Evening star. [volume] (Washington, D.C.) 1854-1972, 1897-08-09
PATENT EXAMINERS
Commissioner Butterworth Makes an
Important Decision.
]. B. M'ELROY'S Case DECIDED
Patent Office Employees Barred
From Filing Applications.
FAR-R EACHING RULING

Commissioner of Patents Butterworth has
rendered an important decision in regard to
cases in which examiners in the patent
office make inventions, file applications
while in the employ of the government in
the patent office, and Immediately upon
leaving the service proceed to take out
patents.
In reviewing the case in question the COM
mis- sioner says:
THE applicant, John H. McElroy, while
an assistant examiner in this office, ex-
amining in the class of voting machines.
filed this application complete in all its
parts on February 10, 1896; on June 2,
1896 he resigned mis- position. and on the
day following paid the government fee of
$15 to secure the examination of his
application, which application presents
an invention claimed to be an improve
ment on a voting machine for which
other joint applicants had filed an
application, which was before Mr.. McElroy
for examination and action while he had
charge of that class in this Office This
earlier application is still pending.
Acting under instructions the examiner
states that on August g. 1896 and on De-
cember %. 1890, he rejected the claims on
reference to the pending applications, and
also in view of the provisions of section
follows:
"'All officers and employees of the patent
office shall be incapable. during the period
for which they hold their appointments. to
acquire or take, directly or indirectly, ex-
cept by Inheritance or bequest. any right
or interest in any patent issued by the
Office
The Statute Upheld.
"a case on all tours with this was before
me on February s. 1884 (26 o. G., $3.50, in
which I held that in view Of the statute
above quoted 1t was not competent for an
employee of the Office to file an application
for patent while he was employed in the
patent Office. The reason for not permit
ting this to be done has special force IN
the case of an examiner who seeks to file
an application covering an Improvement
on an invention disclosed in some pending
application of which he. as such examiner,
EaS charge, or may have charge, and the
objection derives additional force from the
fact that his application, If filed, would
or might be referred to the division In
which he is employed as an examiner. In
the case mentioned l directed that the ap-
plication then under consideration be
stricken from the files and returned to
the applicant, and that the fee be returned
to him.
Notwithstanding this decision 1t seems
that ii is not wholly exceptional in the
office for examiners to file applications
which are properly referable for examina-
ton to the division in which they are en-
ployed But whether an application 30
filed is properly referable to the division
where the applicant is employed as an
examiner makes difference in the con-
clUsion 1 reach Whether the former de-
cisiCn was right depends upon the proper
construction of section $50 of the Revised
Statutes, hereinbefore quoted. The ques-
ton is. whether the spirit and intent of
the statute is intended to reach and EN-
brace only an interest in a patent that has
actually been issued.
Il do not SO conStrue the statute. To
so construe it would be to defeat in a large
measure, if not wholly. the obvious purpose
ana intention of Congress, which was, and
is. to prevent persons employed in the pat
ent office from improperly utilizing their
knowledge of the inventions of others. ac-
quired as a result of their official connec-
ton with the patent office and from IT'LL
izing the opportunities they have. as a
result of their employment, to become ri
walls or competitors of inventors whose ap-
plications they have before them for ex-
animation. or in any wise to take undue
advantage of the knowledge they have
acquired of pending applications in their
capacity of examiners or officials.
Further Reason Advanced.
1.-The reason of the statute which prohibits
an officer or an employee of the patent Of
flee from acquiring. either directly in
directly, any interest in a patent issued
would seem, by fair intendment, to pro-
hibit him from filing an application for the
interest he is not permitted to acquire. The
application is the evidence of inchoate
right to a patent-and the ownership be-
comes complete wien the patent is issued.
Any other construction would obviously
permit, If, in fact, ii did not encourage the
very mischief the statute was clearly in
tended tc prevent, as examiners might make
come slight improvement modiiica ton
in inventions covered by applica lions pend
ing before them for examination and file
an application, change or modify it from
time to time, negotiate the sale of the
whole or part interest In the invention or
applica ton, or the patent to be predicated
and take out patent whenever such course
seemed to offer greater pecuniary advan-
tagas than to remain in the office; and thus
the office might become freighted with ap-
plications filed by examiners or other en-
ployes, in contraveEtion of the spirit if not
of the strict letter of the statute, and thus
become a prolific source of scandal
In my Judgment the construct ton give
to the statute is necessary in order to give
force and effect to the obvious intent and
purpose of the law, and to avoid scandals
which would be Injurious IL not ruinous to
the integrity of the office. Nor does this
construction do violence to the letter while
enforcing the spirit of the statute. 1 adhere
TO the former ruling and direct that the
application under consideration be stricken
from the files and the fee returned to the
applicant He may, of course, file his ap-
plication now that he has severed his con-
nection with the office, but 1t was originally
MED in violation of the statute, and cam
not be recognized in pursuance Of such fill
ing as a pending application"