Not Awakening Slumbering Patents

by Steve Reiss (stevenreiss@scienbizippc.com)

From the Congressional Record:

I agree that the owner of a patent is as much entitled to his property in it as the owner of anything else, but he is entitled to no higher consideration than the owner of any other kind of property.

It is not the patentee who will suffer if this amendment shall pass, if anybody suffers. It is not the patentee who brings these suits; but it is usually a combination of agents and lawyers who find slumbering in your Patent Office some forgotten and worthless patent which, under the advantage given them by your present system, they can use as a means of robbing the people—it is they that bring the suit under some arrangements by which the profits are divided.

Now, sir, while I respect the genius and the talent of the inventor and will protect him as far as I can, I submit that it does not require any more talent or genius to buy or steal a patent than it does to buy or steal a horse, and therefore to the purchaser I would accord no more powers than I would to the man who owns any other kind of property by purchase. Possibly there may be some slight inconvenience growing out of this amendment to some of the patentees, but the inconveniences as I stated a moment ago do not weigh at all as against the great benefits that the people would receive by the protection which it would afford.

Senator William Windom (R-MN) speaking in favor of an amendment to the US patent laws, to add a new section to the Revised Statues (now United States Code), saying:

In any suit brought in any court now having jurisdiction in patent cases for an alleged infringement of any patented article, device, process, invention, or discovery, where it shall appear that the defendant purchased the same from the manufacturer thereof, or from a person or firm engaged in the open sale or practical application thereof, or that he manufactured or applied the same for and to his own use, and not for sale nor for making a product, for sale, if the plaintiff shall recover a judgment for merely nominal damages, the court shall adjudge that he pay all the costs of the suit; and if the plaintiff shall not recover the sum of $50 or over, the court shall adjudge him to pay his own costs, unless it shall also appear that the defendant, at the time of such purchase, manufacture, or practical application, had knowledge or actual notice of the existence of such patent, and that such purchase, manufacture, or practical application was an infringement of the rights of the plaintiff.

While complexly worded, Windom told the senate that under this new section:

The patentee has his remedy, if this amendment shall pass, against the maker and the vender of the patented articles, and he has also his remedy against the purchaser and user wherever that purchaser or user has notice that the patent has been infringed. It seems to me that this is a sufficient remedy.

 Congressional Record-Senate, January 20, 1879, p. 569-70.

Thus, to recover from a mere purchaser, actual notice that the purchased product was an infringement would be required.