B-119641, MAY 18, 1954, 33 COMP. GEN. 559

B-119641, MAY 18, 1954, 33 COMP. GEN. 559

PATENT OFFICE FEES - IMMUNITY OF GOVERNMENT AGENCIES - DEPENDENCY UPON EXTENT OF GOVERNMENT'S RIGHT, TITLE OR INTEREST IN PATENT A GOVERNMENT AGENCY WHICH ASSUMES RESPONSIBILITY FOR PATENT FEES AND CHARGES UNDER FORMAL CONTRACT OR INTERNATIONAL AGREEMENT, IN EXCHANGE FOR A LICENSE TO AN INVENTION, MAY NOT BE REQUIRED BY THE PATENT OFFICE TO PAY COSTS OF PROCESSING PATENT APPLICATION ON BASIS THAT ENTIRE RIGHT, TITLE AND INTEREST IN THE INVENTION IS NOT IN OR ASSIGNED TO THE GOVERNMENT. COMP. GEN. 27, AMPLIFIED.

ACTING COMPTROLLER GENERAL WEITZEL TO THE SECRETARY OF THE ARMY, MAY 18, 1954:

REFERENCE IS MADE TO YOUR LETTER OF APRIL 6, 1954, REQUESTING ADVICE 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 PATENT CASES WHERE THE GOVERNMENT BY FORMAL CONTRACT OR INTERNATIONAL AGREEMENT HAS ASSUMED RESPONSIBILITY FOR SUCH COSTS IN EXCHANGE FOR A LICENSE.

IT IS STATED IN YOUR LETTER THAT THE BRITISH JOINT SERVICES MISSION INFORMALLY AGREED TO GRANT TO THE UNITED STATES GOVERNMENT A NONEXCLUSIVE, IRREVOCABLE, NON-TRANSFERABLE, ROYALTY-FREE LICENSE TO AN INVENTION KNOWN AS A " PROCESS FOR THE MANUFACTURE OF ORGANIC PHOSPHORUS COMPOUNDS" PROVIDED THAT YOUR DEPARTMENT WOULD FILE AND PROSECUTE THE UNITED STATES PATENT APPLICATION THEREFOR FREE OF COST TO THE UNITED KINGDOM AND ASSUME FULL RESPONSIBILITY FOR PAYMENT OF ALL COSTS ASSOCIATED WITH SUCH FILING AND PROSECUTION. PURSUANT TO SUCH AGREEMENT, THE PATENT APPLICATION WAS SUBMITTED TO THE PATENT OFFICE BY YOUR DEPARTMENT, BUT BY LETTER OF DECEMBER 11, 1953, YOUR DEPARTMENT WAS ADVISED BY THE PATENT OFFICE THAT SINCE THE APPLICATION WAS NOT ACCOMPANIED BY AN ASSIGNMENT TO THE GOVERNMENT OF THE ENTIRE RIGHT, TITLE AND INTEREST IN AND TO THE INVENTION COVERED THEREBY OR A STATEMENT THAT SUCH ASSIGNMENT WOULD BE PROCURED, THE APPLICATION WOULD BE HELD INFORMAL AND WOULD NOT BE PROCESSED UNTIL THERE WAS FURNISHED EITHER THE FILING FEE PRESCRIBED BY RULE 21 OR THE REQUIRED ASSIGNMENT TO THE GOVERNMENT.

BY DECISION OF THIS OFFICE DATED MARCH 11, 1953, B-111648, 32 COMP. GEN. 392, COPY OF WHICH WAS FURNISHED THE SECRETARY OF COMMERCE, YOU WERE ADVISED THAT THERE WAS NO AUTHORITY OF LAW FOR THE IMPOSITION AND COLLECTION FROM THE DEPARTMENT OF THE ARMY OF THE FEES AND CHARGES PRESCRIBED BY SAID RULE 21. IN RESPONSE TO A REQUEST FROM THE SECRETARY OF COMMERCE FOR A RECONSIDERATION OF THIS DECISION AND CLARIFICATION OF THE SCOPE THEREOF, THERE WAS RENDERED THE DECISION OF JULY 13, 1953, B- 11648, PUBLISHED AT 33 COMP. GEN. 27, WHEREIN THE PRIOR DECISION WAS AFFIRMED AND THE SECRETARY OF COMMERCE ADVISED THAT THE PAYMENT BY AGENCIES OF THE FEDERAL GOVERNMENT OF ANY OF THE FEES AND CHARGES PRESCRIBED BY RULE 21 OF THE RULES OF PRACTICE IN PATENT CASES WAS NOT AUTHORIZED.

ALSO PERTINENT TO THE MATTER IN QUESTION IS THE DECISION OF THIS OFFICE DATED DECEMBER 14, 1953, B-117353. THAT DECISION CONCERNED TWO SITUATIONS WHEREIN THE PATENT OFFICE REQUESTED THE DEPARTMENT OF AGRICULTURE TO PAY RULE 21 FEES FOR FILING AND PROSECUTING TWO APPLICATIONS FOR PATENTS DEDICATED TO THE PUBLIC, IN THE BELIEF THAT SUCH CASES WERE EXCEPTIONS TO THE RULINGS CITED HEREINABOVE. IN ONE SITUATION THE INVENTOR WAS AN EMPLOYEE OF A PRIVATE ORGANIZATION, THE INVENTION ARISING OUT OF WORK DONE UNDER A CONTRACT BETWEEN THE DEPARTMENT OF AGRICULTURE AND TWO WERE EMPLOYEES OF PRIVATE COMPANIES, THE INVENTION ARISING OUT OF WORK DONE UNDER A GOVERNMENT-SPONSORED PROJECT. IN BOTH INSTANCES THE INVENTIONS WERE DEDICATED TO THE FREE USE OF THE PEOPLE IN THE TERRITORY OF THE UNITED STATES. IT WAS HELD THEREIN THAT THE DECISION OF JULY 13, 1953, SUPRA, WAS APPLICABLE TO THE SITUATIONS THERE INVOLVED AND HENCE THE DEPARTMENT OF AGRICULTURE WAS NOT AUTHORIZED OR REQUIRED TO PAY THE FEES FOR FILING AND PROSECUTING PATENT APPLICATIONS AS PRESCRIBED BY RULE 21.

IT IS APPARENT FROM THE ABOVE THAT THE IMMUNITY OF GOVERNMENT AGENCIES FROM THE FEES AND CHARGES PRESCRIBED BY RULE 21 IS NOT DEPENDENT UPON THE EXTENT OF THE GOVERNMENT'S RIGHT, TITLE OR INTEREST IN THE PATENT INVOLVED BUT ARISES FROM THE FACT THAT NONE OF THE STATUTES PRESCRIBING SCHEDULES OF PATENT FEES REQUIRE EXPRESSLY OR BY NECESSARY IMPLICATION THE COLLECTION OF FEES FROM OTHER AGENCIES OF THE GOVERNMENT. ACCORDINGLY, YOUR DEPARTMENT IS NEITHER AUTHORIZED NOR REQUIRED TO MAKE PAYMENT OF THE FEES IN QUESTION.