B-117353, APRIL 4, 1957, 36 COMP. GEN. 685

B-117353, APRIL 4, 1957, 36 COMP. GEN. 685

PATENTS - FEES - GOVERNMENT - PATENT APPLICATIONS DEDICATED TO PUBLIC USE THE ISSUANCE OF PATENTS FOR INVENTIONS WHICH RESULT FROM RESEARCH WORK PERFORMED UNDER GOVERNMENT-FINANCED CONTRACTS AND WHICH ARE MADE AVAILABLE TO THE PUBLIC CONSTITUTES THE RENDERING OF A SERVICE TO A GOVERNMENT AGENCY SO THAT THE CHARGE BY THE PATENT OFFICE AND THE PAYMENT BY THE SPONSORING DEPARTMENT OF THE FEES INCIDENT TO THE FILING AND ISSUANCE OF THE PATENT ARE NEITHER AUTHORIZED NOR REQUIRED.

TO THE SECRETARY OF AGRICULTURE, APRIL 4, 1957:

ON DECEMBER 5, 1956, THE ADMINISTRATIVE ASSISTANT SECRETARY OF YOUR DEPARTMENT REQUESTED OUR ADVICE AS TO WHETHER THE PATENT OFFICE MAY CHARGE, AND WHETHER YOUR DEPARTMENT MAY PAY, FEES FOR THE FILING AND ISSUANCE OF CERTAIN DEPARTMENT-PROSECUTED PATENT APPLICATIONS. THE LETTER PRESENTS FOR CONSIDERATION TWO SPECIFIC CASES, BOTH OF WHICH INVOLVE APPLICATIONS DEDICATED TO THE FREE USE OF THE PEOPLE IN THE TERRITORY OF THE UNITED STATES.

THE FIRST APPLICATION COVERS AN IMPROVEMENT IN A DUMP BASKET WHICH RESULTED FROM WORK DONE UNDER A MEMORANDUM OF UNDERSTANDING BETWEEN THE UNIVERSITY OF GEORGIA AND THE DEPARTMENT OF AGRICULTURE. THIS APPLICATION WAS ACCEPTED BY THE PATENT OFFICE FOR FILING WITHOUT PAYMENT OF FEE IN ACCORDANCE WITH OUR DECISIONS B-111648 OF MARCH 11 AND JULY 13, 1953 (32 COMP. GEN. 392 AND 33 ID. 27, RESPECTIVELY), AND B-117353 OF DECEMBER 14, 1953. HOWEVER, PRIOR TO ISSUANCE OF THE PATENT, THE COMMISSIONER OF PATENTS RULED THAT A LATER DECISION OF OUR OFFICE, NAMELY, B-119641 OF JANUARY 20, 1955, PUBLISHED AT 34 COMP. GEN. 340, MODIFIED THE CITED PRIOR DECISIONS, AND DECLINED TO ISSUE THE PATENT WITHOUT PAYMENT OF FEE IN THE ABSENCE OF THE FILING OF AN ASSIGNMENT OF THE PATENT TO THE GOVERNMENT.

THE SECOND APPLICATION INVOLVES AN INSTRUMENT FOR MEASURING MOISTURE CONTENT. THIS INVENTION RESULTED FROM RESEARCH WORK PERFORMED UNDER A CONTRACT BETWEEN YOUR DEPARTMENT AND THE MICHIGAN STATE UNIVERSITY UNDER THE PROVISIONS OF THE RESEARCH AND MARKETING ACT OF 1946, 60 STAT. 1082, 7 U.S.C. 427I. THE PATENT OFFICE REFUSED TO ACCEPT THIS APPLICATION FOR FILING WITHOUT PAYMENT OF FEE "FOR THE REASON THAT THERE IS NO EVIDENCE THAT THE GOVERNMENT OWNS THE ENTIRE RIGHT, TITLE AND INTEREST FOR THE TERM OF THE PATENT IN THIS CASE," AGAIN RELYING ON OUR DECISION B-119641.

IN RESPONSE TO PETITIONS FROM YOUR DEPARTMENT REQUESTING RECONSIDERATION OF BOTH APPLICATIONS, THE COMMISSIONER OF PATENTS RENDERED A SEPARATE DECISION IN EACH CASE DATED NOVEMBER 8, 1956, COPIES OF WHICH WERE ATTACHED TO THE LETTER OF DECEMBER 5, 1956, HOLDING THAT OUR DECISION OF JANUARY 20, 1955, B-119641, IN EFFECT RECONSIDERS THE ENTIRE QUESTION OF FEES AND PERMITS THE PATENT OFFICE TO CHARGE FEES IN GOVERNMENT-PROSECUTED APPLICATIONS UNLESS THE ENTIRE RIGHT, TITLE, AND INTEREST IN THE INVENTION IS ASSIGNED TO THE GOVERNMENT. IN HIS DECISION REGARDING THE APPLICATION COVERING THE INSTRUMENT FOR MEASURING MOISTURE CONTENT, THE COMMISSIONER STATES:

THE PATENT OFFICE INTERPRETS THE DECISION OF JANUARY 20, 1955, TO MEAN THAT FEES ARE WAIVED ONLY (1) WHERE THE APPLICATION IS FILED BY A GOVERNMENT EMPLOYEE AND ALL THE CONDITIONS SET FORTH IN SECTION 266 OF TITLE 35 U.S.C. ARE COMPLIED WITH; AND (2) WHERE THE APPLICATION IS FILED BY ONE NOT A GOVERNMENT EMPLOYEE, BUT ALL RIGHT, TITLE AND INTEREST IS IN THE GOVERNMENT OR A GOVERNMENT AGENCY. DEDICATIONS ARE APPLICABLE ONLY IN THOSE SITUATIONS WHERE THE INVENTOR IS A GOVERNMENT EMPLOYEE, AS A SUBSTITUTE FOR OR IN LIEU OF THE FEE NORMALLY REQUIRED AND THE APPLICATION IS FILED UNDER SECTION 266. DEDICATION IS NOT CONSIDERED THE EQUIVALENT OF FULL TITLE IN THE GOVERNMENT. SINCE THE CLEAR IMPORT OF THE DECISION OF JANUARY 20, 1955, IS THAT FEES MUST BE PAID WHERE SERVICES ARE RENDERED TO "ANY PARTY OTHER THAN AN AGENCY OF THE FEDERAL GOVERNMENT," AND THE INVENTORS OF THIS CASE ARE SUCH PARTIES, THERE WAS NO ERROR IN THE ACTION OF THE APPLICATION BRANCH DENYING A FILING DATE FOR THE PAPERS PRESENTED.

THE SAME VIEWS WERE EXPRESSED IN THE DECISION REGARDING THE DUMP BASKET APPLICATION. HENCE, THE MATTER WAS SUBMITTED HERE FOR OUR ADVICE.

IN ACCORDANCE WITH OUR REQUEST, THE SECRETARY OF COMMERCE PRESENTED HIS VIEWS IN THE MATTER. THE SECRETARY REITERATED THE CONTENTIONS EXPRESSED BY THE COMMISSIONER OF PATENTS IN HIS DECISIONS OF NOVEMBER 8, 1956, AND ADDED A NUMBER OF ARGUMENTS IN SUPPORT OF THE CONTENTION THAT A DEDICATION TO THE PUBLIC NEITHER CONSTITUTES COMPLETE TITLE IN THE GOVERNMENT NOR IS SO ANALOGOUS THERETO AS TO WARRANT OR JUSTIFY WAIVER OF FEES.

BOTH THE LETTER FROM THE SECRETARY OF COMMERCE AND THE CITED DECISIONS OF THE COMMISSIONER OF PATENTS DISCLOSE SOME MISUNDERSTANDING OF OUR PRIOR DECISIONS AND THEIR EFFECT UPON EACH OTHER. THE COMMISSIONER CONTENDS THAT OUR DECISION OF JANUARY 20, 1955, B-119641, REQUIRES THAT FEES MUST BE PAID WHERE SERVICES ARE RENDERED TO "ANY PARTY OTHER THAN AN AGENCY OF THE FEDERAL GOVERNMENT," AND THAT SINCE THE INVENTORS IN THE CASES HERE INVOLVED ARE SUCH PARTIES, THE FEES MUST BE PAID. THE DECISION OF JANUARY 20, 1955, WAS NOT BASED UPON THE FACT THAT A SERVICE WAS RENDERED TO A PARTY OTHER THAN AN AGENCY OF THE FEDERAL GOVERNMENT; RATHER, IT WAS BASED UPON THE FINDING THAT NO SERVICE HAD BEEN RENDERED TO ANY AGENCY OF THE FEDERAL GOVERNMENT. HAD THERE BEEN A SERVICE RENDERED TO AN AGENCY OF THE FEDERAL GOVERNMENT IN THAT CASE, THE FACT THAT INCIDENT THERETO A SERVICE ALSO WAS RENDERED TO A PARTY OTHER THAN THE FEDERAL GOVERNMENT WOULD HAVE BEEN IMMATERIAL AND THE DECISION WOULD HAVE REACHED THE OPPOSITE CONCLUSION. THIS PARTICULAR POINT WAS CLARIFIED IN OUR DECISION OF DECEMBER 17, 1956, B 129381, RENDERED SUBSEQUENT TO THE COMMISSIONER'S DECISIONS HEREIN.

ALSO, BOTH THE SECRETARY OF COMMERCE AND THE COMMISSIONER OF PATENTS CONTEND THAT OUR DECISION OF JANUARY 20, 1955, MEANS THAT FEES ARE WAIVED ONLY (1) WHERE THE APPLICATION IS FILED BY A GOVERNMENT EMPLOYEE AND ALL THE CONDITIONS SET FORTH IN SECTION 266 OF TITLE 35 U.S.C. ARE COMPLIED WITH AND (2) WHERE THE APPLICATION IS FILED BY ONE NOT A GOVERNMENT EMPLOYEE, BUT ALL RIGHT, TITLE, AND INTEREST IS IN THE GOVERNMENT OR A GOVERNMENT AGENCY. THEY FURTHER CONTEND THAT DEDICATION IS NOT EQUIVALENT TO FULL TITLE IN THE GOVERNMENT AND, HENCE, THE FEES MUST BE PAID IN THE CASES HERE INVOLVED. EVEN ASSUMING, ARGUENDO, THAT DEDICATION IS NOT EQUIVALENT TO FULL TITLE IN THE GOVERNMENT, OUR DECISIONS CONCERNING THE PAYMENT OF PATENT FEES BY GOVERNMENT AGENCIES HAVE BEEN BASED UPON THE QUESTION OF WHETHER A SERVICE WAS RENDERED TO A GOVERNMENT AGENCY, AND NOT UPON THE PRESENCE OR ABSENCE IN THE GOVERNMENT OF TITLE TO THE PATENT. THE DECISION OF JANUARY 20, 1955, WE SAID:

UPON CAREFUL RECONSIDERATION OF THE MATTER IN THE LIGHT OF THE INFORMATION AND VIEWS NOW PRESENTED BY THE SECRETARY OF COMMERCE, THE SERVICES RENDERED IN INSTANCES SIMILAR TO THAT HERE INVOLVED APPEAR TO BE MERELY THOSE RENDERED TO A NONGOVERNMENTAL INTEREST AT THE REQUEST OF A GOVERNMENT AGENCY AND NOT SERVICES RENDERED TO A GOVERNMENT AGENCY. ANY SERVICE RENDERED BY THE PATENT OFFICE TO ANY PARTY OTHER THAN AN AGENCY OF THE FEDERAL GOVERNMENT IS BEYOND THE SCOPE OF OFFICE DECISIONS OF MARCH 11 AND JULY 13, 1953, WHICH PERTAIN ONLY TO SERVICES RENDERED BY THE PATENT OFFICE TO OTHER GOVERNMENT AGENCIES.

ACCORDINGLY, SINCE THE SERVICES TO BE RENDERED HEREIN ARE NOT THOSE RENDERED BY THE PATENT OFFICE TO ANOTHER GOVERNMENT AGENCY, AND AS THE FEES TO BE PAID CONSTITUTE--- SO FAR AS THE DEPARTMENT OF THE ARMY IS CONCERNED--- PART OF THE CONSIDERATION FOR THE LICENSE, NO OBJECTION TO THEIR PAYMENT WILL BE MADE IN THIS AND SIMILAR CASES. ( ITALICS SUPPLIED.)

IT WAS DETERMINED THAT UNDER ALL THE CIRCUMSTANCES IN THAT CASE, WHERE THE GOVERNMENT HAD NO CONNECTION WITH THE INVENTION OR THE INVENTOR BUT WAS VOLUNTARILY OFFERED A LICENSE IN EXCHANGE FOR ACCEPTANCE OF THE OBLIGATION TO FILE AND PROSECUTE THE UNITED STATES PATENT APPLICATION, THE ABSENCE OF TITLE IN THE GOVERNMENT RENDERED IT A MERE AGENT OF A PRIVATE INTEREST IN OBTAINING THE PATENT, AND, HENCE, THE SERVICE RENDERED BY THE PATENT OFFICE WAS RENDERED NOT TO THE GOVERNMENT BUT TO THE PRIVATE INTEREST.

THE SITUATION INVOLVED HERE IS ENTIRELY DIFFERENT FROM THAT CONSIDERED IN THE DECISION OF JANUARY 20, 1955. YOUR DEPARTMENT IS ENGAGED IN AN EXTENSIVE PROGRAM OF RESEARCH COVERING VARIOUS ASPECTS OF AGRICULTURE AND THE MARKETING OF AGRICULTURAL PRODUCTS AS A PART OF THE PUBLIC FUNCTIONS ASSIGNED TO IT BY ACTS OF CONGRESS. SEE, FOR EXAMPLE, 7 U.S.C. 427, 427I, 1292, AND 1622. THE INVENTIONS HERE INVOLVED ARE RESULTS OF RESEARCH SPONSORED AND FINANCED BY YOUR DEPARTMENT IN ACCORDANCE WITH SUCH ACTS OF CONGRESS. THE CONTRACTS AND AGREEMENTS UNDER WHICH THIS RESEARCH WAS UNDERTAKEN PROVIDE THAT THE PATENTABLE RESULTS OF SUCH RESEARCH SHALL BE MADE AVAILABLE TO THE PUBLIC THROUGH DEDICATION, ASSIGNMENT TO THE SECRETARY OF AGRICULTURE OR SUCH OTHER MEANS AS THE SECRETARY OR OTHER RESPONSIBLE OFFICIAL OF THE DEPARTMENT OF AGRICULTURE SHALL DETERMINE. IS APPARENT THAT THESE INVENTORS ARE NOT FREE AGENTS. THEY CANNOT DO AS THEY WISH WITH THEIR INVENTIONS -- AS WAS THE SITUATION IN THE DECISION OF JANUARY 20, 1955--- BUT ARE REQUIRED BY THEIR CONTRACTS AND AGREEMENTS, AS WELL AS THE BASIC STATUTES, TO MAKE SUCH INVENTIONS AVAILABLE TO THE PUBLIC. THE INVENTION DERIVES NO DIRECT BENEFIT FROM THE INVENTION OR THE PATENT, OTHER THAN THE PRESTIGE AND SATISFACTION OF HAVING CREATED AN INVENTION WORTHY OF BEING PATENTED. THE LINES OF INQUIRY TO BE PURSUED IN THE RESEARCH AND THE MEANS BY WHICH THE PATENTABLE RESULTS THEREOF ARE TO BE MADE AVAILABLE TO THE PUBLIC ARE WITHIN THE DISCRETION OF THE SECRETARY OF AGRICULTURE. IN VIEW OF THE ACTS OF CONGRESS AUTHORIZING AND DIRECTING THE SECRETARY OF AGRICULTURE TO ENGAGE IN AND SPONSOR RESEARCH, THE INITIATION OF SUCH RESEARCH AND THE RENDERING OF THE RESULTS THEREOF AVAILABLE TO THE PUBLIC CLEARLY ARE PUBLIC FUNCTIONS OF YOUR DEPARTMENT. IT ALSO IS CLEAR THAT ANY PERSON OR AGENCY WHICH ASSISTS YOUR DEPARTMENT IN CARRYING OUT ITS PUBLIC FUNCTIONS IS RENDERING A SERVICE TO YOUR DEPARTMENT. SINCE THE SECRETARY OF AGRICULTURE IN THE EXERCISE OF HIS ADMINISTRATIVE DISCRETION HAS DETERMINED THAT THE INVENTIONS HERE INVOLVED SHOULD BE MADE AVAILABLE TO THE PUBLIC BY MEANS OF PATENTS DEDICATED TO THE FREE USE OF THE PEOPLE IN THE TERRITORY OF THE UNITED STATES, THE ISSUANCE OF THE NECESSARY PATENTS--- ASSUMING THE INVENTIONS TO BE PATENTABLE--- IS NECESSARY TO THE CARRYING OUT OF THE PUBLIC FUNCTIONS OF YOUR DEPARTMENT.

ACCORDINGLY, THE ISSUANCE OF PATENTS FOR INVENTIONS WHICH ARE THE RESULT OF RESEARCH SPONSORED AND FINANCED BY THE GOVERNMENT UNDER CONTRACTS OR AGREEMENTS REQUIRING THAT SUCH RESULTS MUST BE MADE AVAILABLE TO THE PUBLIC BY MEANS TO BE DETERMINED BY THE SECRETARY OR OTHER RESPONSIBLE OFFICIAL OF THE SPONSORING DEPARTMENT IS A SERVICE TO THE GOVERNMENT WITHIN THE MEANING OF OUR PRIOR DECISIONS CONCERNING THE PAYMENT OF PATENT FEES, REGARDLESS OF WHETHER THE SAID SECRETARY OR OTHER RESPONSIBLE OFFICIAL DETERMINES UPON DEDICATION TO THE PUBLIC OR UPON ASSIGNMENT TO THE GOVERNMENT; HENCE, THE CHARGING BY THE PATENT OFFICE AND THE PAYMENT BY THE SPONSORING DEPARTMENT OF THE FEES AND CHARGES INCIDENTAL TO THE FILING AND ISSUANCE OF THE PATENT ARE NEITHER AUTHORIZED NOR REQUIRED.