PRELIMINARY REPORT ON THE PATENT PRACTICES OF THE

GOVERNMENT PATENTS BOARD

I. LEGAL AUTHORITY

This Board was created by Executive Order 10096 (15 F.R. 389), which was promulgated by President Truman on January 23, 1950. It was designed primarily to bring about a uniform policy with respect to the determination of property rights in inventions made by Government employees. For purposes of this discussion, the salient features of the order are as follows:

1. The following basic policy is established for all Government agencies with respect to inventions hereafter made by any Government employee:

(a) The Government shall obtain the entire right, title, and interest in and to all inventions made by any Government employee (1) during working hours, or (2) with a contribution by the Government of facilities, equipment, materials, funds or information, or of time or services of other Government employees on official duty, or (3) which bear a direct relation to or are made in consequence of the official duties of the inventor.

(b) In any case where the contribution of the Government, as measured by any one or more of the criteria set forth in paragraph (a) last above, to the invention is insufficient equitably to justify a requirement of assignment to the Government of the entire right, title, and interest to such invention, or in any case where the Government has insufficient interest in an invention to obtain entire right, title, and interest therein (although the Government could obtain same under par. (a), above), the Government agency concerned, subject to the approval of the Chairman of the Government Patents Board (provided for in par. 3 of this order and hereinafter referred to as the Chairman), shall leave title to such invention in the employee, subject, however, to the reservation to the Government of a nonexclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes, such reservation, in the terms thereof, to appear, where practicable, in any patent, domestic or foreign, which may issue on such invention.

(c) In applying the provisions of paragraphs (a) and (b), above, to the facts and circumstances relating to the making of any particular invention, it shall be presumed that an invention made by an employee who is employed or assigned (i) to invent or improve or perfect any art, machine, manu

facture, or composition of matter; (ii) to conduct or perform
research, development work, or both; (iii) to supervise,
direct, coordinate, or review Government-financed or con-
ducted research, development work, or both; or (iv) to act
in a liaison capacity among governmental or nongovern-
mental agencies or individuals engaged in such work, or made
by an employee included within any other category of em-
ployees specified by regulations issued pursuant to section
4(b) hereof, falls within the provisions of paragraph (a),
above, and it shall be presumed that any invention made by
any other employee falls within the provisions of paragraph
(b), above. Either presumption may be rebutted by the
facts or circumstances attendant upon the conditions under
which any particular invention is made and, notwithstand-
ing the foregoing, shall not preclude a determination that
the invention falls within the provisions of paragraph (d)
next below.

(d) In any case wherein the Government neither (1)
pursuant to the provisions of paragraph (a) above, obtains
entire right, title, and interest in and to an invention nor (2)
pursuant to the provisions of paragraph (b) above, reserves
a nonexclusive, irrevocable, royalty-free license in the inven-
tion with power to grant licenses for all governmental pur-
poses, the Government shall leave the entire right, title, and
interest in and to the invention in the Government employee,
subject to law.

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5. The functions and duties of the Secretary of Commerce and the Department of Commerce under the provisions of Executive Order No. 9865 of June 14, 1947, are hereby transferred to the Chairman and the whole or any part of such functions and duties may be delegated by him to any government agency or officer: Provided, That said Executive Order No. 9865 shall not be deemed to be amended or affected by any provision of this Executive order other than this paragraph 5.

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Section 3(a) provides for the creation of a Government Patents Board with a Chairman to be appointed by the President.

Executive Order 9865, referred to in 10096, relates to foreign patent protection on Government-owned inventions and the exchange of patent information with foreign governments. This order reads in part as follows:

1. All Government departments and agencies shall, whenever practicable, acquire the right to file foreign patent applications on inventions resulting from research conducted or financed by the Government.

2. All Government departments and agencies which have or may hereafter acquire title to inventions or the right to file patent applications abroad thereon, shall fully and continuously inform the Department of Commerce concerning such inventions, except as provided in section 6 hereof, and shall make recommendations to the Department of Com

merce as to which of such inventions should receive patent
protection by the United States abroad and the foreign
jurisdictions in which such patent protection should be
sought. The recommendations of such departments and
agencies shall indicate the immediate or future industrial,
commercial, or other value of the invention concerned, in-
cluding its value to public health.

3. The Department of Commerce shall determine whether,
and in what foreign jurisdictions, the United States should
seek patents for such inventions and, to the extent of appro-
priations available therefor, shall procure patent protection
for such inventions, taking all action, consistent with existing
law, necessary to acquire and maintain patent rights abroad.
Such determinations of the said Department shall be made.
after full consultation with U.S. industry and commerce,
with the Department of State, and with other Government
agencies familiar with the technical, scientific, industrial,
commercial, or other economic or social factors affecting the
invention involved, and after consideration of the availability
of valid patent protection in the countries determined to be
immediate or potential markets for, or producers of, products,
processes, or services covered by or relating to the invention.

4. The Department of Commerce shall administer foreign patents acquired by the United States under the terms of this order and shall issue licenses thereunder in accordance with law under such rules and regulations as the Secretary of Commerce shall prescribe. Nationals of the United States shall be granted licenses on a nonexclusive royalty-free basis except in such cases as the Secretary shall determine and proclaim it to be inconsistent with the public interest to issue such licenses on a nonexclusive, royalty-free basis.

(For complete copies of Executive Orders 10096 and 9865 see appendices A and B, pp. 17-22.)

1. Personnel

II. PRESENT PRACTICE

A. ADMINISTRATION

The Government Patents Board operates with a relatively small staff consisting of the following: (1) a Chairman who is appointed by and directly responsible to the President, (2) a Deputy Chairman who is the principal assistant to the Chairman, (3) secretary to the Board and administrative assistant, (4) one examiner who reviews agency determinations initially and prepares proposed decisions for consideration by the Chairman, (5) secretary to the Chairman, (6) docket clerk, (7) secretary to the Deputy Chairman.

2. Nature of work and performance statistics

The work of the Chairman of the Government Patents Board is quasi-judicial in character and primarily concerns the property rights of the Government and its employees in inventions made by those employees. All cases in which the agency determines that the Government is equitably entitled to require less than a complete assignment

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of the invention involved are automatically reviewed by the Chairman of the Board who either affirms, modifies, or reverses the original decision. In cases where the employee is dissatisfied with the agency's determination, he may appeal directly to the Chairman, and in cases where the Chairman reaches a conclusion different from the agency's determination, either the agency or employee involved may petition for reconsideration. In any event, the decisions of the Chairman are final. There have been no appeals to the courts from any decisions of the Chairman.

Ten Government departments and agencies are represented on the Board. The members of this Board, appointed by the heads of their agencies, act in an advisory capacity to the Chairman and also consult with the Chairman on individual patent problems which arise within their respective agencies. In addition, these Board members are appointed to serve on working committees established by the Chairman to study important matters and to report their findings and recommendations to him. Among the subjects which have been considered by these committees are: the development of rules and regulations; the question of foreign patent protection; incentive awards; the administration and disposition of Government-owned inventive subject matter; and the drafting of proposed legislation to supersede Executive Order 10096. The Board has held 52 meetings to date; however, its last meeting was held on November 9, 1956. Inasmuch as the Board is advisory to the Chairman on policy matters, no further meetings have been held since that meeting which considered drafts of proposed legislation prepared by a working committee and the Chairman. No other questions of policy have arisen necessitating a meeting of the Board pending the resolution of this question of policy by the administration.

The names of the Government departments and agencies presently represented on the Government Patents Board are as follows:

Department of Agriculture

Department of Commerce

Department of Defense

Department of Health, Education, and Welfare

Department of the Interior

Department of Justice

Department of State

Civil Service Commission

General Services Administration

National Aeronautics and Space Administration.

All of these agencies or their predecessors were specifically designated in Executive Order 10096 to have a representative on the Board.

During calendar years 1950 through 1958 the Chairman rendered 2,357 decisions. Of these decisions 2,333 arose from automatic reviews of agency determinations (employees requested the Chairman to reconsider his decision in 7 of these cases) and 24 arose from the appeals to the Chairman from the determinations of the agency.

Of the 2,357 total decisions rendered 108 were reversals of agency determinations pursuant to automatic review of agency determinations. Petitions for reconsideration of an agency reversal were received in seven cases. In view of additional information supplied in the petitions, five agency determinations were restored and two revers