Scientific American, v 32 (ns) no 2, p 16, 9 January 1875
The Woodbury Patent
The great interest involved in this patent, and the corresponding efforts which have been put forth, both to sustain and to defeat it, have induced inquiry on our part, some of the results of which we now lay before our readers. We do not propose to discuss the validity of the patent, but only to refer to some of the extraordinary circumstances connected with its history.
The application -- which was for an improvement in planing machines -- was filed, June 3, 1848; was rejected, February 28, 1849; was withdrawn and $20 returned to the applicant, October 4, 1852. It then lay as dead as an antediluvian fossil for more than eighteen years, when, on December 5, 1870, a new application was filed by Woodbury for the same subject matter. This was unsuccessfully pressed by different attorneys for more than two years, the applicant in one case at least having offered an attorney $5,000 as a conditional fee, which was declined on account of the hopelessness of the undertaking.
On March 27, 1873, Fisher and Duncan, late Commissioners of Patents, became Woodbury's attorneys, and on April 26 following the patent was allowed. It was issued three days later, which was just two weeks earlier than it would have gone out in the regular course of business in the Patent Office. Such an advance was, it is true, not wholly without precedent; but as it always creates inconvenience and confusion, it is only allowed in very extraordinary cases. We know of nothing in this case that should have given it such a preference.
The main decision allowing the patent to Woodbury was claimed to be justified by the ruling of Judge Fisher in the Gray case. But there, the time which had elapsed between the withdrawal of the old application and the filing of the new one was less than two thirds as great as in the Woodbury case. And as abandonment -- which was the vital question in this case -- is specially declared by statute to be a question of fact, to be determined by the circumstances of each particular case, this increased length of time was a proper element to be taken into the account in forming a correct conclusion here. But the Commissioner, without taking this circumstance into consideration, and without waiting till the case was legitimately before him, made a written order that it should be decided on its merits, without taking the matter of abandonment into the account at all, which order or decision was fully observed.
Let it be remembered that the statute has provided four separate tribunals for the determination of questions of patentability. These rise in grade one above another, so that three appeals lie successively from one to that which is next above it, upon the payment of the prescribed fee in each case. The next to the highest of these tribunals is the Commissioner himself; and although he may very properly give informal advice to an examiner when consulted by him, he should no more make a binding decision until the matter is brought regularly before him than should any other appellate court, in a case still pending before an inferior tribunal.
But another act, quite as indefensible, remains to be noticed. We have stated that the statute has provided that abandonment should be treated as a question of fact. That rule is made specially applicable to cases like this. Accordingly, the 41st rule of official practice provides, in these old rejected or withdrawn cases, that "Upon the hearing of such renewed applications of either class, patents will be refused if it be found that the parties have abandoned their inventions; and in order that opportunity may be given for the production of proof of abandonment, or of two years' public use, if either exists, an interference will, at the discretion of the Office, be declared between the renewed application and all applications made, or patents granted, in which the device in controversy has been claimed or described."
Now, the discretion which is thus to be exercised means a sound and just discretion, and not one that is controlled by caprice or by favoritism. And there has never been a case since the act of 1870 was passed, and probably there never will be one hereafter, where such an interference, for the purpose mentioned in the rule, was ever more imperatively required than this. But, as we are informed, the Commissioner gave instruction that, in this case, no interference should be declared, and the patent was issued accordingly.
Now we do not intend to be unjust, or even uncharitable, towards the Commissioner; but in all candor and sincerity, we feel bound to say that these proceedings have altogether been most extraordinary, and well calculated to create a suspicion that the strict impartiality which is so necessary to secure that public confidence in the management of the Patent Office which is necessary to its ultimate success, has not been here observed. The interests of the Office require not only uprightness in its head, but also the absence of whatever may create a suspicion of the want of it. The question naturally arises whether the same favor would have been extended to this case, and the same alacrity manifested in overstepping the line of strict official propriety, if the matter had been in the hands of other attorneys. Rightfully or wrongfully, the idea of rings within the Office, is not unnaturally suggested by the facts of this case than which nothing can be more detrimental to the interests of the Office.
We have written not in malice or unkindness, but with an earnest desire to benefit the Patent Office, and through it, the great body of meritorious inventors whose welfare we believed to be in no little peril. The cheapest and most effectual way of securing uprightness and propriety of action in any public officer is, in a candid and just way, to spread his acts of those of others in like predicament fully before the public. This is well calculated to prevent those mistakes which arise through carelessness or inadvertence, as well as to correct those which may have had a different origin.
The Commissioner of Patents on the Patent Office Tea Set
United States Patent Office
Washington, December 19, 1874
Messrs Munn & Co.
Gentlemen: -- I do not intend to take any notice of mere criticisms of myself or my official actions, which may appear in various newspapers. In the Scientific American bearing date December 26th, 1874, however, there appears under the head of correspondence, on the 404th page a charge so direct, that it passes beyond the domain of criticism and becomes libelous. This charge in relation to my connection with the presentation of a tea set, to my predecessor, is an unmitigated falsehood. The facts are that the affair was originated and prosecuted without my knowledge and during my absence from this city. I never signed the subscription paper for this set, and in fact have never seen it. If my name appears thereon, it has been put there by some one without my knowledge, and without authority from me.
Furthermore, I have not paid, or agreed to pay one single cent for this tea set for General Leggett, and I do not intend to make any payment for this purpose in the future.
I now demand that, in your next issue, you make a distinct and definite retraction of the libelous charge against me, in accordance with the facts of the case. I also demand that you will either compel your correspondent to make such retraction in a letter to be published in your paper, or furnish me the name of such correspondent, that I may make such demand upon him as the circumstances require.
I am prepared and determined to protect my good name and reputation from all libelous charges.
I am, Gentlemen, very respectfully yours,
J.M. Thacher, Commissioner of Patents
Referring to the letter of our correspondent, page 404, last volume, we find it there stated that "the present Commissioner headed the list with $50."
To any one acquainted with the exalted and honorable character of Commissioner Thacher, his mere assurance that this statement was in error would have been quite sufficient, but in compliance with his desire that we should make the correction very distinct and explicit, we have chosen to use his own vigorous language. No candid person, we think, can read his letter without exonerating him entirely from all connection with the affair to which it refers. By reference to another column, it will be seen that our correspondent also makes the amende honorable. Heretofore his information has always proved reliable; how he could have fallen into so palpable an error is to us unaccountable. We regret that the publication of our correspondent's letter should have done the Commissioner an injustice.
Having thus discharged a simple duty in the prompt correction of a matter personal to the Commissioner, it may not be out of place for us to add a few comments, naturally suggested by his letter.
In these degenerate days, when many of our public men are so forgetful of personal honor and integrity as to engage in violations of the law, winking at or concealing its infractions or neglecting to execute its provisions; at such a time, it is refreshing to find one public officer at Washington, in the person of Commissioner Thacher, who appears to entertain a high and proper sense of his obligations. It is greatly to his credit that resents with indignation, regarding it as a libel upon his character, the suggestion that he has been, either directly or indirectly, connected with the Patent Office Tea Set presentation. He recognizes the binding force of the statute provided for such cases, so far as he is personally concerned, and evidently desires that the law shall be respected.
The statute in question, is as follows: --
"Be it enacted, etc.: That no officer or clerk in the United States Government employ shall at any time solicit contributions of any other officials or employees in the Government service for a gift or present to those in a superior official position, nor shall any such officials or clerical superiors receive any gift or present offered or presented to them as the contribution of those in the Government employ receiving a less salary than themselves; nor shall any officer or clerk make any donation as a gift or present to any official superior. Any officer or clerk violating any of the provisions of this bill shall be summarily discharged from the Government employ."
If the erroneous charge of a misinformed correspondent, of an infraction of the law, is considered by the Commissioner as a libelous reflection upon his character, as stated in his letter, we may readily imagine with what keen abhorrence he must regard those members of the Patent Office company, who were actually guilty of doing the forbidden thing; with whom he is not only compelled to associate day after day, but even to witness and assist their official actions. Nothing could be more galling than this to a highly sensitive and honorable nature like that of the Commissioner.
All appointments in the Patent Office, except five, are, under law, made by the Commissioner and the Secretary of the Interior; hence it is the duty of one or both of these officers to see that the law above cited is carried out. But between them they have managed, somehow, up to the present time, to shirk the responsibility. There is a gross violation of duty somewhere. The Commissioner of Patents has at last spoken on the subject, and the legitimate inference from what he tells us is that he would be only too glad to execute the law if he had it in his power; but considers it not his business but that of the Secretary of the Interior. We hope the Secretary will now give us his views of the matter. Congress may then be able to determine where the delinquency exists, and apply a suitable remedy.
The Patent Office Tea Set -- A Correction
To the Editor of the Scientific American
I learn that, in my note published in your paper of December 26, 1874, I did Mr. Thacher an injustice by stating that he headed the list of subscribers for the tea set with $50. The statement was made on what I believed to be good authority, and with no intention of wronging any one. I now desire, in the same spirit of fairness, to say that Mr. Thacher did not join in the subscription, and did not give anything toward paying for it.
Printing the Patents
Recently, in the House of Representatives, the committee on appropriations reported a clause authorizing the expenditure from the patent fund of $40,000, for producing copies of current and back issues of the patents, whereupon several gentlemen took occasion to express their sentiments.
It is gratifying to observe that all of the speakers were in favor of having the back patents printed as early as practicable; and although they did not sanction a sufficient appropriation for the work this time, they did something towards it, and expressed the opinion that next year it should be wholly accomplished. Mr. Meyers thought that the proposed printing would greatly benefit inventors. "We should," he said, "consult their best interests, and in doing so will always develop the inventive genius of our people."
Mr. Conger said: "I think it very necessary and essential to the interests of inventors, who pay these expenses in the end, that as large an amount as it is possible shall be appropriated.
Mr. Garfield was in favor of a larger appropriation, but thought it impracticable at present to use it, owing to the crowded state of the patent Office, and the consequent necessity of hiring space, at a heavy cost, if additional draftsmen were to be employed.
How to Rush a Patent Through
It appears that the best way to get a new patent rushed through and quickly issued is to apply at the presidential mansion. In a recent case -- a telegraph contrivance -- the President wrote a letter to the Commissioner of Patents, requesting him to take immediate action, for the reason that the invention was needed for use by the government, and had already been adopted on the government lines. Whereupon the Commissioner issued a patent, "quicker," to use a homely expression, "than you could say Jack." But we think it will strike most of our readers, as it does ourselves, that the reasons assigned might have been more properly used for postponing instead of hastening the grant of the patent. In the case of a poor inventor, whose application has been long pending, the Patent Office should be as prompt as possible. But with respect to inventors for which the government patronage has already been secured, as in the present case, what possible difference can it make to the government whether the patent is granted today or next month?
All unnecessary interference with the usual order of business at the Patent Office, whether by the President or any other public functionary, is pretty sure to create dissatisfaction, and should be scrupulously avoided. Instead of writing requests in favor the interests of his personal friends, it would be much better if President Grant would indite communications something like the following:
To the Commissioner of Patents
I am informed that many applications for patents are lying in your Office unexamined, and that, in the class which embraces telegraph apparatus, there are cases filed more than a year ago, which still remain undisposed of. This is a crying shame and ought no longer to be tolerated. No class of individuals has done so much for the benefit of the country as our inventors; and when they apply for patents, every possible endeavor ought to be made by the Patent Office to give them a prompt and favorable hearing.
With the large corps of assistants under your command, numbering, as I understand, about five hundred persons, including one hundred examiners, is it not possible for you to bring up the business now in arrears, and in future to have things attended to with more promptitude?
I see by your report for last year that you rejected between five and six thousand applications for patents. It must have required an immense amount of time and labor on the part of your people to hunt up reasons for this enormous mass of adverse decisions.
Do you fully realize that the majority of these five thousand rejected applications are poor people, and that your rejections, especially if wrong, carry injury and disappointment into that number of families?
For my part, were I Commissioner of Patents, I would not hesitate to grant a hundred doubtful patents rather than to take the risk of depriving one of my inventive countrymen of the full benefits which the law intended to give him.
I beg to remind you that the object of the patent Office as intimated in the Constitution, is to encourage the progress of the useful arts by the grant of patents to inventors. But if I were to judge, from your great number of rejected cases, I should say that the Patent Office appeared to consider its prime duty to be, to refuse to grant patents.
I have confidence in your ability to remedy the unsatisfactory state of things I have mentioned, and I shall look to you for immediate and effective action. Let us have peace.
An Important Patent Office Decision
We published last week a recent decision by the Commissioner of patents, in which he announced the adoption of a new rule and practice at the Patent Office in respect to old rejected cases. The decision was to the effect that rejected cases of more than two years' standing are not in future, except under certain circumstances, to prevent the grant of new applications for patents. This decision substantially recognizes and adopts the view expressed in the recently rendered decision of the Board of Examiners-in-Chief in the case of Greenleaf and Adams.
The latter decision, in addition to the above dictum, contains another important announcement, to the effect that the Board of Examiners-in-Chief is a tribunal having independent judicial powers. Its decisions are, therefore, binding upon the Commissioner and all persons and actions of the Patent Office, until set aside by a higher tribunal.
This is a very interesting and important adjudication, because, when properly recognized, its tendency is to render the decisions and practice of the Patent Office more uniform and reliable than heretofore. The notion has heretofore prevailed that the Commissioner was the absolute ruler of the Patent Office, and that he might, if he saw fit, set aside any decisions of the Examiners, or of the Board of Examiners-in-Chief. But it now appears that he cannot lawfully do so.
The decision is very ably written, and it is so interesting and important that we commence the publication of the text in full on another page.
The New Rule of the Patent Office
Contrary to the uniform and long-established practice of the Office, the Commissioner has recently promulgated a rule that hereafter no rejected and abandoned application shall be a competent reference on which to reject an application for patent. A person may now hunt among the models of rejected applications, to which free access is allowed; and if he finds anything that has never been patented, or described in a printed publication, or gone into public use, he may -- if he can bring his conscience to the sticking point for making the necessary affidavit -- obtain a patent therefor which will be good and valid against all the world for seventeen years. It is true that an affirmation, showing that he had derived his knowledge of the invention in the manner just supposed, would defeat his action for infringement; but such proof can rarely be obtained.
The patent law denies a patent unless, among other requirements, the thing patented was "not known or used by others in this country" prior to its invention by the applicant; and after the patent is obtained, it may be defeated by showing that the patentee "was not the original and first inventor or discoverer of the thing patented." A quarter of a century ago, Judge Cranch had decided that an invention was completed and reduced to practice when, by means of models, drawings, and other descriptions, it was set forth in such terms that a person skilled in that particular art could reproduce the invention so described. When this was done, therefore, in an application for patent, the invention was known in this country, and no other person could afterwards be the original and first inventor thereof.
The rule embodied in this decision has governed the action of the Patent Office ever since, until the recent change. A rejected application was therefore regarded as just as good a reference on which to reject a new application as a patent itself would have been. The importance of preserving and arranging the files, models, and drawings of all rejected applications was therefore manifest.
The business of the Office has grown up chiefly under the rule above referred to, and the education of the practitioners therein has been shaped accordingly. The change of the rule, without any corresponding change of the statute naturally created no little surprise and aroused a feeling of disapproval in our minds.
But upon reviewing the action of the Federal courts on this subject for several years past, we find that they have been gradually drifting away from the rule laid down by Judge Cranch, and the views of the inferior courts in this respect have finally been sanctioned and confirmed by the Supreme Court of the United States. We are far from being the advocates of what Mr. Jefferson used to denominate judge-made laws. We believe that the proper duty of the judiciary is to give effect to the statute, according to its fair intent and meaning -- leaving to the legislative department the duty of correcting whatever may be thought amiss in the law as it exists. When the courts overstep this rule and undertake, by construction, to change the statute into what they think it should be, they launch forth upon a sea of uncertainty, and find themselves the authors of unnecessary difficulties for which there is no adequate compensation. Different judges will have different views of expediency. No one can tell into what shape prevailing doubts will finally crystallize. The most intelligent members of the profession find themselves incapable of giving reliable opinions, and property in patents becomes to a needless extent a gambling contrivance. To us it has always seemed as though the ruling of Judge Cranch, above referred to, was in substantial accordance with the statute, and that, if thought erroneous, an act of Congress was the proper remedy, especially after it had been so long recognized and acquiesced in by the Office.
But the ultimate decision of the courts is the rule to be observed in administering these and all other laws. Whatever may be our individual opinions, the court of last resort must be regarded as being endowed with judicial infallibility so far as our own subsequent actions are concerned. The rule of the Patent Office should be made to harmonize therewith, and the Commissioner was bound by his duty to act accordingly. This he seems to have done by the establishment of the rule we have been considering, and to which the conduct of all interested parties must be made to conform.
This rule will to a great extent dispense with the necessity of preserving the files, models, or drawings of abandoned applications, or at all events of leaving them open to public inspection. Until the applications are abandoned, the previous rules of the Office preserved them in secret. After their abandonment, they can hardly be needed for any commendable purpose, and perhaps their preservation might be discontinued altogether, to the great relief and convenience of the Office. With this matter, however, we do not intend to meddle at present.
A New Form of Patent Litigation
In a recent article, commenting upon the relative number of patent litigations in England, where they grant a patent to every applicant, without official examination, and in this country, where we reject over five thousand applicants for patents yearly, and employ a standing force of five hundred officials to examine, or assist the examiners, we showed that in England, out of thirty thousand cases yearly, only eight were patent litigations. We further intimated that a very large amount of patent litigation, of a character wholly unknown in England, was carried on here, and was a necessary adjunct to our patent system. We allude to the litigations before the Patent Office, such as re-examinations, appeals to the Board of Examiners, interferences, appeals to the Commissioner in person, appeals from the Commissioner to the District Court, etc.
A new wrinkle in this sort of litigations, and a new direction for appeals, has lately appeared, which seems to indicate that the time has come when Congress should, by the adoption of wise legislation, put an end to this whole business of Patent Office quarreling.
Among the other duties of the Secretary of the Interior, he is required to sign all patents after they are prepared, passed, and approved by the Commissioner of Patents.
On a recent occasion, when the Commissioner, after a long and full argument of the matter before him, had decided the case of Prescott vs. Edison, in favor of Prescott, ordering a patent to issue in the joint names, the defendant applied to the Secretary of the Interior and petitioned him not to sign or issue the patent. The subject of controversy was a telegraph apparatus. The Secretary granted the request, and decided to hear the argument. This was on the 20th of March, 1875, and no decision has been as yet reached. Meantime the contending parties have marshalled their legal forces before the Secretary, consisting of six of our most able and expensive lawyers, have argued and re-argued, and have filed scores of pages of printed fol-de-rol upon the subject, for the Secretary's consideration. If one dissatisfied applicant may thus occupy the Secretary's time, all applicants ought to have the same privilege. If the Secretary may nullify one legitimate decision of the Commissioner of Patents, he may nullify all.
They money costs of this one litigation before the Commissioner and the Secretary are stated to have reached, at the present time, over fifty thousand dollars. Jay Gould, it is said, is an interested party on the one side, and the Western Union Telegraph Company on the other. Jay is doing all he can to injure the Western Union Company by running down its stock and inflating the stock of a rival company, of which he owns the control.
This case is a little more prominent and has been more expensive than many that are litigated at the Patent Office. but it is notorious that a very large proportion of the time of the Patent Office is devoted, in one way or another, to these litigations, which, in the aggregate, involve great expense, but would become obsolete, as they are in England, if we were to adopt the English system of permitting the applicant to make his own examination if he so desires, but confining the duty of the Patent Office to the prompt issue of a patent to every applicant whose papers are presented in proper form.
It is alleged by the advocates of the American system that, if our official examination and Patent Office wrangles were abolished, then the courts would be overwhelmed with patent litigations. But the experience of other nations shows that no such result would ensue. In England, as before stated, they have only eight patent litigations before the courts per annum; while in France, Belgium, and other countries, where no official examination and no Patent Office litigations take place, the number of patent cases brought before the courts is very small.