als were affirmed. Of the 24 employee appeals from agency determinations (not submitted for automatic review under the Executive order) 13 resulted in reversals of the agency determinations. Thus the total number of agency determinations approved is 2,241 and the total of reversals is 116. The Navy Department had by far the greatest number of decisions for review, 1,087; the Army was second with 424; the Smithsonian Institution and the State Department had the lowest number, 1 each. A breakdown of these reversals by agencies appears in the following table:

Government Patents Board decision status, calendar years 1950-58

This figure includes all reversals made by the Chairman and covers automatic reviews and appeals. For a tabulation of the nature of the action taken on these reversals see the tabulation at pp. 10-11, infra.

3. Collection and dissemination of information regarding Government patent rights

Section 2(b) of Executive Order 10096 reads as follows:

Under arrangements made and policies adopted by the Chairman, all inventions or rights therein, including licenses owned or controlled by the United States or any Government agency, shall be indexed, and copies, summaries, analyses, and abstracts thereof shall be maintained and made available to all Government agencies and to public libraries, universities, trade associations, scientists and scientific groups, dustrial and commercial organizations, and all other interested groups of persons.

in

The inventions and patent rights referred to in this section not only apply to those to which the Government has title, but also cover all patent rights in which the Government has an interest, including licenses which arise from research and development contracts and other

sources.

In commenting about his activities under this section, the Chairman had the following to say:

Section 2(b) of Executive Order 10096 has reference to the Index of Inventions which was established and maintained by the Office of the Chairman. At the first meeting of the Board there was a general discussion of this subject and, after study by a working committee, work was initiated on the assembling of basic information on Government-owned inventions and those inventions in which the Government had license rights. The Index was established and all of the patents included in the Index were abstracted. At the time this operation was transferred to the Department of Commerce (as explained below) there were 5,844 Government-owned inventions and 16,556 licensed inventions included in the Index.

A booklet published by the Department of Commerce in 1951 entitled "Government-Owned Inventions for Free Use," listed 2,339 Government-owned patents, active as of January 1, 1951, which patents were available to the public under nonexclusive, revocable, and royalty-free licenses. More than 13,000 copies of this booklet were sold by the Superintendent of Documents at $1 per copy. This publication also called attention to the more than 11,000 additional patents recorded in the Index, which the Government could use or have used by manufacturers producing for the Government. A second booklet also published by the Department of Commerce entitled "Government-Owned Inventions Available for License," listed 3,658 Government-owned patents in force as of January 1, 1953, and arranged by industrial classification. The Superintendent of Documents sold more than 22,000 copies at $1.25 per copy.

Abstracts of all of the patents recorded in the Index were available to the general public for inspection in the Office of the Chairman. Abstracts of Government-owned patents were supplied for use in the field offices of the Department of Commerce and the Small Business Administration and also to the liaison officers of the agencies. In addition, arrangements were made with the McGraw-Hill Publishing Co. for the monthly publication in Aviation Week, Chemical Week, and Nucleonics of abstracts of recently patented inventions assigned to the Government in these three industrial fields. The Small Business Administration also selected certain of these abstracts for inclusion in its monthly publication, "Products List Circular-Opportunities for Small Business."

In response to a demand for additional information on these Government-owned inventions, a third publication listing 4,301 patents as of December 31, 1953, was prepared. This publication, the Patent Abstract Series, consisted of seven volumes in which abstracts of these inventions according to industrial classification were printed for the first time. The first volume of this series was released in September 1954. The volumes published by the Department of Commerce and the Small Business Administration were

prepared from the information maintained by the Government Patents Board and sold through the Department of Commerce. Interest in the seven volumes was so noteworthy that a supplement was published by the Department of Commerce to bring the entire series up to date as of June 30, 1955. The seven volumes of this series and the supplement were individually priced from $1 to $4 and more than 21,000 copies of the various volumes had been sold as of September 1958. The Chairman received a certain number of copies of these pamphlets which he distributed to Board members, liaison officers, libraries, etc.

After establishment of the Index in 1950, continuing studies were made of various proposals for the transfer of this function to an operating agency of the Government. Discussions were held with the Commissioner of Patents with respect to a plan for the joint operation of the Index of Inventions and the Register of Government Interests in Patents which he maintains pursuant to Executive Order 9424. It was also proposed that the Small Business Admin- : istration take over responsibilities for the maintenance and operation of this Index. The actual use made of the Index by the agencies and the general public was exceedingly disappointing, and it became evident that interest in the Index as a public source of information or search medium was negligible. The Chairman therefore became convinced that the principal and apparently the only value of the Index was to provide basic data for the issuance of publications such as the Patent Abstract Series, and for this limited purpose it was necessary only to maintain that portion of the Index containing abstracts of Government-owned patents, arranged according to the standard industrial classification. After much study and consideration by the Board, it was proposed to transfer the Index of Inventions to the Department of Commerce. This subject was reviewed in detail in a letter to the Bureau of the Budget and, as a result, the President signed Executive Order 10695 on January 16, 1957, which revoked paragraph 2(b) of Executive Order 10096 and authorized the Chairman to transfer the Index records to the Department of Commerce, which has indicated that through its Office of Technical Services it will continue publishing such abstracts.1

B. POLICY ON RETENTION OF TITLE AS BETWEEN GOVERNMENT AND ITS EMPLOYEE INVENTORS

Paragraph 6 of Executive Order 10096 requires each Government agency to take all necessary steps to effectuate this order, including the issuance of necessary regulations. All of these activities are to be consistent with policies promulgated by the Chairman of the Government Patents Board.

Letter to Senator Joseph C. O'Mahoney, chairman, Subcommittee on Patents, Trademarks, and Copynights, Committee on the Judiciary, U.S. Senate, from Mr. Robb S. McLaughlin, chairman, Government Patents Board, dated Mar. 30, 1959; hereinafter referred to as letter of Mar. 30, 1959.

Pursuant to these directions, the Chairman issued a series of regulations organizing and describing the functions of the office of the Chairman, and regulations seeking to secure a uniform patent policy with respect to inventions made by all Government employees. Ďuring 1951 and 1952 the various Government agencies submitted their proposed regulations, all of which were subsequently approved by the Chairman as being consistent with Executive Order 10096, and the Chairman's Administrative Order No. 5 (app. D., pp. 23-28). It was the purpose of all these regulations and administrative orders to set up a framework for carrying out the patent policies as described in Executive Order 10096.

It has been the policy of the Chairman since the inception of the Government Patents Board to place a construction upon some of the language in Executive Order 10096 which makes the order more liberal in determining employees' rights than it would be if the language were strictly construed. For example, the word "shall" appearing in paragraph 1(a) of Executive Order 10096 has always been construed to mean "may"; i.e., it is permissive and not mandatory. This construction is followed by the present Chairman.

In explaining his position on this point, the Chairman had the following to say:

Historically, unless the context indicates differently, the words "shall" and "may" have been interpreted by the courts and understood by Congress and the legislatures of the various States to be permissive, and the word "must" to be mandatory. However, by common usage in more recent times, the words "shall" and "must" are understood by the layman to be mandatory and the word "may" to be permissive. During the last quarter century Congress and various State legislatures have, in many statutes, included definitions which generally state that unless the context requires a different interpretation, the words "must" and "shall" are mandatory and the word "may" is permissive.

The Executive order contains no definition of the word "shall." Furthermore, if the word "shall" were construed to be mandatory as used in said paragraph 1(a), it would be contrary to, and in effect nullify, most of the other provisions set forth in paragraph 1. Such a strict construction of the word "shall" would require an employee to surrender to the Government rights which the courts have consistently held the Government was not entitled to in the absence of statutory authority.

In the case of United States v. Dubilier Condenser Corporation (289 U.S. 178), Mr. Justice Roberts, speaking for the majority of the Court, indicated that if the common law rules of equity as applied to rights in inventions made by an employee of the Government were to be changed, it was not for the executive or judicial branches of the Government to do so, but that such a declaration of policy must come from the Congress. (See pp. 197-199 and pp. 208-209.) 2

In addition to the above explanation for the construction of the word "shall" and the decision of the Supreme Court in the Dubilier

2 Letter of Mar. 30, 1959.

case, the Chairman has stated that his determinations as to the disposition of rights involved in an employee's inventions are based on the following principles: When an invention

* * * made by an employee either during working hours or with the use of Government facilities, equipment, materials, funds, information, or the time or services of other Government employees on official duty *** the Government is entitled to no more than a nonexclusive, irrevocable, royalty-free license, or, as the courts sometimes refer to it, a shop right, unless the invention bears a direct relation to the officially assigned duties of the inventor.

The Supreme Court on several occasions has pointed out that the mere fact an inventor is in the employ of the Government at the time he makes his invention does not transfer to it any title to or interest in his invention. There is no difference in this respect between the Government and any other employer in the absence of statutory authority or a contract.3

The Chairman's decisions in individual cases have never been published and copies are not circulated among lawyers or the general public. No published digests of these decisions are available other than those contained in the book "Patents, Their Ownership and Administration by the United States Government," by Howard I. Forman, and these are incomplete. There is, therefore, no means readily available for an appraisal by an employee or his attorney of the extent and character of any difference in viewpoint between the Chairman and the employee's agency. While the Chairman has indicated that any employee or his attorney may have access to any particular decision in which he may be interested, there is no way of knowing, at present, which of the Chairman's 2,357 decisions may be pertinent to his case without examining all of them.

The Chairman has, however, at the request of the subcommittee compiled a tabulation of his 116 reversals, which shows the effect of his decisions in each case upon title to the patent. For this purpose he has grouped these decisions in the following categories: Lic. to Law-Refers to a situation in which the agency determined that the Government was entitled to a license in the employee's invention but the Chairman decided that the Government was entitled to no rights.

Law to Lic.-Refers to a situation in which the agency determined that the Government was entitled to no rights in the employee's invention but the Chairman decided that the Government was entitled to a license.

Lic. to Assgn.-Refers to a situation in which the agency determined that the Government was entitled to a license but the Chairman decided that the Government was entitled to an assignment. Assgn. to Lic.-Refers to a situation in which the agency determined that the Government was entitled to an assignment but the Chairman decided that the Government was entitled to only a license. Assgn./Pub. to Lic.-Refers to a situation in which the agency determined that the Government was entitled to an assignment and wished to dedicate the invention to the public by publication but the Chairman decided the Government was entitled to only a license.

* Letter of Mar. 30, 1959.