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MANUAL

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UNITED STATES

DEPARTMENT OF

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Agriculture Handbook No. Ill

Uriited States Departmerit of Agriculture

Washington, D. C.
PATENT

MANUAL

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For Employées of tlie

UNITED STATES

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AGRICULTURE HANDBOOK No. Ill

UNITED STATES DEPARTMENT OF AGRICULTURE

WASHINGTON, D. C. ISSUED APRIL 1957

For sale by the Superintendent of Documents, U- S. Government Printing Office

Washington 25, D. C. - - - Price 40 cents
PREFACE

The purpose of this Manual is to assist employees of the United

States Department of Agriculture, particularly those engaged in

research and those administering research projects, in recognizing

an invention in its early stages and in preserving the public interest

in Department inventions through the medium of patents. A further

purpose is to clarify some of the phases that relate to the ownership

and use of patents and to encourage employees to report inventions.

The Manual contains a brief explanation of the evolution of a patent.

Certain sections are intended to arouse interest in inventions and

patents in general. This is important if an understanding of the

relationships between the research of the Department and commercial

research concerning patent matters is to be achieved.

Sections are included to guide in the use of the published patent

art as an adjunctto scientific laiowledge. Information is incorporated

to aid research organizations of the Department in assembling a

usable file of copies of patents to supplement other reference literature.

This Manual supersedes Miscellaneous Publication 551, "Patent

Manual for Employees of the U. S. Department of Agriculture 1944"

and the 1952 unnumbered and processed revision of that publication.

It is sponsored by the Office of the General Counsel and the Department Committee on Patent Policy, members of which are as follows :

S. B. Fracker, Chairman, Office of the Administrator, Agricultural Eesearch Service.

F. P. CuUinan, Agricultural Eesearch Service.

J. K. Matchett, Agricultural Research Service.

H. L. Haller, Agricultural Research Service.

E. O. Whittier, Agricultural Research Service.

F. A. Spurr, Agricultural Research Service.

James J. Byrne, Forest Service.

W. H. Elliott, Agricultural Marketing Service.

G. E. Ryerson, Soil Conservation Service.

T. A. Seegrist, Office of the General Counsel.

The manuscript of the Manual was prepared by T. A. Seegrist on

behalf of the Committee, and it has been reviewed by various members

of the Committee.
937349

CONTENTS

Page

PREFACE ii

Chapter I—PATENT POLICY

OF THE DEPARTMENT.-_ 1

Chapter II—FUNDAMENTALS

OF PATENT LAW 4

Section 1—The Patent System

of the United States 4

Section 2—The Patent 4

Section 3—Ownership of Patent

Rights in Inventions 5

Section 4—Types of Department

Rights in Patents 6

Section 5—Statutory Subject

Matter of Patents 6

Chapter III—HISTORY OF

PATENT REGULATIONS OF

THE DEPARTMENT 8

Chapter IV—DEVELOPMENT

OF INVENTION PRIOR

TO FILING OF PATENT

APPLICATION 13

Section 1—Novelty and Utility 13

Section 2—Basic Inventions and

Improvements 14

Section 3—Conception of the

Invention 14

Section 4—Reduction to Practice of the Invention 15

Section 5—Joint Inventorship__ 15

Section 6—The Prior Art

Search 16

Section 7—Notebooks and Original Records 17

Section 8—Submission of Inventions to the Office of the General Counsel 18

Chapter V—PREP AR ATION

AND PROSECUTION OF

PATENT APPLICATIONS 20

Section 1—Preparation of the

Patent Application 20

Chapter V—Continued Fage

Section 2—The Scope and Gist

of the Invention 21

Section 3—Claim Drafting 22

Section 4—Execution of the Application Papers 22

Section 5—Prosecution of the

Patent Application 23

Section 6—The Response 24

Section 7—Comments on the

References „_ 24

Section 8—Affidavits 25

Section 9—Election of Species-- 26

Section 10—The Repeated Rejection 27

Section 11—The Final Rejection 27

Section 12~The Appeal 27

Section 13~The Appeal Brief, _. 28

Chapter VI—INCIDENTAL

AND UNUSUAL FEATURES OF PATENT

PROSECUTION 29

Section 1—Interview with the

Patent Examiner 29

Section 2—Certificate of Correction and Reissue of Patent 29

Section 3—Divisional aid Continuation-in-Part Applications 30

Section 4—Citation of Decisions 31

Section 5—The Interference 31

Section 6—Interference Testimony 32

Chapter VII—LICENSING PATENTS 33

Section 1—Patent Rights and

Licenses in Commercial Practice 33

Section 2—Licenses of the Department 33

III
IV CONTENTS

Chapter VII—Continued Page

Section 3—Procedure in Licensing of Department Patents. _ 33

Chapter VIII—COPYRIGHTS

AND TRADEMARKS 35

Section I—Copyrights 35

Section 2—Trademarks 35

Chapter IX—INVENTIONS DEVELOPED UNDER CONTRACT RESEARCH 37

Appendixes:

A—1 AR Chapter 15 39

B~Executive Order 10096 46

Appendixes—Continued Pase

C—Administrative Order No. 5_ 50

D—Executive Order 9865 55

E—Pertinent Patent Office

Rules—45, 47, 71-78, 81-

88, 141, 142, 146, 147,

322, 323 57

F—Pertinent Patent Statutes—

35 U. S. C. Sections 100

(b), 101, 102, 266 65

G—Plant Patent Act 67

H—Assignment 67

T—License 68
Patent Manual for Employees

of the United States

Department of Agriculture

Chapter I

PATENT POLICY OF THE DEPARTMENT

The United States Department of Agriculture conducts an extensive

research program, and obtaining patents is an important supplement

thereto. It is impracticable to deal on a modern basis with largescale research activities without an adequate supporting patent program. To carry out such a patent program, it is important that those

engaged in research have an understanding of the purpose of obtaining patents on inventions made in the Department.

The object of most of the research in the Department is to benefit

the public directly. Eesearch projects, such as those directed toward

the development of new uses for agricultural commodities, are intended for the benefit of the public. Use by the Government itself of

new developments resulting from its research projects is of little or

no concern. That an invention made as a result of such research

should not be patented by private interests is established Department

policy.

If the Department does not obtain a patent on an invention resulting

from such research, the field may be left open for someone else to

obtain the patent. This would be true even if the Department disclosed the invention in a publication, because a publication is not a bar

to the granting of a patent to another if his application is filed in the

Patent Office within a year of the publication date and he can show

that he made the invention before the date of the publication. Such

a circumstance is not infrequent. Independent workers often make

the same invention at about the same time, especially in a rapidly

advancing art. The fact that the one who disclosed his invention in

a publication may actually have made his invention before the applicant for the patent would not prevent issuance of the patent, because

there is no provision in Patent Office procedure to establish priority

under such circumstances.
2 AGRICULTURE HANDBOOK NO. Ill

If the Department has filed a patent application for an invention, a

special proceeding may be instituted in the Patent Office to settle the

question of priority. Such a proceeding, referred to as an "interference," is declared only when at least two applicants claim substantially

the same patentable subject matter. Disclosure of its invention in a

publication is not enough to involve the Department in an interference. Consequently, unless the Department files applications for

patents on its inventions, it has practically no opportunity to contest

the attempts of others to obtain the patents.

Some inventions resulting from Department research should be

dedicated to the public. Publication of these would suffice if there

was assurance that patents would not be obtained by others.

The Department patent also serves other purposes. The assigned

patent affords prospective users the opportunity to obtain licenses

under liberal terms. Organizations having a nonprofit patent policy,

such as the Department of Agriculture, do not gain monetary advantages from the licensing of their patents. Significant advantages

are gained, however, from developing and perfecting cooperative relationships with private interests through the medium of licenses. A

patent license relationship demands amicable cooperation between the

parties if maximum benefits are to be derived. Both the licensor and

the licensee have the common purpose of maximum utilization of the

invention, and they cooperate to obtain this end. The patent license

relationship frequently stimulates further independent invention and

discovery on the part of the licensee. At the very least, it stimulates

concerted efforts by all parties to exchange technical information in

a spirit of mutual cooperation.

The Department patent also presents in published form a description of the invention together with a delineation of its scope. The

patents are worthwhile contributions to the technical knowledge and

serve to place, with a certain degree of exactness, Government-owned

inventions in their proper setting of privately owned patented technology.

The properly drawn patent specification is a disclosure of technical

information for the specific purpose of guiding others to obtain the

advantages of the invention. In this sense it is a very useful parcel

of knowledge and may be used in the same way that other technical

publications are used. The Department patent thus furnishes an

effective expedient through which the Department can obtain wider

dissemination of information concerning its research findings. For

example, the United States Patent Office Official Gazette contains brief

information relating to each weekly issue of patents by that Office, and

copies of patents are widely distributed by the Patent Office. Technical journals, particularly those of the abstract type, regularly pub-
PATENT MANUAL ö

lish information about patents. Patent owners or associations of

individual organizations frequently exchange information on granted

patents. The Department of Agriculture encourages the inclusion of

information on its patents in pertinent trade journals. Patents are

also included in various lists published by the Department of Agriculture and by other Government agencies.

In addition, the Government-assigned patent provides a procedure,

through its licenses, for the Department to exercise a degree of quality

control of products manufactured under the licenses where there is a

substantial reason for such control.
Chapter II

FUNDAMENTALS OF PATENT LAW

Section 1—The Patent System of the United States

In England, before 1623, monopolies were granted to favorites of

the Crown for the purpose of carrying on various trades. Such

monopolies, often granted for ordinary trades already established

throughout the kingdom, deprived all but a favored few of the privilege of carrying on those trades. The practice grew and finally became

so burdensome that in 1623, in the reign of James I, the Statute of

Monopolies was enacted. This law abolished all but a few existing

monopolies and prohibited any new monopolies except patents that

might be granted for inventions and new trades brought into the

kingdom. Such patents, however, were to extend for limited periods

only.

The American patent and copyright system provided for in the

Constitution is similar to the Statute of Monopolies. Its purpose

is to promote the progress of science and useful arts. To this end

the Constitution empowers Congress to secure for limited times to

authors and inventors the exclusive right to their respective writings

and discoveries.

The promotion of science and the arts, as stated in the Constitution

and in laws enacted thereunder, is effected by conferring on the

inventor the right to exclude others from practicing (making, using,

and vending) his invention for a period of 17 years. At the expiration of the 17 years his rights disappear, and the invention may be

freely practiced by the public.

It is this excluding right that encourages patent owners in the

commercial production of new developments and thus accomplishes

the fundamental constitutional purpose of promoting the progress of

the useful arts. It is production that is anticipated, and the production achievements of this country are to a significant degree attributable to the excluding privileges afforded by our patent system.

Section 2—The Patent

The essential part of the patent is the specification, including the

claims. For every patent issued there is a record file that contains

the correspondence between the Patent Office and the applicant, to-
PATENT MANUAL 5

gether with the original specification, oath, and other documents.

This file is kept in the Patent Office Record Room where it is open

to public inspection. Only the specification of the patent is published

by the Patent Office. The other file material is not necessary for

most purposes for which a patent is studied.

The specification constitutes the description of the subject matter

and the identification of the invention covered by the patent. The

specification, apart from the claims, is intended to be a narrative

description of how the invention is carried out so that anyone skilled

in that branch of learning can reproduce the invention and use it.

The claims are intended to be definitions of the subject matter covered

by the patent. They may, and occasionally do, take in only a part

of the field described in the specification, but they may cover this

part in a broad scope. The claims are important to one who may be

expecting to use the invention commercially, because they define what

he may not do without infringing the patent. The claims are also

important to the patent owner, because they define the scope of subject

matter that he may exclude others from practicing.

A patent creates the statutory rights of exclusion mentioned previously. The violation of patent rights is called infringement, and

patent infringers may be sued. A person may successfully answer

in an infringement suit by demonstrating that he is not actually

infringing the subject matter included in the claims of the patent, or

that the patent itself, or the claim that is alleged to be infringed, is

invalid.

The enforcement of patent rights is a complicated and highly technical field. It is unnecessary for employees of the Department to

concern themselves with this phase of patent matters.

Section 3—Ownership of Patent Rights in Inventions

United States patents are issued in the name of the inventor, but

this does not necessarily mean that the inventor owns the patent. He

may assign or agree to assign the patent rights before the invention is

patented. Such assignment before patenting carries the ownership

rights to any patent that may be granted later. The patentthen issues

in the name of the inventor, but it is issued to the assignee provided

the assignment has been recorded in the Patent Office.

In most research organizations, research employees agree k) assign

to their employers the patent rights to inventions made in the course

of their employment. The agreement may be derived directly by

appropriate clauses in the employment contract, or it may be derived

indirectly by a code of rules or regulations governing employees or

by implication arising from employment consideration.

410690—57 2
6 AGRICULTURE HANDBOOK NO. Ill

In the Department of Agriculture, the patent regulations—1 AR

Chapter 15 (app. A)—are a condition of employment. The regulations apply particularly to research employees—persons most likely to

make inventions. They are based on pertinent orders, such as Executive Order 10096 (app. B), Executive Order 9865 (app. D), Administrative Order No. 5 (app. C), and Administrative Order No. 6

(19 F. E. 3937). These should be consulted carefully when any questions arise involving ownership of patent rights.

Section 4—Types of Department Rights in Patents

The Department rights in patents fall into three classes : (1) Patents

assigned to the Government, (2) patents dedicated to the public, and

(3) patents in which commercial rights are retained by the inventor.

Government-owned inventions developed in the Department of

Agriculture are either assigned to the Government or dedicated to the

public, depending to some extent on the subject matter of the invention. They usually are assigned (1) if the subject matter is of such

nature that some measure of quality control over the products manufactured under the patent is desirable to safeguard the public, or (2)

in anticipation of legislative authority to grant exclusive licenses, or

(3) for the purpose of public relations and to obtain information on

the utilization of the invention. On the other hand, where quality

control is not necessary, the invention may be dedicated to the public,

and anyone is then free to use the invention without a license.

When an employee of the Department makes an invention under

circumstances that do not require assignment or dedication, the inventor is entitled to retain commercial rights. In other words, the

patent is his own individual property, except that, in accordance with

the regulations, the United States Government may have a license in

the invention or may have rights arising from law.

The Department regulations (1 AR 880 to 883) set forth procedures

for submitting inventions to the Office of the General Counsel and

provide for a determination of ownership between the Government

and the employee-inventor. The determination is made in the Office

of the General Counsel, subject to review by or appeal to the Chairman of the Government Patents Board. The regulations also set

forth a procedure for the employee-inventor to request commercial

rights in an invention.

Section 5—Statutory Subject Matter of Patents

Even though patented inventions usually are considered creations

of distinctive merit, it does not follow that all creative contributions

may be patented. The classes of subject matter that may be patented

are expressly enumerated in the patent statutes. To be patented an
PATENT MANUAL 7

invention must be (1) an art or process, (2) a machine, (3) an article

of manufacture, (4) a composition of matter, (5) a design, or (6) a

variety of plant.

The first class includes methods for bringing about useful physical

or chemical results, for example, a chemical process or a process of

manufacturing some article. The second includes mechanical devices

capable of producing predetermined physical effects by their own

operation, for example, an electric motor. The third includes manmade objects that do not operate as machines but are definitely capable

of individual treatment in trade and commerce, such as a hairbrush.

A composition of matter is formed by the intermixture of two or more

ingredients in such a way that the identity of each separate ingredient

is substantially lost while it exists in the composition. This class includes composite articles resulting from chemical union and mechanical mixtures (whether they are gases, liquids, or solids).

Design patents are granted on ornamental designs for articles of

manufacture. The subject matter covered relates only to appearance,

functional utility being of no moment.

Plant patents are granted only on asexually reproduced new varieties, excluding tuber-propagated plants.

A particular invention does not need to be fitted into a particular

class in the patent application. It needs only to fall within the classes

as a whole, and the class need not be indicated in the patent, except

in the case of a design or plant.

Discoveries that fall outside the above classes are not patentable

for lack of statutory provision. For example, discovery of the correct

analysis and structure of an existing vitamin is, in itself, not patentable. Neither is a new way of doing business, printed matter, etc.,

although machines, articles of manufacture, etc., associated with these

may be patented.
Chapter III

HISTORY OF PATENT REGULATIONS

OF THE DEPARTMENT

The patent policies and regulations of the Department of Agriculture have been under study during the past several years and have

undergone considerable revision, particularly to bring them in agreement with the 1947 Recommendations of the Attorney General to the

President, Executive Order 10096 (app. B) as supplemented by Administrative Order No. 5 (app. C), and Executive Order 9865 (app.

D). The last revision of the Department regulations, 1 AK Chapter

15 (app. A), is dated October 24,1955.

This chapter reviews the history of the regulations, and explains

the basis of various provisions. The regulations deal only with

inventions of Department employees.

During its early years of research activity, the Department had no

regulations pertaining to inventions by its employees. Some of the

research resulted in inventions, and a few patents were obtained by

employees engaged in the research. The object of the research was

to benefit the agricultural industry. Any benefit to the Government

in procurement was remote.

Attempts by the patent holders to commercialize their inventions

led to adverse criticism of the Department, especially by Members

of Congress. It was contended that inventions made by employees

under funds appropriated by Congress for conducting research should

be in the public domain.

As a result of such criticism the Secretary issued Departmental

Circular No. 3 on May 8,1905. It reads in part as follows :

Hereafter when any employee of the Department makes any new and useful

discovery or invention of any machine, device, or process connected with the

work of the Department through the expenditure of Government time and Government money, you are directed to cause a patent to be applied for on the said

discovery or invention through the law officer of the Department. The patent

will be taken out in the name of the inventor, without any expense to him, and

will allow to any citizen of the United States the use of the patented article

or process without payments of royalty.

The circular also prohibited an employee-inventor from obtaining

a patent in any other way on any invention "connected with the work

of the Department." The regulation thus required submission of all

such inventions. If the Department determined to obtain a patent,
PATENT MANUAL 9

it was obtained under the No-Fee Act. An employee-inventor was

unequivocally denied any rights in the patent, but he was not prohibited from obtaining patents on his other inventions.

Atthattime it was generally understood that patents obtained under

the No-Fee Act were dedicated to the public by virtue of the act itself,

so no dedication clause was required in the patent.

To what extent the circular resulted in submission of inventions is

not determinable, as there is no way of measuring the number of

inventions that fell under the requirement but were not submitted

because the employees were not familiar with the circular, or because

the employees or their superiors failed to recognize patentable inventions resulting from Department activity, or for other reasons.

Although the circular underwent some revision (regulation No. 140,

sometime prior to 1918, and regulation No. 234, 1919), there was little

change in substance or practice during the two decades from 1918

to 1938.

In about 1918 the Bureau of Chemistry of the Department of Agriculture and the Bureau of Mines of the Department of Commerce suggested legislation that would authorize a Government agency to expedite Government inventions by patenting the invention, developing

it on a commercial scale, and granting financial rewards to inventors.

By Executive Order 3721 (August 9,1922) the President appointed

an Interdepartmental Patent Board to survey the matter of inventions made by Government employees. This Board recommended

establishment of a general Government patent policy, but this was

not effected.

In 1924 the Secretary of Agriculture replaced regulation No. 234

with regulation No. 686, which reads as follows:

Pending the establishment of a general policy with respect to inventions and

patents by Government employees on which an Interdepartmental Patent Board

is now at work, all cases arising within the Department of Agriculture where

an employee has made a discovery or invention in any wise connected with

the work of the Department which in the judgment of the employee or one

of his superior ofiicers in the Department should be patented either in the

interest of the employee, or that of the public or both, a brief report on the

subject will be prepared and transmitted to the Secretary by the Chief of

the Bureau in which the employee is employed. The report should cover the

character of the discovery or invention and the circumstances under which it

was made or developed in sufBcient detail to enable a just and adequate judgment to be made on the facts then available as to the equitable or legal rights

of the Government and the employee respectively. Determination will then be

made as to what measure of control, if any, the Department should have or

exercise in the patenting and subsequent administration of such discovery or

invention.

Although some changes in procedures were made in this regulation,

the previous policy relative to dedication of patent rights remained

unaltered.
10 AGRICULTURE HANDBOOK NO. Ill

The antagonism of some employees toward the policy, because of its

apparent inequities, and the decision in the Dubilier Condenser Corp.

case of 1933 (289 U. S. 178) led the Office of the Solicitor (now Office

of the General Counsel) to determine patent rights of employees in

accordance with the principles of the Dubilier case, that is, on the

basis of whether the invention was made as a result of a specific job

assignment and without regard to its relationship to the Department's activities or the expenditure of Government funds and time.

This policy'was expressed in regulation No. 1561 issued in 1936, which

replaced regulation No. 686. The pertinent portion of regulation

No. 1561 reads as follows :

If the invention involved is found to be within the specifically assigned

duties of an employee, he will be required to dedicate it to the public, or, in the

event it is desired to retain administrative control of the subject matter in the

Department, such invention will be assigned to the Secretary of Agriculture.

When an invention does not come within the scope of employment of the inventoremployee and where the subject matter is of interest to the Government, a

patent application will be filed through the Department, under which the Government retains or obtains a shopright or right of free use and all other commercial rights remain in the inventor.

Memorandum No. 731 issued in 1937 set forth a procedure for submitting inventions and expressly authorized the Solicitor to make the

determination of ownership where the employee-inventor requested

commercial rights.

The policy thus established remained in effect for about 10 years,

during which time a considerable number of Solicitor's Opinions

regarding patent rights were rendered. Many inventors were allowed

to retain commercial rights to their inventions.

The Solicitor's findings were regarded by some administrative officials of the Department as resulting, in some instances at least, in

an undesirable patent policy. It was possible for an employee engaged

in research for public benefit to produce an invention outside his

specific job assignment, but nevertheless at Government expense and

in the purview of Department activities and perhaps within the

specific job assignment of another employee, and yet retain commercial rights. For example, an employee could make an invention

within a contemplated project not yet assigned to him or to others,

by making use of Government information available perhaps to only

a few employees. This would lead to the very type of adverse criticism that had been leveled at the Department previously.

In about 1940 the Department began considering various proposals

for altering the regulations to provide a basis for denying an inventor

commercial rights to an invention made at Government expense or

time or by utilizing Government information.
PATENT MANUAL 11

As a results amendment No. 254 was issued October 13, 1947. This

was later incorporated into 1 AR as chapter 15. The substantive

portion concerning the patent rights reads as follows :

Any invention made by an employee of the Department that (1) falls within

the assigned duties of the employees or (2) was developed with the substantial

use of Government time, funds, expendable materials, or unpublished information shall either be dedicated to the public or, in the event that it is desirable

to retain control of the invention in the Department, shall be assigned to the

United States as represented by the Secretary. The fact that an idea that leads

to an invention occurs to an employee when he is on duty shall not in itself be

sufficient to require such dedication or assignment.

This regulation remained unchanged until July 19, 1950, when

Amendment No. 30 was issued to bring the regulation into better

harmony with Executive Order 10096 (issued January 23, 1950).

Amendment No. 42 was issued October 5, 1951, to further clarify the

regulation relative to Executive Order 10096 and Administrative

Order ÎSFo. 5. The last amendment was issued October 24, 1955, to

bring the regulations into conformity with the organization structure

of the Department, but no substantive changes were included.

No case was submitted to the Solicitor for determination of the

inventor's rights under the 1947 regulation before Executive Order

10096 was issued. A few were submitted subsequently. In determining the inventor's rights in these cases, the 1947 regulation was so

construed as to render it the same in substance as Executive Order

10096. Thus, the Department's regulations relative to the substantive

domestic patent rights of its employee-inventors have remained unchanged since the 1947 regulation was issued.

The regulations relative to foreign patent rights developed independently of those relative to domestic patent rights.

Prior to August 12, 1943, there were no regulations relating to

foreign patent rights of employee-inventors. It was understood that

the employees owned the foreign patent rights, and they were free to

seek foreign patents regardless of the disposition of the domestic

patent rights.

General Departmental Circular No. 4 (dated August 12, 1943)

expressly recognized the inventor's foreign patent rights but required that the inventor give the Government a free license in any

foreign patent sought when the domestic patent rights were assignable to the Government or, in some instances, when the Government

was entitled to a shopright.

Circular No. 4 was canceled immediately after issuance of Executive Order 9865 on June 14,1947 (app. D).

The regulation of 1947, amendment No. 254, included provisions

based on Executive Order 9865 for the Government to acquire the

foreign patent rights if the domestic rights were assignable to the
12 AGRICULTURE HANDBOOK NO. Ill

Government or subject to dedication to the public and if the Government, operating through the Ojfice of Technical Services, Department

of Commerce, desired to obtain foreign patents. This amounted to

an option in the Government to obtain the foreign rights on request.

This Department has not at any time taken more than an option in

employee inventions.
Chapter IV

DEVELOPMENT OF INVENTION PRIOR TO FILING

OF PATENT APPLICATION

The following sections are concerned with inventive developments

prior to the application for patent. An attempt has been made to help

the inventor determine whether he has made a patentable invention,

and to show how he may prepare a proper record of his invention and

how he may assist the Office of the General Counsel in the preparation

of the patent application.

Section 1—Novelty and Utility

An invention, to be patentable, must be new and useful. In a patent

sense, the word "new" has a broader meaning than it has in common

usage. The usual test of novelty (newness) applied by the Patent

Office is the novelty search in which available printed matter is consulted to find if there is a previous description of the invention

claimed. This search brings forth prior published knowledge. The

invention must also be new with respect to public use in this country.

Novelty is a question of fact and must be treated so in patent prosecution. Generally, the inventor encounters only the published prior

knowledge or "prior art" in the form of patent or literature reference.

Any reference prior to the patent application is considered by the

Patent Office to be prior art. A printed publication in any country

or a public use of an invention in the United States, if more than a

year before the application, constitutes a statutory bar, regardless of

whether the source of the publication or use is from the applicant or

another. If the reference is less than a year old it will prevent issuance of a patent only if it is derived from another and is prior to the

date the applicant made the invention. If a reference cited by the

Patent Office is less than a year old, the applicant must establish his

inventive date as prior to the reference or show that the source of

the reference is from himself in order for the Patent Office to withdraw the reference.

Prior unpublished experimental uses, abandoned experiments, or

lost arts are not proper references.

The invention must be useful, but the degree of utility required is

not such as to excel all prior means of accomplishing the same objective.

13

410690—57 3
14 AGRICULTURE HANDBOOK NO. Ill

An invention is useful in a patent sense if it is capable of performing

some beneficial function. Inventions that are inoperative or frivolous, or are injurious to health, morals, or good order of society lack

utility.

Section 2—^Bosic Inventions and Improvements

Research may be directed to exploration of a relatively unknown

field, or it may be an endeavor to improve existing methods or things.

In the first instance, the research sometimes leads to inventions that

may change an existing industry or may create a new industry. In the

second instance, the research leads to inventions of relatively lesser

impact on existing methods and products. Research of the former

type is sometimes referred to as "basic," but there is no clear line of

distinction between basic and nonbasic research. However, any particular research project is more basic than that which is derived

from it.

Likewise, patents resulting from the more basic research may be

broader than succeeding patents that are directed to subsidiary phases

of the research. They will dominate the succeeding patents.

The existence of a patent dominating an industry does not mean

that no further invention will be recognized in that field by the Patent

Office. Indeed, most patents that are granted are on improvements in

patented inventions.

Because the dominant patent and the improvement patent both exist,

the patent rights of each must be reckoned with throughout the life

of the patents. It is not unusual for one who wishes to practice

the invention under an improvement patent to obtain a license from

the holder of a dominant patent.

Section 3—Conception of the Invention

An invention begins with its mental visualization or conception.

The conception date is of vital importance and may become significant

in preserving the patent rights.

Although precise treatment of this subject is beyond the scope of

this manual, there are a few guides that the employee-inventor may

use to help recognize and deal properly with the conception at the time

it occurs. The conception must be complete. The result, as well as

the means for bringing about that result, must be visualized. The

conception may be broad, but breadth should not be confused with

vagueness. It should include specific phases, for example, specific

chemicals, specific physical conditions, specific apparatus or structure.

Finally, to be of patentable significance, the conception must relate

to something useful.

Because the conception is a mental process, it must be communicated

to others who understand it before it can be proved satisfactorily.
PATENT MANUAL 16

Furthermore, because testimony by others may be necessary in obtaining a patent, itis preferable to communicate the conception in writing

to a person who may act as witness at some future time, and that person should read, sign, and date the writing (preferably on each page),

or keep other diary notes, so that he can, if called as a witness, identify

the writing and establish its date and content.

It is wise to keep in mind that the date of conception is the earliest

date to which an inventor can be entitled for priority purposes. If

the inventor can demonstrate reasonable, continuous diligence in carrying out (constructing and testing) the conceived invention, for purposes of priority he may be considered as having made the invention

when he began the continuous diligence. If this diligence began immediately after conception, then the date to which the inventor is

entitled is the date on which the invention was conceived.

Section 4—Reduction to Practice of the Invention

The act of transforming an inventive concept into physical reality

(construction and testing) is referred to as "reduction to practice"

of the invention. This act is an important step in the development of

an invention. The general rules of reduction to practice for the four

most important classes of invention are :

(1) A process is reduced to practice when it is successfully performed ; this normally requires a test of results to demonstrate the

success.

(2) A machine, when it is assembled and tested or used.

(3) An article of manufacture, when it is completely manufactured

and tested or used.

(4) A composition of matter, when it is completely composed and

tested or used.

Chemical compounds have a distinctive status as compositions of

matter. It is frequently necessary to perform chemical analyses as

an essential part of reduction to practice, because the inventor must

at least determine the chemical composition of the compound before

he can be said to have tested it.

There are some circumstances under which reduction to practice

may be considered complete without the test, but they are rare. Tests

in general should duplicate as nearly as possible the intended conditions of use. Laboratory tests that do not duplicate conditions of

use may fail to establish reduction to practice.

Section 5—^Joint Inventorship

In an ideal situation of joint inventorship, two or more persons

conceive the invention, each contributing a share of the complete idea.

In practice, however, coinventorships are often diíBcult to determine.
16 AGRICULTURE HANDBOOK NO. Ill

The invention frequently develops progressively, with numerous persons contributing in one way or another.

To determine whether or not a person should be included as a coinventor, his contribution toward the inventive concept should be

carefully weighed. He must have contributed more than time and

energy. A laboratory technician who merely carries out instructions

or who may have been present during a discussion of the invention

without contributing toward the conception is not a coinventor.

Neither is a supervisor who presents a problem without providing any

part of the solution a coinventor.

The principle of inventorship is illustrated by the experienced scientist who conceives an inventive idea, communicates it to his employees, and instructs them to carry it out. If the employees do no

more than carry out the instructions communicated to them, they cannot properly be considered coinventors. If, on the other hand, the

scientist presents to his employees a problem to be solved without

suggesting the solution, and they solve it themselves in the laboratory,

the inventorship lies with them and not him. Again, if the solution

is obtained by an exchange of pertinent ideas among all of the members of the group, it is a case of joint inventorship involving all who

contributed.

In determining coinventorship, the degree of contribution of each

inventor is not of significance.

Under present law, an application for patent may be corrected if

through error it either includes the name of a person who is not an

inventor or excludes the name of one who is. (See rule 45, app. E.)

Section 6—The Prior Art Search

Experience has shown that most applications for patents filed

through the Department contain patentable subject matter and the

number of applications that could definitely be eliminated from filing

in the Patent Office by a prior art search is too small to make the procedure of practical benefit. In the usual research project, the prior

art is fairly well covered before the laboratory work is started. For

this reason, a prior art search to determine whether a Department

invention is probably patentable normally is not made before filing

the application for patent.

Even though a search of patent literature may not be a part of the

literature search of a scientist, he should know how these searches

are conducted. The patent literature contains a wealth of technical

information that is not to be found elsewhere, and the ability to make

a patent literature search is of benefit not only for future patent purposes but also as a means of obtaining vital technological information.

Search of the patent literature has the same general purpose as
PATENT MANUAL 17

any other search of literature. To be complete, a search of literature

should include the patent literature.

Patent searches may be classified as follows: (1) State of the art

search, (2) preliminary search, (3) validity search, and (4) infringement search.

A state of the art search is usually a search of the literature for

all the information on some particular subject. An example would

be a search to determine the methods applied to extract oil from oilseeds by means of solvents.

A preliminary search is an investigation of the literature relating

to an invention before a patent application is filed. Its main purpose is to determine patentable novelty.

A validity search is the most intense search of all. It is a search of

prior literature and patents to find any disclosure meeting the claims

of a given patent. The purpose of a validity search is to find prior

art that may be used in an infringement action to invalidate the

claims of a patent in suit. Such a search is of little concern to the

Department because it is seldom involved in an infringement action.

An infringement search is a search through the pertinent United

States patents issued within the previous 17 years to ascertain if

they contain claims that may be infringed by a contemplated process

or product. Its scope is limited, for it is confined solely to United

States patents. But it is a difficult search for it requires skill in

analyzing patent claims. An infringement search also is of little

concern to the Department.

Because patents are practically impossible to search by title, a

good workable classification must be provided. A file of patent literature can be an excellent source of information for Department agencies,

but employee-inventors will not be called on to make a validity or

infringement search in the normal course of duty.

Section 7—Notebooks and Original Records

The sources of material for a patent application normally are the

records of the experiments involved. These may include the laboratory notebook, the official report, and any other written record. Good

records are an essential part of good research, especially if they involve

patentable inventions.

The probative value of records is important in patent matters because they may have to be used as evidence of invention, both as to

completeness and as to time. Although the use of original records

to demonstrate priority and completeness of invention is the exception rather than the rule in Department patent prosecution, itis impossible to predict occasions when such necessity will arise, and the wise
18 AGRICULTURE HANDBOOK NO. Ill

course is to prepare all original records so that they will be of maximum value as proof.

The conception should be recorded and immediately corroborated

by communicating it to a witness who is not a coinventor. Oral communication is not satisfactory, as it places an excessive burden on the

memory of the witness. Appropriate witnessing may be accomplished

by asking the witness to read the recorded conception, and then asking

him to place his initials and the date on the record.

Corroboration of reduction to practice requires actual observation

of the reduction by a witness. It differs in this way from corroboration of conception. The witness should observe the construction and

tests, so that he can testify regarding them independently of information that is communicated to him. The best corroborating witness

is one who actually performed the reduction to practice for the

inventor or who assisted the inventor and preferably kept his own

records.

Section 8—Submission of Inventions to the Office of The

General Counsel

The procedure for submitting an invention for patenting purposes

is set forth generally in the regulations, 1 AE Chapter 15 (app. A).

The submission normally originates with the inventor and is forwarded through official channels and the Administrator, Agricultural

Kesearch Service, to the Office of the General Counsel.

Certain administrative determinations are made before the invention is submitted to the General Counsel. These include :

(A) A determination as to whether an invention has been made.

The regulations do not specify any particular manner for making

this determination. Therefore, the initial determination rests with

the research employee, or his immediate superior, because if he does not

submit the invention the matter is closed. A submitted case may also

be halted at any point in its administrative route to the General Counsel on the ground that an invention has not been made.

Normally the Office of the General Counsel does not enter into

this determination unless requested. However, if the subject matter

submitted does not fall within a statutory class of patentable subject

matter it may be refused. Also in some instances the Office may, on

its own initiative, make a preliminary search and if anticipating references are found remand the case for the inventor or administrative

personnel to point out how the subject matter is inventive over the

reference. Such a procedure frequently results in the case being

dropped.

(B) A determination as to whether the invention is used or likely

to be used in the public interest. Such a determination is essential for
PATENT MANUAL 19

filing the application under the No-Fee Act. It is an element of the

certification to the Commissioner of Patents by the Administrator of

the Agricultural Eesearch Service. Most submitted inventions result

directly from Department research projects and belong to the Government. There is no question of the propriety in certifying these.

Also, where an invention is one used or likely to be used by the Government in procurement, certification is proper.

(C) If the patent rights are subject to ownership by the Government, a determination as to whether the patent rights are to be

dedicated or assigned. Whether the patent rights are dedicated or

assigned is not of significance because in either event the patent is

available for public use. The several advantages derived from assignment were discussed in chapter I. At present, assignment is the usual

practice although before about 1930 dedication was universal in the

Department.

The preparation, filing, and prosecution of the application following

the above determinations are functions of the Office of the General

Counsel. The patent attorney may seek technical aid concerning the

invention and references cited by the Patent Office from the inventor

or those officially near him, and also from other sources.

The Office of the General Counsel has available forms (designated

as OGC-5 and OGC-7) that may aid inventors and administrative

officials in submission of inventions.
Chapter V

PREPARATION AND PROSECUTION

OF PATENT APPLICATIONS

Section 1—Preparation of the Patent Application

In reporting the disclosure of inventions to the Office of the General Counsel in accordance with the Department regulations, the

form of expression is left largely to the discretion of the inventor.

The form employed in the usual technical report is adequate, provided

the proper information is given.

Because an application once filed in the Patent Office cannot be

amended by the addition of new matter, the description submitted to

the patent attorney should contain sufficient information to afford

the best possible description in the application when filed.

Promptness in filing the patent application is important. The

inventor should not delay reporting the invention, especially if he is

also publishing a scientific paper disclosing it.

The description of the invention should contain, first of all, a clear

statement of its gist or "center of gravity." The description should

also contain a clear statement of the broad scope of the invention,

especially if the scope or range of equivalents is not easily discernible,

as in the so-called chemical cases. This includes ranges and properties of ingredients, ranges of equivalent materials, products, physical

variables, etc.

The description should also contain a specific statement of the invention, such as specific examples of a process or composition of

matter, and a detailed drawing and description of a machine or article

of manufacture. Drawings may also be included in process inventions if they aid in understanding the invention. Such drawings may

be schematic showings or flowsheets.

Preparing a formal patent specification and drafting claims are

exacting procedures. Long practice has established a certain general

pattern of disclosure in both the specification and the drawing.

However, the established pattern may be varied if required for a better

description of the invention. The specification, in any event, should

contain a complete description of the invention and not just fragmentary portions of it. Generally, no essential feature of the invention

should be left to the imagination. In this respect, a patent specifica20
PATENT MANUAL 21

tion may differ from disclosure in a scientific paper which frequently

leaves much unsaid for the sake of conciseness.

To prepare an adequate patent specification, the drafter should have

complete information on the invention. He should know its substance as well as the uses to which it could be put, its relationship to

other inventions in the field, and all other facts that have a substantial

bearing on it.

Formally, the preparation of the specification and claims in formal

patent specification form is a function of the patent attorney. However, submission of information to the Office of the General Counsel

in a form similar to that of the formal application is an aid. Rules

71 through 78 from the Rules of Practice of the Patent Office (not

pertinent to design or plant applications) are quoted in appendix E

as a guide. Rules 81 through 88, also in appendix E, relate to the

drawing.

Section 2—The Scope and Gist of the Invention

A patent specification differs from a scientific paper in some essential features. In a patent specification nothing is assumed that is not

obvious. If broad claims are desired, it usually is not enough,

especially in the unpredictable type of invention, to present a single

experiment. In describing the invention, therefore, unobvious equivalents should be discussed and operative ranges of physical conditions

should be stated. The inventor should describe the entire scope of

all the important variables a skilled research worker would need to

know to carry out the invention in all its variations.

In reporting his invention, the inventor should bear in mind that

his description of the invention will also be considered by persons

who are not skilled workers, for example, the patent attorney, Patent

Office examiners, and perhaps judges, if the application or patent is

ever brought into litigation. Simplicity and clarity of language and

explanation of even the "obvious" details are therefore desirable.

It is an aid to the attorney in preparing the patent application to

be advised of the prior art known to the inventor and to have the inventor explain how his invention is an improvement thereover.

In comparing the invention with the prior art, laudatory statements are of little aid. The specific problem solved by the invention

and how the invention effects a solution should be stated clearly.

Generalizations and discussions of the invention in broad terms are

important but should not be taken to extremes. It should be noted

that a patent of the Department is also a publication of the Department and the inventor should use caution in making predictions that

are not substantiated, unless it is clear he is making them as predictions. Broad generalizing statements based on guesses should not

410690—57 4
22 AGRICULTURE HANDBOOK NO. Ill

be made merely to obtain scope in the claims. Precision of disclosure

in the Department's publications is more important than scope in its

patents.

A well-presented disclosure of an invention normally includes a

statement of the gist of the invention followed by at least one specific

example; several such examples are preferable in inventions of the

unpredictable type. This material may be amplified by a disclosure

of the operative or critical limits of the various features of the

invention.

Section 3—Claim Drafting

In the preparation and prosecution of a patent application, the

preparation and subsequent amendment of the claims is of primary

concern. The claims are closely scrutinized by the Patent Office.

The inventor or administrative personnel cannot hope to be proficient in claim drafting. The long history of claim drafting and

patent prosecution before the Patent Office has evolved a complex

and special phraseology. When submitting an invention, the inventor

should describe his subject matter in brief statements that point out

the features of novelty, and he may suggest claims. It is inadvisable,

however, for the inventor to pattern claims after those found in issued

patents unless he is completely confident that he understands the full

purport of the terminology. In suggesting claims or in reviewing

claims drafted by the patent attorney, the primary consideration of

the inventor should be accuracy and completeness. If the inventor

considers the claim to be too narrow, he should explain the reasons

to the attorney. Several claims are often included to define the invention in varying degrees of scope.

Section 4—Execution of the Application Papers

After the attorney has prepared the formal application papers, they

must be executed by the inventor. The oath must be signed in the

presence of a notary public or other official qualified to administer

oaths, and the specification should be attached. The signature required is the natural signature of the full name of the inventor.

Initials may be substituted for the middle name in the customary signature, as John J. Doe. For indexing purposes, the Patent Office

requires that the full first name and middle initial be shown in the

application, preferably in the signature.

The purpose of the oath is to insure that the circumstances of the

application known to the inventor comply with various legal requirements of the statutes, and the oath must be filed with the application

papers. The execution of the oath is a swearing to certain of the

statements contained in the body of the oath. It should be read
PATENT IVUlSrUAL 23

carefully before it is executed to ascertain if the statements contained

in it apply to the facts. In case of variance, the inventor should

inform his supervisor and the patent attorney.

The assignment is a document of conveyance by which the inventor

transfers legal title to the Government. Even though the circumstances surrounding a Government invention equitably entitle the

Government to ownership, assignment should be executed in order

to convey and record the legal ownership properly. The assignment

need not be notarized or witnessed.

After the inventor has executed the formal application, he should

return it to the Office of the General Counsel through official channels for filing in the Patent Office.

If the invention has been : (1) Described in a printed publication in

any country, (2) placed in public use (not experimental use) in this

country, or (3) placed on sale in this country, the application must be

filed in the Patent Office within 1 year from the date of publication,

public use, or sale ; a later application is barred by statute. This is

true even though the publication, public use, or sale is by the inventor

himself. Although this rule may seem harsh, it must be understood

that the public has to be considered in these matters. The objective

of the patent system is the promotion of the arts and sciences. The

privileges accorded the inventor are simply means for accomplishing

this objective. In other words, the primary consideration in the

field of patents is the benefit to the public. In making this rule, the

lawmakers sought to prevent withdrawal of an invention from use

by the public long after the public has learned of it and had an opportunity to put itinto use. If the inventor has knowledge of such 1-yearold publication, public use, or sale, he should not execute the application.

Section S—Prosecution of the Potent Application

The Office of the General Counsel files the formal application for

patent, including at least the specification with the claims and oath,

in the Patent Office where it is examined for rejection or allowance

purposes. The correspondence that develops between the Patent

Office and the inventor or his attorney is called the prosecution. The

prosecution stage is normally followed either by grant of the patent

or by abandonment of the application.

The purpose of the Patent Office examination is to determine

whether a patentable invention is described and claimed properly.

One of the most important features of the examination is the prior

art search by the patent examiner. In taking action on the application the examiner may reject claims as anticipated by, or as unpatentable over, references he cites. This type of rejection challenges the

inventor to distinguish his invention from the work of others.
24 AGRICULTURE HANDBOOK NO. Ill

In commenting on references cited by the Patent OflSce, the patent

attorney must rely most heavily on the inventor himself, as he is the

one most familiar with the details of distinction and the importance

of each detail.

The Patent Office compares the claims not only with prior art but

also with the inventor's specification. For example, does the specification clearly describe what is claimed? Do the claims include

subject matter that will not work? Are the claims definite in meaning? The Patent Office also reviews the papers of the application for

formal correctness, paying considerable attention to the specification

and drawing, if there is a drawing.

Usually, the first action taken by the Patent Office will include a

rejection of some or all of the claims. Frequently, amendment to the

claims will put them in acceptable form, but as a rule the Patent Office

does not suggest amendments. Eejection of the original claims does

not necessarily indicate that a patent will not be granted, unless the

cited prior art substantially anticipates the whole invention.

Section 6—^The Response

The applicant has the right to respond to the rejection of the claims

within 6 months, or less if the Patent Office sets a shorter time.

Failure to respond completely within that period may be interpreted

as abandonment of the application. The inventor need not concern

himself with the completeness of the response, i. e., whether each

rejection and requirement is properly satisfied. That matter is for

the attorney.

The inventor is frequently requested by his attorney to supply comments on the references, as explained in the following section. In his

response, the inventor, through his patent attorney, has the burden

of persuading the Patent Office that the application should be reconsidered and the patent granted. This may be done by argument, by

amending rejected claims, by canceling rejected claims, or by any of

a score of actions or combinations of actions, depending on the particular circumstances.

Frequently, suggestions for avoiding a rejection will occur to an

inventor, and he should transmit these to the patent attorney with

his oonnnents on the references. It is helpful to include an explanation of how the suggested action will avoid the rejection, particularly

if it reauires amending or replacing claims.

Section 7—Comments on the References

The patent attorney usually requests the inventor to comment on

the references for the purpose of replying to a Patent Office rejection.

In his comments, the inventor should keep in mind that the rejection

is directed toward the claims, and not the invention as a whole. It
PATENT MANUAL 25

may be possible to change the claims and avoid the rejection. For

this and other obvious reasons, the inventor should read the rejected

claims carefully to make sure they express his invention clearly and

accurately.

The claimed invention should be distinguised from the prior art by

pointing out the features that are different. Laudatory statements of

his own invention or derogatory statements about the reference are

of little value in replying to the Patent Office. Even a reference that

appears to have little bearing on the invention should be examined

carefully for portions that are pertinent. Sometimes seemingly remote references contain statements that are pertinent. Sometimes

such references are cited because the Patent Office interprets the claims

as broad enough to include them. In commenting on a reference, the

inventor should point out what he has in his disclosed invention that

is not found in the reference. An explanation of what the reference

discloses may be helpful when the disclosure is inconsistent with the

inventor's disclosure.

If the references anticipate the invention, that is to say, disclose

substantially the same thing, the fact should be stated plainly. Anticipation of Department inventions occurs rarely, and the inventor

should not become discouraged or disappointed because his claims

are rejected.

Eeferences cited by the Patent Office frequently are prior United

States patents. These are usually cited as publications, and the pertinent disclosures are in the specification proper rather than in the

claims. In studying the patent, therefore, the inventor should concentrate on the specification to find the pertinent disclosure.

Section 8—Affidavits

It may be desirable in certain instances to present facts by affidavit

for the Examiner's consideration. The affidavit may relate to (1)

time of inventive act, or (2) expert opinion or factual comparison.

Affidavits relating to the time of the inventive act are used in "swearing back of" references. Affidavits of expert opinion or comparison

usually are filed voluntarily by an inventor in persuading the Patent

Office to grant claims. The purpose of the affidavit in either case is

to present evidence in a credible form.

Statements of fact in some affidavits should be supported by exhibits, such as photographic copies of original records or pertinent

portions thereof, photographs of models, or copies of letters received

from disinterested parties. The patent attorney may ask the inventor

for a narrative statement of the facts together with copies of pertinent

exhibits for use in preparing the necessary affidavit. If an exhibit

discloses material not pertinent to the affidavit, it should be called to
26 AGRICULTURE HANDBOOK NO. Ill

the attention of the patent attorney so that it may be deleted if desirable. The patent attorney needs to know if more than one person will

be required to sign an affidavit, especially if the several persons live

in different parts of the country. For separate notarizations, the

affidavit must be prepared in a special form.

Section 9—Election of Species

Inventors are entitled to claim as many as 5 different species of

their invention in 1 application provided a broad claim covering

all 5 is allowable. However, if more than 1 species is claimed, the

Patent Office may require that the application be restricted to 1 if

the broad claim is not allowed. This requirement for restriction

must be complied with regardless of seeming patentability of all

species.

In complying with Patent Office requirement, the inventor should

elect a species representative and typical of the broad invention. It

is also desirable thatthe elected species be the most remote from known

similar products or methods and one for which the inventor can

demonstrate maximum advantage over the prior art.

The Patent Office may also require restriction on the ground that

a plurality of divisible inventions is claimed. For example, division

may lie between a product and its process of manufacture, an apparatus and the process carried out by it, or a combination and a subcombination thereof. The inventor or his attorney should make

the election even though it is proper also to traverse the requirement

for restriction.

The requirement for restriction, whether based on plural claimed

species or on plural divisional inventions, is made, in part at least,

to render the Patent Office examination system administratively

feasible. If claiming of different inventions in 1 application were

permitted, classification of the application work between the examiners

and classification of the patents when granted would become hopelessly confused. Furthermore, Congress, in providing that fees be

paid for patents, did not intend more than 1 invention to be claimed in

1 application.

The restriction and divisional procedure is a highly technical phase

of patent prosecution with which the inventor need not concern himself beyond stating the election or providing information that will

enable the patent attorney to make the desired election. Furthermore,

making the election one way or another does not affect the substantive

rights as the nonelected species or nonelected divisible invention can

be claimed in a new application without any loss of rights. Also, if

a single species is elected, the nonelected species can later be claimed

in that same application provided a broad claim covering them is

found allowable.
PATENT MANUAL 27

Section 10—The Repeated Rejection

The Patent Office considers the amendments and argument in the

response, and again takes action in the case. If some claims still are

not allowable, these are again rejected and the reasons are stated. At

this point the inventor and his attorney should make certain that the

claims are drafted accurately and completely and, moreover, that the

examiner's position is clearly understood. If the Patent Office appears to be correct in interpreting the invention and the prior art,

and the rejected claims appear to be the best possible definitions of the

invention, the issue is crystallized and it may be concentrated on in

the prosecution. This point may be reached at the second rejection,

but frequently it is not reached until the third, and sometimes not

until later.

If the Patent Office is, or appears to be, in error in interpreting the

invention claimed or in interpreting the references, that fact should

be stated clearly in the inventor's comments and a detailed explanation

should be provided. This point is important, for on it may depend

the fate of the application, yet it may escape all but the trained

scientist.

Section 11—The Final Refection

When an issue in the prosecution has been reached, the patent examiner customarily issues a final action closing the prosecution before

him. The clarity of the issue depends much on the effort and skill of

the inventor and his attorney during the earlier stages of the prosecution. Lack of definiteness and lack of clarity of the issue may

necessitate further communication with the examiner, and, as the case

is under final rejection, the inventor is at a disadvantage, for any

action by the examiner thereafter (known as an advisory action) is

at his own discretion. Such action does not stay the time necessary

for responding to the final rejection. Response to a final action is

normally limited to (a) cancellation of the rejected claims or other

compliance to outstanding requirements, or (b) an appeal to the

Board of Appeals.

Section 12—The Appeal

The final action is normally a turning point in the prosecution.

At this point the decision must be made as to whether or not an appeal

is to be made from the action.

The final action may be based on a rejection of the claims on their

merits, on formal grounds, or on both. The inventor usually is called

on for recommendations regarding a final rejection relating to the

technical or scientific aspects of the case. The Office of the General
28 AGRICULTURE HANDBOOK NO. Ill

Counsel may advise whether appeal should be made from a final

rejection based on formal or legal grounds. In Department applications, appeals on the merits are relatively infrequent. For example,

appeals usually are not made solely to obtain additional breadth of

claims, particularly if the application contains allowed claims covering the invention in a reasonable scope. On the other hand, an appeal

should be made where the examiner appears to be in error as to pertinent technological facts, or where the subject matter of the application is deemed suiBciently important to render broad protection

desirable.

Section 13—The Appeal Brief

Preparation of the appeal brief requires considerable legal skill

and knowledge, and the patent attorney is responsible for it. The

inventor, however, has the responsibility of making available all the

technological facts that bear on the issues. When an appeal is recommended, the inventor should review the record of the case carefully

to make sure that his previous discussions are clear and have been

interpreted correctly. If the arguments for his invention are not

clear cut in the record, a summary should be prepared and forwarded

with the recommendation for appeal, together with any additional

points bearing on the issue.

The Office of the General Counsel may request factual support of

statements made by the inventor, the better to present the case on

appeal. This is an occasion for that Office to prepare affidavits of the

type previously discussed.
Chapter VI

INCIDENTAL AND UNUSUAL FEATURES

OF PATENT PROSECUTION

The foregoing sections describe briefly the sequence of events leading to a granted patent. They are the circumstances that are normally

encountered. There are, in addition, a few unusual features that are

relatively important to a more complete understanding of patent

prosecution.

The following sections are intended to give the inventor a brief

introduction to some of these unusual features of patent prosecution.

All his activities in connection with these features are to be carried

out under the close guidance of the attorneys who are responsible for

the prosecution of the case. It is not advisable for him to take action

without such guidance.

Section 1—Interview with the Patent Examiner

All the familiar difficulties that surround doing business by correspondence are present in the prosecution of a patent application.

For this reason, the attorneys often meet with the patent examiner

for the purpose of clarifying issues.

Only rarely does the attorney in charge of an application decide

that the prosecution would be aided materially by an interview between the patent examiner and the inventor. Nevertheless, inventors

sometimes attend the interview. It may be advantageous, for example, for the inventor to explain complicated technology. He may

be able to remove doubts relating to the merits of the invention from

the mind of the patent examiner.

Section 2—Certificate of Correction and Reissue of Patent

All errors in the specification, especially if significant, should be

called to the attention of the attorneys as soon as they are discovered.

Even with all tjie precautions normally taken, errors may occur in the

printed patent.

There are two ways of correcting errors in patents. If the error

occurred on the part of the Patent Office, or if it relates only to informalities, it may be corrected by requesting a Certificate of Correction.

29

410690—57 5
30 AGRICULTURE HANDBOOK NO. Ill

See Eules 322 and 323 (app. E). However, if an error occurs that

is of considerable moment and is not the fault of the Patent Office

a reissue of the patent may be required. The application for reissue

is reprosecuted in the Patent Office.

It is advisable to correct errors that might lead to a misinterpretation of the sense of the specification. If the error is likely to lead

to ambiguity, or if it is a significant error in technological fact, the

inventor should bring it to the attention of the attorneys when it

is discovered. He should include a statement of the significance of

the error and how it arose, if he knows.

The Patent Office requires a verified showing that the error sought

to be corrected by a reissue application arose through inadvertence,

accident, or mistake. Because the filing of a reissue patent application is a rather serious undertaking and requires considerable work

for all concerned, such applications should not be sought except for

substantial reason.

In any event the original patent or a showing of its loss must be

submitted to the Patent Office to make a correction.

Section 3—Divisional and Continuation-in-Part Applications

When the Patent Office perceives that the claims of an application

include more than one invention, a requirement for restriction to one

of the inventions is made. The nonelected invention can be included

in the subject matter of a divisional application.

Whether or not a given set of claims includes more than one invention is often a complex legal question. A practical discussion of divisional practice cannot be made here. Examples of relationships on

which restriction may be required are: (1) An apparatus and process

carried out by the apparatus, (2) a process and article or composition

produced thereby, (3) two or more classes of chemicals, and (4) a

new chemical compound and its uses, such as insecticides, plastics, and

the like. The specifications of divisional applications may be identical, the difference being only in the claims ; or the disclosure of the

divisional application that is filed later may be reduced by omitting

the disclosure of the unclaimed subject matter.

The continuation-in-part application is similar to the divisional

application, except that the continuation-in-part invention is incompletely disclosed in the first application, i. e., the second application

contains "new matter" relative to the first. As in divisional applications, there must be separate inventions if separate patents are

sought. However, a continuation-in-part application may be filed

to replace a pending application for the purpose of enlarging the

disclosure or correcting defects, and in this instance the continuationin-part may claim the same invention that was originally claimed.
PATENT IVIANUAL 31

Questions of divisible inventions involve many considerations that

are familiar only to the experienced patent attorney. All inventions

that are so closely related that there may be question of their divisibility should be presented together.

When a continuation-in-part application is proposed, the intended

disposal of the first or "parent" application should be indicated to

the patent attorney so as to avoid confusion. Thus, if the continuation-in-part application is intended to replace a pending application

for the purpose of correcting defects or amplifying subject matter

and does not claim a divisional invention, the parent application

should be abandoned.

Section 4—Citation oi Decisions

In his correspondence relating to a patent application, the examiner

may support his statements by citing previous decisions. In the same

manner, the patent attorney may cite decisions in the reply. The

purpose is to show that a similar issue has been dealt with previously

and has been decided according to the respective holding or argument.

It is a long-established policy in American law to stand by decisions

and not to disturb settled matters—to follow rules or principles laid

down in previous judicial decisions.

Inventors are not expected to furnish information relating to cited

decisions, as this is primarily a legal matter. Nevertheless, it may be

interesting to note that a cited decision is not necessarily conclusive.

It may be controverted by distinguishing the facts to show that the

same issue is not involved, or by other methods familiar to the patent

attorney.

Section S—The Interference

When two or more copending patent applications claim substantially the same patentable invention, the applications are said to be in

interference. If the ownership is different, the Patent Office considers declaring the interference formally.

The purpose of a formal interference proceeding is to determine

which applicant is the first or original inventor. The proceeding is

carried out by the Interference Division of the Patent Office. This

Division bases its decision on the presentation of facts that prove, or

tend to prove, priority or originality of invention. It is here that

corroborative records of priority play their most important part. It

is here also that the inventor and his witnesses may be called on to

present such evidence by being examined and cross-examined by the

attorneys for the various applicants.

An interference proceeding is costly and requires careful preparation and considerable work, especially by the attorneys. Frequently
32 AGRICULTURE HANDBOOK NO. Ill

it it unnecessary to carry the proceeding to completion, for the fact

of priority may be apparent at a very early stage. For these and

other reasons, an interference may be settled between the parties in

an informal manner. This tends to eliminate expense, formality, and

delay, and at the same time the results are substantially the same as

obtainable by a formal proceeding.

Section 6—Interference Testimony

After an interference is declared and after the preliminary action

has been completed, the Examiner of Interferences sets a time for

taking testimony. The taking of testimony is the proceeding in which

an inventor and his corroborating witnesses endeavor to establish

priority or originality of invention. With the assistance of his attorney, the inventor introduces exhibits and statements into the record in

an effort to establish as early a date as possible for conception, commencement of diligence, or reduction to practice, as the situation

may require. Special preparation for testimony includes a careful

review of the records to insure that the best possible evidence will be

introduced and the earliest dates will be proved. Opposing attorneys have the right to cross-examine the witnesses to expose weak

points in the proof. Accordingly, the witnesses should be prepared

to support their statements.
Chapter VII

LICENSING PATENTS

Section 1—Patent Rights and LicensesinCommercial Practice

A patent provides for commercial control of an invention. It is

a grant that creates rights in the patent owner for a limited time

to exclude others from practicing the invention, that is, from making,

using, and vending that which is covered by the patent as defined in

the claim. A patent owner may license others to practice any one

or all of these exclusive rights, for any period less than or for the

entire period of the patent, and to any territorial extent. He may

exact royalty or other types of consideration. A license is a waiver

on the part of the patent owner of his right to exclude the licensee

from practicing the invention. The license may be exclusive or it

may be nonexclusive. An exclusive license transfers to the licensee

the right to exclude others including even the owner unless it excepts

him. If the license grants the exclusive right of making, using, and

vending, is for the entire term of the patent, and covers the United

States and its Territories, it amounts to an assignment of the patent,

as all rights of the patent have been transferred.

Section 2—Licenses of the Department

The Department of Agriculture, a public agency, naturally follows

a patent policy differing from commercial concerns. Its patents are

used to serve the public interest. Through favorable licensing conditions, the Department has found it possible to maintain, and often

actually to establish, mutually beneficial cooperative relationships

with private industry. This public relationship feature is discussed

more fully in chapter I.

It is Department policy to encourage use by the public of its research developments, as the primary aim of much of its research is

utilization. In accordance with this policy, licenses issued by the

Department are nonexclusive and royalty-free.

Section 3—Procedure in Licensing of Department Patents

No special form is required for anyone to request a license under

a patent controlled by the Department. All that is essential is that

the patent and licensee be properly identified. If the licensee is a

33
34 AGRICULTUEE HAISTDBOOK NO. Ill

natural person, the name and residence and place of business should

be stated. A partnership should be so identified. If the licensee

is a corporation, the name, State of incorporation, and place of business should be stated. Generally, administrative officials, when considering the granting of the license, are also interested in the licensee's

purpose in requesting the license.

The request is customarily addressed to the Department of Agriculture, Office of the General Counsel, Washington 25, D. C. This

Office transfers the request to the appropriate agency administering

the patent.

It is usual practice for that agency to direct a memorandum to the

Administrator, Agricultural Kesearch Service (who is authorized

to sign), recommending that the license be granted (including all

information necessary to complete the license) and to route the memorandum through the Office of the General Counsel where the necessary

documents are prepared and attached for the Administrator's signature, and where the complete statistical records of all patents controlled by the Department and of the licenses granted are kept.

A usual form of license in use by the Department is found in

appendix I.
Chapter VIII

COPYRIGHTS AND TRADEMARKS

Section 1—Copyrights

Copyrights are registered in the Copyright OfBce of the Library

of Congress and may be obtained on works of art such as books, musical

compositions, drawings, and motion-picture plays. The right to registration is created by publication of the copyright work with a notice

of copyright thereon. The copyright includes the right to exclude

others from copying and vending the work covered. Material in the

public domain is not subject to copyright but may be embodied in the

copyright work. In such event the copyright covers only that portion

of the work contributed by the author.

The Department is not interested in obtaining copyrights on its

published works. The law provides that "No copyrights shall subsist * * * in any publication of the United States Government." Employee-authors of published work in which the Government has no

proprietary interest may register the copyrights.

Employees of the Department should avoid copying material covered by a copyright without clearance from the owner, and they

should indicate the source when copying material with clearance

for publication or distribution purposes.

Section 2—Trademarks

A trademark is an arbitrary mark or symbol associated with a

particular class of goods or services to indicate the origin or the

producer of the goods or services. The right to a trademark is established by its use in commerce. If the use has been in interstate commerce, t]lie mark may be registered in the United States Patent Office.

Registration has the legal effect of raising a presumption of validity

of the mark and placing jurisdiction for infringement in the Federal

courts. It has the practical effect of placing the mark in the search

records of the Patent Office. This avoids inadvertent infringement

by others who may search the Patent Office records before adopting

any given mark, and also makes the mark available to the examiners

for citation against others who may subsequently seek to register a

conflicting mark.

35
36 AGRICULTURE HANDBOOK NO. Ill

If a new mark is adopted in commerce as a generic term, trademark

rights should not be obtained on it. This Department has on occasion

assisted the Patent Office in obtaining evidence of new generic terms

by sending it literature or other evidence showing use of the term in

its generic meaning, especially where adoption or use of the term

occurs in a Department publication or in Department correspondence.

In a few instances, the Department has registered trademarks over

which it holds proprietary interests, for example, marks used in connection with the National Poultry and Turkey Improvement Plan.

The Department permits use of these marks by producers cooperating

in the plan to identify the breeding state and puUorum class of the

hatchery, provided all the requirements for that state and class have

been met. The mark is applied to the hatching eggs, chicks, poults,

or mature stock that are traded in commerce. The Department also

registered a mark showing a shield bearing the letters "U. S. D. A."

This mark together with a quality designation is placed on meats and

other foods for certification purposes by inspectors operating under

the voluntary inspection program of the Department.
Chapter IX

INVENTIONS DEVELOPED UNDER CONTRACT

RESEARCH

Executive Order 10096 and the corresponding parts of 1 AE Chapter 15 (app. A) apply only to Government employees and not to

research financed in whole or in part by the Government through

other procedures such as under grants, contracts, or cooperative

agreements.

In general, research contracts of the Department of Agriculture (as

distinguished from joint or cooperative undertakings) under which

investigations are carried out by public or private organizations or

individuals at Federal expense are issued under the authority of the

Eesearch and Marketing Act, as amended. Section 10 (a) of that

act, as amended, specifies that "any contract made pursuant to this

authority shall contain requirements making the results of research

and investigations available to the public through dedication, assignment to the Government, or such other means as the Secretary shall

determine." Section 205 of the same act provides that "any contract

made pursuant to this section shall contain requirements making the

result of such research and investigations available to the public by

such means as the Secretary of Agriculture shall determine."

In order to carry out the statutory requirements, all contracts under

the Research and Marketing Act contain a patent clause. The following clause is used in contracts with private organizations or

individuals as a part of the patent provision and publication of results :

The patentable results of research and investigations conducted under this

contract and all information, data, and findings developed under the terms of

this contract, whether apprehended during the period of the contract, or subsequent thereto, shall be made available to the public through dedication, assignment to the Secretary, publication or such other means as the contracting officer

shall determine.

Results of research or investigations and information concerning the project,

which the contracting officer determines will not form the basis of a patent

application, may be made known to the public only at the discretion of the

contracting officer or his designated representative, under such conditions as the

contracting officer or his designated representative may prescribe and with such

credit or recognition of collaboration as he may determine.

37
38 AGRICULTURE HANDBOOK NO. Ill

The clause is modified insofar as public organizations are concerned

to read as follows :

In accordance with the provisions of the Act, the public shall be granted aU

benefits of any patentable results of all research and investigations conducted

under this contract, through dedication, assignment to the Secretary, publication

or such other means as may be determined by the contracting officer.

Results of research or investigations and information concerning the project,

which the contracting officer determines will not form the basis of a patent

application, shall be made known to the public in such a manner as the parties

hereto may agree. In case of failure to agree, results may be made known to

the public by either party after due notice and submission of the proposed manuscript to the other with such credit or recognition as may be mutually agreed

upon, provided that full responsibility is assumed by such party for any statements on which there is a difference of opinion, and provided further that no

copyright shall subsist in any such publication.
Appendix A

1 AR CHAPTER 15—PATENTS ON INVENTIONS

OF THE DEPARTMENT

Section 1—Geneval

878. Purpose. The purpose of these regulations, which are a condition of employment of all employees of the Department, is, in

general, to provide a patent policy relative to inventions of employees

and to prescribe procedural rules for implementing and effectuating

such policy, and for the administration of inventions subject to

Department control.

879. Definitions. As used in this chapter, "invention" includes

any art, machine, manufacture, design, or composition of matter,

or any new and useful improvement thereof, or any variety of plant

(qualified as indicated in 1 AE 900) which is or may be patentable

under the patent laws of the United States. "Employee" includes

all full-time employees of the Department. Part-time employees and

part-time consultants are included insofar as inventions made during

periods of official duty are concerned, except when special circumstances require an exemption, each such exemption to be subject

to the approval of the Chairman of the Government Patents Board.

The terms "part-time consultant" and "part-time employee" mean any

person the terms of whose appointment or employment contemplate

that he shall work less than (1) the minimum number of hours per

day, or (2) the minimum number of days per week, or (3) the

minimum number of weeks per year, regularly required of full-time

employees of his class. "Administrator" refers to the Administrator

of the Agricultural Eesearch Service. "Chairman" refers to the

Chairman of the Government Patents Board. "No-Fee Act" refers

to 35 U. S. C 266. "Executive Order 10096" refers to the Executive

order of this number dated January 23, 1950 (15 F. E. 389). "Administrative Order No. 5" refers to an order entitled "Eules and Eegulations for the Administration of a Uniform Patent Policy With

Eespect to the Domestic Eights in Inventions made by Government

Employees," dated April 26, 1951 (16 F. E. 3927). "Patent rights"

include the right to cause an application for patent to be filed and

to own any such application and any patents which may issue on

the invention concerned, and the right to place the invention in the

public domain as by dedication, publication without patenting, or

otherwise. "Commercial rights" include the patent rights subject

to the license rights of the Government arising pursuant to these

regulations or subject to law.

39
40 AGRICULTURE HANDBOOK NO. Ill

Section 2—Domestic Patent Rights

880. Determination of Domestic Patent Rights. The domestic

patent rights in inventions made by employees of the Department

will be determined in accordance with Executive Order 10096 implemented by Administrative Order No. 5. Pertinent portions of

that administrative order are quoted below :

(1) The Government shall obtain the entire domestic right, title, and interest

in and to all inventions made by any Government employee (i) during working

hours, or (ii) with a contribution by the Government of facilities, equipment,

materials, funds, or information, or of time or services of other Government

employees on oflacial duty, or (iii) which bear a direct relation to or are made

in consequence of the oflScial duties of the inventor.

(2) In any case where the contribution of the Government, as measured by

any one or more of the criteria set forth in subparagraph (1) last above, to

the invention is insufficient equitably to justify a requirement of assignment to

the Government of the entire domestic right, title, and interest in and to such

invention, or in any case where the Government has insufficient interest in an

invention to obtain the entire domestic right, title, and interest therein ( although

the Government could obtain same under subpar. (1) above), the Government

agency concerned, subject to the approval of 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.

(3) In applying the provisions of subparagraphs (1) and (2) 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, manufacture,

or composition of matter, (ii) to conduct or perform research, development work,

or both, (iii) to supervise, direct, coordinate, or review Government financed

or conducted research, development work, or both, or (iv) to act in a liaison

capacity among governmental or nongovernmental agencies or individuals

engaged in such work, falls within the provisions of subparagraph (1) above,

and it shall be presumed that any invention made by any other employee falls

within the provisions of subparagraph (2) above. Either presumption may be

rebutted by the facts or circumstances attendant upon the conditions under

which any particular invention is made and, notwithstanding the foregoing,

shall not preclude a determination that the invention falls within the provisions

of subparagraph (4) next below.

(4) In any case wherein the Government neither (i) obtains the entire domestic right, title, and interest in and to an invention pursuant to the provisions

of subparagraph (1) above nor (ii) reserves a nonexclusive, irrevocable, royaltyfree license in the invention, with power to grant licenses for all governmental

purposes, pursuant to the provisions of subparagraph (2) above, the Government shall leave the entire right, title, and interest in and to the invention in

the Government employee, subject to law.

881. Disposition of Patent Rights in Government-Owned Domestic Applications. If a United States patent application is filed

on an invention made by an employee of this Department and which

is subject to ownership by the Government, either the domestic patent

rights shall be dedicated to the public or, in the event that it is desirable to retain control of the invention in the Department, the application shall be assigned to the Government as represented by the

Department. The dedicating clause may be included in the application over the inventor's signature.

882. Procedure in Case the Inventor Does Not Claim Commercial Rights. If a United States patent application is to be filed and
PATENT MANUAL 41

the domestic patent rights in the invention are to be dedicated or the

application assigned as indicated in 881, supra^ without contest, information concerning the invention shaU be submitted to the General

Counsel in accordance with the following procedure :

a. Information to he submitted hy inventor. (1) A disclosure of

the invention sufficient to enable the Office of the General Counsel to

prepare a patent application, the inventor's full name, residence, and

post office address ; whether he is a full-time or part-time employee,

part-time consultant, or any other type of employee ; if not presently

employed by the Government, whether he was so employed at the time

he made the invention, and whether it was understood between him

and the Government that the invention could be manufactured and

used by or for the Government for governmental purposes without

the payment of royalty, thus to bring the case under the requirements

of 38 Ops. Atty. Gren. 402 ; and the citation if the invention has been

disclosed in a printed publication.

(2) A brief statement of the most pertinent prior art known to the

inventor and the manner in which his invention is distinguished

thereover.

(3) An abstract of the invention.

b. Submission hy inventoras superior. The inventor's superior shall

promptly submit the information through Department agency channels to the Administrator along with recommendations and reasons

therefor as to why patent protection should be obtained, whether the

domestic patent rights should be dedicated or the application assigned,

whether the invention is used or likely to be used in the public interest,

and such additional information as the Administrator may require.

c. Submission by the Administrator, If the Administrator concludes that a patent application is to be filed, the information submitted by the inventor to his superior will be transmitted to the

General Counsel with a statement as to whether the domestic patent

rights are to be dedicated or the application assigned.

d. Office of the General Cownsel to handle patent application. The

Office of the General Counsel will prepare the patent application and

prosecute it before the Patent Office. If the invention is disclosed in

a printed publication after the inventor submits the information to

his superior and before the application has been filed in the Patent

Office, the Department agency should advise the General Counsel of

the citation.

883. Procedure in Case the Inventor Claims Commercial Rights,

Information concerning any invention of an employee made to any

extent under any of the conditions (i), (ii), and (iii) set forth in 880

(1), supra^ on which the inventor seeks patent protection with commercial rights therein, shall be submitted through the inventor's

immediate superior, the Department agency in which he is employed,

and the Administrator, to the General Counsel.

a. Information to be submitted by inventor, (1), (2), and (3).

The same information is included under these items as under 882a,

supra,

(4) A detailed statement of the circumstances under which the

invention was made (conceived, constructed or carried out, and tested)
42 AGRICULTURE HANDBOOK NO. Ill

including information as to the extent it was made during working

hours and the extent use was made of Government facilities, equipment, materials, funds, or information, or time or services of other

Government employees on official duty, and such information as to his

own contribution relative to these items as may be pertinent.

(5) A statement of his duties and their relation to the invention,

including information sufficient to determine whether his duties place

him under any of the categories (i) to (iv) of 880 (3), supra.

(6) A statement explaining why he believes he is entitled to commercial rights in the invention, and whether his rights should be

determined pursuantto 880 (2) or to 880 (4), supra,

(7) A statement as to whether or not he desires to obtain a patent

under the provisions of the No-Fee Act. If so, why he believes the

invention is used or likely to be used in the public interest.

(8) Any other information that the Adniinistrator may require.

b. Subfriission hy Department agency. The Department agency

shall promptly submit a report to the Administrator including the

information given by the inventor, toö:ether with a statement as to

the accuracy of the facts given under 883a (1), (4), and (5), supra^

and any additional information regarding the circumstances under

which the invention was made that will be helpful in determining

whether the inventor is entitled to retain commercial rights in the

invention. The agency may also submit a statement of views as to the

patent rights and whether the patent right should be determined

pursuant to 880 (1), 880 (2), or 880 (4) supra^ and the agency shall

give recommendations and reasons as to why patent protection should

or should not be obtained, whether the domestic patent rights should

be dedicated or the application assigned, and whether the invention

is used or likely to be used in the public interest, in the event the

Government is entitled to the domestic patent rights.

c» Submission hy the Admdnistratar. The Administrator shall

promptly forward to the General Counsel the material submitted by

the Department agency and any additional information which may

have a bearing on the question of rights involved, indicating whether

he approves the material submitted.

d. Determination hy Office of the General Cou/nsel. The Office of

the General Counsel shall impartially determine in accordance with

these regulations, whether or not the inventor is entitled to retain

commercial rights. A determination that the inventor is entitled

to commercial rights is subject to approval of the Chairman of the

Government Patents Board as i)rovided in Administrative Order

No. 5. A determination that the inventor is not entitled to commercial rights pursuant to 880 (4), supra., is subject to an appeal to the

Chairman, as provided in Administrative Order No. 5. Nothing in

this regulation shall be taken to render the finding of the Office of

the General Counsel conclusive in any proceeding in the courts to

determine the respective rights of the Government and the inventor.

In the event the inventor is entitled to retain commercial rights and

an application is to be filed under the No-Fee Act, the General Counsel

may prepare the application and prosecute it before the Patent Office.
PATENT MANUAL 43

If the invention is disclosed in a printed publication after the inventor

submits the information through his superior and before the application is filed in the Patent Office, the inventor or the Department

agency should advise the General Counsel of the citation.

e. Procedure when employee is entitled to retain commercial rights.

If the inventor is entitled to retain commercial rights he may file an

application for a patent directly in the Patent Office in the same manner as any private person, or he may request that the patent be obtained under the No-Fee Act foUov^ing the procedure outlined above.

In the event the inventor files an application directly in the Patent

Office on an invention in which he retains title pursuant to 880 (2),

supra^ he shall keep the Dej)artment informed regarding the application and shall include the license specified in 880 (2), supra. However, as to any invention on which an application is filed under the

No-Fee Act, the Government has a license throughout the world

corresponding to thatspecified in 880 (2).

884. Procedure in Case the Domestic Patent Rights Are Subject

to Assignment to the Government and the Department Agency

Determines Not to File a United States Patent Application. If

the domestic patent rights in an invention, except a plant, are assignable to the Government, and the Department agency has determined

that a patent application should not be filed, information concerning

the invention should be submitted through the agency channels to the

Administrator. The submission should include that information required under 882a (1), (2), and (3), supra^ and a statement of the

agency determination including information as to the manner in

which it is intended the invention will be placed in the public domain,

or as to 2i\\y other disposition to be made of it, and the basis on which

the determination has been made. The above information shall be

submitted to the Chairman for review in accordance with Administrative Order No. 5.

886. Promptness in Handling. Agency transmissions to the Administrator and other transmissions involving inventions that may be

patented should be made promptly. The purpose of this requirement

is to avoid delay that might jeopardize the inventor's or the Government's patent rights. In order to obtain the advantages of an early

filing date, the application may be filed in the Patent Office prior to

making the determination whether the inventor is entitled to retain

commercial rights.

Section 3—Foreign Patent Rights

892. The foreign patent rights of employees are determinable in

accordance with Executive Order 9865 (12 F. E. 3907) and Administrative Order No. 6 (19 F. E. 3937). No employee of the Department shall file or cause to be filed an application for patent in any

foreign jurisdiction (except on behalf of and at the direction of the

Government) on any invention in which the Government has acquired

the patent rights, or holds an unexpired option to acquire the patent

rights, in that jurisdiction, or take any steps to preclude the filing

of an application on behalf of the Government.
44 AGRICULTURE HANDBOOK KO. Ill

Section 4—Plant Patents

900. Policy. Plants developed by employees of the Department

under circumstances which render the patent rights therein assignable to the Government shall not be patented in this country.

901. Employees Not to Assist in Preparation or Prosecution of

Applications. No employee of the Department shall assist any person in preparing or prosecuting an application for a plant patent.

The Department cannot advise members of the public as to the novelty

of an alleged invention. Inquiries with respect to plant patents are

to be referred to the Commissioner of Patents.

902. Review of Applications for Plant Patents. The Agricultural Eesearch Service is authorized to review applications for plant

patents referred to it by the Commissioner of Patents and to furnish

the Commissioner such pertinent information as is available in the

Department.

Section S—Requests to Patent Office to Advance the Examination of Patent Applications

907. Eule 102 of the Eules of Practice in the U. S. Patent Office

provides for advancing the examination of (making special) applications for patents that are of peculiar importance to the public service, upon the request of Department heads. Department agencies receiving requests from persons outside the Department that the Commissioner of Patents be asked to advance the examination of applications for patents pending before him shall, before taking any further

action in the matter, call upon the person making the request for a

copy of the application concerned, together with the serial number

and filing date thereof. Upon receipt of this information the agency

interested shall determine whether the invention, if patented, will be

of peculiar importance to the Department and whether the immediate

consideration of the application and issuance of the patent will be of

advantage to the Department in the prosecution of its work. Employees who handle or obtain any such information shall not reveal

it prior to issuance of the patent, without consent of the person making the request, except as required for the purpose of this section.

If such request is thought to be justified, appropriate recommendations and reasons therefor will be submitted to the Administrator for

making the request to the Commissioner of Patents.

Section 6—Information Concerning Inventions and Patent

Applications to be Revealed Only for Official Purposes

912. Employee-inventors, and employees who handle or obtain information concerning inventions of the employee-inventors, or concerning any other invention in which the Department may have an

interest, on which an application for patent has not been filed, or

concerning the status of any such filed application or the subject

matter thereof, shall not reveal such information prior to issuance

of the patent, except for official purposes.
PATENT MANUAL 45

Section 7—^Assignment of Administrative Functions

918. All administrative functions on behalf of the Secretary relating to the acquisition and administration of patents are assigned to

the Agricultural Eesearch Service. (See 9 AR 200i.) Such functions include, for example, making certifications to the Commissioner

of Patents for filing patent applications under the No-Fee Act; requesting the Commissioner of Patents to make applications special;

signing an abandonment or consent to abandonment of an application

filed under the No-Fee Act or of an application assigned to the Government or dedicated to the public and administered by the Department; signing of, or of a consent to an abandonment of contest, a concession of priority, or a disclaimer, to terminate an interference ; and

issuing licenses under patents, or patent applications, administered

by the Department.
Appendix B

EXECUTIVE ORDER 10096

Providing for a Uniform Patent Policy for the Government

With Respect to Inventions Made by Government Employees and for the Administration of Such Policy

WHEREAS inventive advances in scientific and technological fields

frequently result from governmental activities carried on by Government employees; and

WHEREAS the Government of the United States is expending

large sums of money annually for the conduct of these activities ; and

WHEREAS these advances constitute a vast national resource; and

WHEREAS it is fitting and proper that the inventive product of

functions of the Government, carried out by Government employees,

should be available to the Government; and

WHEREAS the rights of Government employees in their inventions should be recognized in appropriate instances ; and

WHEREAS the carrying out of the policy of this order requires

appropriate administrative arrangements :

NOW, THEREFORE, by virtue of the authority vested in me by

the Constitution and statutes, and as President of the United States

and Commander in Chief of the Armed Forces of the United States,

in the interest of the establishment and operation of a uniform patent

policy for the Government with respect to inventions made by

Government employees, it is hereby ordered as follows :

1. The following basic policy is established for all Government

agencies with respectto 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 oj95.cial 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,

46
PATENT MANUAL 47

title, and interest therein (although the Government could obtain

same under par. (aj above), the Government agency concerned, subject

to the approval oi 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 j)urposes, 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, manufacture, or composition of matter, (ii) to conduct

or perform research, development work, or both, (iii) to supervise,

direct, coordinate, or review Government financed or conducted research, development work, or both, or (iv) to act in a liaison capacity

among governmental or nongovernmental agencies or individuals

engaged in such work, or made by an employee included within any

other category of employees 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,

notwithstanding 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 provision 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, royaltyfree license in the invention with power to grant licenses for all governmental purposes, the Government shall leave the entire right,

title, and interest in and to the invention in the Government employee,

subject to law.

(e) Actions taken and rights acquired under the foregoing provisions of this section shall be reported to the Chairman in accordance

with procedures established by him.

2. Subject to considerations of national security, or public health,

safety, or welfare, the following basic policjr is established for the

collection, and dissemination to the public, of information concerning

inventions resulting from Government research and development

activities :

(a) When an invention is made under circumstances defined in

paragraph 1 (a) of this order giving the United States the right to

title thereto, the Government agency concerned shall either prepare

and file an application for patent therefor in the United States Patent

Office or make a full disclosure of the invention promptly to the Chairman, who may, if he determines the Government interest so requires,

cause application for patent to be filed or cause the invention to be
48 AGRICULTURE HANDBOOK NO. Ill

fully disclosed by publication thereof : Pro^ided^ however^ That, consistent with present practice of the Department of Agriculture, no

application for patent shall, without the approval of the Secretary

of Agriculture, be filed in respect of any variety of plant invented

by any employee of that Department.

(b) 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, industrial and commercial organizations, and all other

interested groups of persons.^

3. (a) A Government Patents Board is established consisting of

a Chairman of the Government Patents Board, who shall be appointed

by the President, and of one representative from each of the following :

Department of Agriculture

Department of Commerce

Department of the Interior

Department of Justice

Department of State

Department of Defense

Civil Service Commission

Federal Security Agency

National Advisory Committee for Aeronautics

General Services Administration

Each such representative, together with an alternate, shall be designated by the head of the agency concerned.

(b) The Government Patents Board shall advise and confer with

the Chairman concerning the operation of those aspects of the Government's patent policy which are affected by the provisions of this order

or of Executive Order No. 9865, and suggest modifications or improvements where necessary.

(c) Consonant with law, the agenciesreferred to in paragraph 3 ( a)

hereof shall as may be necessary for the purpose of effectuating this

order furnish assistance to the Board in accordance with section 214

of the Independent Offices Appropriation Act, 1946, 59 Stat. 134, 31

U. S. C. 691. The Department of Commerce shall provide necessary

office accommodations and facilities for the use of the Board and the

Chairman.

(d) The Chairman shall establish such committees and other working groups as may be required to advise or assist him in the performance of any of his functions.

(e) The Chairman of the Government Patents Board and the Chairman of the Interdepartmental Committee on Scientific Eesearch and

Development (provided for by Executive Order No. 9912 of December

24, 1947) shall establish and maintain such mutual consultation as

will effect the proper coordination of affairs of common concern.

^Paragraph 2 (b) of Executive Order No. 10096 was revoked by Executive

Order No. 10695, January 16,1957.
PATENT MANUAL 49

4. With a view to obtaining uniform application of the policies set

out in this order and uniform operations thereunder, the Chairman is

authorized and directed :

(a) To consult and advise with Government agencies concerning the

application and operation of the policies outlined herein ;

(b) After consultation with the Government Patents Board, to

formulate and submit to the President for approval such proposed

rules and regulations as may be necessary or desirable to implement

and effectuate the aforesaid policies, together with the recommendations of the Government Patents Board thereon ;

(c) To submit annually a report to the President concerning the

operation of such policies, and from time to time such recommendations for modification thereof as may be deemed desirable;

(d) To determine with finality any controversies or disputes between any Government agency and its employees, to the extent submitted by any party to the dispute, concerning the owneilfehip of

inventions made by such employees or rights therein ; and

(e) To perform such other or further functions or duties as may

from time to time be prescribed by the President or by statute.

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.

6. Each Government agency shall take all steps appropriate to

effectuate this order, including the promulgation of necessary regulations which shall not be inconsistent with this order or with regulations issued pursuantto paragraph 4 (b) hereof.

7. As used in this Executive order, the next stated terms in singular

and plural are defined asfollows for the purposes hereof :

(a) "Government agency" includes any executive department and

any independent commission, board, office, agency, authority, or other

establishment of the executive branch of the Government of the United

States (including any such independent regulatory commission or

board, any such wholly owned corporation, and the Smithsonian

Institution), but excludes the Atomic Energy Commission.

(b) "G;oyernment employee" includes any officer or employee, civilian or military, of any Government agency, except such part-time

consultants or employees as may be excluded by regulations promulgated pursuantto paragraph 4 (b) hereof.

(c) "Invention" includes any art, machine, manufacture, design,

or composition of matter, or any new and useful improvement thereof,

or any variety of plant, which is or may be patentable under the

patentlaws of the United States.
Appendix C

ADMINISTRATIVE ORDER NO. S

Rules and Regulations for the Administration of a Uniform

Patent Policy with Respect to the Domestic Rights in

Inventions Made by Government Employees

Section 1. Purpose. The purpose of this order is to provide for

the administration of a uniform patent policy for the Government

with respect to the domestic rights in inventions made by Government

employees and to prescribe rules and regulations for implementing

and effectuating such policy.

Section 2. Authority. Authority for the administration of a uniform patent policy is provided in Executive Order 10096, dated January 23,1950 (15 F.E. 389).

Section 3. Scope. This order applies to any invention made by a

Government employee on or after January 23,1950, and to any action

taken with respect thereto.

Section 4. Definitions, (a) The term "Government agency," as

used in this order, means any executive department or independent

establishment of the executive branch of the Government (including

any independent regulatory commission or board, any corporation

wholly owned by the united States, and the Smithsonian Institution),

but does notinclude the Atomic Energy Commission.

(b) The term "Government employee," as used in this order, means

any officer or employee, civilian or military, of any Government

agency, including any part-time consultant or part-time employee

except as may otherwise be provided for by agency regulation approved by the Chairman.

(c) The term "invention," as used in this order, means any art,

machine, manufacture, design, or composition of matter, or any new

and useful improvement thereof, or any variety of plant, which is

or may be patentable under the patent laws of the United States.

(d) The term "Chairman," as used in this order, means the Chairman of the Government Patents Board.

Section 5. Determination of Invention. Each Government agency

will determine whether the results of research, development, or other

activity within the agency constitute invention within the purview

of Executive Order 10096.

Section 6. Determination of Rights in and to Inventions, (a)

Subject to review by the Chairman as provided for in this order, each

Government agency will determine the respective rights of the Gov50
PATENT MANUAL 51

ernment and of the inventor in and to any invention made by a Government employee while under the administrative jurisdiction of

such agency.

(b) The following rules shall be applied in determining the respective rights of the Government and of the inventor in and to any

invention that is subject to the provisions of this order :

(1) The Government shall obtain the entire domestic right, title, and

interest in and to all inventions made by any Government employee

(i) during working hours, or (ii) 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

(iii) which bear a direct relation to or are made in consequence of

the official duties of the inventor.

(2) In any case where the contribution of the Government, as measured by any one or more of the criteria set forth in subparagraph

(1) last above, to the invention is insufficient equitably to justify a

requirement of assignment to the Government of the entire domestic

right, title, and interest in and to such invention, or in any case where

the Government has insufficient interest in an invention to obtain the

entire domestic right, title, and interest therein (although the Government could obtain same under subpar. (1) above), the Government

agency concerned, subject to the approval of the Chairman, shall

leave title to such invention in the employee, subject, however, to the

reservation to the Government of a nonexclusive, irrevocable, royaltyfree 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.

(3) In applying the provisions of subparagraphs (1) and (2)

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, manufacture, or composition of matter,

(ii) to conduct or perform research, development work, or both,

(iii) to supervise, direct, coordinate, or review Government financed

or conducted research, development work, or both, or (iv) to act in

a liaison capacity among governmental or nongovernmental agencies

or individuals engaged in such work, falls within the provisions of

subparagraph (1) above, and it shall be presumed that any invention

made by any other employee falls within the provisions of subparagraph (2) above. Either presumption may be rebutted by the facts

or circumstances attendant upon the conditions under which any particular invention is made and, notwithstanding the foregoing, shall

not preclude a determination that the invention falls within the

provisions of subparagraph (4) next below.

(4) In any case wherein the Government neither (i) obtains the

entire domestic right, title, and interest in and to an invention pursuant to the provisions of subparagraph (1) above nor (ii) reserves

a nonexclusive, irrevocable, royalty-free license in the invention, with

power to grant licenses for all governmental purposes, pursuant to the

provisions of subparagraph (2) above, the Government shall leave the

entire right, title, and interest in and to the invention in the Government employee, subject to law.
52 AGRICULTURE HANDBOOK NO. Ill

(c) In the event that a Government agency determines, pursuant to

subparagraph (2) or subparagraph (4) of paragraph (b) of this

section, that title to an invention will be left with an employee, the

agency shall, subject to considerations of national security, or public

health, safety, or welfare, report to the Chairman, promptly upon

making such determination, the following information concerning the

invention :

(1) Description of the invention in sufficient detail to permit a

satisfactory review ;

(2) Name of inventor and his employment status; and

( 3 ) Statement of agency determination and reasons therefor.

The report in a case falling within the provisions of subparagraph

(2) of paragraph (b) of this section shall be made after the expiration

of the period prescribed in section 7 of this order for the taking of

an appeal, or it may be made prior to the expiration of such period

if the employee acquiesces in the agency determination. The Chairman thereupon shall review the determination of the Government

agency, and his decision respecting the matter shall be final, subject

to the right of the inventor to submit to the Chairman, within 30 days

(or such longer period as the Chairman may, for good cause, fix in any

case) after receiving notice of such decision, a petition for the reconsideration of the decision if it gives to the Government greater rights

than the agency determination. A copy of any such petition must

also be filed by the inventor with the employing agency within the

prescribed period.

Section 7. Appeals by Employees, (a) Any Government employee who is aggrieved by an agency determination pursuant to subparagraph (1) or subparagraph (2) of paragraph (b) of section 6

of this order may obtain a review of the agency determination by

filing, within 30 days (or such longer period as the Chairman may,

for good cause, fix in any case) after receiving notice of such determination, a written appeal with the Chairman and a copy of the

appeal with the Government agency.

(b) In the event of the filing of an appeal pursuant to paragraph

(a) of this section, the Government agency which made the determination shall, subject to considerations of national security, or public

health, safety, or welfare, furnish the Chairman in writing, promptly

upon the filing of the appeal, the following information concerning

the invention involved in the appeal :

(1) Description of the invention in sufficient detail to permit a

satisfactory review ;

(2) Name of the inventor and his employment status, including a

detailed statement of his official duties and responsibilities at the time

of making the invention ; and

(3) Detailed statement of the nature of the dispute or controversy,

together with copies of the agency determination, of any briefs or

written arguments that may have been filed, of any statements or other

evidence that may have been considered by the agency, and of other

relevant material.

(c) The decision of the Chairman upon any appeal taken pursuant

to this section shall be final.
PATENT MANUAL 53

Section 8. Patent Protection, (a) A Government agency, upon

determining that an invention coming within the scope of subparagraph (1) or subparagraph (2) of paragraph (b) of section 6 of this

order has been made, shall thereupon determine whether patent protection will be sought in the United States by the agency for such

invention. A controversy over the respective rights of the Government and of the inventor in any case shall not delay the taking of

the actions provided for in this section. In cases coming within the

scope of subparagraph (2) of paragraph (b) of section 6 of this order,

agency action looking toward such patent protection shall be contingent upon the consent of the inventor.

(b) Where there is a dispute as to whether subparagraph (1) or

subparagraph (2) of paragraph (b) of section 6 of this order applies

in determining the respective rights of the Government and of an

employee in and to any invention, the agency will determine whether

patent protection will be sought in the united States pending the

Chairman's decision on the dispute, and, if it decides that an application for patent should be filed, will take such rights as are specified

in subparagraph (2) of paragraph (b) of section 6 of this order, but

this shall be without prejudice to acquiring the rights specified in

subparagraph (1) of that paragraph should the Chairman so decide.

(c) Where an agency has determined to leave title to an invention

with an employee under subparagraph (2) of paragraph (b) of section

6 of this order, the agency will, upon the filing of an application for

patent and pending review of the determination by the Chairman, take

the rights specified in that subparagraph without prejudice to the

subsequent acquisition by the Government of the rights specified in

subparagraph (1) of that paragraph should the Chairman so decide.

(d) In the event that patent protection is sought by an agency for

an invention made by a Government employee, the agency shall, subject to considerations of national security, or public health, safety, or

welfare, report to the Chairman promptly upon the filing of an application for patent, the following information concerning the invention :

( 1 ) Brief description of the invention ;

( 2 ) Name of the inventor and his employmentstatus ; and

(3) Serial number, title of invention, and date on which the application was filed.

(e) In the event that a Government agency determines that an

application for patent will not be filed on an invention made under

the circumstances specified in subparagraph (1) of paragraph (b) of

section 6 of this order, giving the United States the right to title

thereto, the agency shall, subject to considerations of national security,

or public health, safety, or welfare, report to the Chairman, promptly

upon making such determination, the following information concerning the invention :

(1) Description of the invention in sufficient detail to permit a

satisfactory review ;

(2) Name of the inventor and his employment status; and

(3) Statement of agency determination and reasons therefor.

The Chairman may, if he determines that the interest of the Government so requires and subject to considerations of national security,
54 AGRICULTURE HANDBOOK NO. Ill

or public health, safety, or welfare, cause an application for patent

to be filed or cause the invention to be fully disclosed by publication

thereof ; Provided^ however^ That no application for patent respecting

any variety of plant invented by an employee of the Department of

Agriculture shall be filed without the approval of the Secretary of

Agriculture.

(f) Whenever a patent hereafter issues on an invention made by a

Government employee, in respect to which the Government has any

right, title, or interest, including a license, the Government agency

concerned shall, promptly upon the issuance of the patent, furnish to

the Chairman :

( 1 ) An abstract of the invention ;

(2) Name of the inventor and his employment status ;

(3) A copy of the patent; and

(4) Statement of the nature and extent of the right, title, or interest

of the Government in the invention.

Section 9. Report Forms. The Chairman will prescribe the forms

to be used by Government agencies in submitting the reports specified

in this order.

Section 10. Liaison. Each Government agency shall designate a

liaison officer at the agency level to deal with the Office of the Chairman: Provided^ however^ That the Departments of the Army, the

ISTavy, and the Air Force may each designate a liaison officer.

Section 11. Dissemination of Order. Each Government agency

shall make appropriate arrangements for the dissemination to its

employees of the provisions of this order.

Section 12. Revocation. Administrative Order No. 1, dated September 6, 1950, is superseded by the provisions of this order, whicli

shall remain in effect until further notice.
Appendix D

EXECUTIVE ORDER 986S

Providing for the Protection Abroad of Inventions Resulting

From Research Financed by the Government

WHEREAS the Government of the United States now has and

will hereafter acquire title to, or the right to file foreign patent applications for, numerous inventions arising out of scientific and technical

research carried on by or for the Government; and

WHEREAS it is in the interest of the United States to acquire

patent protection abroad on certain inventions resulting from Government financed research ; and

WHEREAS it is in the interest of the Government to foster, promote, and develop the foreign commerce of the United States:

NOW, THEREFORE, by virtue of the authority vested in me as

President of the United States by the Constitution and statutes, and

as Commander in Chief of the Army and Navy, and in the interest

of the foreign affairs functions of the United States and the internal

management of the Government, it is hereby ordered 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 Commerce as to which of such inventions should receive

patent protection by the United States abroad and the foreign jurisdictions in w^hich 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, including 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 appropriations available therefor, shall procure patent protection for such inventions, taking all

action, consistent wdth existing law, necessary to acquire and maintain patent rights abroad. Such determinations of the said Department shall be made after full consultation with United States industry

and commerce, with the Department of State, and with other Govern55
56 AGRICULTURE HANDBOOK NO, 111

ment 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 royaltyfree basis except in such cases as the Secretary shall determine and

j)roclaim it to be inconsistent with the public interest to issue such

licenses on a nonexclusive royalty-free basis.

5. The Department of State, in consultation with the Department

of Commerce, shall negotiate arrangements among governments under

which each government and its nationals shall have access to the

foreign patents of the other participating governments. Patents

relating to matters of public health may be licensed by the Secretary

OJE Commerce, with the approval of the Secretary ox State, to any

country or its nationals upon such terms and conditions as are in accordance with law and as the Secretary of Commerce determines to

be appropriate, regardless of whether such country is a party to the

arrangements provided for in this section.

6. There shall be exempted from the provisions of this order (a) all

inventions within the jurisdiction of the Atomic Energy Commission

except in such cases as the said Commission specifically authorizes

the inclusion of an invention under the terms of this order; and (b)

all other inventions officially classified as secret or confidential for

reasons of the national security. Nothing in this order shall supersede the declassification policies and procedures established by Executive Orders Nos. 9568 of June 8, 1945, 9604 of August 25, 1945, and

' of December 12,1946.
Appendix E

PERTINENT PATENT OFFICE RULES

45. Joint Inventors, (a) Joint inventors must apply for a patent

jointly and each must sign the application papers and make the required oath; neither of them alone, nor less than the entire number,

can apply for a patent for an invention invented by them jointly,

except as provided in rule 47.

(b) If an application for patent has been made through error and

without any deceptive intention by two or more persons as joint inventors when they were not in fact joint inventors, the application

may be amended to remove the names of those not inventors upon

filing a statement of the facts verified by all of the original applicants,

and an oath as required by rule 65 by the applicant who is the actual

inventor, provided the amendment is diligently made. Such amendments must have the written consent of any assignee.

(c) If an application for patent has been made through error and

without any deceptive intention by less than all the actual joint inventors, the application may be amended to include all the joint

inventors upon filing a statement of the facts verified by, and an oath

as required by rule 65 executed by, all the actual joint inventors,

provided the amendment is diligently made. Such amendments must

have the written consent of any assignee.

47. Filing by Other Than Inventor, (a) If a joint inventor refuses to join in an application for patent or cannot be found or reached

after diligent effort, the application may be made by the other inventor

on behalf of himself and the omitted inventor. Such application

must be accompanied by proof of the pertinent facts and must state

the last known address of the omitted inventor. The Patent Office

shall forward notice of the filing of the application to the omitted

inventor at said address. Should such notice be returned to the Office

undelivered, or should the address of the omitted inventor be unknown,

notice of the filing of the application shall be published in the Official

Gazette. The omitted inventor may subsequently join in the application on filing an oath of the character required by rule 65. A patent

may be granted to the inventor making the application, upon a showing satisfactory to the Commissioner, subject to the same rights which

the omitted inventor would have had if he had been joined.

(b) Whenever an inventor refuses to execute an application for

patent, or cannot be found or reached after diligent effort, a person

to whom the inventor has assigned or agreed in writing to assign

the invention or who otherwise shows sufficient proprietary interest

in the matter justifying such action may make application for patent

on behalf of and as agent for the inventor. Such application must

be accompanied by proof of the pertinent facts and a showing that

57
58 AGRICULTURE HANDBOOK NO. Ill

such action is necessary to preserve the rights of the parties or to

prevent irreparable damage, and must state the last known address

of the inventor. The assignment, written agreement to assign, or

other evidence of proprietary interest, or a verified copy thereof,

must be filed in the Patent Office at the time of filing the application.

The Office shall forward notice of the filing of the application to the

inventor at the address stated in the application. Should such notice

be returned to the Office undelivered, or should the address of the

inventor be unknown, notice of the filing of the application shall

be published in the Official Gazette. The inventor may subsequently

join in the application on filing an oath of the character required by

rule 65. A patent may be granted to the inventor upon a showing

satisfactory to the Commissioner.

Specification

71. Detailed Description and Specification of the Invention.

(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using

the same, and is required to be in such full, clear, concise, and exact

terms as to enable any person skilled in the art or science to which

the invention or discovery appertains, or with which it is most nearly

connected, to make and use the same.

(b) The specification must set forth the precise invention for which

a patent is solicited, in such manner as to distinguish it from other

inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition

of matter or improvement invented, and must explain the mode of

operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture,

or composition of matter to which the improvement relates, and the

description should be confined to the specific improvement and to

such parts as necessarily cooperate with it or as may be necessary to

a complete understanding or description of it.

72. Title of the Invention. The title of the invention, which

should be as short and specific as possible, should appear as a heading on the first page of the specification, if it does not otherwise appear

atthe beginning of the application.

73. Summary of the Invention. A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed

description. Such summary should, when set forth, be commensurate

with the invention as claimed and any object recited should be that of

the invention as claimed.

74. Reference to Drawings. When there are drawings, there shall

be a brief description of the several views of the drawings and the

detailed description of the invention shall refer to the different views

by specifying the numbers of the figures, and to the different parts

by use of reference letters or numerals (preferably the latter).
PATENT MANUAL 59

75. Claims, (a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter

which the applicant regards as his invention or discovery.

(b) More than one claim may be presented, provided they differ

substantially from each other and are not unduly multiplied.

(c) When more than one claim is presented, they may be placed

in dependent form in which a claim may refer back to and further

restrict a single preceding claim.

(d) The claim or claims must conform to the invention as set forth

in the remainder of the specification and the terms and phrases used in

the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.

See rules 141 to 147 as to claiming different inventions in one

application.

76. Signature to the Specification. The specification need not be

signed when followed by the oath and constituting part of the original

application papers, otherwise it must be signed by the applicant in

person.

77. Arrangement of Specification. The following order of arrangement should be observed in framing the specification:

(a) Title of the invention; or a preamble stating the name, citizenship, and residence of the applicant and the title of the invention may

be used.

(b) Brief summary of the invention.

(c) Brief description of the several views of the drawing, if there

are drawings.

(d) Detailed description.

(e) Claim or claims.

(f) Signature (see rule 76).

78. Cross-references to Other Applications, (a) When an applicant files an application claiming an invention disclosed in a prior

filed copending application of the same applicant, the second application must contain or be amended to contain a reference in the specification to the prior application, identifying it by serial number and

filing date and indicating the relationship of the applications, if the

benefit of the filing date of the prior application is claimed; if no

such reference is made the prior application must be referred to in a

separate paper filed in the later application. Cross-references to other

related applications may be made when appropriate. (See rule

14 (b).)

(b) Where two or more applications filed by the same applicant,

or owned by the same party, contain conflicting claims, elimination of

such claims from all but one application may be required in the absence

of good and sufficient reason for their retention in more than one

application.
60 AGRICULTURE HANDBOOK NO. Ill

The Drawings

81. Drawings Required. The applicant for patent is required by

statute to furnish a drawing of his invention whenever the nature of

the case admits of it; this drawing must be filed with the application.

Illustrations facilitating an understanding of the invention (for example, flowsheets in cases of processes, and diagrammatic views) may

also be furnished in the same manner as draAvings, and may be required

by the Office when considered necessary or desirable.

82. Signature to Drawing. Signatures are not required on the

drawing if it accompanies and is referred to in the other papers of

the application, otherwise the drawing must be signed. The drawing

may be signed by the applicant in person or have the name of the

applicant placed thereon followed by the signature of the attorney or

agent as such.

83. Content of Drawing. The drawing must show every feature

of the invention specified in the claims. When the invention consists

of an improvement on an old machine the drawing must when possible

exhibit, in one or more views, the improved portion itself, disconnected

from the old structure, and also in another view, so much only of the

old structure as will suffice to show the connection of the invention

therewith.

84. Standards for Drawings. The complete drawing is printed

and published when the patent issues, and a copy is attached to the

patent. This work is done by the photolithographic process, the

sheets of drawings being reduced about one-third in size. In addition,

a reduction of a selected portion of the drawings of each application

is published in the Official Gazette. It is therefore necessary for

these and other reasons that the character of each drawing be brought

as nearly as possible to a uniform standard of execution and excellence, suited to the requirements of the reproduction process and of the

use of the drawings, to give the best results in the interests of^ inventors, of the Office, and of the public. The following regulations

with respect to drawings are accordingly prescribed :

(a) Paper and ink. Drawings must be made upon pure white

paper of a thickness corresponding to 2-ply or 3-ply bristol board.

The surface of the paper must be calendered and smooth and of a

quality which will permit erasure and correction. India ink alone

must be used for pen drawings to secure perfectly black solid lines.

The use of white pigment to cover lines is not acceptable.

(b) Si3e of sheet and margins. The size of a sheet on which a

drawing is made must be exactly 10 by 15 inches. One inch from its

edges a single marginal line is to be drawn, leaving the "sight" precisely 8 by 13 inches. Within this margin all work must be included.

One* of the shorter sides of the sheet is regarded as its top, and,

measuring down from the marginal line, a space of not less than li^

inches is to be left blank for the heading of title, name, number, and

date, which will be applied subsequently by the Office in a uniform

style.

(c) Character of lines. All drawings must be made with drafting

instruments or by photolithographic process which will give them
PATENT MANUAL 61

satisfactory reproduction characteristics. Every line and letter (signatures included) must be absolutely black. This direction applies

to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. All lines must be clean, sharp, and solid, and

fine or crowded lines should be avoided. Solid black should not be

used for sectional or surface shading. Freehand work should be

avoided wherever itis possible to do so.

(d) Hatching and shading. Hatching should be made by oblique

parallel lines, which may be not less than about one-twentieth inch

apart.

Heavy lines on the shade side of objects should be used except where

they tend to thicken the work and obscure reference characters. The

light should come from the upper left-hand corner at an angle of 45°.

Surface delineations should be shown by proper shading, which should

be open.

(e) Scale, The scale to which a drawing is made ought to be

large enough to show the mechanism without crowding when the

drawing is reduced in reproduction, and views of portions of the mechanism on a larger scale should be used when necessary to show details

clearly; 2 or more sheets should be used if 1 does not give sufficient

room to accomplish this end, but the number of sheets should not be

more than is necessary.

(f) Reference characters. The different views should be consecutively numbered figures. Reference numerals (and letters, but numerals are preferred) must be plain, legible, and carefully formed,

and not be encircled. They should, if possible, measure at least oneeighth of an inch in height so that they may bear reduction to one

twenty-fourth of an inch ; and they may be slightly largter whien

there is sufficient room. They must not be so placed in the close and

complex parts of the drawing as to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle

with the lines. When necessarily grouped around a certain part, they

should be placed at a little distance, at the closest point where there is

available space, and connected by lines with the parts to which they

refer. They should not be placed upon hatched or shaded surfaces

but when necessary, a blank space may be left in the hatching or

shading where the character occurs so that it shall appear perfectly

distinct and separate from the work. The same part of an invention

appearing in more than one view of the drawing must always be designated by the same character, and the same character must never be

used to designate different parts.

(g) Symhols^ legends. Graphical drawing symbols for conventional elements may be used when appropriate, subject to approval by

the Office. The elements for which such symbols are used must be

adequately identified in the specification. While descriptive matter

on drawings is not permitted, suitable legends may be used, or may

be required in proper cases, as in diagrammatic views and flowsheets

or to show materials. The lettering should be as large as, or larger

than, the reference characters.

(h) Location of signature and names. The signature of the applicant, or the name of the applicant and signature of the attorney or

agent, may be placed in the lower right-hand corner of each sheet
62 AGRICULTURE HANDBOOK NO. Ill

within the marginal line, or may be placed below the lower marginal

line.

(i) Views, The drawing must contain as many figures as may be

necessary to show the invention; the figures should be consecutively

numbered if possible, in the order in which they appear. The figures

may be plan, elevation, section, or perspective views, and detail views

of portions or elements, on a larger scale if necessary may also be

used. Exploded views, with the separated parts of the same figure

embraced by a bracket, to show the relationship or order of assembly

of various parts are permissible. When necessary a view of a large

machine or device in its entirety may be broken and extended over

several sheets if there is no loss in facility of understanding the view

(the different parts should be identified by the same figure number

but followed by the letters, a, b, c, etc., for each part). The plane

upon which a sectional view is taken should be indicated on the

general view by a broken line, the ends of which should be designated

by numerals corresponding to the figure number of the sectional view

and have arrows applied to indicate the direction in which the view is

taken. A moved position may be shown by a broken line superimposed upon a suitable figure if this can be done without crowding,

otherwise a separate figure must be used for this purpose. Modified

forms of construction can only be shown in separate figures. Views

should not be connected by projection lines nor should center lines be

used.

(j ) Arrangement of views. All views on the same sheet must stand

in the same direction and should, if possible, stand so that they can

be read with the sheet held in an upright position. If views longer

than the width of the sheet are necessary for the clearest illustration

of the invention, the sheet may be turned on its side. The space for

a heading must then be reserved at the right and the signatures placed

at the left, occupying the same space and position on the sheet as in

the upright views and being horizontal when the sheet is held in an

upright position. One figure must not be placed upon another or

within the outline of another.

(k) Figure for Officiai Gazette, The drawing should, as far as

possible, be so planned that one of the views will be suitable for publication in the Official Gazette as the illustration of the invention.

(1) Extraneous matter. An agent's or attorney's stamp, or address, or other extraneous matter, will not be permitted upon the face

of a drawing, within or without the marginal line, except that the

title of the invention and identifying indicia, to distinguish from

other drawings filed at the same time, may be placed below the lower

margin.

(m) Transmission of draioings. Drawings transmitted to the Office should be sent flat, protected by a sheet of heavy binder's board,

or may be rolled for transmission in a suitable mailing tube; but

must never be folded. If received creased or mutilated, new drawings will be required.

8'5. Informal Drawings. The requirements of rule 84 relating to

drawings will be strictly enforced. A drawing not executed in conformity thereto may be admitted for purpose of examination, but in
PATENT MANUAL 63

such case the drawing must be corrected or a new one furnished, as

required. The necessary corrections will be made by the Office upon

applicant's request and at his expense.

86. Draftsmen To Make Drawings. Applicants are advised to employ competent draftsmen to make their drawings.

The Office may furnish the drawings at the applicant's expense as

promptly as its draftsmen can make them, for applicants who cannot otherwise conveniently procure them.

87. Return of Drawings. The drawings of an accepted application will not be returned to the applicant except for signature.

A photographic print is made of the drawing of an accepted

application.

88. Use of Old Drawings. If the drawings of a new application

are to be identical with the drawings of a previous application of the

applicant on file in the Office, or with part of such drawings, the old

drawings or any sheets thereof may be used if the prior application

is, or is about to be, abandoned, or if the sheets to be used are canceled in the prior application. The new application must be accompanied by a letter requesting the transfer of the drawings, which

should be completely identified.

141. Different Inventions in One Application. Two or more independent and distinct inventions may not be claimed in 1 application

except that more than 1 species of an invention, not to exceed 5, may

be specifically claimed in different claims in 1 application, provided

the application also includes an allowable claim generic to all the

claimed species and all the claims to each species in excess of 1 are

written in dependent form (rule 75) or otherwise include all the

limitations of the generic claim.

142. Requirement for Restriction, (a) If two or more independent and distinct inventions are claimed in a single application,

the examiner in his action shall require the applicant in his response

to that action to elect that invention to which his claims shall be

restricted, this official action being called a requirement for restriction (also known as a requirement for division). If the distinctness

and independence of the inventions be clear, such requirement will be

made before any action on the merits; however, it may be made at any

time before final action in the case, at the discretion of the examiner.

(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the

examiner by the election, subject, however, to reinstatement in the

event the requirement for restriction is withdrawn or overruled.

146. Election of Species. In the first action on an application

containing a generic claim and claims restricted separately to each of

more than one species embraced thereby, the examiner, if of the

opinion after a complete search on the generic claims that no generic

claim presented is allowable, shall require the applicantin his response

to that action to elect that species of his invention to which his claims

shall be restricted if no generic claim is finally held allowable. However, if such application contains claims directed to more than 5
64 AGRICULTURE HANDBOOK NO. 111

species, the examiner may require restriction of the claims to not

more than 5 species before taking any further action in the case.

147. Separate Application for Invention Not Elected. The nonelected inventions, those not elected after a requirement for restriction

(rule 142), may be made the subjects of separate applications, which

must conform to the rules applicable to original applications

and which will be examined in the same manner as origmal applications. However, if such an application is filed before the patenting

or abandonment of or termination of proceedings on the original

application, and if the drawings are identical and the application

papers comprise a copy of the original application as filed, prepared,

and certified by the Patent Office, together with a proposed amendment canceling the irrelevant claims or other matter, signing and

execution by the applicant may be omitted.

322. Certificate of Correction of Office Mistake. A certificate of

correction under 35 U. S. C. 254, may be issued at the request of the

patentee or his assignee and endorsed on the patent itself. Such certificate will not be issued at the request or suggestion of anyone not

owning an interest in the patent, nor on motion of the Office, without

first notifying the patentee (including any assignee of record) and

affording him an opportunity to be heard.

If the nature of the mistake on the part of the Office is such that

a certificate of correction is deemed inappropriate in form, the Commissioner may issue a corrected patent in lieu thereof as a more

appropriate form for certificate of correction, without expense to the

patentee.

323. Certificate of Correction of Applicant's Mistake. Whenever a mistake of a clerical or typographical nature or of minor

character which was not the fault of the Office, appears in a patent

and a showing is made that such mistake occurred in good faith, the

Commissioner may, upon payment of the required fee, issue a certificate of correction, which shall be endorsed on the patent itself, if

the correction does not involve such changes in the patent as would

constitute new matter or would require reexamination.
Appendix F

PERTINENT PATENT STATUTES

Section 100. Definitions. When used in this title unless the context otherwise indicates—

(b) The term "process" means process, art, or method, and includes

a new use of a known process, machine, manufacture, composition of

matter, or material.

Section 101. Inventions Patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may

obtain a patent therefor, subject to the conditions and requirements

of this title.

Section 102. Conditions for Patentability; Novelty and Loss of

Right to Patent. A person shall be entitled to a patent unless—

(a) The invention was known or used by others in this country, or

patented or described in a printed publication in this or a foreign

country, before the invention thereof by the applicant for patent; or

(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this

country, more than 1 year prior to the date of the application for

patentin the United States; or

( c ) He has abandoned the invention ; or

(d) The invention was first patented or caused to be patented by

the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on

an application filed more than 12 months before the filing of the

application in the United States ; or

(e) The invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent; or

(f) He did not himself invent the subject matter sought to be

patented ; or

(g) Before the applicant's invention thereof the invention was made

in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was

first to conceive and last to reduce to practice, from a time prior to

conception by the other.

Section 266. Issue of Patents Without Fees to Government Employees. The Commissioner may grant, subject to the provisions of

65
66 AGRICULTURE HANDBOOK NO. Ill

this title, to any officer, enlisted man, or employee of the Government,

except officers and employees of the Patent Office, a patent without the

payment of fees, when the head of a department or agency certifies

the invention is used or likely to be used in the public interest and the

applicant in his application states that the invention described therein,

if patented, may be manufactured and used by the Government for

governmental purposes without the payment to him of any royalty

thereon, which stipulation shall be included in the patent.
Appendix G

PLANT PATENT ACT

35 U. S. C. 161. Patents for Plants. Whoever invents or discovers

and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an

uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U. S. C. 164. Assistance of Department of Agriculture. The

President may by Executive order direct the Secretary of Agriculture, in accordance with the requests of the Commissioner, for the

purpose of carrying into effect the provisions of this title with respect

to plants (1) to furnish available information of the Department of

Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special problems, or (3) to

detail to the Commissioner officers and employees of the Department.

Appendix H

ASSIGNMENT

WHEREAS, I, , residing at

an employee of the United States Department of Agriculture, have invented an

improvement in ,

as described in the united States patent application on said invention executed by

me on the — day of , 19 , the United States patent rights in said invention

being assignable to the United States by virtue of my having made the invention

under applicable law and regulations of the United States Department of Agriculture which render the patent rights so assignable ; and

WHEREAS, the United States, as represented by the Secretary of Agriculture,

is desirous of acquiring an assignment of said patent rights ;

NOW, THEREFORE, in consideration of these premises, and for other consideration, receipt of which on the part of the undersigned is hereby acknowledged,

I hereby assign said patent rights to the United States of America, as represented by the Secretary of Agriculture.

Execu^ted , 19__.

67
Appendix I

LICENSE

WHEREAS, United States patent No. , issued to

for \

is assigned to the United States of America as represented by the Secretary of

Agriculture, hereinafter referred to as Licensor, and it is desirable in the

public interest to have the invention covered by" the patent practiced ; and

WHEREAS, - „

——— — — ~ ——— — —>

hereinafter referred to as Licensee, desires to practice the said invention ;

NOW, THEREFORE, in consideration of these premises, a royalty-free, nonexclusive and non-transferable license is hereby granted to Licensee to practice

the invention within the territory of the United States of America, it being

understood that Licensor neither assumes any responsibility if Licensee in practicing the invention should infringe any other patent, nor assumes any other

responsibility due to the practicing of the invention, that Licensee will not use

this license to indicate that the Government sponsors, recommends, or approves

any products produced under the license, that this license does not relieve

Licensee from compliance with requirements of law ; that Licensee may terminate

this license upon notice to Licensor, and that Licensor may revoke it upon

notice to Licensee with the reason for such revocation and giving Licensee opportunity to be heard in the matter.

Date executed :

UNITED STATES OF AMERICA,

By ,

Administrator,

Agricultural Research Service,

United States Department of Agriculture.

68

U. S. GOVERNMENT PRINTING OFFICE: I9B7