The Integrity Of The Patent Examining Corps Was Subject To Attack

by Steve Reiss (stevenreiss@scienbizippc.com)


I love the scholastic tidbits that the old journals contain...

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The Journal of the Patent Office Society (now the Journal of the Patent and Trademark Office Society) is a patent and trademark law journal published by the Patent Office Society, which was founded in 1917 by patent office professionals. In its earliest issues, most of the articles were written by examiners or examiners-in-chief, explaining patent law or procedures.


During this early time, the Office suffered attrition on grounds that it faced before and will continue to face in the future. This problem is the wide discrepancy in pay between private sector patent attorneys/agents and government/public sector patent attorneys/examiners.

Every month, the Journal had a listing of recently resigned examiners that leaving for higher paying jobs in the private sector. The Journal cited these listings to support its opinion that morale at the office was low, examiner pay needed to be raised, and the office needed to be an independent agency so that the Secretary of the Interior (the Office was not yet under the Secretary of Commerce) could not meddle with Patent Office or patent law issues, which the SoI had no real experience. In other words, the Journal was merely publicizing the challenges the Patent Office was facing then- and would continue facing, pretty much forever.

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During this time, the Office also suffered attrition from the extraordinary number of resignations due to World War I and the sad fact that many of those examiner's that left to fight the war, died during their war service.

And then, in May, 1920, a strange resignation was noted and had a very strange tone. The Journal reported:

TEXT: Miss Grace MacFarland resigned April 21st and the announcement of her marriage appeared shortly thereafter. It thus appears that the integrity of the corps is subject to attack in a new direction which it will be extremely difficult to guard against. Miss MacFarland, or to be more accurate, the former Miss MacFarland, entered the Office as a temporary Fourth Assistant Examiner August 27, 1918; was made permanent assistant Dec. 1, 1919, and promoted to Third Assistant Examiner Feb. 23, 1920. She served continuously and very acceptably in Div. 43.

2 JOURNAL OF THE PATENT OFFICE SOCIETY 482 (May 1920)(emphasis added).

What the editors of the Journal meant by "the integrity of the corps is subject to attack" by the announcement of Examiner MacFarland's marriage is only subject to guessing. To me, at least, the phrase "Miss MacFarland, or to be more accurate, the former Miss MacFarland" seems snarky and intended, in combination with statement that the corps being "subject to attack," to be a jab at women examiners, who in the editor's view, were likely to resign the positions and become stay at home moms after marriage, taking their patent experience home with them. This is the 1902's after-all.

My guess as to what the editors of the Journal meant is not based on me having any particular bias in favor of diversity political correctness, nor an over-sensitivity to so-called "social justice" issues.

But, when you are reading what is supposedly an objective and respected legal journal, and read a statement like this, in the journal section entitled "OF GENERAL AND PERSONAL INTEREST", the snarky tone just hits me in the head and make me go "hmm."

Finally, having read dozens of these resignation statements from 1919-1920, they typically tend to either not editorialize on the resigning examiner's performance while at the office or take a highly positively tone. For example, in the very same the issue discussing Grace's marriage and virtually just below her announcement, the Journal says:

 Mr. B. J. Craig, 2nd assistant examiner, has resigned to go with Bates & Macklin, patent attorneys... He served in Divs. 40 and 44, always doing exceptionally good work.

Mr. Elmer J. Gray, a temporary 4th Assistant Examiner, has resigned to enter the office of Mr. C. A. Weed, patent attorney, of New York City. While Mr. Gray has been m the corps only since Sept. 29, 1919, he has developed marked aptitude for the work and his departure is a real loss to the Office.

Therefore, the Journal's "compliment" to Miss MacFarland that she performed "very acceptably" at the office is not consistent with the editor's typical tone.

During this era, there was only one other time that the Journal pointed out a marriage in the corps. In the June, 1920 issue, the editors said:

Here, the editors are clearly trying to make a patent joke, with the listing's reference to good combinations and not aggregations. See MPEP 2173.05(k) ("Aggregation").

What do you think? Am I just reading too much into this?
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A Patent Office "Educational Bureau" with Field Agents?

by Steve Reiss (stevenreiss@scienbizippc.com)

If we as individuals and as a nation are to be industrially and economically prepared and efficient to meet the necessities of war as well as to compete for industrial supremacy in times of peace, it is essential that our condition of industrial progress and preparedness be based upon certain and secure foundations.

James Lightfoot (US patent examiner), "A Proposed Department of Invention and Discovery", 1 J. Patent Office Society 116, 116 (1918).

The following are excerpts from Lightfoot's article's proposals on how to reorganize the Patent Office. Lightfoot suggests the creation of several bureaus within an independent Patent Office, including:

• An Executive Bureau
• Bureau of Information and Education
• Bureau of Patents and Publications
• Bureau or Division of Utility
• Bureau of Validity Examinations; and
• Bureau of Priority of Inventions

Page 124-130.
 
The most interesting of these Bureaus is the Bureau of Information and Education. Lightfoot describes it as follows:

This bureau should be equipped with men and full facilities for promoting the dissemination of knowledge of the true meaning and provisions of the Patent System.

Specially is this essential because in its most fundamental sense the Patent System is an industrial educational system and it constitutes one of our most glaring national errors that the public in whose interests the Patent System was established has been kept in ignorance of its true. meaning and intent.

This Educational Bureau should be charged with the duty of establishing a system to instruct the inventing public as to how to prepare to make inventions, how to invent in the interest of the public, and with profit to themselves, what, to invent, how to avoid losses through abandonment or want of knowledge as to how to proceed after conception or reduction to practice to avoid complications, how to obtain patents of value, how to study the prior arts before inventing, how to select competent attorneys, in fact everything connected with making and patenting and marketing inventions just as the Department of Agriculture has, through bulletins, publications and field agents, instructed the farmer in all respects how to prepare to produce crops, how to produce them, how to protect and conserve them when produced and how to market them in the most efficient way.

The incalculable values in time, money and energy that have been wasted in inventing useless things, in reinventing things that have been shown to be old, and the great values in inventions lost to the nation because the inventors have not known how properly to develop them to material form and how to have them properly disclosed and protected in letters patent, clearly indicate the great need of educational work along these lines.

The workmen in the shops and factories, in the laboratories and on the farms know little if anything of their rights or responsibilities in relation to invention, and manufacturers and their employees know little in relation to the same.

This condition has resulted in the grant of many patents to employers for inventions made by employees and has resulted in granting some patents to employees that have been made by employers, all of which patents being thus rendered invalid, have produced complex business conditions.

If it be true, as has been stated, that unscrupulous industrial institutions have pirated inventions in various stages of their development and that an enemy propaganda has been extended even to pirating inventions in the making and before being patented, it is clear that inventors should be taught to protect their inventions in the making and when completed from these enemies and from others who would pirate them.

And if the spirit of inventions is to be encouraged, fostered and promoted in the national interests, it is quite obvious that this Educational Bureau should seek to promote the instruction and study in our educational institutions of the philosophy of invention and the true meaning and importance of the Patent System. And if the spirit of inventions is to be encouraged, fostered and promoted in the national interests, it is quite obvious that this Educational Bureau should seek to promote the instruction and study in our educational institutions of the philosophy of invention and the true meaning and importance of the Patent System.

Included in this Educational Bureau may be a corps of Patent Field Agents- just as there are Agricultural, Land and Pension Field Agents, who hi cooperation with inventors, attorneys, manufacturers and capitalists, should seek to aid, in every possible way, the interests of inventors and manufacturers, because in this way the public interests will best be subserved.

The Division of Information of this bureau should be a well organized institution of well qualified experts who should furnish full and accurate information to solicitors, inventors and industrial institutions, as to fields of validity search, and as to all matters in, relation to procedure and practices involved in the activities of the department.

 Pages 124-126.

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Examiner Lightfoot's proposals were reported to the engineering and technical public in a "Special Correspondence", in American Machinist.magazine, entitled "Proposed Increased Efficiency in Patent Office", 50 American Machinist 1044-45 (1919). The magazine expressed no opinion on Lightfoot's proposal.

Filing Applications For Absolutely Unpatenable Inventions??

by Steve Reiss (stevenreiss@scienbizippc.com)

Prior to filing a patent application, a patent search is sometimes (but by no means most of the times) commissioned by the inventor. These searches can uncover prior art references that evince potential unpatentability of the invention. The strength of the argument for unpatentability will vary with the quality of the references and often weed out some inventors from filing a patent application. 

However, while many inventors will decide not to continue; sometimes, the client may either not be of the opinion that the invention is at all unpatentable or want to file the application anyway. An inventor may want to file anyway, so they can mark their product "patent pending" to scare away potential competitors. Inventors may know, or be advised by their patent attorney, that between the non-provisional application sitting at the USPTO for a year or so waiting to be examined and then the prosecution dragged out for as long as the client is willing to fund it; this will indeed scare away some potential market entrants. Furthermore, as long as the client decides not to foreign file, non-publication can be requested. The public will have no clue as to the client's intentions. Filing as a provisional first, provides yet another year of patent pending without public disclosure of what is actually pending.

Is it ethical for a patent attorney to carry out this strategy for the inventor?

Under the current USPTO ethical code and 37 C.F.R. 11.18(b)(2), the answer would depend on whether such strategy would be for carrying out an "improper purpose" or to "cause unnecessary delay" and how aggressive (or conservative) the inventor's patent attorney is.

In 1897, well before enactment of the current (or actually any extensive) USPTO ethical code, and probably still strong guidance for the modern patent professional, was In re John Wedderburn and John Wedderburn & Co., 81 O. G., 159, Decisions Of The Commissioner Of Patents, p. 140 (1897), affirmed United States, ex rel. Wedderburn, v. Bliss, Secretary of the Interior, 81 O. G., 1783 (DC Supreme Court 1897), Decisions Of The Commissioner Of Patents. Wedderburn, is one of the earliest Patent Office disbarment decisions. While John Wedderburn and his company's actions spanned all manners of extreme wrongdoings, one of those company actions involved knowingly filing patent applications for unpatentable inventions. 

Although this aspect of the disbarment decision -again, I cannot emphasize enough at the moment Wedderburn's wide range of wrongdoings and evil practices- strongly relied upon client deception by Wedderburn, when justifying disbarment, the decision does provide general guidance for patent practioners on filing patent applications with the USPTO for inventions that have strong or absolute evidence of unpatentability.

Benjamin Butterworth, then-Commissioner of Patents (1896-98; his death), was no mere naive political appointee or patronage appointment; he knew about the: Patent Office, the patent system, patent policy and risks to the public, whether the risks were to society in general or patent applicants. After all, he was a former chairman of the U.S. House of Representative's Committee on Patents (1889-91). Butterworth, in his decision, wrote (p. 750) (emphasis added):

It is perhaps an open question whether an attorney may properly prepare and file an application for a patent for an invention which he believes to be unpatentable.

If the ground of his belief is such as amounts to an absolute certainty—as, for instance, in the Whitman case, in which the reference, patent to Cheney, No. 116,553, found by the respondents' search and reported to the applicant in the usual so-called "unfavorable report" letter, shows absolutely every feature of Whitman's invention—the attorney, in filing such an application, is false not only to his client, but is false in his duty toward this Office. That the attorney has a duty toward this Office as well as toward his client cannot be questioned. He is to assist the Patent Office in doing justice toward his client and justice toward the public. He cannot be a party to an attempt to secure a patent for what he knows to be old, an attempt to take from the public what has become public property, any more than he can permit the Office to refuse to his client the protection to which that client is under the law entitled.

There may be circumstances under which an attorney, even though he may believe—such belief not amounting to an absolute certainty—an invention to be unpatentable, may properly file an application for patent therefor, but this should never be done without the express direction of the client, given after it has been stated to him that the invention is believed to be unpatentable, and the reasons why it is believed unpatentable have been fully and clearly laid before him by the attorney. To deceive the client as to facts which negative patent ability, or by failure to clearly and definitely state the facts to allow the client to deceive himself as to such facts, does not show that "highest good faith". which is recognized by the respondents as "necessary and required" between attorney and client. It is nothing less than gross misconduct. 

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A biography of Wedderburn can be found here. Some extracts of highlights of the biography are:

• Of his early life and education, little is known other than by some means he obtained a license to practice law.
• Obviously a very canny lawyer and one looking “to make a fast buck,” he established the John Wedderburn Company with the apparent intent of using the Patent Office as his personal cash drawer.  By virtue of conning newspapers all across the country into running his ads at discount prices in exchange for “stock” in John Wedderburn & Co., he was able to tout his services, ... to a nationwide audience.
•  After collecting ... additional $20 to process the patent application, which in the vast majority of cases he never obtained, if the client seemed to be “a vein easily mined,” Wedderburn sent a letter informing the inventor as follows:  “We take pleasure in informing you that the Board of Awards has selected your invention for special merit and our name will appear on our Roll of Honor for last month for the Wedderburn prize.”   <Of course, there was no such award/prize/Board.

The Non-Existent Wedderburn Prize

• After disbarment, Wedderburn was 33 years old and out of work. "Despite being disbarred and disgraced", Wedderburn, decided to enter the DC liquor business, setting up John Wedderburn’s Pure Wines & Liquors at his old F Street address. By 1915, political connections may be the reason that in Wedderburn’s ability to practice patent law was restored.

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On Why Some Leave the Patent Office (Part II)

by Steve Reiss (stevenreiss@scienbizippc.com)

As indicating conditions of work and salary outside the Office compared with Office positions, some excerpts from letters returned with the questionnaires sent out are here printed, each quotation being from a different author:

 "I left the former position because the pay was inadequate to support me properly, inconsistent with the dignity and responsibility of the work and unworthy of my training and education."

 "More encouragement to effort; more direct and proportion ate return from service."

"Patent Office salaries are too low and advancement and increase in salary too slow in comparison with the same line of work outside."

"I consider the need for higher salaries in the Patent Office to be imperative. My sole reason for leaving was to secure increased compensation."

"Stenographers in my office without even High School education are now getting more than Assistant Examiners in the Patent Office who are technically trained and college graduates."

"I left the Patent Office because the opportunity to advance in salary was very limited and further the pay was very moderate considering the character of training and the character of work required of patent examiners."

"Having been in the Patent Office almost eight years, I realize its needs keenly. It should have a modern building with additional room, a substantial increase of the examining corps, and higher salaries. If Congress could be made to understand the enormous waste and expense due to the delay in acting upon applications and the granting of invalid patents, I believe that it would be more liberal in its treatment of the Patent Office."

"As to the increase in salaries, a yearly increase in the salary of each Examiner, say for ten years, should be made if his services are satisfactory, or conditional on the passing of examination, so that he would not have to wait on death or resignation for promotion. The object should be to prevent
resignations from the Patent Office by making the salaries more nearly equal to the salaries paid for similar work on the outside. A new man is not of much value and the entrance salary might be retained at its present figure, but should be yearly increased up to the maximum."

"There should be additional examining divisions created and the force of principal examiners and assistants increased. The pay of the examiners and executives in the Patent Office should be increased at least thirty per cent; this is particularly true of the Commissioner and Assistant Commissioners whose functions and responsibilities are in many respects somewhat analogous to those of a Federal judge, and I know of no reason why the Commissioner should not receive at least the same salary as a Federal judge and the Assistant Commissioners should receive nearly as much. As regards my reason for leaving the Department. I left It on account of inadequate compensation, as I can make, in the practice of my profession, many times any amount that I would have ever been paid had I stayed in the Department."

"The writer would say that his only reasons for leaving the Patent Office were the matter of salary and the unsatisfactory working conditions then in force in the Patent Office. As to the first—the writer had reached a point where but one further promotion was at all probable, which promotion would have meant an increase of three-hundred dollars a year. As the writer was assured in leaving the Office of receiving a much greater increase than this immediately, with the substantial certainty of further increases in accordance with his value to the company which made the offer, he did not feel that the Patent Office offered sufficient inducement for him to devote the remainder of his life in such work. The writer does not believe that any business concern having any regard for its reputation among its customers and patrons, would think for a moment that when its production increased greatly from year to year that its original force of operatives should keep up the production, regardless of the quality of work produced, and it would seem that the Patent Office, which is a public servant and the services of which are paid for by the Inventor, should have as much regard for its reputation, so far as the quality of its work is concerned, as any private enterprise, and should increase its force in accordance with its output."

Journal of Patent Office Society, V. II, No. 3, pp, 129-34 (1919).

On Why Some Leave the Patent Office? (Part I)

by Steve Reiss (stevenreiss@scienbizippc.com)

As indicating conditions of work and salary outside the Office compared with Office positions, some excerpts from letters returned with the questionnaires sent out are here printed, each quotation being from a different author:

"Working conditions as to office accommodations, etc., far superior in present position. Hours average a little longer now, but 'are entirely at my discretion. More initiative and more responsibility required out of the government service."

"Personally I feel I was entitled to about $1000 more outside the Patent Office than inside, but actually received more than $2000 more outside. Salaries of 1st Assistants in Patent Office should be raised about $1000 in accordance with this comparison."

"Hours of work practically the same as in Patent Office-More variety to present work. Less crowded conditions than in the Patent Office. Less emphasis on quantity as compared with quality of work."

"No chance for advancement in the Patent Office worth considering. Unlimited chance in present position."

"Present work far more enjoyable, far less confining and pay more than double."

"Opportunity for advancement and to make money commensurate with services rendered incomparably greater out of Patent Office than in."

"There is absolutely no incentive for a technically trained man (especially under present conditions) to enter the Patent Office with any intention of making that his life's work" .

"As one engaged in important development work I feel that this matter of maintaining and improving the efficiency and necessarily the personnel of the Patent Office, can not too strongly be brought to the attention of Congress."

"The conditions in that office today are deplorable and to put it mildly, it Is a disgrace to the Government that one of the vital elements in the success and progress of this nation, has been so lamentably neglected."

"Without meaning to be critical, I may state that the present position of Examiner or Assistant Examiner in the Patent Office is practically unbearable. The amount of work on hand is enormous and increasing. The force is inadequate and should be doubled. For the past two years I have worked on office work from 12 to 14 hours a day on an average without being able to keep the work of my division from falling behind. With far less work I am confident of a considerably larger income outside of the office."

"We who have to practice before the Patent Office consider it very important that the Examining Corps be increased in numbers and that they get much higher salaries."

"Outside work requires constructive ability whereas ability to intelligently criticize the work of others is the prime requisite in Patent Examiners' work."

"Greater opportunity at present for the exercise of personal initiative and greater recognition of personal achievement and greater opportunity for advancement."

"In order to retain the kind of examiners you should have in the Examining Corps, the salaries in my judgment should not be less than from $2000 to $4000 per year for Assistant Examiners and $5000 per year for Principal Examiners."

"I have found that the corporations by which I have been employed provide adequate office space and sufficient clerks—a condition not always true in the Patent Office."

"Absolutely no comparison. Due to red tape and lack of incentive in Government service, would not consider position on the examining corps if it paid $15,000 a year."

"Usually no time limit as to cases acted upon, accuracy and thoroughness being preferred to speed, a more satisfactory basis than the Patent Office mandate—'Get off more work'."

"I naturally put in much longer hours now, but the stimulus of direct personal contact with live business issues growing out of patents, as distinguished from abstract technical problems, more than offsets this, making the work more satisfactory in every way."

"Present position requires more initiative and the need for a quick judgment is more likely to arise. In general the qualifications required are the same."

"My reason for resigning was that the present salaries of examiners in the Patent Office are ridiculously low compared with outside remuneration or the salaries for other government positions of similar character."

"Work harder outside. More responsibility."

"Nature of work more responsible and Infinitely more opportunity to exert personal initiative would not return to former duties for $8000 per year."

"My primary reason for leaving the office was that the increased cost of living had so far outstripped the salary increases that I was compelled to lower the standard of living of both my family and myself from day to day. What the office obviously needs are: first, an increase of salary, and 2nd, an increase in force."


"I may say, however, that .1 earned a good deal more money in the practice of my profession the first year after leaving the Patent Office than I received at any time while there and my net income every year since has increased substantially. I do not know any walk of life in which men are so poorly paid for the same degree of learning and skill as are the Patent Office Examiners. Many of them are quite as well educated and quite as able as men in private practice who are making from $25,000 to $50.000 a year. Many of them are quite the equal in character, education and ability of the average men on the Federal Bench, who are underpaid when their salaries are compared with those paid to State judges, particularly in large cities."

"I am pleased to cooperate with you to the limit of my ability, as I believe that there is no more crying need in the technical development of this country than the increase in the pay of the examiners. My reasons for leaving the office were the very obvious ones of obtaining enough money to live on. Under the scale of pay as it existed in 1915, I felt that the compensation of the examiners was so inadequate as to make service in the examining corps permissible only in the light of a schooling, for which heavy tuition is paid in the form of the acceptance of an in adequate salary. As a consequence, it is necessarily, I believe, the endeavor of those who enter to graduate from the course as quickly as possible in order to get out into the world to make a living. This situation can have no other effect upon the Patent Office than to confine its personnel to three classes of individuals; first, inexperienced young men who feel the advantages to be obtained by attending this school; second, incompetent old men who found themselves unable to graduate from the course; and third, a very small minority of conscientious, patriotic men who. for one peculiar reason or another, either of sense of patriotic duty, of intense interest in the work, or of personal association, are willing to remain in the Office in spite of the inadequate salary. It has been a source of great wonder to me that, under the circumstances, the Office was able to maintain as high a standard of personnel as it has. I feel the more free to speak as I do by reason of the fact that I have withdrawn myself from the patent field, and as a consequence I can not be accused of having any bias based upon personal interest."

"I remained in the Patent Office three years in which length of time I considered that I had obtained about all the Office could teach me and therefore, upon receiving a good offer I left the Patent Office and have continuously advanced since that time to the present head of this firm. My opinion is, and always has been, that the Patent Office force is entirely too small in numbers and has entirely inadequate salaries. For this reason it has always been well known to me, as well as to any patent attorneys practicing in the Courts, that the searches made by the Patent Office can not be complete because the examiners cannot devote the proper amount of time to each individual case on account of the smallness of the force. For this reason there is hardly a patent comes into Court as to which new prior art is not adduced in the search made by defendant's attorneys. This is, in my opinion, due solely to the small amount of time which can be put on each case and in no way to the ability of the examining force, whose standard has always been high. I think manufacturers are realizing more and more fully the needs and requirements of the Patent Office, and its great value, which would and should be greatly increased by enlarging the force and increasing the salaries."

"On leaving the Patent Office I became associated with my father and cousin who were then engaged in patent practice, and in about a year I became a member of the firm, so that there were no such definite salary arrangements as make it possible to give comparative figures. I always received several times as much as I had been getting at the Patent Office and without looking up the matter definitely, I should say that after the first year I was receiving over $5000 a year."

"About my own case, I may say that I regretted sincerely leaving Washington and the Patent Office, due to the associations I have formed, but I realized that it would take me a very long time indeed to get the enticing salary that was offered me here. Had I been reasonably certain of getting an increase every year, say of $200, I doubt very much whether I should have left when I did. I think the only way an efficient force can be retained is to provide increases every year for the efficient ones up to a limit, irrespective of the number of vacancies in the Office."

Journal of Patent Office Society, V. II, No. 3, pp, 129-34 (1919).