For this purpose the War and Navy Departments have each appointed five persons, and all ten constitute the Army and Navy Patent Advisory Board. Brigadier General R. H. Somers is chairman of the army section of the Board, although he has delegated much of the actual work to Major H. W. Dix, a patent attorney who is a reserve army officer now on active duty. Dr. Murray O. Hayes, a civilian and patent attorney in the office of the Judge Advocate General (Navy), is chairman of the navy section of the Board.

The investigation of an application by the Army and Navy Patent Advisory Board is usually made by the Board members from the two services who are familiar with the subject matter under investigation, although they are at liberty to and occasionally do call upon the services of experts to assist them in determining if a secrecy order should be recommended. The experts called upon to assist the Board members are termed the Expert Advisory Committee. Where secrecy is recommended in an application by the Board, the secrecy order may then be issued by the Commissioner of Patents. As a matter of detail I understand the official papers of the application always remain in the Patent Office and they are examined in the Patent Office by the Army and Navy Board members and by the Expert Advisory Committee. The Patent Office Committee does not rely entirely on the War and Navy Departments but does not hesitate to call in experts from other Government Departments or Defense Agencies.

The purpose of the procedure is to keep matters secret which should not be disclosed. It is, of course, important then to determine prima facie at least, whether the matter in the application is new or is already known to the public through other sources. Obviously, if the application contains nothing new there is no advantage or purpose in putting a secrecy order on it. To this end an examiner who submits a case to the Secrecy Committee of the Patent Office not infrequently is requested to make an unofficial search to determine whether there is anything new and secret in the application. This examination of the application of course is not limited to the claims. The purpose of the statute is to keep disclosure secret. Therefore the Patent Office committee constantly keeps in mind the entire showing of the application. It may be that the specific thing claimed may be innocuous and so not warranting a secrecy order, but the general disclosure in the application of the surroundings for the invention may be such as to justify secrecy and in such instances a secrecy order may be issued.

Substantially the same procedure is adopted with new applications as they are filed in the Patent Office. They are examined by the examiner as soon as possible, and those which seem to be of sufficient importance to defense to justify secrecy orders are reported to the Patent Office committee and subsequently shown to the Army and Navy Patent Advisory Board.

Of course, there are a great many applications in the Patent Office relating to inventions owned by the Government itself. The Patent Office secrecy orders are not issued in these cases because the Army and Navy seem to have adequate facilities for keeping the inventions secret, and the three-year prosecution rule in Government cases provided for by Revised Statutes 4894 provides sufficient delay in publication of the patent itself.

The secrecy order now used by the Patent Office is as follows: "To [Applicant]

[naming them] his heirs, and any and all his agents:

his assignees,

"Under the provisions of the Act of October 6, 1917 (Public, No. 80), as amended July 1, 1940 (Public, No. 700), you are hereby notified that your application as above identified has been found to contain subject matter disclosure of which might be detrimental to the public safety or defense, and you are hereby ordered to in nowise publish or disclose the invention or disclosure of said application, but to keep the same secret (except by written permission first obtained of the Commissioner of Patents), under penalty of the invention being held abandoned. This application must be prosecuted under the Rules of Practice until a notice is received from the Office that the case is in condition for allowance. Such notice closes the prosecution of the case, except under provisions similar to those set forth in Rule 78. Furthermore, if previously allowed and now withdrawn the prosecution of the case is likewise closed. When the application is in condition for allowance it will be withheld from issue during such period or periods as the national interest requires.

"This order should not be construed in any way to mean that the Government has adopted or contemplates adoption of the alleged invention disclosed in this application, nor is it any indication of the value of such invention. It is recommended that you tender this invention to the Government of the United States by communicating directly with the [War or Navy] Department."

This is the same form as that used under the Act of 1917 during the World War with the exception that the last sentence has now been added. The Patent Office in the secrecy order now definitely suggests to the applicant that he make a tender of his invention to the War Department or to the Navy Department as the case may be.

The effect of a secrecy order may result in an allowed application being withheld from issue even after the final fee is paid; it may prevent disclosure of applications to interfering parties and so prevent decision of interferences; it will prevent filing foreign applications and it will prevent publication of descriptions in newspapers, trade journals, etc., as well as papers before technical societies under penalty of the invention being held abandoned. Neither the inventor nor his attorney should talk generally to others about the invention.

If the applicant desires to suggest his invention to the Government or to some organization which is under contract with the Government or is manufacturing for the Government or if he wishes to file foreign applications he should petition the Commissioner of Patents and obtain a release for that specific purpose. It is understood that the Patent Office will be lenient with such permission when it seems reasonable although it is entirely conceivable that the Patent Office might refuse to give an applicant permission to peddle his invention generally to endeavor to get someone interested in it.

The Patent Office is endeavoring to be more careful in limiting the number of secrecy orders at the present time than was done under the war conditions of 1917 and 1918. So far a very small number of secrecy orders have been issued, the total probably being considerably less than five hundred. One reason for this hesitancy in issuing secrecy orders is so as not to unduly limit the inventor in the advertisement and development of his invention. Another matter in mind seems to be the endeavor to avoid the suggestion that the Government thinks the invention worth while and may pay for it-a suspicion which may be aroused by the final sentence of the secrecy order suggesting that the applicant suggest the invention to the Army or Navy.

There has been no official publication of orders or decisions with respect to this secrecy rule. Nor were there any published Patent Office decisions relating to the secrecy law during the world war. Some understanding, however, of the effect of the law may be obtained from decisions of the Court of Claims. About

a half dozen cases decided by that Court have interpreted one or another phase of the 1917 secrecy Act. The matter, of course, was brought before the Court of Claims when the patentee in whose application a secrecy order was issued sued the Government for compenstion for use of the invention.

The first of such cases was decided by the Court of Claims in February of 1926: Zeidler v. U. S., 61 Ct. Cls. 537, relating to Spirals for use in Fuses. Here, after the secrecy order was issued there was no direct tender to the Governinent but the applicant wrote the Chief of Ordnance saying others were making and furnishing devices corresponding to his invention and asking whether the Government was refusing to accept these on contracts which specified other devices. There was no reply to this. The Court there said that:

"The Act of October 6, 1917, a war measure, was obviously not intended to hold the Government responsible for the use of a patented device in the absence of an express or implied contract to pay for such use. Its terms expressly so state. What it did do was to extend a wholesome and just protection to prospective inventors by saving to them a right to sue for compensation for the use of their patents when letters patent were finally issued, and recover compensation from the date of use instead of from the date of letters patent."

It seems in this case that the inventor before filing his application had disclosed his invention to his own company and to others who were manufacturing for the Government. The Court held: The case falls because secrecy was not observed. The inventor disclosed to his own company which before patent was applied for made devices for the Government and others who had Government contracts. The contracts called for a French device but the devices of the patent were accepted in lieu thereof. The Government's act in accepting was permissive and not direct acceptance of an offer of the invention by the inventor.

In 1928 the Court of Claims decided the case of Rodman Chemical Company v. U. S., 65 Ct. Cls. 41, dismissing a suit brought under the Act of 1917 for want of jurisdiction. While the application was pending in the Patent Office no secrecy order was issued by the Commissioner of Patents but the contention was that the Commissioner should have issued the order and consequently the Court should proceed as if the order had been issued. The Court, however, said that the contention that the act of issuing the order was mandatory on the Commissioner and not permissive cannot be maintained.

Again in 1928 the Court of Claims had before it Allgrunn v. U. S., 67 Ct. Cls. 1. The decision quotes the secrecy order of the Commissioner of Patents and of the Federal Trade Commission and also an order permitting the disclosure of the invention for use by the company by which the inventor was employed. The invention was tendered to the Secretary of the Navy in a letter quoted in the record and thereafter the Munition War Board acting for both War and Navy Departments awarded $33,172.00 for the invention, which was accepted but was not paid since the Auditor held that under the 1917 statute there was no authority to make any payment of which the amount had not been determined by the Court of Claims. Therefore after the patent issued suit was brought in the Court of Claims and recovery was had. It appeared that the applicant had disclosed his invention to his employer before the secrecy order was issued but the Court held that this was condoned by the later release to make such disclosure. It appeared that knowledge of the invention leaked out but the inventor himself did not disclose it. The invention was used by various Govern

ment contractors with the knowledge of the inspectors and officers. That was held to be use for the Government if not by the Government and the Court of Claims required the Government to pay for such use. Apparently it was to avoid the necessity of continued suits and to overcome the objection of the Auditor that the present 1940 law includes a specific provision that the Army or Navy may enter into an agreement in full settlement and compromise for damages by reason of the order of secrecy.

In 1929 the Court of Claims decided Ordnance Engineering Corp v. U. S., 68 Ct. Cls. 301, saying:

"The statute clearly contemplated a real tender-i. e., the bringing to the attention of the Government the essential facts with reference to the invention so that subsequent use of the invention may prevail with knowledge of liability for the use.

The Court held it was not sufficient to merely call the attention of the Government Department to the application and the scope of the same coupled with the assertion that the patent right, if granted, will not be taken advantage of in time of war, especially when no secrecy order had yet been issued. "Tender must follow secrecy order." No recovery was made because it seemed that although a contract had been let by the Government to build the patented device the price included the use of the patent. In a subsequent suit, Ordnance Engineering Corp. v. U. S., 73 Ct. Cls. 379; 11 USPQ 291, the plaintiff recovered for Government infringement subsequent to the issue of the patent.

In 1931 the Court of Claims decided Gathmann v. U. S. (71 Ct. Cls. 680; 9 U. S. P. Q. 83). There the application had been allowed and the final fee had been paid. The Commissioner, however, withheld the patent and the Federal Trade Commission afterward issued a secrecy order. The invention was tendered to the Government by a letter to the Secretary of the Navy who acknowleged it and said an investigation was being made, and later informed the applicant that the invention was not being used. Thereafter the Commissioner of Patents, after the war, released the secrecy order and applicant withdrew his final fee, allowed the case to be forfeited and then renewed. In the renewal case for the first time were allowed the claims alleged in court to be infringed. The Court dismissed the case holding the claims either invalid or not infringed. It suggested, however, that inasmuch as the Government had not infringed claims allowed at the time of the secrecy order it could not be held for infringement before the patent issued of claims procured in the renewal application saying "intervening rights of the Government were not lost by the secrecy law." "The secrecy law did not forestall the prosecution of applications in the Patent Office."

In 1936 the Court of Claims decided Barlow v. U. S. (82 Ct. Cls. 360; 28 U. S. P. Q. 499). The Government had a license under some Barlow patents with improvements but as to two specific patents the Court held that they were not improvements and since they were infringed prior to the issuance of the patents the suit could be brought only under the 1917 secrecy Act. The Court said: "Plaintiff could not have made tender till some date subsequent to the filing of the applications." It proceeded to say that "tender" means the same as "offer" and that nothing in the statute indicated that "more was exacted of an applicant than bringing to the attention of the officials the fact of a pending application for patent and that the Government might use it in any way it might choose." The Court indicated that formal tender proceedings were not needed and that after the tender the Government was free to examine the application in the Patent Office and ascertain the nature of the invention. In this case the applicant by letter notified the Government that the prospective patent was being infringed and offered

to waive claims against the Government but the Assistant Secretary of War declined to accept the waiver. The letter was addressed to an official with authority to make contracts and it was held to be sufficient tender. It is interesting to note that this suit was instituted under a special Act waiving the statute of limitations. In 1940 the President approved an Act after a judgment of the Court of Claims appropriating about $600,000.00 to pay the judgment.

In 1937 the Court of Claims decided Martin v. U. S. (84 Ct. Cls. 41; 32 U. S. P. Q. 35). While the secrecy order was in effect the application was prosecuted and after the war, the secrecy order being lifted, further prosecution continued until 1921 when the case was allowed. The fee was not paid but the case was renewed in 1923. Apparently the question of new claims was not raised here. The Court, however, referred specifically to the renewal statute R. S. 4897 and said that the case was taken away from the Act of 1917 giving the right to sue for an act of infringement occurring prior to the issue of the patent by the specific provision in the renewal statute R. S. 4897 that "no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the issue of the patent." The Court therefore dismissed the case for lack of jurisdiction.

It is, of course, well known that suggestions of inventions which may be of use to the national defense are constantly being offered to the Government. These go to and are considered by the Army and Navy generally. The reports of the Commissioner of Patents indicate that during the world war the Patent Office received and considered about two thousand ideas, sketches, etc., which were not involved in applications for patent and that about two hundred of these were forwarded by the Patent Office to the various departments as probably worth while. In order to take care of this situation during the present defense activities the Secretary of Commerce with the concurrence of the President has created the National Inventor's Council with Mr. Charles F. Kettering, Chairman, and Mr. Lawrence Langner, Secretary. The Council is made up of several inventors, manufacturers, etc., who have had considerable experience with developing new ideas. It is not entirely organized as yet. The organization of a staff of about thirty is being effected by Mr. C. C. Henry, Principal Examiner, who is especially assigned from the Patent Office for that purpose. There will be an Examining Division and a Procurement Division. The Council, through its examining division proposes to receive, and serve as a clearing house for, suggestions or inventions from civilians relating to the national defense. It will consider matters whether involving applications for patent or not. Suggestions are coming before it at the rate of about one hundred a day, many, of course, being duplicates. It divides up its activities into about twelve subcommittees each headed by a member of the Council. It is understood that suggestions sent to the Army or the Navy will not be investigated by them but will be referred to this Council for consideration. The Army and Navy may ask the Council for help and advice with any specific problems they may have and if the Council has any solution of these problems before it the Government Departments will be informed. For this purpose there is a procurement division of the Council which has already a list of able inventors available to try to solve various problems. The Council will welcome suggestions from patent lawyers as to the ability of any inventors who should be added to its list. The Council has something over one hundred thousand dollars available for its administrative work but has no authority to spend money for actual working out of inventions or conducting experimental work. Nor will the Council endeavor to negotiate contracts with manufacturers for the inventors.

In order to protect his interests an inventor of anything having to do with defense should file his application for patent as soon as possible and suggest that a secrecy order be issued so as to have compensation despite delays. He may thereafter tender the invention to the Government and negotiate for compensation or later, after the patent issues, sue in the Court of Claims for compensation.

There is a National Defense Research Committee whose Chairman is Dr. Vanevar Bush, President of the Carnegie Institution. Its purpose is to coordinate and use the research facilities of the country such as laboratories, testing plants, etc., to obtain facilities and personnel to work on research problems which may be needed for defense. Appropriations may be made for special research work when necessary.

As a part of the program attention may be called to R. S. 1537 which has been on the statute books since 1861, providing that no patent article connected with marine engines shall be purchased or used with war vessels until it shall have been submitted to a competent board of naval engineers and recommended by such board in writing for purchase and use. This statute seems never to have been before the courts.

The Act of July 2, 1940, authorizes the President in the interests of national defense "to prohibit or curtail the exportation of military equipment, munitions or component parts thereof, or machinery, tools, or materials or supplies necessary for the servicing or operation thereof," by proclamation. On its face this Act seems to relate to physical articles which may not be exported without permit. The President's second proclamation under the Act, dated September 12, 1940 (519 O. G. 217), relates to motor fuel and also prohibits the exportation of "plans, specifications, or other documents containing descriptive or technical information of any kind (other than that appearing in any form available to the general public) setting forth the design, or construction of aircraft or aircraft engines." This proclamation seems to be broad enough in its terms to include the specifications and drawings of a patent application so that apparently if the information is not otherwise available to the general public the sending abroad of an application for patent relating to aircraft or aircraft engines may be a violation of this proclamation. Of course, the filing of a foreign application is inhibited by the secrecy order under the Act of July 1, 1940, but this proclamation seems to prohibit foreign applications in cases in which there is no secrecy order. There is no general inhibition against applications for foreign patents. Anyone who has any doubts as to the propriety of any specific foreign application may refer it to the State Department which may refer it to the War and Navy Departments and then issue a release.

The second revenue Act of 1940 approved October 8, 1940, being the so-called Excess Profits Tax Law is of interest since it provides for adjusting the normal profit of a year by allowing for unusual income arising out of a "claim, award, judgment, or decree" which should mean that a recovery for infringement may be spread over several years. The Act also provides for similarly spreading out income resulting from the development of patents among other things (Sec. 721 a and c).

The defense activities involving enlargement of the army may also affect inventors. The Draft Act and especially the Soldiers and Sailors Civil Relief Act approved October 17, 1940, provides for stays of court action or stay of execution or judgment involving persons in the military service. When the inventor is called for military service infringement suits and suits under R. S. 4915 or R. S. 4918 may be affected.

The secrecy Act of July 1, 1940, by its terms remains in force for a period of two years. The Act gives the right to sue in the Court of Claims. It may be that if that suit is not brought before July 1, 1942, the Court of Claims will say it has no jurisdiction.

There was introduced on October 9, 1940, into the Senate S. 4410 which is proposed as a substitute for the present secrecy statute. It provides a National Defense Secrets Board composed of four persons to be appointed by the Secretaries of War, Navy, and Commerce, and the Attorney General. The Board is to investigate applications and ask the Commissioner of Patents to issue secrecy orders, and provision is made for court action and other procedures. One section provides that if a foreign application is filed before the U. S. application or within six months of it, the U. S. application may be refused. This bill probably will be amended before it is enacted. It is mentioned merely for the safe of completeness and to indicate that the two-year proviso of the present secrecy Act probably indicates that permanent continuing legislation will in due time be enacted. S. 4277 provides for reports to Congress of activities under the secrecy act.

Hon. CHARLES KRAMER,

Chairman, Committee on Patents,

BROWN, CRITCHLOW & FLICK, Pittsburgh, Pa., February 19, 1941.

House of Representatives, Washington, D. C.

MY DEAR MR. KRAMER: AS chairman of the committee on legislation of the Pittsburgh Patent Law Association, I have today received a copy of H. R. 3359, Seventy-seventh Congress, first session, a hearing on which it is understood will be held tomorrow, February 20.

I am advised by Mr. Bayard H. Christy, president of our association, that he has written to you today relative to the action which our association took last night with respect to the provisions of S. 4410, Seventy-sixth Congress, third session, a bill which, like present H. R. 3359, was directed toward preventing the publication of inventions in the national interest.