CHAPTER 26 PATENTS Applications for patents important to arma- | Inventions by military or civilian personnel ment or defense not to be regarded as abandoned, 1367. Publication of inventions during war; compensation for use by Government, 1368. of the Government, 1369. Remedy for unlicensed use of inventions by the United States, 1370. 1367. Applications for patents important to armament or defense not to be regarded as abandoned. That section 4894 of the Revised Statutes of the United States be amended by striking out the words “one year" wherever they appear and substituting therefor the words "six months." Sec. 1, act of Mar. 2, 1927 (44 Stat. 1335); U. S. C. 35: 37. The above provision, omitted from the original text of the Military Laws, 1929, is added as the second paragraph of this section. 1368. Publication of inventions during war; compensation for use by Government. NOTES OF DECISIONS In general. No recovery can be had for compensation for Government use under this section unless a secrecy order as therein provided for has been made. That an inventor has kept his invention secret in war time without such an order is not sufficient. Rodman Chemical Co. v. U. S. (1928), 65 Ct. Cls. 39, certiorari denied (1928) 277 U. S. 592. not, by enlargement of his claim, render the Government liable for infringement of the enlarged claim prior to the renewal of the application. Gathmann v. U. S. (1931), 71 Ct. Cls. 680. The right under the act of October 6, 1917, to sue the United States for compensation for the use of an invention whose secrecy is enjoined, is dependent upon an express tender of such use, disclosing sufficient to put the United States upon notice that to use the invention involves liability to pay compensation. Ordnance Engineering Corporation v. U. S. (1929), 68 Ct. Cls. 301. Where an inventor, whose claim has been allowed, and against whom a secrecy order has been issued under the act of October 6, 1917, instead of taking out letters patent upon revocation of the order forfeits his case and renews the application, he may 1369. Inventions by military or civilian personnel of the Government. * Provided, That any invention or discovery made by virtue of and incidental to such service by an employee of the Government of the United States serving under this section, or by any employee of the Corporation, together with any patents which may be granted thereon, shall be the sole and exclusive property of the Corporation, which is hereby authorized to grant such licenses thereunder as shall be authorized by the board: Provided further, That the board may pay to such inventor such sum from the income from sale of licenses as it may deem proper. Sec. 5, act of May 18, 1933 (48 Stat. 62); U. S. C. 16: 831d. "U. S. C. 50: 84" should be added to the citation to the second paragraph of the original section, based on act of March 3, 1875 (18 Stat. 455) (J. A. G. 010.3, October 20, 1930, p. 135). The above provision is added as a new paragraph. The corporation referred to is the "Tennessee Valley Authority", established by 2085, post. NOTES OF DECISIONS In general. The first paragraph of the original text of this section is applicable to those who are actually in the service of the Government, whether permanently or temporarily, at the time the right to apply for a patent accrues. Eligibility for its benefits is not affected (1) By death or separation from the service subsequent to filing application but before issue of patent; (2) By the fact that the invention was made prior to employment of inventor by the Government; (3) By the fact that, because of technical work involved, the application is not actually filed until after termination of employment. The statute is not applicable—(1) To employees who have acquired patent rights by contract with inventors not in the service of the United States; (2) To joint inventors, one or more of whom is without Government connection. 38 Op. Atty. Gen. No. 35, Jan. 14, 1936. Rights of Government.-Where Government employee's invention is made at Government expense, his personal interest in invention belongs to Government. Selden Co. v. National Aniline & Chemical Co., Inc., (D.C. 1930) 48 F. (2d) 270. Government, as employer, has no greater right to inventions made by its employees than other employers. U. S. v. Dubilier Condenser Corporation (D. C. 1931) 49 F. (2d) 306. United States held not entitled to inventions made by technical research employees of Bureau of Standards, where work which resulted in inventions, though within general field of employment, was not specifically assigned. U. S. v. Dubilier Condenser Corporation (C. C. A. 1932) 59 F. (2d) 381, affirming (D. C. 1931) 49 F. (2d) 306, and affirmed (1933) 289 U. S. 178. By an informal development order and a formal development order, the United States Government directed the General Electric Co. to design a mobile generator unit. Under the statement of facts set forth in connection with the informal development order, held (1) That the General Electric Co. stands as regards the Government as an independent contractor; (2) That the Government acquires no implied license in the invention referred to herein which was designed by an employee of the contractor; (3) That the Government acquires no implied license to future manufacture, use, and sale of inventions designed by employees of the contractor and subsequently assigned to the latter. Under the statement of facts set forth in connection with the formal development order, held, (1) That the Government has no implied license for the future manufacture, use, or sale of inventions designed by employees of the contractor; (2) That the Government has no implied license to the future manufacture, use, or sale of inventions designed by the contractor; (3) That the Government is not entitled to manufacture, use, and sell inventions resulting from such development contract, notwithstanding the elimination of Sections 2, 3, 4, 5, and 6 of said contract. (1921) 32 Op. Atty. Gen. 556. Government held entitled to irrevocable license to use naval officer's patented method and apparatus for delivering submarine torpedoes from airships. Moffett v. Fiske (App. D. C. 1931), 51 F. (2d) 868, certiorari denied (1931), 284 U. S. 662. Rights of public.-When a patent issues under the provisions of the act of March 3, 1883 (22 Stat. 625), relating to the issuance of patents to officers of the Government, no dedication to the public results, but any person in the United States, including Government officers and employees, may use the invention disclosed in the patent without the payment of royalty provided the use be in the prosecution of work for the Federal Government. (1920) 32 Op. Atty. Gen. 145. Acts of Government employee held, independently of this section, an abandonment of his rights to the public. Selden Co. v. National Aniline & Chemical Co. (D. C. 1930), 48 F. (2d) 270. were Assignment. Where Government chemists under statute were granted patents without paying fees, no assignable interests retained, except rights to foreign patents, and rights of Government and public became vested on ruling of applications. Selden Co. v. National Aniline & Chemical Co., Inc. (D. C. 1930), 48 F. (2d) 270. License under Government-owned.—Where an invention by an employee of the United States, patented under the first paragraph of the original text of this section, has been assigned to the Secretary of the Interior as trustee for the use and benefit of the people of the United States, the Secretary of the Interior as trustee holds the entire right, title, and interest in such patent and has power to grant licenses to commercial interests to use the patented invention. (1933), 37 Op. Atty. Gen. 180. The Secretary of the Treasury is authorized to grant a revocable, nonexclusive and nontransferable license to a private corporation to manufacture and sell life-line pro jectiles covered by a Government-owned patent, either upon some expressly stated consideration or upon a determination that the issuance of such license would further a public interest. MSS Op. Atty. Gen., Nov. 2, 1936. 1928.-The Effect of amendment of amendment of 1928 to this section was not retroactive as to rights previously dedicated to public. Selden Co. v. National Aniline & Chemical Co., Inc. (D. C. 1930) 48 F. (2d) 270. 1370. Remedy for unlicensed use of inventions by the United States. NOTES OF DECISIONS Construction and effect of statute in general. This section does not apply unless a patent has been issued. Rodman Chemical Co. v. U. S. (1928), 65 Ct. Cls. 39, certiorari denied (1928), 277 U. S. 592. At the suggestion of the Government, a cross-license agreement was entered into by the owners of certain airplane patents, which, among other things, provided for the control of such patents by the plaintiff and the collection and distribution by it of specified royalties from manufacturers and users of the patented devices. The Government, with full knowledge of the cross-license agreement, and with the knowledge and acquiescence of the plaintiff, but without an express agreement for manufacture or use by it, manufactured and used the devices of the patents. Held, that the facts gave rise to an implied contract for such manufacture and use, and for compensation by the Government therefor; and that the plaintiff had the right to sue for such compensation. Manufacturers Aircraft Assn. v. U. S. (1933), 77 Ct. Cls. 481. Amount of recovery. Statute allowing "entire" compensation for Government's unlicensed use of patented invention held to allow claimant interest on amount fixed as damages. Waite v. U. S. (1931), 282 U. S. 508. Under special act permitting employee to recover from United States for patent infringement, manufacturer's profits, not reasonable royalty, were recoverable. Van Meter v. U. S. (C. C. A. 1931), 47 F. (2d) 192, modifying (D. C. 1930), 37 F. (2d) 111. This section depriving patent owner of remedy against infringing Government contractor secured to owner exact equivalent of what it took away. Id. Assignment of claims. - Under this section, prior to the amendment of 1918, where a patented article was made for the United States by a contractor, unauthorized by the patent owner, and used by the United States, the patent owner had an assignable right of action for infringement against the contractor; and a claim against the United States for reasonable compensation for the use, assertable in the Court of Claims, but subject to the provisions of 701, ante, forbidding assignments. But under the amendment of 1918, which did away with the remedy against the contractor in such cases, and confined the patent owner to a suit against the United States in the Court of Claims for "recovery of his reasonable and entire compensation for such use and manufacture", the claim of the patent owner against the United States for manufacture and use occurring since the date of the Act, is assignable with the patent, notwithstanding the sweeping terms of 701 ante. Richmond Screw Anchor Co. v. U. S. (1928), 275 U. S. 331, reversing (1925) 61 Ct. Cls. 397. Patents by officers or employees. An Army officer cannot sue under this section except by aid of a special act, without resigning his commission, though the patent was granted before he entered the Government service. Van Meter v. U. S. (C. C. A. 1931), 47 F. (2d) 192, modifying (D. C. 1930), 37 F. (2d) 111. The petition insofar as it related to reissue patent No. 12,168 covering the radiosending apparatus was dismissed by this court on defendant's motion on the ground that the benefits of this section did not inure to the owner of reissue patent No. 12,168 because the inventor thereof was in the employ of the United States Government at the time the application for patent was filed. National Electric Signaling Co. v. U. S. (1933), 77 Ct. Cls. 87, 102. Res adjudicata.-Where a suit for infringement of patent is by the same plaintiff, against the same defendant, and for infringement of the same patent as in a prior adjudicated suit, the rule of res adjudicata does not apply unless the alleged infringing structure is the same as in the adjudicated case. While a plaintiff can bring only a single suit for one individual cause of action, he is not required to unite in one suit several independent causes of action; and where the cause of action in a case is different from that in a prior adjudicated case, the rule of res adjudicata is not applicable even though both causes of action could have been united in the prior case. William King Richardson v. U. S. (1933), 78 Ct. Cls. 580. Review. District Court judgment adjudicating employees' claim for infringement of patent against United States under special act held reviewable by appellate court. Van Meter v. U. S. (C. C. A. 1931), 47 F. (2d) 192, modifying (D. C. 1930), 37 F. (2d) 111. "Dependent" defined, 1484. Warrant officers, Army Mine Planter Deposit of savings by enlisted men, 1485. Service, 1403. Enlisted men; commissioned service counted. 1405. Retired officers; service counted, 1407. Retired warrant officers; service counted, 1409. Additional pay: For dual office, prohibited, 1410. For flying, 1415. For foreign service, abolished, 1416. Army personnel employed by Panama Canal, 1417. Enlistment allowance, 1486. Monetary allowance; enlisted men, 1489. Mounts furnished enlisted men detailed on signal duty, 1491. Mounts; forage and care, 1492. Payments, monthly, enlisted men of the Signal Corps. 1499. Ration; sugar and coffee, 1504a. Rental allowance officers below grade of brigadier general, 1506. Retention of pay restricted, 1511. Stoppage of pay-Continued. Indebtedness for laundry work and supplies furnished recruits, 1520. Collection in installments and remission on honorable discharge, 1521. Overpayments received, 1521a. Travel under orders without troops-Con. Travel outside continental United Enlisted men, 1540. Travel by air, 1541. Subsistence allowance; officers below grade Travel by sea, 1544. of brigadier general, 1523. Transportation of officers; chaplains, 1530. Transportation of dependents, 1531. Travel under orders without troops: Deductions from mileage when 1535. Travel expense: General limitation, 1544a. Officers attending Engineer School, 1546. Officers on duty with American Battle 1372. Base pay; general and lieutenant general. "U. S. C. 10: 671a" should be added to the citation to the first paragraph of this section, based on R. S. 1261 (J. A. G. 010.3, November 12, 1929, page 116). 1374. Base pay, officers below grade of brigadier general. By public resolution of February 3, 1930 (46 Stat. 63), a joint congressional committee was appointed to make an investigation and report recommendations relative to the readjustment of the pay and allowances of the commissioned and enlisted personnel of the several services. For report of this committee, see Senate Document No. 259, 71st Congress. For temporary reduction of pay and allowances of Army personnel, see 1634d, post. NOTES OF DECISIONS ice." In general. Where statute fixes Army | "first appointment in the permanent servofficer's pay, compensation rests on statute and not on contract. Emmons v. U. S. (1927), 63 Ct. Cls. 121. Army officer's acceptance of less than statutory compensation does not estop him from claiming full amount. Id. Grade of first appointment and pay periods. A captain of the Army who on November 10, 1917, had been appointed a second lieutenant of Infantry in the Regular Army was thereby given an appointment in the "permanent" service, notwithstanding under the terms of the act such appointment was "provisional" only, and where this was accordingly his first appointment in the permanent service and he had neither on July 1, 1922, completed seven years' service nor been promoted to the rank of captain on or before July 1, 1920, he was under the joint service pay act of June 10, 1922, entitled to pay of the second period only. His voluntary resignation from the permanent service September 23, 1919, while still holding a provisional appointment, did not serve to make his subsequent appointment as a first lieutenant November 25, 1920, a "First appointment in the permanent service." Webb v. U. S. (1930), 69 Ct. Cls. 46. Furey v. U. S., 70 Ct. Cls. 299; Armstead v. U. S. (1931), 74 Ct. Cls. 591. Pay periods.-A chief machinist of the Navy, so commissioned February 5, 1923, under the act of March 3, 1909, having been warranted a machinist six years prior thereto, who had commissioned service during a part only of said six years, was not entitled on date of his commission as chief machinist to pay of the second period. (1929), 67 Ct. Cls. 262, (1929), 280 U. S. 593. Chinnis v. U. S. certiorari denied A lieutenant of the Staff Corps of the Navy, who has served for fifteen years as enlisted man, warrant officer and commissioned officer, and whose first appointment to the permanent service was as a lieutenant, junior grade, of the Staff Corps, corresponding to a first lieutenant in the Army, is not entitled to pay of the fourth period if his total commissioned service does not equal that of a lieutenant commander of the line of the Navy drawing the pay of that period. U. S. v. Lenson (1928), 278 U. S. 60, reversing (1927), 63 Ct. Cls. 420. Marine Corps major retired September 30, 1911, and thereafter rendering service, making total active service 17 years 11 months 25 days, held entitled to base pay of fourth period only. Leonard v. U. S. (1929), 279 U. S. 40, affirming (1928), 64 The provision in the joint service pay act of June 10, 1922, with reference to the "first appointment in the permanent service" intended that a temporary appointment to the "temporary" increased strength Ct. Cls. 384. of the Marine Corps, under the act of Where a lieutenant of the Staff Corps of May 22, 1917, should not be treated as a the Navy, commissioned with that rank be |