B-129381, DEC. 17, 1956

B-129381, DEC. 17, 1956

TO THE SECRETARY OF THE INTERIOR:

BY LETTER OF OCTOBER 1, 1956, THE ADMINISTRATIVE ASSISTANT SECRETARY REQUESTED A DECISION WHETHER THE PATENT OFFICE PROPERLY MAY CHARGE, AND YOUR DEPARTMENT PAY, THE FEES PRESCRIBED BY THE RULES OF PRACTICE IN PATENT CASES ON A CERTAIN APPLICATION FOR PATENT BY MESSRS. JONATHAN D. LANKFORD, JOHN G. TRIPP, LEWIS H. BRAKEL, AND GEORGE D. GOULD FILED OCTOBER 11, 1950.

THE FIRST THREE NAMED APPLICANTS WERE EMPLOYEES OF THE UNITED STATES, AND THE FOURTH, AN EMPLOYEE OF THE CALIFORNIA RESEARCH CORPORATION. THE INVENTION WAS MADE IN THE COURSE OF RESEARCH IN WHICH MR. GOULD PARTICIPATED UNDER A COOPERATIVE AGREEMENT BETWEEN THE CALIFORNIA RESEARCH CORPORATION AND YOUR DEPARTMENT UNDER THE SYNTHETIC LIQUID FUELS ACT AS AMENDED, 30 U.S.C. 321 AND FOLLOWING SECTIONS. THE COOPERATIVE AGREEMENT FOR THE RESEARCH OBLIGATES THE CORPORATION TO GRANT LICENSES TO THE PUBLIC FOR ANY INVENTION WHICH MIGHT BE MADE IN THE COURSE OF RESEARCH ON A NONEXCLUSIVE, NONDISCRIMINATORY, REASONABLE ROYALTY BASIS. THE THREE GOVERNMENT EMPLOYEES ASSIGNED THEIR UNDIVIDED INTERESTS IN THE INVENTION AND APPLICATION TO THE GOVERNMENT, AS REPRESENTED BY THE DEPARTMENT OF THE INTERIOR, WHILE MR. GOULD'S INTEREST HAS BEEN ASSIGNED TO HIS EMPLOYER, THE CALIFORNIA RESEARCH CORPORATION.

THE LETTER STATES THAT SINCE THE INVENTION WAS MADE IN THE COURSE OF GOVERNMENT RESEARCH AND, IN VIEW OF THE GOVERNMENT'S INTEREST THEREIN, THE PREPARATION AND PROSECUTION OF THE PATENT APPLICATION WAS UNDERTAKEN BY YOUR DEPARTMENT. IT IS REPORTED THAT THE FILING FEE WAS PAID BY YOUR DEPARTMENT PRIOR TO THE DATE OF OUR DECISIONS REPORTED IN 32 COMP. GEN. 392 AND 33 ID. 27; THAT, WHILE THOSE DECISIONS WERE VIEWED AS PRECLUDING THE NECESSITY FOR PAYMENT OF ANY ADDITIONAL FEES, IT BECAME NECESSARY ON MAY 18, 1954, TO TAKE AN APPEAL IN THE PATENT APPLICATION CASE; AND, AN APPEAL FEE OF $25 WAS PAID FROM PRIVATE FUNDS IN VIEW OF THE POSITION TAKEN BY THE PATENT OFFICE THAT FEES IN THE INSTANT CASE WERE NOT ENCOMPASSED BY THOSE DECISIONS. THE APPLICATION WAS ALLOWED WITH NOTICE THAT THE FINAL ISSUANCE FEE SHOULD BE PAID BY FEBRUARY 9, 1955. IT IS STATED THAT IT WAS INTENDED TO REFER HERE PROMPTLY FOR DETERMINATION THE QUESTION AS TO WHETHER SUCH FEE IS PAYABLE BUT INADVERTENTLY THE FILE WAS MISLAID UNTIL RECENTLY. THE ASSISTANT SECRETARY'S LETTER STATES THAT THE PATENT OFFICE CONSIDERS THE APPLICATION AS ABANDONED AND NOT SUBJECT TO REVIVAL, BUT IF THE FEE WAS NOT PROPERLY PAYABLE, THE PATENT OFFICE ERRED IN FAILING TO ISSUE THE PATENT AND THE CASE IS NOT ABANDONED. IT IS FURTHER REPORTED THAT THE GOVERNMENT STANDS TO LOSE VALUABLE RIGHTS IN THE INVENTION AND THE PATENT IF THE PATENT IS NOT ISSUED.

IN VIEW OF THE REPORTED POSITION OF THE PATENT OFFICE, THE COMMENTS OF THE SECRETARY OF COMMERCE IN THE MATTER WERE REQUESTED AND NOW HAVE BEEN RECEIVED. BRIEFLY STATED, THE REPORT OF THE DEPARTMENT OF COMMERCE EXPRESSES THE VIEW THAT OUR DECISION OF JANUARY 20, 1955, B 119641, 34 COMP. GEN. 340, LIMITS THE SCOPE OF OUR DECISIONS IN 32 AND 33 COMP. GEN. REFERRED TO ABOVE, SO AS TO AUTHORIZE WAIVER OF THE USUAL PATENT FEES (ASIDE FROM APPLICATIONS FILED AND MEETING ALL CONDITIONS OF 35 U.S.C. 266) ONLY WHERE ALL RIGHT, TITLE, AND INTEREST IN THE PATENT APPLICATION IS IN THE GOVERNMENT OR A GOVERNMENT AGENCY. IT IS STATED THAT, WHILE THE GOVERNMENT IN THE INSTANT PATENT APPLICATION IS SEEKING A PATENT IN ITS OWN BEHALF, THE ASSIGNEE OF MR. GOULD, THE CALIFORNIA RESEARCH CORPORATION, BY ISSUANCE OF THE PATENT ALSO WOULD ACQUIRE A JOINT INTEREST THEREIN. IT ALSO CALLS ATTENTION TO THE RIGHTS OF JOINT OWNERS OF PATENTS IN THE ABSENCE OF AGREEMENTS TO THE CONTRARY TO MAKE, USE, AND SELL THE PATENTED INVENTION WITHOUT ACCOUNTING TO THE OTHER OWNERS. 35 U.S.C. 262. IT TAKES THE VIEW THAT THE SERVICE OF THE PATENT OFFICE IN ISSUING THE PATENT THUS WOULD BE TO SOMEONE OTHER THAN THE FEDERAL GOVERNMENT. THE DEPARTMENT OF COMMERCE REPORT STATES FURTHER "THE CLEAR IMPORT OF THE LANGUAGE OF THE DECISION OF JANUARY 20, 1955, LEADS TO THE CONCLUSION THAT PATENT OFFICE FEES MUST BE PAID IN ANY SITUATION WHERE SERVICE IS RENDERED TO "ANY PARTY OTHER THAN AN AGENCY OF THE FEDERAL GOVERNMENT," " AND THERE WAS NO ERROR IN THE ACTION OF THE PATENT OFFICE IN REQUIRING A FINAL FEE AS TO THE INVOLVED APPLICATION FOR PATENT.

THE DECISION OF JANUARY 20, 1955, 34 COMP. GEN. 340, HELD (QUOTING FROM THE HEADNOTE) THAT "A GOVERNMENT AGENCY WHICH ASSUMES RESPONSIBILITY FOR PATENT FEES AND CHARGES UNDER FORMAL AGREEMENT WITH A NONGOVERNMENTAL INTEREST IN EXCHANGE FOR A ROYALTY-FREE LICENSE TO AN INVENTION MAY PAY THE COSTS OF PROCESSING THE PATENT APPLICATION.' THE DECISION RECOGNIZES THAT THE GENERAL RULE SET OUT IN 32 COMP. GEN. 392 AND 33 ID. 27 HOLDING THAT PAYMENT OF PATENT OFFICE FEES WERE NOT AUTHORIZED OR REQUIRED WHERE THE SERVICES WERE RENDERED ANOTHER GOVERNMENT AGENCY WAS NOT PROPERLY FOR APPLICATION TO THE FACTS THERE INVOLVED. THE RATIONALE OF THE DECISION WAS THAT, WHERE THE GOVERNMENT AGENCY CONTRACTED WITH A PRIVATE INTEREST TO PAY THE PROCESSING COSTS OF SECURING A UNITED STATES PATENT AS THE CONSIDERATION FOR A ROYALTY-FREENONEXCLUSIVE LICENSE TO USE AN INVENTION, IT ACQUIRED NO RIGHT IN THE PATENT BUT MERELY THE RIGHT SET OUT IN THE LICENSE FROM THE OWNER TO MAKE, USE OR SELL THE ARTICLE WITHOUT LIABILITY FOR INFRINGEMENT. ACTUALLY, IF IT PAID THE COST AND PROSECUTED THE APPLICATION, IT WOULD UNDER THE AGREEMENT BE FREE TO EXERCISE THE LIMITED LICENSE GRANTED EVEN THOUGH THE PATENT WERE EVENTUALLY DENIED. THE ISSUANCE OF THE PATENT, THEREFORE, WAS NOT A SERVICE TO THE GOVERNMENT AGENCY BUT A SERVICE TO THE OWNER OF THE INVENTION, A PRIVATE INTEREST. SUCH FACTOR MADE INAPPLICABLE THE BASIS DECISIONS--- THE SERVICE (ISSUANCE OF THE PATENT) NOT HAVING BEEN RENDERED TO THE GOVERNMENT AGENCY BUT, AT ITS REQUEST, TO A PRIVATE INTEREST. WE PERCEIVE NOTHING IN THE LANGUAGE OF THAT DECISION, HOWEVER, THAT WOULD AUTHORIZE OR REQUIRE THE PAYMENT OR COLLECTION OF FEES WHERE THE SERVICES OF THE PATENT OFFICE ARE RENDERED TO THE GOVERNMENT AGENCY EVEN THOUGH, BY ISSUANCE OF THE PATENT, A JOINT INVENTOR OR HIS ASSIGNEE ALSO WOULD BENEFIT THEREFROM.

WHERE RESEARCH DUTIES ASSIGNED TO GOVERNMENT EMPLOYEES RESULT IN INVENTIONS, THE PATENT RIGHTS ACCRUE TO THE UNITED STATES. SOLOMONS V. UNITED STATES, 137 U.S. 342, 346; UNITED STATES V. DUBILIER CONDENSER CORP., 289 U.S. 178, 189; HOUGHTON V. UNITED STATES, 23 F.2D 386, 390; KOBER V. UNITED STATES, 170 F.2D 590; CERTIORARI DENIED, 336 U.S. 945. EXECUTIVE ORDER NO. 10096, JANUARY 23, 1950; 15 F.R. 389, 35 U.S.C.A. 266 NOTE, PARAGRAPH 1A, REQUIRES THE ACQUISITION OF THE ENTIRE RIGHT, TITLE AND INTEREST TO INVENTIONS IN SUCH CASES. ALSO, SEE 38 OP. ATTY. GEN. 425. WHERE, PURSUANT TO THE EXECUTIVE ORDER OR OTHERWISE, THE GOVERNMENT ACQUIRES BY ASSIGNMENT THE PATENT RIGHTS, IT HAS A PROPERTY RIGHT IN THE INVENTION ITSELF AND THE PATENT WHEN ISSUED. THAT THE SERVICES OF THE PATENT OFFICE IN ISSUING A PATENT WHERE THE INVENTOR OR ALL OF THE JOINT INVENTORS ARE GOVERNMENT EMPLOYEES ARE SERVICES TO A GOVERNMENT AGENCY SEEMS CLEAR. IT IS IN EFFECT RENDERING A SERVICE SOLELY TO THE GOVERNMENT. WHERE, AS HERE, ONE OF THE INVENTORS IS A PRIVATE INDIVIDUAL- -- AND NOTWITHSTANDING THE RIGHT OF A JOINT OWNER OF A PATENT TO EXERCISE HIS RIGHTS TO MAKE, USE OR SELL THE INVENTION WITHOUT THE CONSENT OF AND ACCOUNTING TO THE OTHER OWNERS--- THE GOVERNMENT AGENCY, IN SEEKING THE PATENT, IS ACTING ON BEHALF OF THE UNITED STATES NOT THE CO-OWNER ALTHOUGH HE, INCIDENTLY, ALSO, BY THE ISSUANCE OF THE PATENT, ACQUIRES THE RIGHT TO EXCLUDE OTHERS EXCEPT THE GOVERNMENT AND ITS GRANTEES, LICENSEES OR ASSIGNEES FROM MAKING, USING OR SELLING THE INVENTION. THE GOVERNMENT BY THE ISSUANCE OF THE PATENT, EXCEPT AS TO THE JOINT OWNER AND THOSE CLAIMING UNDER HIM, ACQUIRES THE RIGHT TO EXCLUDE OTHERS FROM MAKING, USING OR SELLING THE INVENTION. ALSO, THE PATENT OFFICE IN SUCH A CASE IS SERVING THE GOVERNMENT AGENCY AND THE PAYMENT OF FEES BY THE GOVERNMENT AGENCY OR COLLECTION OF THEM BY THE PATENT OFFICE DOES NOT APPEAR TO BE AUTHORIZED OR REQUIRED.

FOR WHATEVER BEARING IT MAY HAVE, IF ANY, TO THE INSTANT APPLICATION, YOUR ATTENTION ALSO IS INVITED TO 35 U.S.C. 267.

A COPY OF THIS DECISION HAS TODAY BEEN MADE AVAILABLE TO THE SECRETARY OF COMMERCE AND WE TRUST IT WILL RESOLVE ANY DOUBT AS TO THE PROPER APPLICATION OF OUR PRIOR CITED DECISIONS TO THE FACTUAL SITUATION INVOLVED IN THE INSTANT APPLICATION.