REF ID:A104687 

fOa The Judp Advoctite ".lene:ral 

lp•o!al Sta£t, United State• ~ 

Wa•hington 25, .c. c. 

l. R•terence 11 ade to JAGO lett•r da.ted 2 llq 1949, 

SUbJects lte•t.a.teent and Cl&ritica:t.1on ot th• Poliq Relatin:r 

to Gowrmant F•plo7ee ... lftade Invention• (Incl. l, with lxhibit 

A).. A.ttao.hed berate &1 Inolo1Ur• 2 &re detailed oc•utnt1 on 

&:lhib!t A, mo•t or .nioh d•al with rar. (a)(~) th•reo.f. 

2. The AlWiY Secur1t7 Ac•no.r 1• ot the op1n1on that th• 

adoption ot Par. (a){2) o! !xh1b1t A would be detriflental to 

national def en•• and to the nation •• a whol•t ro~ r•a•ona fft 

forth in detail in Inel .. 2. 

).. It 1• requoat9d that th• Arurr Secur1t7 Apnoy be kept inroraed ot th• proueaa mad• in tho rormulation. ot e.rv- n•w 

polio7 or ot moditieationa in •xisting policy. It 1• tu.rt.her 

rtquaated that th• '1.'flf'J Security A1eno7 be 11ven an opportunity' 

to partiolpate 1n all conteronce1 held. on th• aub~ect. 

4 Incl• 

l. Cpy ltr 2 Mq 49 

2. Detailed Coaeenta • 

Obeervation• on Exhibit A 

•/7 ta.ha 

). Cp7 ltr 10 lri.,y 49 

4• ~·1', ~ My 49 

CA!tTElt lf. Cl.AUE 

Brigadier General- USA 

Chief, Ars.r s.curitt A,£ency 

@'pp roved for Release by NSA on 09-17-2013 pursuantto E .0. 1352a 
REF ID:A104687 

«''11f·'" t:-~j, ., 

..., .... 

a May 1949 

SUBJ.!CTi .Restatement and Cla.ritica.tion ot the Polley Relating 

to Government Employee ir.ade Inventions. 

TOc The Surgeon General, ATTN& Chief', legal Office 

Chief' of Transportation, .A.TTNs Chief, legal Division 

Chiof of Ordnance, ATT.lh ORDGL-Patent Seation 

Chief Signal Ofticer, ATTHs D1reotor, Legal Division 

The Quartermaster General, ATTN& Chief, Patent Law Sea. 

Chief, Chemical Corps, ATTN1 Chief', Legal Advisor 

Chief of Engineers, ATTN's Mr. V. V. Martin_, Special C~unael 

l. ~ersonnel ot this office he.a beon dosignated by the 

Assistant Searetar.r of the A.rm7 to confer with representatives 

of the Departments of tho Mavy and Air force for the purpoae 

or formulating a ntatement of polic7 for the Armed Servicos 

with respect to the rights of tho Government and it~ employees 

in employee inventions. It is contemplated that such a policy 

will be issued in the form o.r directive or amendment to 

pertinent existing. regulations. 

2. A number of conferencea have been held yith the 

Depart.111ent or the Na.Yy and A.ir Force in working out the 

details ot such a etatement. The results of the conrerencea 

in the rorm of a •ta.tement re f.raployee made inventions is 

attached hereto as Exhibit A. Th18 atatement was drafted in 

Tiew of the bubilier decision and the various deciaiona which 

1et forth exceptions to the general rule. These decisions are 

11WDmarised in Marshall T. Colgate - Palmolive - Peet Co. Diat. 

Ct. D. Delaware (Feb 181 1948) 77 U.S.P.Q. 69, 77. 

3. It is requested therefore that Exhibit A be reviewed 

and ouch comraents as desired be made to this oftica not later 

than 10 Mq 1949. 

FOR THE JUDGE ADVOCATE Gf.NERAI.s 

1 Incl; 

!xhibit A 

Cn1~ .. oy Ii:-~ 

...... 

/a/ 

GEORGE W. GARDF.S 

Colonel, JAGC 

Chief, Fatenta Division 

l"d i. . - -· ··-- . ··--. -· -- . -· -- . - --·· --· . ··- -- ·--···-- - ---- -- -- - --·---- --··---- - - .. ·-- -- -- -- -- -· ··-·- ------ -- ----·--
.... _ ..._ .. . .. ''- ... . ..._.111it·- .. 

REF ID:A104687 

it.&t.Mb.t. ot Polio7 Rea R•1pect1ve R1ihts 1n 

Irrrentiona Ill.do by OO'lermaent lmplo,.••· 

(•) The title to the invention and to *trf J*'tent secured on 

it vests 1n the Gov~n.'tlant when an employee 

(1) is ••ployed. to invent and •akee ari 

1nVention within ~he aeore or the defined 

employment, or 

(2) ia apeciti~ally ua!gned. to a taak 

ha.Yin& aa ita object the deviaing, the 

1aproving ar the perfecting ot •thod.s 

or- meana tor accoapliah:!.ng a preearibed 

reeult and •k•• a:n ill'lention within tha 

•cope or the a1111nmant. 

(b) !he title to the invention and to any pattn\ aecurad on 

it reside• :tn the eaplo;ree but eubJect to .. non-exclua1,.., irrevocable, ro,..:J.t7-.rree license to the Goverment when an aployee i• 

not employed or a1siped as 1n (a) but . (1) makes an inv•ntion wittt"'the •Cope 

ot h1t.1 general emplo,,vmentJ or 

(2) IR8kes an 1nv•nt1on outside or the 

•cope or his 1•n•ral emplo71Uehtt out 

util1na Covernm.ebt time, tac!litie•, 

materials or the •erv1cea ot other 

OO'V'ernmenl eaploteea during w01'"kin£ houra. 

( c) The title to ti-• invention and to a117 patent aecured on 

it 111 the prcpert1 ot the emple>J\\& aubjeot to no rtcht or the 

Oovern..l'!Mtnt when an e11plo1•• aakea an 1nvention uot witbin the 

o1roumatanc•a detinod iu (a) and (b}. 

Exh1bi1i A 
REF ID:A104687 

Dat~iled Gomaent• and Obsel:'Vation• 

on 

khibit .l 

l. a. In regard to the respective right• 0£ the Oovornmel.tt and 

o£ its caployeea in inventions made by the latter, it ia beliw~ that. 

the !NE alraad,7 baa a un.ttorm. policy, aet torth in AR 8'°-50 tor the 

.Department ot the A:my &nd the Department ot the .Air .rorce, and in 

General 01-dtJr Ho • .3l (l9;~) tor the Department of the Ne.'Q". .Although 

ditf erantq worded the two regula.t1one are practically tbe ame in 

baaio principles. Renee, Exhibit A •QJ" ba studied in oonneotion with 

the two regulations oited and it will b• conv&nient to juxtapo11e the 

homologous paragraphs to racilitate comparlson, •• shown in Tab l to 

this Incl. 

b. (l) Re.f'e~r!ng to Tab 1 to thia inoloaure, it 1• noted 

that the ti.rat sentence ot l:'ar. ?a. of AR 850-50 c0'9'era two eont1.ngon, ... o1•s in a aingle 199ntencei (a} the case in which an employee who 

has been apec11'1call,y hired to invent a spac:S.f'io thing accomplishes the 

thing for which he •• hired and doe• ao at the expan•• ~ the Govern· ~ent; and (b) the oa.ae in trhioh an employee ldlo wa.1 not epeo1ticsJ..4r 

hired. to invont but who was apecifieally designated to invent a •pec:.i.t1o 

thing accoQpliehes what he waa designa.ted to do and does eo at the expense of the Government. It is probabl\Y advisable to treat the1e two 

caata •eparately, aa has been.done in Pare. (a)(l) •nd (2) ot Exh1bit A, 

(2) Par. (a)(i) ot Exhibit A covera the oa•• of epecitic omploplent to invent, and under it the Gov.:lrnment acquires all righta 

to aq invention the emplo7ee ma.k•a within the ecopa r4 the defined 

employment. Under Par. 7a. ot AR 850·50~ the Government acciui:rea ei.nl1lar 

rignta in this case.. In t~in respect the proposed policy is the same 

a.a existing policy, which conforms to the general rule of law gwern .. i.ng that situation. 

(3) Far. {a) (2) ot ~ibit .A ie intended to be applicable 

in the second o:f the two case• .mentioned under Par. b(l) above., rts., 

that in which an employee who was not speoiticalJ..y hired to invent 1• 

.epecit!ca.lly deaignated to do something. Undel" Par. 7a of .AR 850·50, 

be.tore all righta can veat :llt the Gover.t1mant l.he aployae muet be 

11 1f1ca deai na.ted to invent e ec thi J under Par. 

{a .2 ot Exhibit A all rights vsat in the Qovernm.e.r;.t ir the aployee 

ha• m•rel1 been "Jl.Paqitigallx at;11Rned. to 11 task. having a.a it• objeot 

the d.9Yiaing ... , or methods or m.eana tor accom12Jit1hinv, a prmr.ibed r•mi±~ and makes an invention )'!thin the sgop~,ot the atBiJ!!Y!!!q'·" The 

ditterence in apec1tioity between these t~o wordinga ia very important. 
(4) Par. 2{a)(l) ot Navy G.o. lo- 31 aeema to be ~inlent t() Par. (a) (2) ot Rhibit A, but here too there i• a 

d.ttter•nce in 1219iticitr. It ia to be noted that under Par. 2&(1) 

or G.o. Ifo. 31 it i• only when an employee has been ~r!9\!4 to m.ak• 

or improve a 1e5i!"i~ device and llllkea an invention bearing s1irectlr 

upon that 21:£tioular davica, that a.ll rights 1n the invention belong 

to th• Government. 

(5) It ia apparent that Par-. (a)(2) ot Exhibit A lacke 

the clear-cut and unmistakablo speaiticity embodied in the homologous 

provision in either AR 6,50-50 or J.O. Ko. 31.. It it obvious that. the 

4ucstion or •pecifici't.7 ia the essential reature or this whole subject. 

·Aa Par. (a)(2} or J!xhlbit J. now stands, it ie to be antioipated that, 

•ithou.t .further elaboration ot the expressions •a preacribed result" 

and uwithin tha aoope of the aaai&h~ent,n varying interpretationa 

would be ma.de 1n ditf'eren.t labora.toriet1, or by different people in 

the eeiae l.aborato:ry; or b;r the same people 1n the sue laboratory 

at di.tterent times. 

(6) It. i• pertinent to note, in th:ts connection, that 

th• ftUigeation haa alreadT been made by ·the Signal Corps ( lnol. .3) 

tba.t in .Par. (a)(2} or Exhibit A the adverb "spao1ficall1'" be cancelled 

on the ground that 1tthere would bo leso dit.f'iculty in interproting and 

app171ng the policy if this word were omii.ted. 11 There ia likew1s• 

room to inquire as to what interpretations might be- given to the two 

quoted e:x:preeslons in t.he Jiaat sentence or aubparagraph ( 5) above • 

.For 8DJ!lple, th• 11 genera.l improvement.," or all the n.rious type& of 

equipment under the cognisance ot a partioular unit in a laborator;r 

•q be coneidered by 118.!\T admini1trative or oven technical o.t'.tioera 

to be •a preeor1bed reaultn and·certainl,y they would interpret such 

iJDprovcment as falling "within the scope or the assignment." 

c. It i• believed that the foregoing diecu•sion is sutticient 

to sho• that as regards Par. (a} (2) of Exhibit A and its homol()r;• in 

AR S~0-50 and G.O. lfo. 31 there ie indeed a considerablo ditfe.rence 

b&tween th& present and the propoaed policy, a e1'1liticant diftsranca 

in the degree o:t apacifieity required bai"ore all r1a;hta in an in:Yention 

can be claimed by the Government. The imlJortanoa of this difference 

heightene when one eonsiders the fact that tha gres.t ma:ority of 1nven• 

ti.one ot pereonnel of the lllE ar• made unde.r the eircu.metancaa covered 

ill Pa:r. (a) (2) of txhibit A, that is, by tecbnickne who are a11signed 

to taaks in laborator16a whera the «d8V'isin:r,, the improving or the per-

!ectlng'' o£ eqitlpmont 'is the purpo11e o! hiring them. There.fore, care!'ul 

coneideration 0£ tho probable eftacta ot the adoption of Par. (a)(2) 

ot hhibi t A. 1,, -.rranted. 
a. a. lt is be.1.ieYed that the adoption ot Par. (a)(2) ot 

Exhibit A would aoon bring about, within tho .NME, & situation that 

would oontorm quite clooely not only" to that •hich 1enerall.7 exieta 

in ccameroial laboratoriea and in certain other laboratories of the 

Government, l!lll.Ch a.a the lfational Bureau ot Standards, but also to 

that •hich high-level NUE authorities feared w~uld follow th• adoption 

or the polio7 recommended b7 the Attorney Ceneral in 194'> in bis 

DRsport or Inveet1gat1ona or Government ratent ,~aotioes and Polici••·" 

b. The Attorney Oeneral recommended, in respect to inventions 

made by GoverXlli'lent employeea, Go•ernw.enl-wide adoption at a uni.for~ 

polia,y whereby the Government •ould Wobta1n all righta to inventions 

ma.de by it• e.mplo.ree• (1) during working hours, or (11) with a aubatantial contribution by the Government {in the £ora ot fa.eiliti•a, 

equipment, materials, .t"unds or information, time paid tor b;y the 

Ooverl'l!llent, or •erviees ot other Goverllllent Per1onnel)~ or (iii) 

bearin& •direct relation to the employea'a o!f'1cial functions." 

c.. Th• foregoin.a; proposed policy was conde:nned in no 

unoertain terma by the then responsible otticiala o!' the f.'ar Departnutnt and the .Mav.r Department,, aa Tabs 2 .. 6 to thia 1nolosure 

adequately attest. The reasons tor the rejeotion by the 'llJ.r and 

the Navy Departments ot so riaid a policy aa that recommended b;r 

th• Attorne7 General aro set forth in some detail in the taba ot ~e!erence 'bUt ther can ba IW!mari1ed by" statin~ that the Departments •hared tbs view that tho adoption ot the Attorney Oeneral's recommended 

policy would be detrimental to national detenae and to the general welfare ot the peopl• as a whole. 

3. a. The letters included. in Tabs 2 - 6 point out th8 neoee1ity 

tor Conareasional legislation to put the plan proposed b7 the Attorne1 

Goneral into effect and it i~ highl3 probable that the NME otfici&la 

who established existing .MME policy took cognlsanee of the tact th&t 

there are certain legal questions aa to the power or authori~T o~ 

admin1atrat1ve of.ticera 0£ the Government to illpoee by regulation & 

policy of a •ore ri&Qroua ll!lture than tho one they- eatabliahed. 

b. The present Judce Advocate G&neral in a memorandum dated 

l6 January 1947 £or the Under Seoreta.l'T or lfar {See Tab 4 to thia 

1nolosur$) statedi 

11Since an invention .tis private proport1, as held 

by the SUprerae Court in 1890 in Solomons v. United 

States, 117 U.S. 342. 346, and since m4intained, it 

cannot be taken !rO?JJ. the owner by the Government •1thout oompenaat1on while the 5th Amendment to the 

Constitution still stands, 1n the absence ot a contract 

to conve7 the eame to the Government • 

... ,.. 
REF ID:A104687 

aTheretore, in order to Oarl7 out th• pol1c7 propo•ed 'iv" th• Departm$nt or Justice, it would be neoeaaar,y 

to place .!U.£J: •Plo7ee of the lar DepartMent (Civil and 

lil1tSl'1) under a. contract Qf' employment which lfould. provide that the emplo~•• assign all right, title and interest 

1n eT•r¥ invention he may 1118.ke while in Government aerv1oe.n 

#It is beii8"ed ths.t in the matter o! inventions 

th• present w!a• and lOl'll"'•tanding policy or the Government toward it• e11ploy-ees 1~oy!d rematn undta~tll'bed. 

{Emphaaie in original.) That policy ia that the relation 

t>f the Government toward thOlll is to be coneidered the 88.118 

as that or 8JJ:¥ oo~porate or other employer toward ite 

ernplo7eea ( re th on l.4w rala ion of 11 er and 

.!!!Jtnt has not been modified bz contraa'tf • K Fmpha.aia 

am.ppl1ed. ) 

* .. if * • * * 

•considered both trom the lei&l atand,po1nt and a• a 

question of practioal, operative adn11niatratiYe pol10T1 a 

uniform equitable policy or procedure £or the Governm.ent controlling its relations •1th Goverom.ent employee• aa to their i~ventionp and patents is higbl.Y desirable, but, because or 

public interest and th& person!ll legal rights or tho partie• 

involved, such polio7 oan be defined onJ.:r 9r Qoll&£•11 

{empba11s in original) and no power to deolare such a pollc,y 

i., or oa.n be, 1egal.q Y••ted in adul1n1atrat.1ve of'fice:r11. 

Thia identical point la stated at length (pp. 20,5-209} lV' Juatico 'Roberta in writing tha deciaion o!.' tho Supreme 

Court in United states v. Dubili~r Condenaer Corp., 289 

U.S. 178, which same point was alao conourred 1n by JuatiYe 

Stone and Justice Cardozo in aaparate opinion (pp. 219-223) 

in. that ease •. n 

o. In connection with the question a.a to whother an adm.1n1llltrat1Y• otticer 0£ the Government has tbe authority to .1Jlpose upon Govern• 

meat emplo;reea contractual obligations in reapeot to inventions m&de b,r 

auoh a.ployeea, the tollowing quotation from the Du.bil1er (m.a.lor1ty) 

opinion is wo:E"th notillg (See Teb 7 to this incloeure)s 

"Hitherto both the •xeoutiTe and the legislative 

branches o:t the G0'9"ernaent have c.:.nourred in what. we 

consider the correot view--th!Lt a:ny auch deela.ration 

or polioy must come !ro.7. Congress and that no power 

to declare it is vested in adntinist~ativ• o:f'fioera.• 

-4-
REF ID:A104687 

d. The question wh1oh an ra1eed by the Supreme Court in the 

Dub1l1er case wa• not answered by that Court. Bence, it 1a o:f doubtful 

accurac1 to A:¥1 a.a stated in Par. 2 or Incl. l, that Exhibit .l "ns 

drafted in •i•w ~ tho r.ubilier decision ••• ff' ainae that Qf.l89 brought 

up an important ieeua- which •• not decided by the Supra.me Court and 

which bear• mo1t directly- on the relations between tho Government and 

1ta employeea .. 

4. a. It 1• adllitted that under th11 policy followed in the peat 

aa3orit7 or industrial laboratories technical employees are required to •1an an agreement whereb;r all rights in inventions made by them within 

the course and scope of their general employment legallar veat 1.u the 

-.plo7ar, and that these right,• are uaualll" ta.ken by the ampl07er. 

The authoritiea -.ho drai'ted AR a50 ... 50 and o.o .. .No • .31 must oerta1nq 

ha'f'• been tully cognizant ot the policy tallowed in industrial 

laboratories; nwertbeleee1 the policy which we.a deliberate]J' adopted 

and which is still the otticial policy in the three Services does S 

conform to th• policy followed in industrial laboratoriea. The preeent. 

policy clearq ref'lec.ta two thingat (1) a more liberal concept or t.h• 

riehta of employees in emplo:ree~made inventions than that genaraJ..1¥ held. 

in industrial l.aboratoriee and in certain laboratoriea within tha aovern11ent, aa, tor example, the Rational. Bureau or Standards1 and (2) a ~irm be.lier that a policy which encourage• and gives incentive to 

the iaaking or inventions by" ot£icers and olvilian employees ot the 

Services ie important in the n&tional det'ense as well as 1n the 

intereat ot the people ae a whole. This view is borne out in reiterated 

atatementa by high ll!JV'el authorities who have spoken on the subjeot. 

For example, the Under Secretary or War in a 1etter dated 24 September 

1945 (See Tab 2 to this inclosure) eaidi 

· •11th respect to G~vernm11t1.t anployeea, it ia to be 

observed that they, like development ~ontraetors, must be 

dealt with on the basis o£ f'air dealing in the individual 

caae. Tb& oircunistancaa or employment vary wid&.1¥ between 

th• aevera.J. Departments. ln many laboratorios, arsenal•, prov• 

1ng grounds and engineering installations of the War Depart• 

aent it haa been found that the ingenuity of tho emplo7ee 

haa been u•ei"u.~ stimulated ~ leaving; commercial rights 

in b.111.. I appreciate tully the force or :your suggestion 

that thia creates a cont1ngeno7 in whioh the emplo7ee ma;r 

prof'it persona.l.17. It must not be ove~looked, however, that 

in War Department establishments, engaged in perfecting the 

weapons and armaments or warfare, many nota.blo contribution• 

ot Tital importance to the national defen•• have been 9V'olved 

under the p""ctice ot laavin~ commercial rights in the 

inventor, and that thifl systelll or 1ncel'Itive 118.7 be worth 

aore to all the people than what it coats some of tham.n 

. 1 
REF 'ID :A104687 

b. To "33' tbat. inventors in industrial laboratDl'iea general.13 

hav• no cotmneroia.l rights in their inventions and there.rora inventors in 

Government 18.boratorioa should alao be treated in the same way disre14rds 

at least two iJlportant oonsiderationsa (l) that a private tllllp!oyer aust 

have all rights so that r;ione o.r hia employees will be 1n a position to 

•ell commercial right.a to competitoraJ and (2) that a priftta employer 

can and usual]Jr does BUitabl,y and direot11' ~eward an employee whoee inv~tions prove prof it~ble to his business. 

o. It ie beli&Ted that, although it mq be legal to take &1183' 

troa inventors in the laboratoriea 0£ the Armed Services the privilege 

or retaining commercial rights tn their inyentiona, to do •o would not 

be conducive to good Jlorale or the employees concerned. Of course,. 

old employeea ha.ve the option to reaign when oontronted with a n•w 

polloy, but he:re apin there ia room to auggeet that this ia not quite 

being "dealt with on the ba•is ot !air dealing.tt An employee ot long 

standing, who has built up an equity in a retirement fund and who ha• 

given hoatageu to fortune, is not in a good position to reeign RD tb11 

Sound alone. Be would probabl1' ata.7 on, beariDB in his heart considerable 

resentment, and, moreover, what i• •ore important, would thereafter give 

little thought to invention. Hie incentive to invent will have been 

impaired or destroyed. 

s. a. Suppose Exhibit 1 ia adopted, With Par. (a)(2) as it now 

•tanda. If the contention of this paper as to the significance or that 

paragraph ia correct, the Goverlllilent would, in moat ca1ee ct inventiona 

mAde in laboratories of ths Armod Services, be entitled to take ail 

righte and would be bound to take thent. The Government 1'QUJ.d then have 

on !ta hands numero'.ls invent.ions and patents, the dnelopment ot which 

into practical .:f'ol"lll might contribute mate:rial.Jar to the general wel.rare 

of' the people ot the U.S. !low oould tha Government develop them? What 

would it do with its rights if' the invention has important poss1b111tiea 

0£ non•ailitary character? No aeehanioa exiat tor the developmont and 

exploitation, by the Government, of an invention for the general (nnnmil1tar.r) benefit 0£ the public. 

b. It 1• practical:cy- certain that even should the Government 

or£er free use ot such inventions to the public, no benefit would accrue 

to anybodJ'. Commercial ooncern11 would not be inclined to put money into 

the development and exploitation of web an invention since in the absence 

o:r arv patent rights thare would be no wa:r or preventing competitors who 

have epent no moll81' in reducing an invention to praotica 1'roa enJa,:in& 

the isame competitive position ae the firm that spent the money. 1'hue, 

maf>T patents ot no particular interest in the national detenae but or 

value to the 1eneral improvement of t.h.e standard or living of the people 

ot the United Statea and stemming from .American inventive genius will 

lie dormant in government files, uaelees to eveeybodJ. The incentive 

-6-

---··-~--·····--·~·-------------------------
REF ID:A104687 

on the part ~ oOlllllercial concerns to develop goverment-owned 

i:O.V•ntions will be lacking. .I.a a 11atter or tact, the nwnbor or 

case• in which GoV'erJ111ont-owned patents have been dtrreloped into 

practical. usage b;r coumutrcial :t'iras 1a alaoat inBi&nificeurli. 

c. {l) The Department or Jgr1oultur• tor a considerable 

number of 7ear• has required employee-inventors either to dedicate 

their inventiooa to the public or to &•sign all right• to the 

Government when the invention •• made during the course or the 

employM' a epeci!ica.lq a•signed du:t.ies. The Departmont had b,y 1944 

a.oqu.1.red apj.irox:lmatelT 1000 pa.tent1 in th1a _,-.. A good m.8.JV" ot these 

are "proceas" patent1,, which require little or no development.. But 

where the development or patents entails a considerable i'inanc1al 

investment, which private oap1tal 1• unwillin& to risk without aome 

protection against competition, there baa apparentl.T been little 

n:plo:l tation ot patents and tb~e the public at larg• has derived 

no banerit from suah inventiona. 

(2) !t is true that the Act eetabli&hing the Tenneasea 

Valley- Authority authorizes the Board to aell licenses and to colleot' 

ro7altiee on inventions by TVA employees, and to pay a TV.l-amplo;rea 1nven1or "11.1ch 11U111 trom th• income tram 1ale or 11censea as it Ltba Boar~/ may deem proper.• t• ot 30 September 194.3 TVA owned approxi• 

matel.7 100 patents; ~t up to l JanuarT 19441 the Board had received 

onl3 tJ.545.93 tram the ea.le ot licenses and had not authorized aiv 

payments to inventore trom such income. There i• reaaon to inaline 

toward the vi•w that Tf A authoriti•• do not go out or their .,..,- to 

evoke the interest of potential commercial developers ot TVA-owned 

patents and to promote the 88.le 0£ llcen1ea thereto. Thu1, tor all 

praotical pu:rpoeas these patent• lie dormant in TVA til••· 

d.. However, nen though the principle that the Government mqacquire and own patenta aeema to have been eetablished, the practical 

use to which potentially valuable patents can 'be put by Governmental 

action is verr que.tionabla. Theret'ore, it mq wall be aakeda "What 

advanta&e• would tlolf r:ro:a the adoption or the proposed polioyt 1fba.t 

good purpose woul.d be servfld by changing tbs existing I.Ill policy .f'rom 

ona whereb7 the national detenaeJ the people at large and the individual 

inTcntor !!Jrl benet'it to one in whiob rreryboCW" would losef 1t The Serv1cea 

would loae, and the national. detense lfOUld be irapaired, because the 

incenti1'a to invent would ba diecouragedJ the general public would lose. 

beoauee all rights would be veated in the Government which represents 

on]J' "a dead hand, incapable of turning tha imention to account for 

th• public benefit•• and the indi'f'idual inventor would lose, a1:noe be . would have no commercia..Lcy" exploitable rights. 

-7-

·- . - - . __ .... -=---· ....... -:-=--· ... ---=- -.· ·:-:...=-...::..:..-·.=.:- - ........... _--.·=--=--.... ...--·""="""-=-----·..:. ....... =:.:..---:.. • -.-- -- ...... ~ • - •• ·- ........ - - - .... -..:..:....=-----:.-..= .... -..=-:.. ..:-..:. ..... =---==·· --· ---=--==-=-=-·=·=-=--===-== -
REF ID:A104687 

6. a. Thia atudT opened with a atatament to the e..f'fect that the 

lft1! alread]' haa a uniforr.i polio,r in regard to the respective richt• or 

the Government and. ~ its employees 1n the matter or invention• e.nd it 

ie believed that a care.tul atuc!Jr or Tab l to th.t:e·-~elo&lU'e corroborate" 

that atat03ent. l:toweYer, the manner- in which a pollo;r irs administered 

1a o.rten 0£ equal import.a.nae with the policy itselt, and 11: un1!'orrait7 

ia to be achieved the ada1n1iatra.t1va regulationa eetabliahed to et.:f'eotuate the policy wat be uniform. It itt, therefore, believed that U 

Exhibit A ia really going to be adopted, tha committee which drafted it 

•hould also dra.ft unit'orm and d•tailed regulations ~or carrying out the 

pollo;r. 

b. (l} The !ollonni 11 quoted from certain CQ!DJBenta by the 

Chie.t' ot the Legal L1v1eion, OCSigO (Inol. 4), on th• proposed polioya 

".3· The Committee which cirat'ted this policy haa in 

e~rect adopted the present Signal Corps policy which has 

been in ettect for. approximatel)r •i~ 7ears. ln the past, 

the other branchee of the .Armed Sorvices have followed leas 

atrict policiee and the lack or uniforD.1it7 1n auch policiea ha.a created eer1oua probleme.n 

(2) The implication ot the foregoing is that the Signal 

Corp• ha.a been !ollowing a policy leaa liberal to inventore than the 

official Department or the ArDlY policy est tort.h in AR a50 .. 50, and t~t, 

in tbe opinion ot the Chier ot the Legal Division, OOSigO the intent ot 

the proposed policy is to modify the present Army' policy-, ma.king it 

eonf'orm to the naore .-triot ono .followed by the Signal Corpe. It is 

to be interred alao that, in hia op1n1ont the. adoption·c!' Exhibit J. 

as the new MME policy would bring a.bout tmiformit;y. This ia, however,. 

a doubtful outcom" unleas w:d.f orm administrative regulations are al.lo 

adopted, as 1• implied in Par. 4 o£ Incl. 3. Let u• &aSUlne that the 

Signal Corp• policy was made standard throtJihout the HUI. 

e. The e1sent1al d11'£erenca between the polioy tollowed by 

the .Signal Corpe and that followed b;y other branches ot the J.rmed Senicea 

ia connected with two tact11 (l) that the .!iignal Corps apparent.11" 

applies Par. 9a(l) 0£ AR a;o ... 50 in a more rigid ma.nneJ." than do the 

other aervices, by •peo1£1caJ.l¥ designs.tine laboratol'T techn1c1ane to 

produce •peoific thinae, in which oase complete title to llDif inYention 

arising tra weh work veata in the Government, and (2) that the 

Sianal Corpa ha.a adopted a so-called "Patent Jhmtorandum11 lfhioh all 

technical employees of Signal Corps .laboratories are required tQ eign 

on being assigned to duty therein, althou.gh none ot the other branches 

ot the Armed Services, with the mroeption of the J,,rJDy Securitv Agen07 

(which inherited the policy boom the Signal Corps and is currently cona1der1na it• reoiasion}, uees suoh an instrument. 

_,_ 
REF ID:A104687 

d. The a1gn1f1cance of tha Signal Corps ltPatent Memorandum'" 

ia that it constitutea a contr&ct modifying the common law relation ot 

servant and master, and therefore in this respect the Signal Corps 

policy is at variance with at least the 1p1r1t, 1.t not tho lettor, 

or the orricial Depart~ent ot the Army policy sat forth in AR 650-50, 

which requireB no .euch contract. 

•· (l) The legalit;r 0£ the Signa.l Corpa ••Patent llemorandWll" 

as a contract between employer and e1Dplo7ee waa recentlT tested and 

•11tablis'hed b7 th• deoieion in the Kober oase. In handing down the 

doc:ree requir1ng lober to ass1in to the United statea all rights in 

the two inventions at isaue, the Diatriot Jud.ge largely relied upon 

the first paragraph o£ "Patent ~e~orandum No. 3n which Kober signod 

and which reads as tolloweJ 

nyou are hereby aesi.,..~ed to dsvelop iaprovement 

in arts of value to the Chie.f Sigr.ial Officer. It 

is npeoted that t~·ia work 11a7 result in the diacoverr 

or patentable tea.tur•a, and yOUl' aeelgnment to thia 

work ia for the particular purpose of vesting in the United 

State5 all right, title and interest to al'>,Y invention that 

TOU may ma.Jee while engaged 1n the work aesigned, tr in the 

opinion ot the Chief' Signal Officer the public intereat 

demands th~t the in7ention be o-srned and controlled b;y 

the War Pepartment.• 

(2) The case waa appealed and the following is extracted 

t"rom the decision ot tbe Court ot lppeale, Fourth Circuit, in th• Kober 

case (lo. ~786, decided 8 Nov 1948) • .A.tter citing th• ceneral rules 

and referring to the I>ubilier and Hou.,:;hton cases, the court saids 

"ln th• oaee at bar, however, the119 rules need . not be considered except &B :furnishing background tor the 

agreemont of the parties heretofora ~uoted which deals .f'ully with the matter. tge eftegt gt that a~g§!ent ag!d• 

trom the erQvisiona for etcrecI1 .ta to Rrovide \bat an.y 

iPI@Yi•on ~ad! b;'z" anpeJ,l!nt whtle 1ngaged ~n the wori to 

h ha b an a.Hi . ed. hall belon to the United Stat 

emphs.ela auppl1ed , 1.f in the opinion of th& Chief' Signal 

Officer it i111 1n the public interest that it be owned and controlled 'tt1' the War Department, otherwiae it ehall belong to 

appellant S"ibject to a non-exolusive license on the part of 

the United s·tatee. The determination b7 General Akin tul• 

filled the condition or the contract and vested title to 

the invention in the United States.ff 

... 9. 
REF ID:A104687 

And in the next p~ragraph tho court iiaidi 

{3) In neither 0£ the £oreio1ng quotation8 ia the matter 

or iapeotficit7~ or the achiev~ent ot •a prescribad re$1.tl.ttt mentioned 

but elsewhere in the opinion of tha District Court and or the Court 

ot Appeals the question as to wh$ther lober had bean mpeai!'icall.yassigned to the development of" the devices he inTented is mentioned. 

The diatrict Jud&e round that he W&a so assigned and this finding -..aa 

accepted by the Appellat• Court, dempite the fact that Kober waa 

originally allowed to appi,. for p4tents with assi~nment of lioensea 

to the Government. But the Dietrict Court, in aupporting the Gov0rn-

~ent' • require~ent that Kober a1aign all right• to the Government, and 

the Appellate Court, in upholding the deoiaion 0£ the lower court, 

laid more emphaeis on the tiret paragraph o:r the nratent llomorandumtt 

then upon whether or not there 'tl'llS epeci.f'icity in Kobe.r's ~esigflllent 

to make the sp eoi.:C'!c initentions. I 

t. It is true that even under the Kober decision Signal 

Corpa inventors who sign th& "Patent l!Clllo:randurs" theoretically atill 

h.ava conun6rcial rights, for until the Chief Signal Of.ricer has made 

his dotermin~tion with respect to the public interest, tho inventor 

ia, under that deoiaion, ontitled to his inventions, subject to a 

lieenee to the Qovernmant, 1'~ovM@d. tllere M:a btt9n 115 np1'¢ifta de1igMt!2u.to inve~t j::h~ ,!i:•oific thing. But it f'a.r. la. {2) ot Exhibit A 

i• ad.opted as the official NUE policy a.nd. i! the intent Qf the Comm.1ttel!l 

11h1ch ctrarted E'lehibit A is, as stated by the C~ie.t of tho Legal DiTision, 

OCSigO, to adopt the Signal Corps policy, then it is to b& ant1aipated 

that aoon after ite adoption all other branohea or the .Hr~ might aleo 

adopt the Signal Corps more strict implementation of policy a.a well a.11 

th& Signal Corp a 11 Pntent »e:nora.ndum. tt The result would ba the intl"oduction of a wide-spread and very serious modif'ication in the present 

of'fiaial l'OiE policy and the etteats therttof would .fall into two 

eategorien, tirat, those affecting individual NME 1nventora and 

second, those artecting national de.f'enae and the people aa & whole. 

ia to the fir3t category, the inventor•a position with resp•ot to 

commercial right• would oartain.i,- be much lees favorable than hereto- ~ore. For, not only would the ftpecif'ioity neaeseitated by .A.R 850~50 

bef'ore all rights Test in the gov•rnment be no lonier required, but aloo 

-10-
REF ID:A104687 

the inventor would never know where be stands or whether ho has iu 

t•ct •:t\Y 001.Qll~rcial rights, eince there is no time limit •et upon 

the period duriD« which the Chief ot the Service concerned can mall:e 

his determination with respect to the public interest and thu• dive•t 

th• inventor or bis c~mercis.l :rights. Could the1 not be ma.de after 

the patent has been issued? !hua a cloud would be placed on the t1tlo 

to 8Jl'3' patent obtained. u.nder wch circumstances. u to tlla second 

category, the ..rrects ot a lees liberal polio7 than tbe existing one 

upon the national defense and upon the whole people have alreo.<J.y been 

d1acuased and nothing turther need bo :l.ndioated th.ereon at thia point. 

7. a. lt mq •ell be that, .U: Par. ,,)(2} ,Qf ~3!11,Rit 4 i1.1dpetfd II "¥bl pttig1!;1 Rlf.S PQlisrr, no written contra.ct of' empl01ment,, such ae 

that 'rlsualised q,- the Judge Advocate Qenero.l in tho extraot quoted 1n 

Par. )b above, or woh as that exemplified in the Signal Corp• 11Patent 

Memorandum, tt mq even be nec•1SfU7 to req1Jire a aomplate and irrnocable 

aasipment ot all l'ighta to the Gov(tmllent. Two cases will be cited in 

thia conneotiona 

(ll In the case ot Goodyear Tire and Rubber Co. v. Miller 

./.2.2 F. (2d) 35J/ the Circuit Court ot Appeals ruled that an invention 

118.de by an employee hired t.o make 1t belonga to t.he •ployer, 1rreepaot1v• 

ot whether or not there was a contract to that ertect. On this point the 

Court aaids 

•Lil We are ot the opinion, not onlf that plain.tut 1• 

entitled t.o •P•eif'ic per£orma.nce of the .tormal contract 

or •••ianment, but, without it, it would still be entitled to tubatantia.ll7 the same relief by reason of the 

blplicationa of the primary- contra.ct of e11pl1.1111ent. It 

1• not a ca.ee or one who, being e~ployed tor a general 

1•rvice, makes an invention on the side, outside of his 

line ot dut;r. Detende.nt wo.a eraplo7ed excluab•ol,. 1n 

a departnsen.t, the .ta.notion of which •• to imprwe old 

and discover new proceas9a and devices. Such waa the 

aervioe for which hs wa11 paid, e.nd while •o emploTed he 

was, in the regular courae ot his employment, aasiped 

to the apecit1e taak or dew-elt>p1ng a device to pertom 

tho veey function tor whiah the invention 11'1 su1t is adapt .. -.!.. We can aee no dietinetion between a caae where one 

is orig!nal.17 employed tor the limited purpoae ~ solving & specitic mechanical problea and another caae where 

he 1e emplo7ed genaralJ.r to concern himaelt with auch prob ... 

lema and during th• course ot the emploJllent and within 

the scope thereo.t, 1• aos1gnod to a apeai.tic one. In 

•ll-

. ·- -·- -- . ·- . ...... . . . .. -- ... ---·. -···- -· -- --- - . ..::.:-===--~----·- -- . --- ·--·- - ---· -··-····--·· ·-·-· -· -·--·-- ---·:::. 
REF ID:A104687 

either caue the fruits or hi• endeavor oelong to hie employer. Thie view •a think is tul~ supported by Standard 

Parts Co. v. Pack, 264, U.S. ~2, 44 S. Ct. 2J9, 6S L. Fd. 

5(>0, )2 A.L.R. 1033. Ses, also, la~etia Mtc Co. v. 

D1Da;a ~agnetie Separator Co. Cc.a.A.) 16 1. (2d) 739J 

U.8. v. Houghton (D.C.) 20 1. (2d) 434J Wireleaa Specialty 

Apparatus Co. v. Mica Condenser Co., 239 Maas. 158, 131 W. 

£. 'YJ7, 16 A.L.R. 1170.R 

(2) Under the auidanoe ot the decision in the Mareball v. 

Col.p.te-Palmoli•e-Peet Co. ca.so, it appears that. an empl07ee who 

accepts t&tb,r 1n ora~ .. ~a: a Elt:ten ,all\!!&nme!!!i "to a task having 1H ita 

objeot the devising, the improving or the perf'eot1ng ot methods or 

means tor aocompliahing a prescribed result ~ •eke• an 1nvont1on 

within the aaope of the aesignment~ will be obliged, under Par. (a)(2) ~ Exhibit A, to e.1sign all rights to the Govarment.. .lnd it would 

uke no difference how long the in'V'en.tor bad been a Goverment •Ployea 

or how long he ma.y have enjoyed the benefit• ot the auoh ~ore liberal 

existing policy-, tor the Court in the oa1e cited also held that 

•the l1~1tat1on upon the /:.ienerall rule appliea to tba relationship 

or the situation exiating a.t the time ot tho diecovery, and 11 not 

conoluded b7 the origlnsl contract ot hiring.' 

b. In paas:S.ng, it ia p•rt.inent to point out tha.t th& ».arahall 

v. Colgate•Palmollve-.Peet Co. caee rapresenta a •1tua't1on whieh i.I u.-

aot]3 the tffltlO or that which ia current in the laboratoriee ot 

the Armed rorcee. ln the .Marehall v .. Colgate-PalmoUYe .. Peet Co. case 

the obligation on the part o£ employea•invento.ra to a1sign all rights 

to the co:mpaey waa wall known by all concerned to be a general praotice 

or rule ot long etandin11 bu.t in th• case ot emplo7ee•1mrentora 1n 

pr•ctical.17 all MME laboratories, on the contrary, the general practice 

ot allowing inventor• to own tha pa.tent• and granting onq shop riahta 

to the Goverment bae been one ot long standing and ia well known to 

all concerned. Thus, the consequence or the .adoption of the propo•ed 

new policy would be to tf'lel\ff the general praot1ce or rule that has boen 

rollowed within the Armed Services, and, 1t roveraed, bardl.1' any oases 

would occur under which the invanto~s WDUld have ariy co11111ercial right•. 

!he decision in the Marehall-Colgate-Palmolive-Peet caee would adequate~ 

cover the •ituation. Would this be equitable? This comment mar well be 

oonoluded by quoting from Teb 2 to this inclosuret "11th respect to 

Government employaea, it 1• to be ob•erved that the.r ••• 11tuat be dealt 

with on the basis ot fair dealllll in the individual case." There are 

llllm.1' tmployee•invantoro 1n the laboratories ot the Armed Services who 

Joined tho•e laboratorie• in the knowledco that commercial rights to 

their 1nYent1ona were ueuall.y granted and ma.rv- ot them have anjo7ed 

the t1nano1al benefit• ot th$ae richta. Indeed, the privilege of 

retainir.ii:; such right• has &erved as a material inducement to competent 

t•ohnioia?lB to seek or to continua to hold positions in tho•• laboratoria• 

and it ba.1 b&en an implied oonaideration in th" terllls o~ their emplO)"illent. 

-12-

·---·----------------------------
REF ID:A104687 

8. a. One faotor ot considerable importance in tMa whole 

utter is not covered in Exhibit As the policy and procedures to be 

used tor aecur1ty control or Government-employee made inventlona in 

which the Government ha.a onl7 •hop righta but which 1hould remain in 

a classified atatua tor a temporary period. Invontiona in this 

cateiory are ot particular interaat to sever.al branches or the IME. 

That this 1• a. problem. with ma.D¥ difticult aapecta ia admitted bu.t 

it oertainq aeems d1acrim1mitor,y to allow aoma .mployaa.a to retain 

end to exploit comi:tercia.l l"ight1 1n non•ola1aU'ied inventions and 

to withhold wch rights tor an indet'inite and •cmet!Jaea length1' 

period of tiJla .trOlll other employee• who alao have aimilar righta 

but happen to work in a tield in which eecrec;r ie required a• to 

their inventions. Mo government-employee inventor will eeriousliT 

object to holding an application 1n a ••creoy statue tor 881' two tc 

.tiYe yeara. lht when the application is held up ror much longer, 

the 1nequ1t1 beoo11U1• apparent. lor example, the following list covers 

•ome of the irNentione and pertinent patent applications 1n which 

.A.rnor Seourit7 .6genoy personnel a.re ansumed to have oommerci•l rights 

but which, tor •ecurit7 reaaone, have bad to be kept in a elaaaitied 

atatuiu 

Daif' 2t .. ~i11ng 

25 J~ l9J.3 

23 Oot 1936 

23 ~ 1936 

10 la1' 1941 

16 liq 1942 

S Sov 1944 

6 Sep 1944 

21 Feb 1944 

lo.~t, ziira qe!d in 1eor•g% 

l,3 

13 

8 

7 

5 

5 

s 

loreover> at this -.riting there ia no pr~upect tha.t a:q or the .foregoing 

ea••• can be released within the .f or .. eeable tutur•. What should or can 

be done in caae1 euoh aa the••? Merel,y to dismiss the question with a 

comment that nothing can or lhould bo done and that the eituation 

:represents one ot the unfortunate penaltiee ot enterina upon work in 

a bighly ola11&1fied field ia hardll' ad.equates in time, aa the picture 

aro•a more olea.r, there will ailnp]¥ bo fewer able inTentor• who •ill 

ohooae to work in such /ields, .much to the detr1aent of mtional detel'1Se. 

b. .Perb4pa tha wq in which thia matter has been handled in 

th• Atomic Eneri1' Act mar serve aa a suide aa to what •hould and could 

be dono in othar .fielda where aecrec;r 111 a vital element or .factor. 

o. Exhibit. A. makea no reference to foreign r1ahta in the ca.as 

ot Govel'Dlllent-emplo,yee made inventiona. !ren in thoee Government agencies in which it ia the current prs.otice to assign U.S. riahta to tha 

Government, mah aa the National Bureau of Standard•, the 1nvento::ra retain 

toreian rlgbt• in mo$t cases, 

--- .. ·-·-·-------------------------------------
REF ID:A104687 

:-t _,,,,,. 

! i,. \\ I \ '._ ', 

d. It i• thDlliht that the C0111J1iti,e that tormulated txhlb'1t 

.1 ahould a.lso give aerioua stud;( to thel!I• altpcots ot the aubje¢t and\ 

present a u~i:form, equitab.1.a policy~ .: ~· \ 

9. Aa is proper and logical, the proposed ,polic7 make• no ' 

.. 

reference to inventions made by employees o.r pri'(a.ta contractor• . ,11. .. 

o~aged in research and development projects tor the Government. But · ·. '· 

it would aec. inequitable tor the Goverment to take all rights in 1 •l, " 

Gov&l"DJtant tl!\plo;ree .. made inYentiona llllde ~·ar. (a) (ll) of th& propoaed 

policy and not to take aim.ilar rie;hta in .invention,. •ade by' nonOoverment eployees working on Govel'l'lJlent contracts i~ commercial 

laboratoriea. D1Gh,glaase1 or inyentioSQ,~&.'l!Reorte4 9l Oq"t1r!J!en\ 

t.Jmis sud bqjcfi fljould ,ther!f'?re be f.!!b.jaqh to ;imU.a.r ~~J· !ut it 

ie abundantl;y clear that aqy atte.mpt to ~Qree priv~ta cont1i:-actors or 

their inventor-employees to ••1dgn 1\tll ~itle to all 1nverl1_:.lons lllade· 

in the COUl"ae of 1'ork1ng on Goverment p:r'pjecto wot,\ld bo rejected and 

to make S"tlch an attempt can on.J,y be to th~ detrim'"'t ot the Qovernment 

and of the people ot the United States. '11:11e pha.aei'. or the matter 1• 

aliso covered quite adequately in the lett~ de.ted *' SeptesbEW l.945 

f'rom the Under Secretar;r or War to the Dep&H,ment ct Justice . (Sea , 

Tab 2 to th1e inoloauro}. · · i · ( ,{' 

' . . .~ 

10. One final cOJment on thie matter:·: It it ia deemed·' bl highlevel mm authorities that the existing otfXcial poli07 ae it ~w etanda 

and a• now set .forth in AR S.50-SO and in la'9}r G.O. flo. ,31 ia n~t 

a,d,Ya.ntageous in the national def'ense and t() the bifst· interest;., ·~r the 

people aa a whole. then a olearl.¥ indioa.ta4 dec1•!.'Qn to chang• that 

pol107 is aertainq in order- It is belin'_,d tMt· the .roregoing'.a~nal.yeis 

i• au.ft1cient to shov that Exhibit A is no ~ere •restatement and la~1-

1'ication or pollc,r, 11 aa stated in th• wbJ~t of !nel. 1, but prop eee 

1n realitj' a. modii"ication of existing pol~fe;{ that wo\μd app~ to 

pranticalq all. or the inventions made iri IDB labora.toriee. It 1• aleo 

believed that suoh a aoditioation aa tba.t:proposed wo~l~ probabl.J be 

to the detriment of national dotenaa and ~t the 1ntere'lt• or tba people 

a.a a whole.. It is hoped, therefore, that ~ll the ef'tea.ta pt a policy 

less liberal to liME inventor• than is the present otr1c1al policy- w1U 

be oarefull1' weighed in advance o:t it• l\(lop~ion, aes those et':t~ots ma.7 

be ot ueater importance to the nation as a lfhols than to the 

individual NME inventor• affected thereby. 

\.: , . ·," .. 

y . ' ~\ 

I 

I 

i ·. ! I. ' I• ., ' 

. \ ;i 

·~ '\ i .ii I 'h f,1 \ 

f': I? \ 'I I 

t ~ \ f f ' : 

-14- ·' i. i t !\ I I i 1• 1 
I 

REF ID:A104687 

AP. SSQ.:§l 

?a. {1st sentence) In case an 

otf'1:-er,. -.i-re.nt officer, enlist«i JIBll, or ciT il.ian uplo;yee 

ot tbe War Depa.rtaent or or the 

Anq ils ap&cif'icalJJr dasignated 

er empl<J18Cl to inrimt a specific 

thing and d.o6S 80 «t ~ expens. 

ct the Govern.Ent,. the title to 

the im'ectiQ'l and to the pa tent 

obtai Md thereon boa:>ms the 

i:ropei-t.7 or the Ganmn«.rt. 

1a {21 mat.Cloe) It' th• ~ 

tim is ad.e in the course a! 

the gemrtl aipl~t al such 

pe:tem ce the t~e Q" at tM e:a1*189 or t.hs Gonmment b.tt. not 

bJ' d1redt. deaigna,t,ica or tapl.07-

Jm5.t tcr that .Pllli'oee, t.be Gar1'r2.'lllent has an hpli.ed licenN 

to UH the inventicn, Wt. the 

title thereto and to th9 pat«\t 

acquil'ed t hC'eon is the proper--

tr of the inv853.t.cr. 

....._. 

zmibit A 

(a) The title to the invan.tion 

and to a1J.7 pa.tent secuJ."Sd on it 

-veste in the G~ 'lllhen an 

emp.1.07oe (1) is arqiloyed to invent and DBlces an invention 

wit.hin the sco~ of the. defined 

emplo;ynmt, er (2) is fr"~ificc.lly- a.ss1t1led to k task bl!.vmg 

as its object the devising, the 

improving ~ tho porf ecting of 

•t:.hods or :eans tar &C'CODlplilb--

ing a prescribed ~eault and 

makea an invent.iai within \.he 

soo~ or the as:si.gmMnt. 

(b) Tm title to the im'antion 

and ~ pa tsit eeeured <ZI. it 1'9-

eidea in the emp.107" but wbjact to a non-exclusive, irrevocable, royalty-tree license to 

the Govarnmmt. ·.nm an aaploJee 

is not emplo,.S. or aa.signod as 

in (a) lxlt (1) mak88 an innmtion -within the StX>J* ot his 

goneNl .apl.O)nmt; ar ( 2) 

118.kGe an inTent.i..ai outside ot 

the scope o! his ganeral empl.07-

!8'tt, but utilizes Gcwemnent 

tim, f'acUitiee, Mte:rialo, er 

the services o! other GavernlBlt empl.DySN during lKl'.l"kiDg 

houra. 

Nayz G .. O. ~·. ~ 

2{a) The title to tha mveatia:.t and 

to &TJ.7 patent secured en it by the 

e!IDJ.OJ99 vests in tho e.m.ployer when 

fl/ Ar. em.p:t.arae is directed to make 

or :iJjproT• a specific device, ~'UlS, 

methcxi, er process, and in the perrormnce or euch a.tty he malcee an 

im'antion direct.J¥ bearing upon that pg.?"t~r devioa, 12erul!1,. .metbod.1 or process~ :t%/The campTute con~ ot the iDvmtia'!. is nee~ in order tor 

tho employer to realize all the 

benefits which he anticipated would 

now to him by the emplqiment or 

the •ploy.,. 

(b) The title to the invention aod to 

any ptitmt secured on it by tbD 

911pl.oyee /1 includi."t; all cOl&C"Cial 

and foreig:i rights, resides in the 

~079e, but subject. to a lic.e:188 t.o 

the em.1il.oyer 1fhen -

An ~oyee mt ass!gned t.o duty as 

kt (!)makes an irmmtiai and uses 

the mployerts tills Oil" t"acil.itioa 

or at.him' «aplo)"eee in t.he developmmtr 

of the inventictl. In auch eaae thl 

Na'f1 Department rtJquires a nonexcJ.u.aW 

ive, ir.revocable, and unl.hdted right 

to make ard use, and have ade tor tle1 

Gove.rr:im.entr s UBe, devicea emhodying 

the invention, and to sell aueh 

devices as provided fez b,J' lmr regarding thl!J sale or J11.blie propert.7. 

/ .-, c .. (;._ ,,.,. ... 
AR 82Q-:50 

lib. In 8rt7 other case 1lheN 

thent is no col'lt;l"BCt or t«"JI. of 

eapJ.oJment provicllng ot.herai&e 1 

euch inventor is the sole CJme1"' 

or the inren.tiai and o! the 

pat.em; acquired thereori, am 

no implied license acerue.s to 

the United s ta.tee bjr reaam af 

tblt im'erltor' s ~t. 

't 

~bit A. 

(c) The titl.• to t.ha il'lventim 

am to &n7 pat.mt secured on it 

is the pro~ ol the em.pl.qee 

subject to no right ot tht Goirarnmant llhen an NIJllo,yee zaJms a.a 

inventim mot wit.h.:in tbe cirawmtaz:ima de.timd in (a) atld . (R.}. 

2 

Uayz G .. O. No,. J'.b 

( c) Tbs title to the in'rention 

and. to aey patents secured Q'l. 

it ~ the anpl.0788 is tJw propert.7 

o! ~e Gmlita,ee, subject to no 

right of the employer whee - An eqil.QJ'M makes Ell inTention DOt 

llithin the circumstances detined 

in (a) or (b) er conceming wbich 

he i• not othartd.ee obligated to the~-
SIGLG-6LG 

REF ID:A104687 

10 Jfa,y 1949 

Proposed Policy Relating to Respective Rights 

In Inventions Mada by Government Emplo,-aes 

Judge Advocate General 

Pentagon Building / 

Washington, t. c. 

ATTENTION: Chief J fat.&nts Division 

l. Ref'erence: 

Letter dated 2 Nay 1949, from your Of£ice to this Office, Subject: 

nn.estatement and Clarification of the Policy Relating to Government r.mployee made Inventions. 11 

2. The Signal Corps is o.f the opinion that the eeto.blisbment ot a. 

uniform policy within the Armed Services as to the respective rights of 

tha Government and its enployees in inventions made by its mn.ployeea 

1a highly advie~ble. (As a later IJ'tep, a uniform policy of this kind 

should be established on a Government-wide basis.) In general, the 

policy set forth in the abovG·identif ied reference appears to be a de• 

airable one. The majority of the commenta made below have as their 

purpoea the clari.ficat!on o:r. the policy so that uniformity in ite application to specific cases may be insured to the greatest degree possible. 

The paragraph designations to whiah tho comment 11 apply are those used in "Exhibit A" attached to the reference mentioned above. 

J. a. Par. (a). 

In llne 2, after "emplo;yee11 , there 11liould be 

addod the words "(Whether civilian or military)•t. 

b. far. (a) (*1_. 

The term 11 defined employment'' should be replaced b,y some 

more explicit definition, e.g., "field in which, at the 

time of making the invention, he could reasonab~ ba expected to make improvementB1

'. 

c. far. (a) ~2)~ 

In line l, "spsc1fically11 should be canceled. There would 

ba leas difficulty in interpreting and appl;ring the policf 

it tb.is word were omitted. 

Incl '.3 

-·· . ·-·---- --------------------------------------
REF ID:A104687 

d. t~u.:i.. (al. 

To insure that tha policy will be applied equ1tab]¥ to 

the several levels or employees, the rollowing ehould be 

addttd to this paragraph: 

''or, 

(3) in the cae& o:r an eaployee who is a. supervisor or 

technical consultant, vasts in the Government (in 

addition to so veir.ting under the circumstances of (a) 

(1) and (a) {2)) ~hen the invention, if it had been 

made by any subordinate of such supervisor or by any 

employee (herea~er called the consulter) of anygroup which the consultant serves, would oome within 

tha ecopa of the fleld or aesignment, as defined in . (a) (1) and (a) (2), respective~, of a!J1 such subordinate or consulter.~. 

e. Parg, (b) {l) and (bl (~l· 

The term "senel"al employment" requires definition to insure uniformity of polic7. Some such definition as U.field 

or 11ork" should be used. 

f. P&-, (b} {~l 

Af.'ter ttbut'', in line 2, there should be added 11 , in conoeiving, developing or perreoting his invention,~. As it 

is now,· the things the inventor utilizee are not in an,y 

way tied up with the invention. 

4. It is recommended that, in the interest of having a uniform 

policy on this subject, this pol1oy when issued be followed by supplementaey instructions as to eources or information wb1ch IJhould be consulted in dete:rmining the circumatancea under which an invention is 

mada. Thia is espeoiall,y important as to Pars. {a) (1) and (b) {l) or 

the pol1c7 • 

.FOR THE CHIEF SIGNAL OFFIGE1b 

JOHN E. PERNICE 

Chiet, Legal Division 

·- - --· -- ·-· ·---- ·- -- - ·- -··· --·-- ·-· ·- --- . - -- -- -··· --· --· - -- -- - ·- -·'···---~-·-· ·-~----··--- ---~--·· ---
;;, . 

.. e. 

DEPARTMENT OF THE ARMY 

SIGLG-6-LG 

Engr. & Tech. Div. 

REF ID:A1046~7 

• 

I .J 

Respective Right~ of Inventions Made by 

Government Employe·es 

Chief, Legal Division 5 May 1949 

72415 

1. Inclosed is a copy of a proposed policy for the Armed Services concerning 

the respective rights of the Gover1'l1Jlent and its employees in inventions of such 

employees. This policy was formulated by representatives of the Navy, Air Force, 

and Judge Advocate General of the Army. 

2. The Office of the Judge Advocate General has advised this Division that 

it is contemplated that this "policy will be issued in the form of directive or - amendment to pertinent existing regulations" and has requel!lted that such comments as 

the Signal Corps desires to make be supplied to that Office not later than 10 May 

1949. 

.... 

J. The Committee which drafted this policy has in effect adopted the present 

Signal Corps 'policy which has been in effect for apprllximately six years. In the 

past, the other branches of .the Armed Services have followed less strict policies 

and the lack of uniformity in such policies has created serious problems. 

4. In g~neral, this Division considers the proposed policy satisfactory. Ho~ev~r, this Division suggests that you consider the question as to whether the 

policy should not more clearly state what was undoubtedly intended, namely, that it 

applies to both military and civilian employees. This Division intends to recommend 

that the policy cover more adequately the question of the rights which the ·Government 

gets in inventions made by employees who are supervisors or technical consultants. 

As to the latter point, it is considered that paragraph (a} of the inclosure should 

have added to it the following.statement: 

11 or 

(3~ in the case of an employee who is a supervisor or technical consultant, 

(in addition to the vestin~ of title in the Government under the circumstances set forth in (a)(lJ and (a)(2)) also ·wh.en the invention, if it 

were made by any subordinate of such supervisor or by any employee (hereafter ca~led the consulter} of any of the groups which such consultant 

serves, would come within the scope of · 

~· the defined e~ployment of any such subordinate or consulter 

employed to invent, or 

]2. the assignment of any such subordinate or consulter speci£icall.1' 

assigned to a task defined as in (a}(2). 11 

I _1 ,, I 
REF ID:A104687 

COPY e 

;. In order that this Division may be able to furnish the comments 9f the 

Signal Corps to the Office of the Judge Advocate General by 10 May 1949, it is 

requested that this Division be advised by 1100 on 9 May 1949 as to whether your 

Division has any comments on the proposed policy. 

6. It is suggested.that the Signal Corps Engineering Laboratories also be 

consulted, by your Division, as to their views on this subject. The Signal Patent 

Agency has been given a copy of the Inclosure and.has also be-en advised of the 

proposed additions referred to in Par. 4 above, so that the Laboratories may obtain 

this specific information locally, if you prefer that they do so. 

1 Incl. 

Proposed Armed Services 

policy (in trip) 

COPY 

2 

JOHN E. PERNICE 

Chief, Legal Division