To the Editor of the Scientific American:
It is with considerable surprise that the writer has just perused the editorial article in your issue of March the 28th - "Patent Office Examinations of Novelty of Inventions". It seems to me that the ground taken therein is diametrically opposed to the views heretofore promulgated in your journal on this subject, and no less so to the interests of American inventors; and it appears difficult to understand why the abolition of examinations for novelty by the Patent Office should be recommended in face of the fact that the acknowledged small fees now exacted from inventors are sufficient to provide a much greater force of examiners than are now employed on that work. If inventors were asking the government to appropriate money for this purpose, the case would be quite different; although it may be shown, I think, that Congress would be fully justified in disposing of no inconsiderable portion of the public money in this way, should it ever become necessary.
Recognizing the fact that the patent records of all countries, as well as cognate publications, are rapidly on the increase - and particularly in this country - making an examination for novelty a continuously increasing task, and that the time must come when such an examination cannot be made at all conclusively without a vastly increased amount of labor, from the very magnitude of the operation, it is nevertheless true that this difficulty menaces the inventor to a much greater extent, if imposed upon him to make, than it can ever possibly do an institution like the Patent Office.
Dividing and subdividing patent subjects into classes and sub-classes, and systematizing examinations to the extent it may be made to reach in the Patent Office, may, for a very long time to come, place this matter within the possibility of a reasonably good and conclusive search being made without additional cost to the inventor, provided what he now pays is all devoted to the furtherance of the Patent Office business. If, however, we hereafter make no examinations for novelty, an inventor is obliged to either make such a search for himself - with all the disadvantages of unfamiliarity with the best methods, inaccessibility to records, and incurring immensely more work than is required of the Patent Office examiner, who has everything pertaining thereto at his fingers' ends - or blindly pay his fees and take his patent under the impression that he is the first inventor, and run every risk of being beaten in the courts should any one essay to contest his claims; the probabilities of his being so beaten increasing in proportion as the number of inventions increase.
The inventor pays to have this work done for him at the Patent Office in the only feasible way it can be thoroughly done; and the average inventor would, or should, be willing to have the present fees very largely increased, if necessary, rather than have the examinations for novelty abolished at the Patent Office; for, in the event of their abolition, it would cost him immensely more money to secure himself, as before the courts, by his own unaided and best attainable methods.
The inventor now, however, pays to the Patent Office, as you well know, a good deal more money every year than the present cost of examinations, including of course all other Patent Office business; seeing a part of what he pays yearly covered into the Treasury as surplus, while his application is unreasonably delayed for the lack of examiner force in the Patent Office.
Let the government first apply all the moneys received at the Patent Office to its legitimate purpose, including the making of these examinations, and, when this proves insufficient, you may depend that every inventor will cheerfully consent to the increase of fees, sufficient to insure the continuance of thorough examinations for novelty, rather than attempt to do this work himself or take the chances of his having reinvented some old device (which it is very well known occurs over and over again every day), and being beaten upon the very first contest in the courts, after, perhaps, investing large amounts of money, time, and anxiety over something which he thus discovers was invented, perhaps, before he was born.
For an inventor to obtain a patent worth having, and one that is not more likely to be a source of expenditure than income to him, if contested, it goes without saying that examination for novelty must be made either by himself or some competent person or persons for him; and it is strictly proper and just that the inventor should pay for it; and it is too self-evident a proposition to admit of argument that the organized and systematized methods of the Patent Office can do it at a tithe of the expense which would be incurred in doing it in any other way; in point of fact, it would be impossible to do it by any other means so effectually or so well within any reasonable amount of cost.
Your summing up of the case should, instead of the way you put it, read: The Commissioner of Patents attempts to perform for two-thirds the sum paid as fees by inventors what he is paid three-thirds to accomplish, so that one-third of it may go to swell the surplus of the United States Treasury, and finds it an impracticable task to ascertain the novelty of an invention in a reasonable time for such a sum. To perform it, however imperfectly, he feels authorized to delay the granting; of patents, sometimes for several months, simply because Congress will not allow him to apply the moneys paid by inventors to their legitimate purpose.
I have had, for several years, always more or less applications on file at the Patent Office for inventions in my particular line, and now have several pending; and probably there are few, if any, who have suffered more from the great delays lately obtaining at that institution than myself, particularly in connection with taking out foreign patents for the same inventions, and so timing the issue of them here and abroad as not to prejudice either one. But great as the annoyance and cost have been in consequence of these delays, I would infinitely prefer that it were ten times as great, rather than see the examinations for novelty abolished by the United States Patent Office; and, so far as I know and believe, in this preference I most completely voice that of inventors in general.
John T. Hawkins.
Taunton, Mass., March 28th, 1885.
The writer of the above communication gives a very clear statement of our original premises. He sees as we do the difficulty, every year on the increase, of making satisfactory searches in the matter of novelty. But his deductions vary from ours. To us it appears on its face an impossibility for satisfactory searches to be made in the case of every individual patent by the Patent Office. The examinations have repeatedly been proved valueless. We know by our own and others' experience that the searches as at present conducted are of comparatively little accuracy. Patents are declared to be anticipated continually by our courts. The awarding of a patent in fact weighs for nothing in a judge's mind as proving its originality. The Commissioner of Patents is really exhausting the energies of the Office employees over a multitude of searches that have no standing whatever in court, and that no lawyer would accept as any guarantee of novelty of invention. If every inventor would search the records for his own benefit, we should then have twenty thousand examiners instead of the present small number. This would be something. But if it be advanced that the inventor is not a competent searcher, then he can engage an expert to do it for him.
Every day, searches of equal value to the Patent Office ones are executed for but a fraction of the government fees on granting a patent.
Our correspondent speaks of an evil that he thinks would be incidental to the system we proposed in our article criticised by him, namely, that were the Patent Office to make no search an inventor would "run every risk of being beaten in the courts should any one essay to contest his claims." The fact is that in spite of the Office examination for novelty this risk always has to be encountered, and forms a criterion by which to judge of the exact value of that examination. Furthermore, we take decided issue with our correspondent when he says that the present is the only feasible way of executing these searches thoroughly. They are not so executed as a matter of fact, and could be done better and cheaper by private individuals, experts, or lawyers, engaged for the purpose by inventors.
We agree that all money received by the Patent Office should be applied to its legitimate end. It seems to us a great injustice to make one generation of patentees accumulate money in the Treasury for the benefit of some coming generation. Application of the whole of each year's fees to the expediting of that year's business would be simple justice. But we do not lose sight of our main point, that were the inventor unable to make a satisfactory search, it could be done for him by private parties better and cheaper than it is now done in the Office.
We are very glad to have the question so intelligently discussed as by our correspondent, and we feel that it is one well worthy of consideration. The future will, we are sure, bring about some change, by which inventors will be induced to bestow more personal care on their patents, at least to the extent of securing searches for novelty to be made by their own attorneys, and even at a little additional expense to abandon any blind dependence on the Patent Office as a prover of novelty. - Ed. Sc. Am.