING PUBLIC MONEYS WITH THE ITEM OF $14,000 OR ANY PART THEREOF AS ROYALTY ON THE EQUIPMENT FURNISHED BY THE CONTRACTOR IN THIS CASE FOR USE OF THE TENNESSEE VALLEY AUTHORITY, WHICH IS MADE BY STATUTE AN INSTRUMENTALITY OF THE UNITED STATES. YOU ARE ADVISED ACCORDINGLY.