B-119641, JANUARY 20, 1955, 34 COMP. GEN. 340

B-119641, JANUARY 20, 1955, 34 COMP. GEN. 340

FEES - PATENT OBTAINED BY GOVERNMENT AGENCY FOR NON-GOVERNMENT INTEREST 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. 33 COMP. GEN. 559, MODIFIED.

ASSISTANT COMPTROLLER GENERAL WEITZEL TO THE SECRETARY OF THE ARMY, JANUARY 20, 1955:

REFERENCE IS MADE TO LETTER DATED AUGUST 6, 1954, FROM THE ACTING SECRETARY OF THE ARMY, REFERRING TO OFFICE DECISION OF MAY 18, 1954, B 119641, 33 COMP. GEN. 559, AND REQUESTING FURTHER ADVICE AS TO THE ACTION TO BE TAKEN BY YOUR DEPARTMENT IN THE LIGHT OF ADDITIONAL INFORMATION NOW OF RECORD.

THE DECISION OF MAY 18 WAS RENDERED IN RESPONSE TO YOUR INQUIRY AS TO WHETHER THE PATENT OFFICE MAY REQUIRE AGENCIES OF THE FEDERAL GOVERNMENT TO PAY THE FEES AND CHARGES INCIDENTAL TO THE FILING AND PROSECUTION OF A PATENT APPLICATION, AS PRESCRIBED BY RULE 21 OF THE RULES OF PRACTICE OF THE UNITED STATES PATENT OFFICE, IN CASES WHERE THE GOVERNMENT BY FORMAL CONTRACT OR INTERNATIONAL AGREEMENT HAS ASSUMED RESPONSIBILITY FOR SUCH COSTS IN EXCHANGE FOR A LICENSE. THE SPECIFIC CASE REFERRED TO INVOLVED AN AGREEMENT BETWEEN YOUR DEPARTMENT AND THE BRITISH JOINT SERVICES MISSION WHEREBY THE UNITED STATES GOVERNMENT WAS GRANTED A NONEXCLUSIVE, IRREVOCABLE, NONTRANSFERABLE, ROYALTY-FREE LICENSE TO AN INVENTION, THE CONSIDERATION FOR SUCH LICENSE BEING THE ACCEPTANCE BY THE DEPARTMENT OF THE ARMY OF AN OBLIGATION TO FILE AND PROSECUTE THE UNITED STATES PATENT APPLICATION FREE OF COST TO THE UNITED KINGDOM AND TO ASSUME FULL RESPONSIBILITY FOR PAYMENT OF ALL COSTS ASSOCIATED WITH SUCH FILING AND PRESENTATION. IT WAS HELD IN THE DECISION OF MAY 18 THAT, UNDER OFFICE RULINGS IN 32 COMP. GEN. 392 AND 33 COMP. GEN. 27, YOUR DEPARTMENT WAS NEITHER AUTHORIZED NOR REQUIRED TO MAKE PAYMENT OF THE FEES IN QUESTION. THE LETTER OF AUGUST 6, 1954, ADVISES THAT NOTWITHSTANDING THE DECISION OF MAY 18, 1954, THE COMMISSIONER OF PATENTS HAS REFUSED TO PROCESS THE PATENT APPLICATION UNTIL EITHER THE $30 FILING FEE OR AN ASSIGNMENT TO THE GOVERNMENT CONVEYING THE ENTIRE RIGHT, TITLE AND INTEREST TO THE INVENTION COVERED THEREBY WAS RECEIVED IN THE PATENT OFFICE, THUS CREATING AN IMPRACTICAL SITUATION WHICH JEOPARDIZES THE INTERESTS OF BOTH THE UNITED STATES AND GREAT BRITAIN.

IN THE COURSE OF CONSIDERATION OF THE MATTER THE VIEWS OF THE SECRETARY OF COMMERCE WERE REQUESTED. IN HIS REPLY OF NOVEMBER 1, 1954, THE SECRETARY SETS FORTH THE POSITION OF THE PATENT OFFICE IN THE MATTER, WHICH POSITION IS IN PART AS FOLLOWS:

IN VIEW OF A PRIOR RULING OF YOUR OFFICE, (B-111648, JULY 13, 1953), THE PATENT OFFICE HAS BEEN ACCEPTING, WITHOUT FEE, APPLICATIONS ON WHICH THE PATENT IS TO BE GRANTED TO THE GOVERNMENT, ON THE THEORY THAT THE SERVICE IS BEING RENDERED TO THE GOVERNMENT. THE CASE HERE UNDER CONSIDERATION IS NOT OF THAT TYPE BUT IS ONE IN WHICH THE ENTIRE INTEREST IN THE PATENT TO BE GRANTED WILL VEST IN AN INDIVIDUAL OR FIRM, NO GOVERNMENT EMPLOYEES BEING INVOLVED, AND THE GOVERNMENT RECEIVES NOTHING BUT AN IMMUNITY FROM SUIT. UNTIL THE ISSUANCE OF A PATENT, SUCH IMMUNITY EXISTS. AFTER ISSUANCE, IMMUNITY WILL DEPEND ON A LICENSE OF OTHER CONTRACTUAL RIGHT. IMMUNITY BASED ON A LICENSE IS NOT A RIGHT IN A PATENT ( MOTO METER COMPANY V. NATIONAL GAUGE AND EQUIPMENT CO., 31 F.2D 994; ROBINSON ON PATENTS, SECTION 763, 806). THE QUESTION PRESENTED, THEREFORE, IS NOT WHETHER THE PATENT OFFICE SHOULD PERFORM A SERVICE FOR THE GOVERNMENT WITHOUT FEE, BUT IS WHETHER, AT THE REQUEST OF ANY OTHER GOVERNMENT AGENCY, IT SHOULD PERFORM SERVICES FREE OF CHARGE FOR INDIVIDUALS WHO ARE NOT GOVERNMENT EMPLOYEES.

SECTION 41 OF TITLE 35 OF THE U.S.C. CONTAINS THE FOLLOWING PROVISION:

"THE COMMISSIONER SHALL CHARGE THE FOLLOWING FEES: 1. ON FILING EACH APPLICATION FOR AN ORIGINAL PATENT, EXCEPT IN DESIGN CASES, $30...'

THE COMMISSIONER IS MADE RESPONSIBLE FOR THE COLLECTION OF THE FEE, AND THE LANGUAGE IS MANDATORY. THE ONLY EXCEPTION TO THE REQUIREMENT IS FOUND IN 35 U.S.C. 266, WHICH IS AS FOLLOWS:

THE COMMISSIONER MAY GRANT, SUBJECT TO THE PROVISIONS OF THIS TITLE, TO ANY OFFICER, ENLISTED MAN, OR EMPLOYEE OF THE GOVERNMENT, EXCEPT OFFICERS AND EMPLOYEES OF THE PATENT OFFICE, A PATENT WITHOUT THE PAYMENT OF FEES, WHEN THE HEAD OF A DEPARTMENT OF AGENCY CERTIFIES THE INVENTION IS USED OR LIKELY TO BE USED IN THE PUBLIC INTEREST AND THE APPLICANT IN HIS APPLICATION STATES THAT THE INVENTION DESCRIBED THEREIN, IF PATENTED, MAY BE MANUFACTURED AND USED BY OR FOR THE GOVERNMENT FOR GOVERNMENTAL PURPOSES WITHOUT THE PAYMENT TO HIM OF ANY ROYALTY THEREON, WHICH STIPULATION SHALL BE INCLUDED IN THE PATENT.

IT WILL BE NOTED THAT THE INTEREST OF THE GOVERNMENT IN THE CASES REFERRED TO IN THE SECTION JUST QUOTED IS EXACTLY THE SAME AS IN THE CASE HERE UNDER CONSIDERATION, NAMELY, A NONEXCLUSIVE LICENSE, AND THAT THE PATENT WOULD BE REQUESTED BY SOME GOVERNMENT AGENCY, SINCE THE HEAD OF AN AGENCY OR DEPARTMENT IS REQUIRED TO CERTIFY TO A PUBLIC INTEREST IN THE MATTER. NEVERTHELESS, THE STATUTE LIMITS SUCH FEE EXEMPT CASES TO GOVERNMENT OFFICERS OR EMPLOYEES. IT DOES NOT SEEM REASONABLE TO SUPPOSE THAT CONGRESS WOULD HAVE ENACTED SECTION 266 AND INCLUDED THE EXPRESS LIMITATIONS THEREIN IF IT HAD INTENDED THAT PATENTS SHOULD BE ISSUED WITHOUT FEE TO ANY INDIVIDUAL OR FIRM UPON THE MERE REQUEST OF ANY GOVERNMENT AGENCY. TO ACCEPT THE PRESENT APPLICATION WITHOUT FEE WOULD BE, IN EFFECT, TO DELETE AN EXPRESS LIMITATION FROM SECTION 266. IT DOES NOT APPEAR THAT THIS PARTICULAR ASPECT OF THE CASE HAS BEEN PRESENTED TO OR CONSIDERED BY YOUR OFFICE.

ASIDE FROM THE QUESTION OF LEGAL INTERPRETATION, IT IS NOTED THAT MANY CASES OF THE KIND HERE INVOLVED HAVE BEEN PRESENTED IN WHICH SOME GOVERNMENT AGENCY UNDERTAKES TO OBTAIN A PATENT FOR A FIRM OR INDIVIDUAL IN RETURN FOR SERVICES RENDERED BY IT. IT SEEMS IMPROPER TO PLACE THE EXPENSE OF OBTAINING THE PATENT IN SUCH CASES AS THE PATENT OFFICE. WHERE A GOVERNMENT AGENCY IS MERELY ACTING AS THE AGENT OF A PRIVATE INTEREST IN OBTAINING A PATENT, THERE WOULD SEEM TO BE NO PROPER BASIS FOR A WAIVER OF THE STATUTORY FEE.

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 NO 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 ..END :