._/ ... 

1.2 A.ugus t 1948 / 

SUBJEC.T: Return of Papers in the' Case of Pa tent 

Application Serial N?; 443,320 

;/" 

./ 

/ ro: Deputy bhi~f, Apmy Security. Agency J· 

/ 

.4' 

/7 11 

.l 

The accompanyi,,~g papers were informally forwarded 

to me for inforinat!on and return. I have examined them 

very carefully and am.returning them herewith. 

llowever,,lthe hope that my viewS thereon w111 

not be out Of/ order, I am attaching hereto some comments 

for your pe1,sonal consideration and possible use in 

.support of ;my request that a reply to my letter of 

8 December 1947 to the Director of Intelligence be sent 

me. The/desirability of a more formal completion of I . . 

the~ord in this case lends support to my request. 

2 Inc ls WILLIAM F. FRIEDMAN /} g~~~rJf dence ?~/'" 

. > V' .~ 0 

~ ~ .)\~l~.:J ~/ . . Declassified by NSNC:SS . V ~ 'ii~'~ W · "\ ~ Deputy Associate Director for Policy ang~cords ~ ~ ~"\ \\,~ . 

l\Ol3t)Sl)\ b ~.,_.,.~ '\ \Ai t\ ~d. y . ~-~ 

fii1 
... 

COMMENTS Olf PAPERS IN THE OA5E OF PATENT APPLICATION 

BERIAL NO. 443,320 

l. Comment Bo. l trom the D/I, GSUSA to the JAG, dated 

29 December 1947, is obviously written on the basis or an 

acceptance or the prem!ee that the inventors or the subject Patent Application possess commercially exploitable reversionary rights. Raising no question on that score, it clearly reflects the spirit in vbich the 29 April 1946 policy or the 

A.C. ot s., 0-2 waa written. It also accepts without question the dec1s1on or the duly constituted S1gnal Corps Patent Board 

to the ettect that the subject invention was not the result 

ot "specific designation to invent." The Comment concludes 

with a request tor 1ntormat1on as to the action which might be 

taken to dispose to the Government ot the 1nventora• commercially exploitable reversionary rights. On this point some 

remarks are me.de in Par .. 14 belov.. Comment lfo. 1 also,, but 

not too clearly, requests 1ntormat1on with reapeot to the 

question raiaed in paragraph 2b ot my letter or 8 December 1947,, 

as to the posa1b111ty or my obtaining the assistance ot legal counsel. On this point some remarks are made in paragraph 7 

below. 

2. Comment No. 2,, from the JAGO to the Chief Signal Officer, dated 7 January 1948, requests that the JAG be 

advised or the taota determined by the Signal Corps Patent 

Board, on which decision rendered by that Board in the subject application was based. Just vhy the JAG wanted these facts is 

not clear,, because in the final analysis they were not uaed by the JAG in Comment No. 5. It is poeaible tbat the JAG bas the 

authority to make a determination or tactual matters v1th1n the 

jurisdiction ot a duly authorized Boo.rd; but this may be a moot 

point. In a somewhat similar case involving tactual evidence, 

the Attorne1 General in a letter dated 27 Sev,telllber 19,5 to 

the Secretary or War, stated, in substance, 'that inasmuch as 

the question propounded depends entirely on questions ot fact, 

the War Department •ought to make this tactual .t'1nd1ng.'" (Bee Par 3 or Inclosure 3 to this memorandum..) Inasmuch as 

the matter at issue in my case 1nvolvea questions or tact, the 

factual t1nd1ng ot the 81gnal Corps Patent Board, having the 

proper jurisdiction, ia ot prime importance. However, as already indicated above, the JAG in the final analysis did not question the factual finding of the Signal Corps Patent Boe.rd. 

3. Par. 1 of Comment No. '· .r~om the Legal Division, OC81g0 to the Chief, Al'Dly Security Agency, dated 15 January 1948, 

BftEf 
~li"n~:A104812 

Ot.UHLI 

refers the matter to this Agency "tor the reason that the aubject patent application 1a now being proaecuted and 1a under the 

general jurisdiction ot the Army Security Agency and also because 

the joint inventors are now employees or the Army Security Agency." It turther etatea, in Par. 2, tbat "A •earch or the tiles in th1B 

ottice tailed to reveal written or docmpentary evidence upon vh1eh the Signal Corpe Patent Board based 1ta decision that the 

subject application wae not the result or apec1t1c designation to 

invent. 11 The implication or inference that might be drawn trom 

the wording or the foregoing at&tement is tha.t the file& ct the 

OCSigO should contain aucb documentary evidence but that such 

evidence 18 :missing. On this point !t may be noted that, since 

practically all or the tiles pertaining to the Signal Intelligence Service were turned over sometime ago by the Chier Officer to 

this Agency, no such documentary evidence, even if it had existed 

at one time, could nov be expected to be round 1n the tiles or 

the OC51g0; and for this reason, I feel that the wording ot the 

statement 1e a bit unfortunate. The absence or any documentary evidence of the sort sought should, it seems to me, be taken aa 

evidence pointing to the indication that there vas no apec1tic designation to invent the specific device, as 1a required under 

Par. 9a(l) ot AR 850-50, before the Government can take all 

righte in an invention. I take this opportunity to affirm that 

there vas never any specific designation to invent the specific device and therefore auch documentary evidenoe as that sought, 

by the Chief, Legal Div1a1on, OCSigO, could hardly exist. I 

also take this opportunity to point out that the 81gnal Corps Patent Board in its t1nd1nga stated that the inventions arose 

in connection w1th and as a result ot the otr1c1&l dut1ea or the 

inventors, but tbat there was no apeoif1c designation to invent 

the things described. 11 (Underlining mine.) In other words, the 

Board vas adhering to the provisions ot AR 850.50. The omission 

ot the underlined words ("the things described") trom Par. 2 or 

Comment No. 3 is highly a1gn1t1cant. Perhaps it indicates a 

change 1n policy in the OCSigO and, it so, the ne~ policy 1a 

certainly at variance with AR 850-50. 

4. Par. l ot Comment No. 4, trom the Chief', Army Security Agency to the JAG, dated 19 Feb. 1948, also 1a worded ao as to 

allow the eame impl1cat1on or inf'erence to be drawn, v1z, that 

certain documentary evidence which should. be in the files 1a not 

in the tiles. Here again I teel tba t the wording j.a unf'ortuna. te 

because, as already noted~ the Signal Corps Patent Board, obviously ua1ng aa its guide AR ~50-50, then operated on the basis that 

the absence or documentary evidence showing a specific designa- tion to invent the apec1t1c device automatically placed the 

aubject invention under the category indicated in Par. 98(2) or 

2 

EGET 
REF 

AR-380-5. Comment Iio. 4 does go on to submit certain data 11aa 

evidence which may have been considered by the Signal Co~ps 

Patent Board in reaching its decision." Nowhere in those data 

can there be round any document vh1ch can be regarded as a 

apec1t1c designation to invent the subject invention. As a 

matter ot fact, far from there having been a spec1t1c designa- tion to invent the subject invent1on1 after having invented it 

(the date of conception1 according to the orr1c1a1 reaord 1 1s 

l September 19,9), it took tvo years to convince the OCSigO that the idea was sutf1c1ently usetul to develop. 

5. a. Comment No. 5 1 from the Patents Division, JAGO 

to the D/I, dated 11 Ma1. 19481 sets out as though the JAG 

unreservedly accepts the G-2 policy. It certainly raises no 

question as to its leg&l1ty. But in Par. 2 the JAG focuses 

attention on one section of one or the three conditions set 

rortb in the G-2 policy and in that paragraph points out that 

"amoDg the conditions Wb.1ch must be met to bring an invention 

within thie policy 1a that the invention muat 'not relate to 

matters aa to which the employee was apec1r1cally directed to 

expet•iment with a view to such improvements. rtt The JAG then 

proceeds to cite the "Patent Memoranda" which I signed, and 

also certain duties as they existed under date of 16 March 1942 

(a date, 1ha1dentally, more than two years aubsequent to the 

date of conception or the subject invent1on)J he thereupon &ta.tea that 1tin Vi8Y of the above 1t 1& the opinion of this 

orr1ce that Mr. Friedman was specifically directed to experiment with a view to such improvements and hence does not come within 

the policy announced in the memorandum ot 29 April 1946 for the 

Ohie:r, A:rmy Security Agency." 

b. Three things will be noted 1n connection with the 

toregoing opinion: t1rnt, the JAG does not question the validity or the factual finding or the Signal Corps Patent Board in the 

subject invention; aecond1 the JAG does not raise any question as 

to the val1d1ty1 legality or illegality or the G-2 policy; and third, the JAG does not r&iae any question &8 to the validity Of the addition, in the G·2 policy, Of the condition Which 

he cites &8 making me 1nel1g1ble under the G-2 policy and Which 

1e at variance v1th AR 850-50. The condition to which I here 

refer 18: 11 ••• and where discovery or invention o~ cryptographic principles or devices bas been ma.de by a c1v111an employee and 

does not relate to a matter as to which the employee vaa speoif- icalll directed to experiment vith a view to auch improvements 

••• • That th1a condition 1B eomething new that has been 

either intentionally o~ inadvertently added to AR 850-50 can be 

aeen rrom the tact tha.t the same clause goes on as rollovs: 
REF ID:A104812 

H • .£.J _j§j _____ !. ____ 0 ._&£. £--

RT 

- unor waa produced as a reault of any apec1t1c employment or contract to invent a specific device or article." The latter condition is the onl{ one vh1ch governs whether the Government has 

all rights in an nvention. the employee none~ ~er according to 

AR 850-50, paragraph 9&(1) only where there has been a specific 'designation to invent the specific device or article does the 

inventor have no rights. The JACi".did not question the injection of another condition over and beyond that contained in AR 850-50, 

as he might have done vera he seeking also to conserve the r~ghts 

or inventors as he has in other cases, auch as the well-known 

Dr. Green case. 

c. However, thinking purely legal1~t1cally, one can 

only concede that the JAG is correct 1n his stated opinion and 

on the grounds he cites. It is clear that nobody can take issue 

with his opinion. But the result is that the JAG'• opinion in this case raises a question as to the validity or the G-2 

policy. For it makes it perfectly clear that the G-2 policy bas 

included as an additional condition or el1g1b111ty something 

not present in the governing Army Regulations. If the addition 

wan the result or inadvertence or of an Un.intentional misapprehension or the e1gn1ficance or Par. 9a(l) or AR 850-50, then the policy should be amended. But 1! the addition was 

indeed intentional end was made v1th a tull appreciation of 

the significance or the cited paragraph of AR 850-50, then it 

makes an absurdity of the policy, since !!2_Army Security Agency officer, warrant officer, enlisted man, or civilian employee, vith the possible exce~tion or the very tew employees wbo are 

not asked to sign our Patent Memorandum.Jn vould be eligible thereunder. It is possible, or course, that the aforesaid 

addition was intentional, but I r1nd this difficult to believe, 

since it negates the vhole idea on Which the polie1 ia based, 

viz. 1 a realization that inventors o! cl.8.as1f1ed equipment ought to be treated as ts1rl as inventors of unel&s81f1ed 

equipment. 

d. In viev or the opinion or the JAG in this caae, 

it seems to mo, theretore 1 that the G-2 policy should be reexamined to see whether the questionable clause which has 

been added to the conditions beyond those·c1ted in AR 850-50 

should not be removed, or elee the whole policy rescinded aa 

being meaninglees or or no help to the inventors of classified 

crypto-equipm.ent. 

6. Pars. } and 4 or Comment No. 5 assume tbat services 

of counsel are desired by me in order to assist in prosecuting 

a claim against the Government. No claim baa been instituted 

and none is contemplated. The only thing that this part or 

4 
my letter ot 8 December 1947 wanted to accompl1ah ~as to try 

to obtain help 1n preparing a caee baaed on a policy eet&bliahed 

by proper authority, vheroby certain inventors might receive 

benefits trom rights reserved to them b7 AR 850-50 and thus 

be treated as equitably as the generality or inventors in the 

Department ot the Army. When a o1v111an employee tiles a 

statement under Executive Order 9817 (Regulations Governing Awarda to Federal Employees ror Meritorious Suggestions~ he 

is not regarded,, I feel sure, aa having :filed a. "claim. ' My letter or 8 December 1947 to the D/I can hardly be considered 

as establishing evidence that I have 1nat1tuted or am contemplating instituting legal action ot the 11&ture or a claim 

likely to eventuate in court proceedings. For thia reason I 

&m ver1 unhappy about the Whole ot paragraph 4 of Comment No. 

5 tor its 1ap11cationa. 

7. a. In Par. 3 ot Comment Bo. 5, 1n connection with the 

posaible service or counsel to assist in the preparation or a c&se~ the JAG ate.tea that his "otfioe ia ot the view that it 

is highly improbable that Mr. Friedman could secure the service 

or a private counsel to assist him in bis claim without disclosing to the counsel clsaa1t1ed matter relating to hia 

patent." I t1nd it difficult to agree with this viev. I would 

like to reiterate vhat I atated in my original letter or 

8 December 1947, v.z, that the understanding~ in connection with 

the poaaible employment of counsel, would be that no details of 

the construction or operation of the equipment would or need be 

d1aoloaed. 

b. However~ I can easily aee that from a strictly legal viewpoint the JAG may be warranted in assuming that my 

course in this correspondence might eventuate in a claim in 

the legal sense of the word. But suppose, tor a moment, that 

it should, and that I might want the asaiatance of counsel, the 

JAG'• opinion leaves the implication that the assistance or 

auch counsel would or might be denied me. On th1a point I can 

only say that it would certainly appear to be a queer anomaly under our laws that a man who be11evee that h1a property rights 

are in jeopardy should not be permitted to have the benefit or 

assistance or counsel in attempting to establish or protect those rights. A precedent for permitting such counsel where 

secret matters are involved is to be eeen 1n the Atomic Energy Act or 1946, Sec. ll(e){2)(D) of vh1cb apec1r1ca.lly provides that "Any person making application under this subsection ?:..1.e.~ for compensation in connection with the use of secret 

inventions in the atomic eneriy ~1eld.:J •hall have the right 

to be represented by counsel. 

5 
REF ID:A104812 

S£OR£T 

c. Howevel'. the JAG makes no tinal determination on 

this point aa to whether I ma.y have the benefit o~ tbe aaa1stance 

or counsel, leaving it up to the Director o~ Intelligence ror 

dec1s1on. The lattel' bas not yet made any comment upon this 

point, and I reel that th1a question, asked in my original letter, ought to be answered. 

8. a. Re~err1ng to Par. 5 ot Comment No. 5, it is obvious 

that the JAG does not tully apprehend the basis or the G-2 

io1107 and does not understand why there 'lJJAy be caaea in Which 

'it is 1n the interest of the Government ot the United States 

that an employee have no patent righta in cryptographic pr1n- c1plea or dev1aes to dispose or~ and tor the Government to ovn 

the entire interest ror security reasons throughout the toreaeee.ble ruture." The phrase "entire interest" 1a undoubtedly 

meant to include !.!.!. patent rights, domestic aa well aa foreign. 

b. The question ot foreign rights in inventions is 

one which ahould not be overlooked. Currently, even in those 

departments or bureaus vb1ch have regulations whereby 1nventbrs 

•ust aaa1gn all their U. S. rights to the Government, they are 

permitted to retain their rore1g~ rights. Ot course, in the 

case ot these crypto-1nvent1ons,' it is in reality the foreign r1ghta which need to be withheld even more than the domestic 

rights. And, under security re§ul&tions, aa vell as under the 

term.a of" the "patent memorandum signed by employees, these 

rore1gn rights are vitbheld until tbe patent application is 

removed from secrecy status. Thie 18 1 ot course, very essential, 

but the rights of the inventors ought also to receive some 

cona1derat1on1 since inventors or non-claas1!1ed inventions 

are permitted to exercise all their toreign as ~ell as their 

domestic commercial rights. 

c. Par. 5 ot Comment No. 5 states that the Government 

baa "the right to control the prosecution ot the patent atplication and to maintain it in secrecy ~or so long aa aecur-

! y needs demand which are all tqe rights necessary to meet 

the Government needs." Everybody grants that the Government 

ha.a certain needs and r1ghta, but it aeema to me that the inventor 'a rights ought not be completely disregarded. The G-2 

policy 1 by 1 ts very existence, tac1·t1y acknowledges that 

inventors, too 1 have rights in their inventions, for it vas ~ormulated in recognition or those rights 88 set rorth 1n 

AR 850-50, and in a realization o~ the ract that in some cases 

the inventors might have to wait so long until their commercially exploitable reversionary rights could be made available 

to them.that these rights might be vorthless or the inventors 

6 

·.- . ...~.-:- _,,_ .IECREJ --.- ... ..,,;.: ) . .: - . 
- • •• 1. -, •• ,.,.,,_,,,, • •••01 •" .- ••, ·~-·-···•-'• ............. •I ,. ____ ._ ....... - ....... 11•1o l•~. ••"••-••••• J.. ••·•-.. 1,,.1... • ._ 4'" ... , ...... -.:1..-.. . 

~CtD:A104812 

~·· 

too old to enjoy the benefits from the rights which AR 850-50 

reserves to them and which the Congress meant them to enjoy 

as a reward tor their contributions by its legislation in the 

Act or 1883 (u.s.c., Title 35. sec. 45), under which Government 

inventors are relieved or payiog the usual teea for obtaining 

patents 1n which the Government bas shop rights. In this connection further remarks are made in Par. 9b below. 

9. a. The last paragraph of Comment No. 5 refers to the 

G-2 policy aa being ''highly d1acrim1na torr vi th respect to the 

great bulk or Government employees who ms.ke inventions important 

to the def'ense of the United States." On this point tvo things 

can be said: first, aa already pointed out above, the Director 

ot Intelligence recognized, by setting up the subject policy, that inventors ot class1t1ed equipment were being treated 

inequitably as compared v1tb the inventors or unclaas1t1ed 

equipment; and secondly. there 1e no bar to prevent the 

generality or inventors or class1t1ed equipment (other than 

cryptographic) trom trying to obtain a1m1lar equitable treatment 

from the agencies for which they work. If there really ie any diacrimination in the situation, it is diecrim1na.t1on against the inventors ot clasaitied equipment, because inventors or 

unclassified equipment, even thoUP:h they have signed the usual 

patent memorandum, are perm1tted~o exercise their commercially exploitable rights. 

b. The JAG aays in the foregoing connection that 

"Many such patent appl1cat1ona are now 1n .secrecy with a 

number having been in this status ror periods ranging up to 

17 years." Attention is invited to the following cases of my 

ovn and the period~ involved: 

Patent Application No. of Years in 

No. 8ecrecz 

682,096 16 

107,244 13 

70#412 (joint with 13 

Mr. Rowlett) ~49,086 12 

43,320 (present ease) 8 

Ir question is raised as to why the patent application having the shortest period of secrecy was selected tor consideration 

under the a~2 policy, the answer is that tvo reasons motivated 

the selection. First, the other caaea involve cryptographic principles of a much more complex na.ture so that at the time 

the present case vas initiated (27 Sept 1945), it did not 

7 

BRET 
appear likely that any one ot them could or would be released 

in ttthe .tol'eeeea.ble :ruture"; vhel'eaa there was a poas1b111ty that 5er. No. 443,320 might be released, in view ot the very large number ot people Who know all &bout the equipment by 

virtue ot their war-time employment and duties, and the simpler 

nature ot the equipment. Second,, 1t had been brought to my attention that there vas a definite interest on the part or 

the U. S. Commerci&l communication companies in the poas1bil1ty 

ot acquiring the inventora' revere1onary rights in the invention and using the equipment in a u. s. worldwide radioteletype aystem. There ia room to speculate on the nature or the JAG'a 

Comment No. 5 had Patent Application No. 682.096 been aelected 

tor test, tor this case was ~iled several years before the 

11Patent Memorandumu was adopted by the OOSigO. Considering the length of time the cited cases have been held in a secrecy 

status, I do not believe tbs.t I oan be charged vith being impatient, as is the 1mp11cat1on in the JAG's comment that 

"Many such patent applications now in secrecy with a number 

having been in this etatua for periods ranging up to 17 year8. 11 

10. The remaining paragraphs of this memorandum have an 

indirect connection with the accompanying correspondence but 

have an impo~tant bearing on the vhole case. They deal Yith 

the subject or the "pa tent memoranda•• which I signed and 

their s1g~1f1eance. 

11. a. The following is quoted from a aemorandum for 

the Under Secretary of Wa~ fl'om the JAG, dated 16 January 1947, 

Tab 3, Inolosure 1. 

lf81nce an invention is private property, ae held 

by the Supreme Court in 1890 in Solomons v. United States, 137 U. 5. 342,,46, and since maintained, it cannot be 

taken from the owner by the Government without compen- sation while the 5th Amendment to the Constitution still 

stands, in the absence of a contract to convey the same 

to the Gove:r>nment." 

b. The final clauee in the preceding extract is of 

pacticular interest in connection with the "Patent Memorandum. 11 

which ASA employees are asked to sign. In aome quarters the 

view is currently maintained that the s1gn1ng or tbese "patent memoranda 0 by potential inventors constitutes a contract to 

convey all rights in inventions to the Government and thus 

all M:gh:t5s -e,. 4.~"&atH'e an& entails in every case a complete and !~revocable assignment to the Gove~nment. 

8 

. .. ~.: ~·- ....... ...::· .r!".. ·~~::J.,• -~f#A·--. ...... :L ... ~ . l .• 
... 

o. Such a view is not only at variance with the pxao- v1s1one of AR 850-50, which is based upon well-est&bl1ahed 

lav, as interpreted by the Supreme Court of the United States, 

but ie also contrary to the policy or the Department of the 

Army. On these points I take the liberty ot submitting to 

your consideration the documents listed among the 1nclosures 

to this memorandum. Those documents will go tar to convince 

anybody who v111 take the trouble to study them. carefully that inventors or alassified equipment which must remain classified for a long time are not being "dealt vith on the basis 

ot ra1r dealing," as 1& deemed equitable and desirable by those 

in charge Qf high policy in the Department or the Army. 

12. a; Study or the wording of our "Patent Memorandum" 

itself shows th.at complete assignment of all rights is neither 

contemplated nor required. Par. 8 ot the latest version 

(6 June 1946) states: 

.. "This notice of assignment to develop improvements 1n arts or value to the Army 8eo-ur1ty Agency ah.all not be construed as dlvesting you or ownership 

or any invention made by you while engaged on this 

vork except as set forth in the preceding paragraph, but the Army Regulations therequoted will be strictly followed. • •• 11 

b. The phrase "except as set f'orth in the preceding paragraph11 applies to Par. 7 of the patent memorandum, which 

is merely an exact copy or Par. 9a ot AR 850-50. Bovhere 

does that paragraph give authority to take all rights except where an invention has been "produced ae a rezsult or a spec1r1c emplonent or eontI'act to invent the epec1f1c device or art1c1e. 11 

c. Par. 9a(2) or AR 850-50 atates that "In cases 

vhere the invention is important in the national defense, the 

War Department may requeat a complete assignment." Of the 

foregoing sentence three things may be said: 

(1) First, the phrase "complete assignment" therein means 11 the complete aae1gnment or 

the patent ap11cat1on, 11 since a complete assignment o the pa.tent would, under the 

c1rcumstanoes, defeat the entire purpose 

ot requesting an assignment for se~reoy 

reasons. Tbe clear inference here is 

that so long as the al?,P11cat1on is pending 

secrecy is possible and such an assignment 

ot the application would make it feasible 

to keep certain inventions important to 

9 

BRET 
~........... ... . . .. 

(2) 

(3) 

§i:XnrtP:A104812 

·~~•&:• 

the national defense from becoming public. But unfortunately the Regulation doea not 

say anything about how long an application 

may be kept pending. In most cases, the 

length of time 18 comparatively short, two 

to five years. and moat Government inventors, including myself, are perfectly willing to delay their enjoyment of possible commercial rights for ~ucb a period. But 

vhen the period extends into ma~y years, that is, in the words ot the G-2 policy, "vhere it 1B in the interest or the Government of the United St&tes [tbag the 

Government own the entire interest tor 

eecur1ty reasons throughout an1 foreseeable 

future ••• ,"then it is only equitable that 

some compensation be made to the inventor 

ror relinquishing his rigbta for such a long time. 

Second, the Regulation aays that in the caaes 

under discussion "the War DeftRrtment may reguest a complete assignment. ' It is to be 

noted th.at no compulsion can be exercised to 

force the inventor to accede to such a request. ·The JAG himselr has ruled on this f,01nt {see 

pages 21-22 of Incloaure 4). The 'Patent 

Memorandum" may be thought in some quarters 

to provide the means or mechanism tor Buch 

compula1on, since 1t purports to be a contract 

or agreement or employment. But since AR 850-

50 controls the rights of inventors in the 

Department ot the Army# and since an Army Regulation is issued by order ot the Secretary o~ the Army and no subordinate off1e1al has 

the right to take more or less trom an inventor than is required by AR 850-50$ the 

validity or any interpretation of the Patent 

Memorandum which considers 1t to be instrument 

whereby such compulsion can be exercised is 

open to serious question. 

Finally, referring again to the memorandum 

dated 16 January 1947, ~or the Under Secretary 

or War rrom the JAG himself, it is sta.ted 

(eee Tab' of Inclosure 1): 

10 

IGIT . ·-· -· . - - ... - . ·- - - - .. - - - -- ·- -·-- --·· -- -- ·-

---
REF ID:A104812 

-aRH-

"Considered both from the legal standpoint and as a question of practic&l, opera- tive adm.1niatrat1ve policy, a uniform 

equitable policy or procedure for the 

Government controlling its relations with 

Government employees as to their inventions 

and patents 1a highly desirable, but, because o~ public interest and the personal legal rights of the parties involved, such ~olicy can be detined only by Con.gress (underlining by JAG) and no power to declare 

such a policy 1a, or ean be, logally vested 

in ad.m1n1atrat1ve officers. This identical 

point 18 stated at length (pp. 205-209) by Justice Roberts in writing the decision or 

the Supreme Court in United 8tatea v Dub1111er Condenser Corp, 289 U. S. 178, Vh1ch 

same point was alao concurred in by Justice 

Stone and Justice Cardozo in separate opinions (pp 219-223) in that case." 

To the foregoing I will add that the point made by Justice Roberts in the decision or 

rererenoe is as follows: 

"F1tth. Congress baa retrained :f'rom imposing upon government servants a contract 

obl1gat1on or the sort above described. At 

leaat one department has attempted to do so 

by regulation. Since the record in this case 

discloses tbat the Bureau o~ Standards bas no 

such regulation, it is unnecessary to consider 

whether the various departments have power to 

impose such a contract upon employees without 

authorization by &ct of Congress. The question 1a more difficult under our rorm or government th.an under that or Great Britain, where such 

departmental regulations seem to settle the 

matter. 

"All or this legislative histo~y emphasizes what we have stated--that the courts are incompetent to ansver the difficult question vhether 

the patentee is to be allowed his exclusive 

right or compelled to dedicate his invention to 

the public. It ie suggested that the election 

rests with the authoritative orr1cers of the 

Government. Under what power. express or 

implied. may such otticers, by administrative 

11 

-EBE"f ·--- -- --...........-·..._ 
REF ID:A104812 

ar 

fiat, determ:f.ne the nature and extent or rights exercised under a charter granted a patentee 

pursuant to constitutiooal and legislative provisions? Apart from the fact that expreas authority !a nowhere to be round, the question arises, who are the authoritative 9ff1cere 

vhose determination shall bind the United St!tea 

and the patentee! The Government's poe1t1on 

comes to this--that the courts may not reexamine the exercise of an authority by some 

officerJ not named, pul"port1ng to deprive the 

patentee or the rights conferred upon him by law. Nothing would be settled by such a 

holding, except that the determination or the 

reciprocal rights and obligations of the 

Government and its employee as respects inventions are to be adjudicated, Yithout rev1ow, 

by an unspecified department head or bureau 

chief. Hitherto both the executive and the 

legislative br~nohes of the Government have 

concurred 1n what we consider the correct view--

that any such declaration or policy must come 

rrom Congress and th&t no power to declare it 

1& vested in a.dm1n1etrat1ve oft1cers .. " 

d. The foregoing quotations are o~rered in support or 

a possible contention that the val1d1tJ of any "patent memoranel&" 

such as the ones which our employees are asked to sign is open to 

question, since they are presented by an administrative orr1cer or 

the Government 'Who bas no pover to make a declaration of policy to 

deter=1ne the nature and extent of rights exercised under a charter 

granted a patentee pursuant to constitutional and legislative pro- visions. 

e. In connection with the foregoing possible contention, 

the rollowing extract from U. 5. Code Title 5, Ch. 1, Sec. 22, is 

cited: 

1t22. Departmental regulations. The head of each 

department 1s authorized to prescribe regulations, not 

1ncons1stent with lav, for the government or hia department, the conduct or its officers and clerks, the distribution and performance or its business, and the custody, 

use, and preservation or the records, papers, and property appertaining to it." (R.3. 161) 

Irn this case the Government was the pla!nt1rr. 

12 

BilfI . -~ . .. . 
REF ID:A104812 

EPB 

Whether any contract or ~greement such as our patent memorandum 

purports to be is or is not 1noons1atent with law seems to be 

a somewhat moot point, since its adoption 1s not even a common 

or frequent practice v1th1n Government departments and bureaus. 

It is not used by the Air Force or by the Navy, tor example. 

13. Finally, a comment or a general nature. It 1a difr1cult to understand why Comment No. l vas sent by the Director 

or Intelligence to the JAG. It would 5eem that the official 

file dealing with the 0-2 policy would show what means or mechan1s~ was contemplated or established ror acquiring the 

'-inventor's reversiona.ry commercial rights, tbat is, whether 

Congressional action in the nature or a private bill or the 

use of regular or special Dopartment of the Army appropr1at1one 1 

etc., vas envisaged. Ir the file were to fail to show what 

means or mechanism vau oonte•plated or envisaged, this would 

tend to 1nd1eate th.at the G-2 policy i.s based upon nothing more 

substantial than a hope that some way could or would be found 

when and if a case should arise. This 1~ hard to believe. It 

1a my feeling th.a~ some mechanism such as tha.t'suggested by the 

JAG in the following extract (eee p. 23 or Inclosure 4) was 

envisaged: 

"I:t' the Government deB1res complete ownership it can only accomplish this result by negotiations vith the inventor looking tovard either a donation 

or the invention to the Government, or based on a 

purchase at a ra1~ and reasonable price. The latter 

alternative obviously pre-supposes that a specific fUnd has been provided by Congress tor the purpose, 

or that a definite sum has been requested for this 

pa.rt1cular purpose from the Oongreaa and included 

1n an appropr1at1on bill." 

7 Incls 

1. Ltr 27 Jan 47 to 

President f?aom Mr. 

Royall, w/Taba i

4

2,3 

2. Memo from JAG, 1 Apr 

trm Chier.Patents Div., JAGO 

3. 2d Ind, 17 Ja~ 36, to Aast 

Sec. War f'rm JAG 

4. 2d !nd, 19 Apr 35, to 

TAG rrm JAG 

5. Memo for Rad, 18 Dec 46, 

Cont. on "Proposed Patent 

Policy" 6. "Brief Relative to M~&ning o~ Patent 

Memo No. 5 

7. 

WILLIAM F. FRIEDMAN 

Brief dtd 15 Feb 47 

by Chief, Pat. Sec •• 

Legal Div, OCSigO 

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