The American Association of Patent Judges
The American Association of Patent Judges

BOARD HISTORY

OVERVIEW (2018)

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Early Years

November 11, 1784

James Madison drafts and introduces a “Bill for Granting James Rumsey a Patent for Ship Construction” to the Virginia General Assembly. A similar bill is introduced in Annapolis.  Both pass at the urging of General Washington.

“Be it therefore enacted that the said James Rumsey his heirs, Executors and Assigns shall have the sole and exclusive right and Privilege of constructing and navigating Boats upon his model in each & every River, Creek, Bay, Inlet or Harbour within this Commonwealth for and during the said term of ten years, to be computed from the first day of January one thousand seven hundred and eighty five. If any person, other than the said James Rumsey his heirs, Executors or Assigns, shall during the term aforesaid either directly or indirectly, construct navigate, employ or use any Boat or Boats upon the model of that invented by the said James Rumsey or upon the model of any future improvement which the said Rumsey may make thereon, he or they for every Boat so constructed, navigated, employed or used, shall forfeit and pay for every such offence the sum of ⟨five hundred pounds⟩ to be recovered with costs by action of debt, to be founded on this Act, in any Court of Record ⟨one half⟩ to the use of the party who will sue for the same⟨, and the other half to the use of the said James Rumsey⟩.

Provided always that the exclusive right and privilege hereby granted may, at any time during the said term of ten years, be abolished by the Legislature upon paying to the said James Rumsey his heirs, Executors or Assigns the sum of ten thousand Pounds current money in gold or silver ⟨of Virginia⟩.”

a) “Bill for Granting James Rumsey a Patent for Ship Construction, [11 November] 1784,” Founders Online, National Archives, LINK. [Original source: The Papers of James Madison, vol. 8, 10 March 1784 – 28 March 1786, ed. Robert A. Rutland and William M. E. Rachal. Chicago: The University of Chicago Press, 1973, pp. 131–133.]

b) “From James Madison to Thomas Jefferson, 9 January 1785,” Founders Online, National Archives, LINK. [Original source: The Papers of James Madison, vol. 8, 10 March 1784 – 28 March 1786, ed. Robert A. Rutland and William M. E. Rachal. Chicago: The University of Chicago Press, 1973, pp. 222–234.]

May 28, 1787

Charles Pinckney, delegate from South Carolina to the Constitutional Convention, delivers in the course of discussion: “There is also an authority to the National Legislature, permanently to fix the seat of the general Government, to secure to Authors the exclusive right to their Performances and Discoveries, and to establish a Federal University.”

a) Farrand’s Records, Vol. 3, page 122; May 28, 1787. 

b) United States Constitutional Convention & Farrand, M. (1911) The records of the Federal convention of. New Haven, Yale University Press. [Pdf] Retrieved from the Library of Congress, https://www.loc.gov/item/11005506/.

August 18, 1787

During the Federal Convention James Madison declares “[t]he following additional powers proposed to be vested in the Legislature of the United States that Congress be empowered … to encourage, by proper premiums & Provisions, the advancement of useful knowledge and discoveries.”

a) Farrand’s Records, Vol. 2, page 322; August 18, 1787. 

b) United States Constitutional Convention & Farrand, M. (1911) The records of the Federal convention of. New Haven, Yale University Press. [Pdf] Retrieved from the Library of Congress, https://www.loc.gov/item/11005506/.

January 23, 1788

In Federalist 43,  James Madison explains that “[t]he utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases…”

Yale Law School, Lillian Goldman Library,  127 Wall Street, New Haven, CT 06511; The Avalon Project (2008): The Federalist Papers: No. 43 (LINK; accessed 2024-02-26)

June 21, 1788

The Constitution of the United States of America is effective upon New Hampshire’s ratification.

The Constitution of the United States of America establishes the official framework for governing the Nation.

Article II, Section 8, clause 8 of the U.S. Constitution gives power to Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (known as the Intellectual Property Clause).

The U.S. Constitution is included in the “America’s Founding Documents” collection at the National Archives website. LINK.

Bracha, O. (2008), ‘Commentary on the Intellectual Property Constitutional Clause 1789′, in Primary Sources on Copyright (1450-1900), eds L. Bently & M. Kretschmer, www.copyrighthistory.org (browse by “Commentaries” then by “Legislation” then by “U” and look for “U.S. Constitutional Copyright Clause 1789” and finally the link “1789 * : “The Constitutional Copyright Clause”).

March 4, 1789

The Federal Government of the United States of America begins operation.

Jim Martin of the Law Library of Congress tells the story of the Continental Congress ajourning sine die on this day, thereby activiting the Compromise of 1790. His post can be found on the blog page of the Law Library. LINK

April 30, 1789

George Washington is inaugurated as the first President of the United States. His administration lasts until March 4, 1797. 

Augusst 28, 1789

Thomas Jefferson writes (from Paris) to James Madison suggesting adding a patent term to the Bill of Rights.

I must now say a word on the declaration of rights you have been so good as to send me. I like it as far as it goes; but I should have been for going further. For instance the following alterations and additions would have pleased me. … Art. 9. Monopolies may be allowed to persons for their own productions in literature and their own inventions in the arts for a term not exceeding —— years but for no longer term and no other purpose.
Go to the Founders Online site of the National Archives and search for “Jefferson” and then sort alphabetically and scroll to the Aug. 28, 1789 entry (entry #4100); LINK.

September 18, 1789

William Hoy and James Rumsey petition Congress to secure the exclusive right to their inventions.

Journal of the House of Representatives of the United States, 1789-1793

FRIDAY, SEPTEMBER 18, 1789

A petition of William Hoy was presented to the House, and read, setting forth that he has discovered an infallible cure for the bite of a mad dog, and praying that an adequate compensation may be made him for his labor and assiduity in the discovery, which, in that case, he will make public.

Also, a petition of James Rumsey, praying that an exclusive privilege may be granted him for constructing sundry engines, devices, and improvements, which he has discovered and invented, for the advancement of labor and useful works, agreeable to the descriptions and models thereof, accompanying his petition.

Ordered, That the said petitions do lie on the table.

Journal of the House of Representatives of the United States, 1789-1793 (Friday, September 18, 1789).  LINK

September 24, 1789

President Washington signs into law the (first) Judiciary Act of 1789, which establishes the federal court system.

a) National Archives (LINK).
b) Ballotpedia (LINK).

a) Duffy, John F., “The Festo Decision and the Return of the Supreme Court to the Bar of Patents” (2002). 1 Supreme Court Review 273-342 (2002); Faculty Publications. 850.  LINK  Copyright c 2002 by the authors. The William and Mary Law School Scholarship Repository.

b) For a detailed study of the Supreme Court decisions during the time the Justices were “riding circuit” go to the Federal Judicial Center website. LINK

c) See also “The Role of Circuit Courts in the Formation of United Sates Law in the Early Republic – Following Supreme Court Justices Washington, Livingston, Story and Thompson,” Hart Publishing, Oxford and Portland, Oregon, 2018, by Hon. David Lynch (retired from the UK Circuit Bench on the South Eastern Circuit on 31 January 2005).

September 24, 1789

President Washington nominates John Jay as the first Chief Justice of the U.S. Supreme Court. Jay would be confirmed on September 28 and begin his tenure on October 19 (continuing until June 29, 1795).

January 8, 1790

George Washington delivers the First Annual Message to a joint session of Congress, encouraging Congress to consider the “advancement of Agriculture, Commerce and Manufactures by all proper means.”

“The advancement of Agriculture, Commerce and Manufactures by all proper means, will not I trust need recommendation. But I cannot forbear intimating to you the expediency of giving effectual encouragement as well to the introduction of new and useful inventions from abroad, as to the exertions of skill and genius in producing them at home; and of facilitating the intercourse between the distant parts of our Country by a due attention to the Post-Office and Post-Roads. 
 
Nor am I less persuaded, that you will agree with me in opinion, that there is nothing which can better deserve your patronage than the promotion of Science and Literature. Knowledge is in every country the surest basis of public happiness. In one in which the measures of Government receive their impression so immediately from the sense of the Community as in ours it is proportionably essential. To the security of a free Constitution it contributes in various ways: By convincing those who are intrusted with the public administration, that every valuable end of Government is best answered by the enlightened confidence of the people: 
 
and by teaching the people themselves to know and to value their own rights;
to discern and provide against invasions of them;
to distinguish between oppression and the necessary exercise of lawful authority;
between burthens proceeding from a disregard to their convenience and those resulting from the inevitable exigencies of Society;
to discriminate the spirit of Liberty from that of licentiousness, cherishing the first, avoiding the last, and uniting a speedy, but temperate vigilance against encroachments, with an inviolable respect to the Laws.
 
Whether this desirable object will be the best promoted by affording aids to seminaries of learning already established, by the institution of a national University, or by any other expedients, will be well worthy of a place in the deliberations of the Legislature.”
a) Mount Vernon (LINK).
b) University of Virginia, Miller Center. (LINK) 

Mount Vernon (LINK).

February 14, 1790

Thomas Jefferson accepts appointment as Secretary of State (confirmed by the Senate on September 26, 1789).

Thomas Jefferson had been living in Paris since August 1784. While there, in June of 1789, he and Marquis de Lafayette drafted the French Declaration of Rights and presented it to the National Assembly on July 11 (approved by Louis XVI on October 5, 1789). The Bastille was stormed on July 14, marking the start of the French Revolution. Jefferson departed Le Havre on September 28 and arrived in Norfolk on November 23, 1789.
 
He leaves Monticello on March 1, 1790, stops in Philadelphia to visit ailing Benjamin Franklin (who passes away on April 17), and arrives in New York on March 22 to start his tenure as Secretary of State.
Monticello (LINK).

April 10, 1790

About one year after the government begins operation, on April 10, 1790, Congress approves “An Act to promote the progress of useful Arts” (The Patent Act of 1790 (1 Stat. 109-112)), thereby establishing the first federal patent system.

[U]pon the petition of any person or persons to the [Patent Board; that is, the] Secretary of State [Thomas Jefferson], the Secretary for the department of war [Henry Knox], and the Attorney General of the United States [Edmund Randolph], setting forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them, if they shall deem the invention or discovery sufficiently useful and important, to cause letters patent to be made out in the name of the United States, to bear teste by the President of the United States … .

For a copy of the bill (H.R. 41; March 10, 1790): see the U.S. Capitol Visitor Center (Exhibitions – Knowledge) – based on Records of the U.S. Senate, National Archives and Records Administration. LINK

P.J. Federico, Operation of the Patent Act of 1790, 18 J. Pat. Off. Soc’y 237, 238 (1936).



The statute provides for a Patent Board to review petitions for patents and issue patents thereon if deemed deserving. Members of the Patent Board are the Secretary of State [Thomas Jefferson], the Secretary for the department of war [Henry Knox], and the Attorney General of the United States [Edmund Randolph].

 

For the drawing of Washington’s first cabinet: see Library of Congress. LINK

A decision of the Patent Board could not be appealed.

April 17, 1790

Benjamin Franklin passes away.

June 27, 1790

Thomas Jefferson writes to Benjamin Vaughn about his experience on the Patent Board

National Archives (LINK).

An act of Congress authorizing the issuing patents for new discoveries has given a spring to invention beyond my conception. Being an instrument in granting the patents, I am acquainted with their discoveries. Many of them indeed are trifling, but there are some of great consequence which have been proved by practice, and others which if they stand the same proof will produce great effect.

July 31, 1790

First patent is granted to Samuel Hopkins.

3 patents are granted in 1790; 33 patents in 1791; 11 in 1792; and, 20 in 1793.

February 7, 1791

Thomas Jefferson drafts a bill to repeal the 1790 Patent Act which would influence aspects of the 1793 Patent Act.

Edward C. Walterscheid, Patents and the Jeffersonian Mythology, 29 J. Marshall L. Rev. 269 (1995). LINK.

December 5, 1791

Alexander Hamilton delivers the “Report on the Subject of Manufactures” to Congress. He recommends a system for providing “premiums” “to induce the prosecution and introduction of useful discoveries, inventions, and improvements” and “not less than three” “Commissioners” to manage it.

Let a certain annual sum, be set apart, and placed under the management of Commissioners, not less than three, to consist of certain Officers of the Government and their Successors in Office.

Let these Commissioners be empowered to apply the fund confided to them—to defray the expences of the emigration of Artists, and Manufacturers in particular branches of extraordinary importance—to induce the prosecution and introduction of useful discoveries, inventions and improvements, by proportionate rewards, judiciously held out and applied—to encourage by premiums both honorable and lucrative the exertions of individuals, And of classes, in relation to the several objects, they are charged with promoting—and to afford such other aids to those objects, as may be generally designated by law.

The Commissioners to render [to the Legislature] an annual account of their transactions and disbursments; and all such sums as shall not have been applied to the purposes of their trust, at the end of every three years, to revert to the Treasury. It may also be enjoined upon them, not to draw out the money, but for the purpose of some specific disbursment.

It may moreover be of use, to authorize them to receive voluntary contributions; making it their duty to apply them to the particular objects for which they may have been made, if any shall have been designated by the donors.

There is reason to believe, that the progress of particular manufactures has been much retarded by the want of skilful workmen. And it often happens that the capitals employed are not equal to the purposes of bringing from abroad workmen of a superior kind. Here, in cases worthy of it, the auxiliary agency of Government would in all probability be useful. There are also valuable workmen, in every branch, who are prevented from emigrating solely by the want of means. Occasional aids to such persons properly administered might be a source of valuable acquisitions to the country.

The propriety of stimulating by rewards, the invention and introduction of useful improvements, is admitted without difficulty. But the success of attempts in this way must evidently depend much on the manner of conducting them. It is probable, that the placing of the dispensation of those rewards under some proper discretionary direction, where they may be accompanied by collateral expedients, will serve to give them the surest efficacy. It seems impracticable to apportion, by general rules, specific compensations for discoveries of unknown and disproportionate utility.

The great use which may be made of a fund of this nature to procure and import foreign improvements is particularly obvious. Among these, the article of machines would form a most important item.

The operation and utility of premiums have been adverted to; together with the advantages which have resulted from their dispensation, under the direction of certain public and private societies. Of this some experience has been had in the instance of the Pennsylvania society, [for the Promotion of Manufactures and useful Arts;] but the funds of that association have been too contracted to produce more than a very small portion of the good to which the principles of it would have led. It may confidently be affirmed that there is scarcely any thing, which has been devised, better calculated to excite a general spirit of improvement than the institutions of this nature. They are truly invaluable.

National Archives (LINK).

March 1792

A memorandum by Henry Remsen, Jr., Clerk, is delivered to Secretary of State Jefferson summarizing the affairs of the “Board of Arts.”

National Archives (LINK).

Joseph Barnes (James Rumsey’s attorney and brother-in-law) publishes “Treatise on the Justice, Policy, and Utility of Establishing an Effectual System of Promoting the Progress of Useful Arts, By Assuring Property in the Products of Genius.”

Barnes, Joseph, “Treatise on the justice, policy, and utility of establishing an effectual system for promoting the progress of useful arts, by assuring property in the products of genius. To which are added observations, on the deficiency of, and exceptions to the bill reported in March 1792. : With notes, tending to demonstrate, that no property is secured in the products of genius, under the existing patent system. Also, the principles upon which a bill ought to be formed, to be effectual and equitable.” Philadelphia. Printed by Francis Bailey, no. 116, High-Street, MDCCXCII. [1792]. LINK. Early English Books Online Text Creation Partnership, 2011. (Browse the Evans Early American Imprint Collection by “Author” and then by “B”.)

February 21, 1793

Congress approves the Patent Act of 1793 (1 Stat. 318, “An Act to promote the progress of useful Arts; and to repeal the act heretofore made for that purpose.”). The second federal patent system is established.

The 1793 Act abolishes the Patent Board, replacing it with a system whereby patents are granted, without prior examination.

“when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter, not known or used before the application, and shall present a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the said Secretary of State, to cause letters patent to be made out in the name of the United States … .”

For interfering applications, the Act (Sec. 9) provided “[t]hat in case of interfering applications, the same shall be submitted to the arbitration of three persons, one of whom shall be chosen by each of the applicants, and the third shall be appointed by the Secretary of State.”

Patent disputes are resolved by the judiciary.

November 16, 1793

Thomas Jefferson writes to Eli Whitney, granting him a patent on the cotton gin (issued March 14, 1794).

National Archives (LINK).

January 5, 1794

Thomas Jefferson resigns as Secretary of State. Edmund Randolph succeeds him.

September 19, 1796

George Washington’s Farewell Address.

“Promote then, as an object of primary importance, institutions for the general diffusion of knowledge. In proportion as the structure of a government gives force to public opinion, it is essential that public opinion should be enlightened.”

March 4, 1797

John Adams is inaugurated as the second President of the United States. His administration lasts until March 4, 1801. 

December 14, 1799

George Washington passes away.

February 4, 1801

John Marshall begins his term as the fourth Chief Justice of the United States. His term as Secretary of State ends on March 4, 1801, with the inauguration of Thomas Jefferson.

March 4, 1801

Thomas Jefferson is inaugurated as the third President of the United States. His administration lasts until March 4, 1809. 

May 2, 1801

Thomas Jefferson appoints James Madison as Secretary of State.

June 1, 1802

Dr. William Thornton is appointed by Secretary of State James Madison as the first Superintendent of Patents for a Patent Office in the State Department. He would serve until 1828.

USPTO (LINK).

July 12, 1804

Alexander Hamilton is killed.

March 4, 1809

James Madison is inaugurated as the fourth President of the United States. His administration lasts until March 4, 1817. 

February 1, 1810

Tyler v. Tuel, 10 U.S. (6 Cranch) 324 (1810) is decided. It is the first patent decision published by the U.S. Supreme Court. It concerns the assignment of a patent dated February 20, 1800.

Library of Congress (LINK).

1810

Thomas Green Fessenden publishes “An Essay on the Law of Patents for New Inventions.”

Hathi Trust (LINK).

Fessenden’s “Essay,” discusses Tyler v. Tuel.

Fessenden’s cousin, Samuel C. Fessenden, would be appointed the sixth Examiner-in-Chief on the Board that would be created by the Patent Act of 1861.

August 13, 1813

Thomas Jefferson recalls his time on the “Patent-board” in a letter to Isaac McPherson “on the subject of mr Oliver Evans’s exclusive right to the use of what he calls his Elevators, Conveyers, and Hopper-boys.”

Considering the exclusive right to invention as given not of natural right, but for the benefit of society, I know well the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not, as a member of the Patent-board for several years, while the law authorized a board to grant or refuse patents, I saw with what slow progress a system of general rules could be matured. Some however were established by that board.  … [B]ut there were still abundance of cases which could not be brought under rule, until they should have presented themselves under all their aspects; and these investigations occupying more time of the members of the board than they could spare from higher duties, the whole was turned over to the judiciary, to be matured into a system, under which everyone might know when his actions were safe and lawful. instead of refusing a patent in the first instance, as the board was authorized to do, the patent now issues of course, subject to be declared void on such principles as should be established by the courts of law. this business however is but little analogous to their course of reading, since we might in vain turn over all the lubberly volumes of the law to find a single ray which would lighten the path of the Mechanic or Mathematician. it is more within the information of a board of Academical professors, and a previous refusal of patent would better guard our citizens against harrassment by lawsuits. but England had given it to her judges, and the usual predominancy of her examples carried it to ours.

National Archives (LINK).

 

 

(a) Of the several patents Oliver Evans received, see e.g., US Patent 3X, granted Dec. 18, 1790;

(b) for a petition for patent see National Archives (LINK);

(c) Jefferson approved the congressionally-passed “An Act for the Relief of Oliver Evans” on January 21, 1808 (source: Library of Congress (LINK));

(d) the second-fifth patent cases decided by the U.S. Supreme Court related to the 1808 Act:

Evans v. Jordan; Morehead, 13 U.S. (9 Cranch) 199 (1815).

Evans v. Eaton, 16 U.S. (3 Wheat.) 454 (1818).

Evans v. Hettich, 20 U.S. (7 Wheat.) 453 (1822).

Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822).

See P. J. Federico, “The Patent Trials of Oliver Evans,” 27 J. Pat. Off. Soc’y. 657, 664 (1945).

(e) Ferguson, Eugene S., “Oliver Evans – Inventive Genius of the American Industrial Revolution,” The Hagley Museum, 1980 by the Eleutherian Mills-Hagley Foundation, Inc.,  72 pages;

(f) Oliver Evans was inducted in the National Inventors Hall of Fame ™ in 2001.

March 4, 1817

James Monroe is inaugurated as the fifth President of the United States. His administration lasts until March 4, 1825. 

1822

Thomas Green Fessenden publishes the second edition of “An Essay on the Law of Patents for New Inventions.”

Hathi Trust (LINK).

(a) This edition is dedicated to Justice Story and includes an analysis of his patent decisions.

(b) The “rules as may appear best to prevent, as far as possible future disputes, on the subject” proposed in the First Edition of the Essay are greatly expanded, e.g., adding “9. The speculation of a philosopher, or mechanician, which has never been put into actual operation will not deprive a subsequent inventor of his patent monopoly.”

March 4, 1825

John Quincy Adams is inaugurated as the sixth President of the United States. His administration lasts until March 4, 1829. 

July 4, 1826

John Adams and Thomas Jefferson pass away.

April 12, 1828

Thomas P. Jones, appointed by Secretary of State Henry Clay, begins service as the second Superintendent of Patents for the Patent Office in the State Department. He would serve until June 10, 1829.

USPTO (LINK).

March 4, 1829

Andrew Jackson is inaugurated as the seventh President of the United States. His administration lasts until March 4, 1837. 

June 11, 1829

John D. Craig is appointed by Secretary of State Martin Van Buren as the third Superintendent of Patents for the Patent Office in the State Department. He would serve until January 31, 1835.

USPTO (LINK).

February 1, 1835

James C. Pickett is appointed by Secretary of State John Forsyth as the fourth Superintendent of Patents for the Patent Office in the State Department. He would serve until April 30, 1835.

USPTO (LINK).

June 15, 1835

Henry L. Ellsworth is appointed by Andrew Jackson as the fifth (and last) Superintendent of Patents. Superintendent Ellsworth would  become the first Commissioner of Patents upon the passing of the 1836 Patent Act. He would serve until 1845.

USPTO (LINK).

January 29, 1836

Patent Office Superintendent Henry L. Ellsworth responds by letter to “the inquiries made by the Hon. Chairman of the Committee on the Patent Office in the Senate [Senator John Ruggles], and referred by the Hon. Secretary of State [John Forsyth] to the Office for my report in part.” 

Ellsworth recommends (a) “vest[ing] in the head of the Patent Bureau or some other a discretion to arrest a pending application for a Patent, if it interferes with any prior Patent, or caveat on file, and also if the application is destitute of novelty” or (b), in the case of interferences, three indifferent arbitrators“.

There are a great number of cases arising out of the Patent law before the United States Courts. How much will the number be increased when the eight hundred patents granted this year, shall appear with their many interfering specifications. There will be a rich harvest for the Lawyers but how many honest Mechanics and Inventors will be ruined by the expense of litigation. Is there no remedy? … I would respectfully suggest the following remedy. To vest in the head of the Patent Bureau or some other a discretion to arrest a pending application for a Patent, if it interferes with any prior Patent, or caveat on file, and also if the application is destitute of novelty.

…

While cupidity induces Patentees to connect their improvements with the inventions of others, ostensibly claiming all as their own, it is certainly proper that the Government should annex some penalty to such impositions. A judgment against the validity of the Patent is a suitable penalty.

Should it appear objectionable to confer the power of arresting interfering applications on the head of the Patent Bureau, the objection may perhaps be lessened by referring the interference to three indifferent arbitrators skilled in the art in question and as the arbitrators might make an improper award an appeal could be allowed to the Secretary of State or other tribunal.

The present mode of appointing arbitrators in interfering applications is to allow each party to choose one and the Secretary of State the third. This makes a board of strong bias as each applicant generally selects a particular friend. I ought to add that at present there is no compensation allowed or paid arbitrators. Each applicant might be required to pay a reasonable fee to be fixed by law. Interferences will generally be found to arise from ignorance or fraudulent interests. Information will correct the former, while a rigid scrutiny will induce impostors to withdraw their pretensions.

University of New Hampshire, Franklin Pierce School of Law, IP Mall.

April 28, 1836

Senator John Ruggles (“Father of the United States Patent Office”) submits the “Report Accompanying Senate Bill No. 239,” 24th Cong., 1st Sess. (April 28, 1836) wherein he proposes “to give the Patent Office a new organization … a board of examiners [‘to which an appeal may be taken’].”

A necessary consequence is, that patents even for new and meritorious inventions are so much depreciated in general estimation that they are of but little value to the patentees, and the object of the patent laws, that of promoting the arts by encouragement, is in a great measure defeated.

To prevent these evils in future is the first and most desirable object of a revision and alteration of the existing laws on this subject. The most obvious, if not the only means of effecting it, appears to be to establish a check upon the granting of patents, allowing them to issue only for such invention as are in fact new and entitled, by the merit of originality and utility, to be protected by law. The difficulty encountered in effecting this, is in determining what the check shall be; in whom the power to judge of inventions before granting a patent can safely be reposed, and how its exercise can be regulated and guarded, to prevent injustice through mistake of judgement or otherwise, by which honest and meritorious inventors might suffer wrong.

It is obvious that the power must, in the first instance, be exercised by the department charged with this branch of the public service. But as it may not be thought proper to intrust its final exercise to the department, it is deemed advisable to provide for an occasional tribunal to which an appeal may be taken. And as a further security against any possible injustice, it is thought proper to give the applicant in certain cases, where there may be an adverse party to contest his right, an opportunity to have the decision revised in a court of law.

The duty of examination and investigation necessary to a first decision at the Patent Office, is an important one, and will call for the exercise and application of much scientific acquirement and knowledge of the existing state of the arts in all their branches, not only in our own, but in other countries. Such qualifications in the officers charged with the duty, will be the more necessary and desirable, because the information upon which a rejection is made at the office, will be available in the final decision. It becomes necessary, then, to give the Patent Office a new organization, and to secure to it a character altogether above a mere clerkship. The competency and efficiency of its officers should correspond with their responsibility, and with the nature and importance of the duties required of them.  …

A power in the Commissioner of the Patent Office to reject applications for want of novelty in the invention, it is believed, will have a most beneficial and salutary effect in relieving meritorious inventors, and the community generally, from serious evils growing out of the granting of patents for every thing indiscriminately, creating interfering claims, encouraging fraudulent speculators in patent rights, deluging the country with worthless monopolies, and laying the foundation for endless litigation.

In nineteen cases out of twenty, probably, the opinion of the Commissioner, accompanied by the information on which his decision is founded, will be acquiesced in. When unsatisfactory, the rights of the applicant will find ample protection in an appeal to a board of examiners, selected for their particular knowledge of the subject-matter of the invention in each case.

University of New Hampshire, Franklin Pierce School of Law, IP Mall. (LINK)

June 28, 1836

James Madison passes away.

July 4, 1836

Congress passes the “An Act to promote the progress of useful arts, and to repeal all acts and parts of acts heretofore made for that purpose.” Patent Act of 1836 (5 Stat. 117-125)). This establishes the third federal patent system, the examination framework of which is still adhered to to this day. 

Sec. 1. “[t]here shall be established and attached to the Department of State, an office to be denominated the Patent Office; the chief officer of which shall be called the Commissioner of Patents; to be appointed by the President, by and with the advice and consent of the Senate, whose duty it shall be, under the direction of the Secretary of State, to superintend, execute, and perform, all such acts and things touching and respecting the granting and issuing of patents … .”
 
Sec. 2. ”[T]here shall be, in said office, an inferior officer, to be appointed by the said principal officer, with the approval of the Secretary of State … to be called the Chief Clerk of the Patent Office; who, in all cases during the necessary absence of the Commissioner, or when the said principal office shall become vacant, shall have the charge and custody of the seal … and shall perform the duties of Commissioner during such vacancy. And the said Commissioner may also, with like approval, appoint an examining clerk … two other clerks .. . one of whom shall be a competent draughtsman … one other clerk … a machinist … and a messenger.”
(a) previous patent numbers and issue dates: USPTO
(b) Patent No. 1 for improvements to locomotive engines to John Ruggles, dated July 13, 1836: USPTO;
(c) for the patent office employees as of September 30, 1835: Official Register of the United Sates for 1835.
The Patent Act of 1836 authorized one “examining clerk.” Charles M. Keller (previously the “machinist” in the patent office) is appointed the first “examining clerk.” (A second “examining clerk” would be authorized by the Act of March 3, 1837, to which Thomas P. Jones would be appointed.)
 
Keller helped Senator Ruggles write the Patent Act of 1836. Keller would leave the patent office and become a patent attorney – notably for Louis Pasteur, see U.S. Patent 135,245 (granted January 28, 1873) for “Brewing Beer and Ale.”
 
Charles M. Keller and Pasteur’s Patent, see USPTO Inventor’s Eye, December 2015.
 
9,957 patents had been issued to this date; numbering begins anew – with the first patent being issued to Senator John Ruggles.

Sec. 7 of the 1836 Patent Act provides for an appeal to “a board of examiners”.

Sec. 8 provides that the Commissioner decides questions regarding an application interfering with another application or “unexpired patent” and “if either [party] shall be dissatisfied with the decision of the Commissioner on the question of priority of right or invention, on a hearing thereof, he may appeal from such a decision [to the Board].

Sec. 7. The Act provides for an appeal from a patent applicant to “a board of examiners, to be composed of three disinterested persons, who shall be appointed for that purpose by the Secretary of State, one of whom at least, to be selected, if practicable and convenient, for his knowledge and skill in the particular art, manufacture, or branch of science to which the alleged invention appertains; who shall be under oath or affirmation for the faithful and impartial performance of the duty imposed upon them by said appointment. … And on an examination and consideration of the matter by such board, it shall be in their power, or of a majority of them, to reverse the decision of the Commissioner, either in whole or in part, and their opinion being certified to the Commissioner, he shall be governed thereby in the further proceedings to be had on such application[.]
In re Alappat, 33 F.3d 1526, 1549-51 (Archer, C.J., concurring in part, dissenting in part)
The Board’s decisions were final and binding on the Commissioner. Prior to this Act, appeals of examiners’ decisions were taken to the Commissioner for final decision.

Even when the law was changed to transfer jurisdiction of patent appeals to the Chief Judge of the District Court of the District of Columbia (1839 Patent Act) and assistant judges of the Circuit Court of the District of Columbia (1852 Patent Act), the Commissioner remained bound by the decisions on appeal.

The Patent Act of 1861, which established a permanent Board of Appeals within the Patent Office to hear appeals from adverse decisions of examiners, provided for an appeal from the Board to the Commissioner. The Commissioner was not bound by decisions of the Board. Applicants could appeal the Director’s decision to the District Court for the District of Columbia.

By the Patent Act of 1927, the Commissioner was added as a member of the Board. An applicant dissatisfied with a decision of the Board could no longer appeal the Board’s decision to the Commissioner but “may appeal to the Court of Appeals of the District of Columbia” (Sec. 8). Today such appeals are to the Court of Appeals for the Federal Circuit.

December 15, 1836

Fire destroys the Patent Office, located in Blodget’s Hotel since 1810. Patent Office relocates to the D.C. City Hall at Judiciary Square, now District Court of Appeals.

March 3, 1837

Congress approves the Act of March 3, 1837 which requires the Commissioner of Patents to transmit an annual report of the Patent Office to Congress.

This Act also enlarged the Patent Office to 25 employees.

For the statute goto the Library of Congress (Statutes-at-Large): LINK

For a list of the Patent Office employees goto the Official Register of the United Sates for 1837: LINK.

March 4, 1837

Martin Van Buren is inaugurated as the eighth President of the United States. His administration lasts until March 4, 1841. 

January 14, 1839

Commissioner Ellsworth submits the first Patent Office Report for 1838 to Congress (25th Congress, 3rd Session, H.R. Doc. No. 80) Due in part to inconsistent decision-making by the various individuals appointed, Commissioner Ellsworth recommends “substitut[ing] for the board of examiners, the expediency of allowing an appeal to the chief justice of this District [i.e., the Chief Judge of the District Court of the District of Columbia].

The board of examiners, occasionally appointed in cases of appeals, is attended with inconveniences, not foreseen, which ought, if possible, to be corrected. This tribunal was provided, it is presumed, to relieve the apprehensions some might have entertained, from the power necessarily conferred, and the duty imposed upon the Commissioner, to withhold a patent in every case where the claim is destitute of merit or originality. Contrary, perhaps, to the intention of the framers of the law, it has been construed to open the whole matter, on appeal, to the reception of additional evidence, leading to much delay and expensive litigation before the board.

The compensation provided for this board of examiners appears to have been predicated upon the idea of a brief and summary duty, and is so small that few of requisite qualifications are found who will consent to undertake it.

Hence much delay arises in constituting a board, whenever an appeal is made; and different individuals being appointed in different cases, their rules and course of proceedings are various and unsettled. The examination into the originality of an invention, or supposed discovery, preliminary to the issuing of a patent, and the settling of interfering claims to patents, must necessarily be, in some measure, summary. But the decision between contesting parties is, in all cases, subject to judicial corrections; and a final adjudication is, by law, as it ought to be, referred to the courts.

It is submitted whether the Commissioner could not be authorized to prescribe, with advantage, the necessary rules for the taking of testimony to be used in hearing before him; and to make suitable regulations for a full and fair hearing of all parties interested.

As a remedy for the evil alluded to, (of which parties complain,) I beg leave to suggest, as a substitute for the board of examiners, the expediency of allowing an appeal to the chief justice of this District, giving him power to examine and determine the matter summarily at chambers, or otherwise, on the evidence From the experience had, thus far, it may be presumed that the judge would have but few cases to examine, and that those would not materially interfere with his other a judicial duties. A reasonable compensation for such duty may be made from the patent fund. Parties from a distance could then have their cases settled, without great delay or trouble to which they are now subjected.

Hathi Trust: LINK.

March 3, 1839

Congress approves “An Act in addition to ‘An act to promote the progress of the useful arts’” (the Patent Act of 1839 (5 Stat. 353-355)). 

The 1839 Patent Act repeals the provision for an appeal to “a board of examiners” in the Patent Act of 1836.

A right of appeal is taken to the Chief Judge of the District Court of the District of Columbia, i.e., Chief Judge William Cranch.

Sec. 11. [I]t shall be the duty of said chief justice, on petition, to hear and determine all such appeals, and to revise such decisions in a summary way, … Provided, however, That no opinion or decision of the judge in any such case, shall preclude any person interested in favor or against the validity of any patent which has been or may hereafter, be granted, from the right to contest the same in any judicial court, in any action in which its validity may come in question.

Ballotpedia.org

His son, William G. Cranch, was an examiner in the patent office:
• (a) Barnard, J. (1922). History of the Church of the New Jerusalem in the City of Washington. Records of the Columbia Historical Society, Washington, D.C., 24, 23-42 (LINK);
• (b) see, e.g., the Official Register of the United States covering September 30, 1841 through September 30, 1843 (LINK).

March 4, 1841

William Henry Harrison is inaugurated as the ninth President of the United States. His administration lasts until April 4, 1841.

April 4, 1841

John Tyler is inaugurated as the tenth President of the United States. His administration lasts until March 4, 1845.

1842

Patent Office relocates from the D.C. City Hall at Judiciary Square, now District Court of Appeals, to the Patent Office Building (F and G Streets and 7th and 9th Streets, N.W., Washington, D.C.).

March 4, 1845

James K. Polk is inaugurated as the eleventh President of the United States. His administration lasts until March 4, 1849. 

May 5, 1845

Edmund Burke, appointed the second Commissioner of Patents by President Polk. He would serve until May 9, 1849.

USPTO (LINK)

January 1849

Commissioner Burke submits the 1848 Patent Office Report to Congress (30th Congress, 2nd Session, House Ex. Doc. No. 59). Commissioner Burke raises a concern about the imposition of patent office appeals on Chief Judge William Cranch.

Hathi Trust (LINK)

The increasing business of the Patent Office has added so much to the duties imposed upon the Chief Justice of the District, who was by the act of March 3, 1837 [sic., 1839], constituted a court of appeals from the decisions of the Commissioner of Patents, that the present compensation which he receives for that service is wholly inadequate to the labor which he is required to perform. He now receives $100 per annum as the judge of appeals from the Patent Office. Within the knowledge of the undersigned there has been a single case before the chief justice involving an amount of labor and time, which, if devoted to any other pursuit requiring the same talents and attainments for its execution, would have commanded treble the sum he receives for his services in that capacity for the whole year. It would be just, therefore, that the present compensation of the chief justice should be increased to an amount which would be adequate to the duties and labors which the law imposes upon him.

March 4, 1849

Zachary Taylor is inaugurated as the twelfth President of the United States. His administration lasts until July 9, 1850. 

May 4, 1849

Thomas Ewbank, appointed by President Taylor, begins service as the third Commissioner of Patents for the Patent Office in the Interior Department. He would serve until November 1, 1852.

USPTO
Interior Department

May 22, 1849

Abraham Lincoln is granted U.S. Patent 6469 for an “Improved Method for Buoying Vessels Over Shoals.”

Abraham Lincoln Online (LINK)

July 9, 1850

Millard Filmore is inaugurated as the thirteenth President of the United States. His administration lasts until March 4, 1853. 

May 1, 1851

The first world’s fair – The International Exhibition “embracing all manufactures” – opens in The Crystal Palace in Hyde Park, London; conceived by the Society of Arts of England. Closes October 15, 1851; 6,039,195 visitors.

Reports of the Commissioners of the United States to the International Exhibition held at Vienna, 1873, p. 34 (via Hathi Trust) (LINK)

August 30, 1852

Congress approves “An Act in addition to An Act to Promote the Progress of the Useful Arts” (the Patent Act of 1852 (1 Stat. 318)). 

By this Act, appeals of decisions of the Commissioner of Patents from appeals of decisions of the examiner could now also be made “to either of the assistant judges of the Circuit Court of the District of Columbia,” in addition to the Chief Judge.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That appeals provided for in the eleventh section of the act entitled An Act in addition to an act to promote the progress of the useful arts, approved March the third, eighteen hundred and thirty-nine, may also be made to either of the assistant judges of the Circuit Court of the District of Columbia, and all the powers, duties, and responsibilities imposed by the aforesaid act, and conferred upon the chief judge, are hereby imposed and conferred upon each of the said assistant judges.

Sec. 2. And be it further enacted, That in case appeals shall be made to the said chief judge, or to either of the said assistant judges, the Commissioner of Patents shall pay to such chief judge or assistant judge the sum of twenty-five dollars, required to be paid by the appellant into the Patent-Office by the eleventh section of the said act, on said appeal.

Sec. 3. And be it further enacted, That section thirteen of the aforesaid act, approved the third, eighteen hundred and thirty-nine, is hereby repealed.

November 2, 1852

Silas Henry Hodges, appointed by President Fillmore, begins service as the fourth Commissioner of Patents for the Patent Office in the Interior Department. He would serve until 1853. 

He would be appointed by Abraham Lincoln as one the first three Examiners-in-Chief (1861). 

USPTO (LINK)

March 4, 1853

Franklin Pierce is inaugurated as the fourteenth President of the United States. His administration lasts until March 4, 1857. 

July 23, 1855

Abraham Lincoln writes to Peter H. Watson, patent attorney representing John H. Manny (sued for patent infringement by Cyrus H. McCormick) indicating “I can devote some time to the case.” Also associated with this case were Edwin M. Stanton, future Secretary of War under Lincoln, and George Harding, whom Lincoln would nominate as the first Examiner-in-Chief for a new Board in the Patent Office established by the Patent Act of 1861, albeit Harding would decline the position.

Collected works. The Abraham Lincoln Association, Springfield, Illinois. Roy P. Basler, editor; Marion Dolores Pratt and Lloyd A. Dunlap, assistant editors. Lincoln, Abraham, 1809-1865. New Brunswick, N.J: Rutgers University Press, 1953, volume 2, p. 315

Laura Cielo, Director of Communications and Development, St. Peter’s Episcopal Church in Philadelphia: website entry of April 25, 2017

February 11, 1856

Charles Mason, appointed by President Pierce in 1853 as the fifth Commissioner of Patents, submits the 1855 Patent Office Report to Congress (34th Congress, 1st Session, House Ex. Doc. No. 12). Commissioner Mason would serve until 1857.

USPTO (LINK)

In the 1855 Patent Office Report, Commissioner Mason explains that “[i]n case of the rejection of an application, the law and the practice of the office permit an appeal to the Commissioner, and finally to one of the judges of the circuit court of the District. But such appeals are attended with much trouble and expense … .” He proposes appointing “an examiner-in-chief [or three] whose sole duty would be to review the actions of the present examiners, with a view of introducing correctness and uniformity of decision.”

In  case of the rejection of an  application, the law  and  the  practice  o  the office permit  an appeal to the Commissioner, and  finally to one of the  judges  of   the  circuit court  of  the  District. But such appeals are attended  with  much trouble and expense,  so that, in most cases, especially  where the applicant resides at a distance, a  rejection by the examiner is, in point of fact, final. Under such circumstances, the importance  of correctness and uniformity  of decision upon the first examination can hardly be too  highly appreciated. They cannot reasonably be hoped for under  the system now in operation, and  the  more that system is extended  the  greater  the  evil becomes.

To  remedy this difficulty several plans have been suggested, but they generally resolve themselves into one  of the two following, or modifications thereof:

1st. The  appointment of  an examiner-in chief, whose  sole  duty  would  be to  review  the  actions of the  present examiners, with a view of introducing correctness and uniformity of decision. As a modification of this plan, it has been sometimes proposed to increase the number  of examiners-in-chief to three, some one of whom should make a final decision upon each of the various questions, which should first be fully and clearly presented by  some of the members of  the corps of examiners as now constituted, and who might all three act conjointly on appeals and other cases of unusual difficulty.

2d. To return to the former practice of  the office, making the duties of the examiners simply advisory, and allowing  a patent in all cases, provided  the applicant should finally insist upon it, notwithstanding  the opinion of  the office  as to  its invalidity.

The main objection  to the former of the above plans grows out of the difficulty of obtaining competent and suitable persons to fill the chief places. I doubt whether there is a situation under the government for which it would be more difficult to find  a suitable incumbent. Qualities would be required for the satisfactory discharge of such a duty which are rarely found united  —  a well-trained capacity for comprehending and investigating all subjects connected with  natural and mechanical philosophy, and  a  high order of  legal acumen and experience. The difficulty is still further increased by  the  fact, that very few of  our lawyers have ever turned their attention in this direction. The law relating to patents is less understood by the profession than any other branch of  that noble science. And  as the cherished rights of inventors are to  be submitted to the sound discretion of  these officers, habits of patient and laborious investigation and  the high moral qualifications of integrity and impartiality are quite  as indispensable as those of  an intellectual character.

Hathi Trust (LINK)

January 3, 1857

Scientific American publishes an editorial regarding “another Patent Bill [that] has been drawn up, and will shortly be reported to Congress. … The principle features of the New Bill to which we have alluded, are, if we are correctly informed, as follows – … Appoints a Board of Appeal.”

“Important from Washington. – Another New Patent Bill before Congress … [The Bill proposes to appoint] a Board of Appeal, consisting of three Chief Examiners, with a salary each of $3,500 per annum. It is to be their duty to entertain all appeals from the decisions of the examiners, in cases where inventors think that injustice has been done them in the rejection of their applications. No fee for such appeals. From the decisions of this Board further appeal may be taken to the Commissioner on the payment of a small fee.

[This feature will give satisfaction provided the proper individuals are placed upon the Board. Some of the oldest and most experienced among the examining officers, and who would, perhaps, expect, on the ground of experience and seniority, to he appointed, are, to their discredit, the most illiberal in their feelings towards inventors and in their interpretation of the Patent Laws of any persons in the department. None of your conceited, crabbed, mulish, illiberal-minded individuals – men who never see anything new – who are always prone to regard one device as but the mechanical equivalent for another- with whom the “double use” of a thing is a continual stumbling block – such men should never be put upon the proposed Board. We want fresh, liberal, energetic persons, who will interpret the Patent Laws in their most liberal sense.

Some such Board as the above is needed, for the present duties which devolve upon the Commissioner are greater than any one man can or ought to be required to perform. The proposed Board would relieve him very much, and, if properly constituted, be of great advantage to inventors.]”

Scientific American, January 3, 1857, Volume XII, Number 17, page 130 (Hathi Trust) (LINK)

March 4, 1857

James Buchanan is inaugurated as the fifteenth President of the United States. His administration lasts until March 4, 1861. 

November 1857

A temporary board of appeals consisting of three examiners-in-chief drawn from primary examiners in the Patent Office is organized.

Commisionner Holt’s 1858 Patent Office Report to Congress (35th Congress, 2nd Session, Senate Ex. Doc. No. 47) (LINK)

January 20, 1858

Joseph Holt, appointed on September 10, 1857 by President Buchanan as the sixth Commissioner of Patents, submits the 1857 Patent Office Report to Congress ( 35th Congress, 1st Session, Senate Ex. Doc. No. 30).

Commissioner Holt recommends “that there shall be appointed a permanent board of three examiners-in–chief.”

Commissioner Holt would serve until March 14, 1859.

Whatever might be the capabilities of the Commissioner for physical and mental labor, it would be impossible for him to discharge the administrative duties of his office, and hear, in person, all the appeals brought before him from the decisions of examiners. The usage has hence grown up of referring he investigation of most of these appeals to a board, constituted or the occasion, consisting of two or more examiners, who make their report to the Commissioner. As these boards lack permanence, and from necessity, indeed, have been constantly changing, without a critical examination of each report by the Commissioner, which is not practicable, uniformity in action and in the assertion of principle cannot be maintained. To prevent in future that conflict, which has been so often deplored in the past, it has been recommended that there shall be appointed a permanent board of three examiners-in-chief, who shall be charged with the duty of hearing and determining upon all appeals from the judgment of the primary examiners. Such a tribunal would, no doubt, attain the end sought, and the members of it should their appellate duties not fully occupy their time could, by the Commissioner, be assigned labor in the classes requiring such assistance with much advantage to the public service.

Re the excerpt goto Hathi Trust.
Re Commissioner Holt goto USPTO.

January 31, 1859

Abraham Lincoln delivers his first lecture on Discoveries and Inventions to the Young Men’s Association of Bloomington, Illinois. A second rewritten version would be delivered in February 1859 before the Phi Alpha Society of Illinois College at Jacksonville, Illinois and before the Springfield Library Association.

Collected works. The Abraham Lincoln Association, Springfield, Illinois. Roy P. Basler, editor; Marion Dolores Pratt and Lloyd A. Dunlap, assistant editors. Lincoln, Abraham, 1809-1865. New Brunswick, N.J: Rutgers University Press, 1953, volume 3, pp. 357-363. (LINK)

Commisioner Holt submits the 1858 Patent Office Report to Congress (35th Congress, 2nd Session, Senate Ex. Doc. No. 47).

Commissioner Holt notifies Congress that “a board” “consisting of three examiners” and “occupied in the examination of appeals from the decisions of the primary examiners to the Commissioner” was “temporarily organized” in November 1857. Commissioner Holt suggests “legalization of this board” so as not to impose “the responsibilities of examiners-in-chief on examiners.”

Since the month of November, 1857, a board temporarily organized, and consisting of three examiners, specially detailed for this duty, have been occupied in the examination of appeals from the decisions of the primary examiners to the Commissioner. During the past year they investigated and disposed of 535 cases, in most of which they have submitted elaborately prepared reports. The results of their action have been eminently satisfactory, and have commanded, it is believed, the entire confidence of the country. The withdrawal of these officers from their respective classes has practically reduced the examining corps to nine instead of twelve, the number at which it was fixed in 1856. The applications of that year amounted to 4,960, those of 1858 amounted to 5,364, so that with a reduced force there is a heavy increase of the labor to be performed. This is unfortunate and to be deplored in reference alike to the public and the inventor. The former has a deep interest in that thorough and faithful examination of applications contemplated by the patent laws, in order that rights which belong to all may not be unjustly monopolized by one; the latter has the same interest, lest a patent, hastily and incautiously granted, should prove, in his hands, but a lure to draw him into harassing and impoverishing litigation. The legalization of this board, and the restoration of examiners to the three classes now virtually deprived of them, would furnish at once the relief required.

Since the establishment of this temporary board of appeals, the classes from which its members were respectively withdrawn have been in charge of those who have the rank and pay of assistant examiners only. In the new position, however, assigned them they have had imposed upon them the responsibilities of examiners in chief, and it is due to them to say that they have discharged their duties with zeal and fidelity. In my judgment, it is but just that they should be compensated according to the character of the services they have rendered. Assistant examiners similarly circumstanced were provided for by Congress in 1856, and I commend the claims of those now referred to to your favorable consideration.

Hathi Trust (LINK)

May 23, 1859

William Darius Bishop is appointed by President Buchanan as the seventh Commissioner of Patents for the Patent Office in the Interior Department. He would serve until January 1860.

Biographical Directort of the United States Congress. (LINK)

December 11, 1859

Senator William Bigler of Pennsylvania introduces Senate Bill S.10, “in addition to ‘An Act to promote the progress of the Useful Arts’.” It is referred to the Senate Committee on Patents and the Patent Office on January 24, 1860.

The Bill (Sec. 2) provides for a board of three Examiners-in-Chief appointed “in the same manner as now provided by law for the appointment of examiners [i.e., by the Commissioner].” NB. Per Sec. 2 of the Patent Act of 1836, examiners were appointed by the Commissioner – this is retained in Sec. 2 of the bill.

Sec. 2 of the bill prohibits appeals from the Commissioner to the Judiciary. See debate of April 16, 1860 (excerpts below).Sec. 3 of the bill allows appeals from Primary Examiners to the Examiners-in-Chief only after an application has been twice rejected (“second examination”).  See debate of May 26, 1860 (excerpts below).

Section 2. And be it further enacted, that, for the purpose of securing greater uniformity of action in the grant and refusal of letters patent, there shall be appointed, in the same manner as now provided by law for the appointment of examiners, a board of three Examiners-in-Chief, at an annual salary of three thousand dollars each, to be composed of persons of competent legal knowledge and scientific ability, where duty it shall be, on the written petition of the applicant for that purpose being filed, to revise and determine upon the validity of decisions made by examiners when adverse to the grant of letters patent, and also to revise and determine in like manner upon the validity of the decisions of examiners in interference cases, and to perform such other duties as may be assigned to them by the Commissioner; that from the decisions of this board of appeals may be taken to the Commissioner of Patents in person, upon payment of the fee hereinafter prescribed; that the said examiners-in-chief shall be governed in their action by the rules to be prescribed by the Commissioner of Patents. No appeal shall hereafter be allowed from the decision of the Commissioner of Patents, except in cases pending prior to the passage of this act.

Library of Congress (LINK)

February 16, 1860

Philip Francis Thomas, appointed by President Buchanan, begins service as the eighth Commissioner of Patents for the Patent Office in the Interior Department. He would serve until December 10, 1860. 

Biographical Directort of the United States Congress (LINK)

April 16, 1860

Senate debates Senate Bill No. 10, particularly as it concerns the proposed board of examiners-in-chief and appeals to the Commissioner and then to the judiciary. 

Motion to strike from the bill “No appeal shall thereafter be allowed from the decision of the Commissioner of Patents, except in cases pending prior to the passage of this act” agreed to.

The Congressional Globe, 36th Congress, 1st Session; pp. 1731-1733 (LINK)

May 26, 1860

Senate continues debate over Senate Bill No. 10.

NOTE Senator’s Hale’s proposed amendment to change assigning the appointment of Examiners-in-Chief from the Commissioner to the President, by and with the advice of the Senate, is agreed to and becomes part of the bill.

Senator Grimes: “I move to strike out the third section. This is the section which requires that before an appeal shall be allowed to the examiners-in-chief, the application shall be twice rejected by the subordinate examiners. I do not see any necessity for imposing that increased expense upon the applicants. … Then it must be known to gentlemen who are familiar with the Patent Office, that these subordinate examiners are not the most profoundly scientific men in the world, and good cases may be rejected by them; and we ought not to subject the applicants for patents, who are generally poor, but worthy men, to the loss of time and additional expense they must incur  in making a second application, in order to get their case carried up from some ignoramus who may be placed there as a subordinate examiner from political considerations solely, before gentlemen who have some knowledge of science and the arts.”

Senator Bigler: “I prefer very much to rest my support of it upon the opinion of three or four Commissioners, with the most experienced men in the various details there, all of whom concur in this bill throughout. I am not willing to see the section stricken out, for I have no doubt its  operations are well understood in the Department, and will be advantageous.”
…
So the motion was not agreed to.
Senator Hale: “There is one amendment that I desire to propose; and I wish to have the ear of the Senate for about a minute, while I state it. The second section of this bill  proposes to provide for the appointment of a board of three examiners-in-chief … and assigns very important duties to them. By the bill, they are to be appointed by the Commissioner. They are to stand between the Commissioner and other examiners, and are an independent board, and I think ought to be appointed by the President, by and with the advice and consent of the Senate.”
Senator Bigler: “I see no special objection to the amendment of the Senator from New Hampshire. There are those who have felt that this department was peculiarly independent, belonging to the people, self-reliant, they paying all the expenses themselves, and having no connection with the Treasury, or any other Department here, and that it should be kept independent within itself as possible. Perhaps that would be the only suggestions that could be made against the amendment. For my part, I do not care how the Senator decide it.
…
The amendment was agreed to.

The Congressional Globe, 36th Congress, 1st Session; p. 2364 (LINK)

 

 

 

Bill No. 10 (engrossed) is passed. (Click on  image for full view.) This would become the law (12 Stat. 246-249 (March 2, 1861)) establishing what we now call “the Board.” The Senate concurred to the House’s amendment to strike “board” and leave it as “examiners-in-chief.”  It would revert to a “board” via 16 Stat. 198-217 (July 8, 1870).

Image: (LINK)

July 2, 1860

A Bureau of Interferences and Extension is established by the Commissioner.

The Commissioner of Patents has established a special bureau to hear and determine Interference cases and applications for Extensions; thus relieving the Examiners and tending to render the decisions of the Patent Office in those cases more uniform than they have heretofore been. This arrangement is an excellent one, and has long been needed. Up to the present time it has been the practice to require the Examiners to take charge of and decide all Interference cases arising in their respective classes, subject to the approval of the Commissioner. But so greatly has the general business of the Office and the number of new applications made for patents increased, that the Examiners find themselves unable to give proper attention to Interferences and Extensions without neglecting or postponing other cases of importance. The bureaus just established will therefore greatly relieve them.

The Bureau of Interferences and Extensions has been placed under the charge of Examiner Henry Baldwin, who is more particularly known at the Patent Office as Judge Baldwin. We regard this appointment as an excellent one. Judge Baldwin is one of the oldest and most experienced officers in the department, and he is fully qualified to discharge the important duties of the newly-created bureau with success.

The Patent Office — take it altogether — is, at the present time, in a highly flourishing condition; and its officers, with a few exceptions, exhibit in their official views and actions a uniform and commendable liberality of disposition toward inventors. In these respects a very marked change has been observable within the last three years, an alteration we attribute, in a great degree, to the wisdom and firmness which has characterized the labors of the Board of Appeals. There has been no change in this board; the members are Messrs. Lawrence, Little and Rhodes.

No institution of the kind in the world presents a better organization or administration than that of the United States Patent Office as now constituted.

IP Mall (Scientific American, Vol. 3, No. 1, p. 10, 2 July 1860) (LINK)

Board of Examiners-In-Chief

March 2, 1861

“An Act in Addition to ‘An Act to promote the Progress of the Useful Arts [Patent Act of 1836]”  (12 Stat. 246-249 (1861)) becomes law.

It provides for a permanent adjudicatory body within the Patent Office consisting of “three examiners-in-chief, to be appointed by the President, by and with the advice and consent of the Senate,” “for the purpose of securing greater uniformity of action in the grant and refusal of letters-patent.”

The examiners-in-chief are “to be composed of persons of competent legal knowledge and scientific ability.”
 
Their duty “it shall be:”
on the written petition of the applicant for that purpose being filed, to revise and determine upon the validity of decisions made by examiners when adverse to the grant of letters-patent;and also to revise and determine in like manner upon the validity of the decisions of examiners in interference cases,
and when required by the Commissioner in applications for the extension of patents,
and to perform such other duties as may be assigned to them by the Commissioner.”
Appeals
“from their decisions may be taken to the Commissioner of Patents in person, upon payment of the fee hereinafter prescribed.
It also provides “that the said examiners-in-chief shall be governed in their action by the rules to be prescribed by the Commissioner of Patents.”

March 4, 1861

Abraham Lincoln is inaugurated as the sixteenth President of the United States.

March 25, 1861

Abraham Lincoln nominates Silas H. Hodges, George H. Harding, and Thomas C. Theaker to be the first three Examiners-in-Chief; read and reported to the Committee on Patents and the Patent Office on this day. Confirmed March 27. (Harding declines.)

Go to the Journal of the Executive Proceedings of the Senate (Dec. 6, 1858 – Aug. 6, 1861) (LINK).
Library of Congress (LINK)

March 28, 1861

David Pierson Holloway is appointed by President Lincoln as the ninth Commissioner of Patents for the Patent Office in the Interior Department. He would serve until August 17, 1865. 

USPTO

April 12, 1861

Fort Sumter, Charleston, South Carolina, is attacked. The American Civil War begins.

June 25, 1861

In Snowden v. Pierce, 2 Hay. & Haz. 386 (1861), Chief Judge James Dunlop, who succeeded William Cranch as Chief Judge of the United States Court of Appeals for the District of Columbia Circuit, holds that “[u]nder the Act of March 2, 1861, the primary examiners and the examiners-in-chief, are by the terms of the Act recognized as judicial officers, acting independently of the Commissioners who can only control them when their judgments in due course come before them on appeal.”

“A preliminary question has been raised as to my jurisdiction of this case, the same having been decided on the 6th of March, 1861, four days after the passage of the Act of March 2, 1861, entitled “an Act in addition to an Act to promote the useful arts.” I will give my views generally of the true construction of this Act of March 2, 1861, and then of the special circumstances attending the decision of this case in the office.

Previous to the passage of the Act of March 2, 1861, all judicial acts done in the Patent Office, by the primary examiner or the Board of Appeals, organized under office regulations, were in intendment of law, the judicial acts of the Commissioners, and had no legal validity till sanctioned by him. The primary examiners and Board of Appeals under the old system were the organs of the Commissioner to inquire and enlighten his judgment and until the Commissioner gave validity to their judicial acts by his fiat, they had no legal existence 2& judgments.

Under the Act of March 2, 1861, the primary examiners and the examiners-in-chief, are by the terms of the Act recognized as judicial officers, acting independently of the Commissioners who can only control them when their judgments in due course come before them on appeal.

The Commissioner, under the Act of March 2, 1861, can give no judgment till the appeal reaches him, and this cannot be done till the judgment of the primary examiner has first been submitted to the examiners-in-chief.

The Judges of the Circuit Court of the District of Columbia, by law can entertain no appeal except from the decisions of the Commissioner. All the decisions of the office, whether by examiners or the old Board of Appeals were in law, the decisions of the Commissioner when sanctioned by him.— When a primary examiner under the old system refused a patent, or decided an interference case, and the Commissioner approved such decision, an appeal lay directly to one of the Judges from such decision of the Commissioner; not so under the new law of 1861. The primary examiners and the examiners-in-chief are all, by the Act of 1861, treated as judicial officers having power without control, within the sphere of their duty, to the exercise of their independent judgment. Their acts under the new law are not as under the old system the acts of the Commissioners, but their own acts. They are no longer the mere organs of the Commissioner but independent officers. He can only reach and overrule them when their judgments come regularly before him on appeal.

It follows therefore that no judgment now in any patent case, of the character above described can be given by the Commissioner till it reaches him in due course by appeal, that is to say, the applicant must go from the primary examiner by appeal to the examiners-in-chief, and from them by appeal to the Commissioner, and lastly from the. Commissioner to one of the Judges of the Circuit Court.

The appeal to the Judges lies from the Commissioner under the old system, and has not been expressly taken away. We have no right to infer or conclude that it has been taken away by implication by the creation of the Appeal Board of Examiners-in-chief, with the right of appeal from them to the Commissioner. All such implication is repelled by the fact, well known, that an express repealing clause in the Act of 1861, on its passage through the legislature, was stricken out.

I think there is no repugnancy between the appeals given by the Act of 1861 and the ultimate appeal to the Judges, they may all stand together. The ultimate appeal to the Judges is the same appeal which originally, under the old law, laid to the old Board of Examiners, outside of the office appointed by the Secretary of State.

This appeal extended to all final decisions of the Commissioner refusing an applicant a patent, or determining an interference, and was afterwards transferred to the Judges of the Circuit Court. I think this appeal to the Judges still exists, but it can only be exercised after the applicant has gone the rounds of all the tribunals created by the new law, and after decision of the Commissioner.

I do -not think, however, under the particular circumstances of this case, the applicant, Snowden, was first bound to have gone to the examiner-in-chief under the new law, and then to the Commissioner, before coming to me. His case was submitted to the Commissioner before the passage of the Act of March 2d, 1861. All the testimony had been taken and closed, the arguments made, and the case in the hands of the Commissioner for decision, before March 2d, 1861. To apply the Act to such a case would give it a retrospective operation. I entertain no doubt, therefore, that I have therefore regularly jurisdiction of this appeal.”

Caselaw Access Project, Harvard Law School (Library Innovation Lab 2021).

July 5, 1861

President Lincoln nominates Joseph J. Coombs as the fourth Examiner-in-Chief (to fill the seat George H. Harding declined to take). In April, 1861, Coombs had applied for U.S. District Attorney for the District of Columbia, but General Edward C. Carrington (1825-1892) was appointed instead (of whose appointment Coombs opposed in a letter to Lincoln on account Carrington’s involvement in the Fisher affair).

On August 6, 1861, President Lincoln appoints Coombs by recess appointment. Coombs is issued an Executive Commission with a 4-year term.  

Regarding Coombs’s application for District Attoney, see Library of Congress
Regarding the Fisher affair, see Library of Congress – Lincoln Correspondence – Joseph J. Coombs opposes appointment of Edward Carrington and University of Oklahoma College of law – American Indian and Alaskan Native Documents

December 3, 1861

Abraham Lincoln delivers his first annual message. He recommends Congress “find an easy remedy for many of the inconveniences and evils which constantly embarrass those engaged in the practical administration of [statute laws]. Since the organization of the Government Congress has enacted some 5,000 acts and joint resolutions, which fill more than 6,000 closely printed pages and are scattered through many volumes.”  This would lead to the Revised Statutes (1870-1878).

February 13, 1862

Commissioner Holloway transmits to Congress the Patent Office Report of 1861. In it, he propose that the law “should be so amended as to render the duties of the examiner-in-chief advisory only, so that an appeal, as formerly, may be taken from the examiner or from the Commissioner to the circuit court.”

Proposed Amendments [to the Patent Act of March 2, 1861] … The avowed object of the second section of the act of the 2d of March, 1861, is ‘securing greater uniformity of action in the grant and refusal of letters patent.’ This is attempted to be effected by the creation of three examiners-in-chief, whose duty it is made to ‘revise and determine upon the validity of decisions made by examiners when adverse to the grant of letters patent, and in interference cases.’ It was expected by this means to relieve the Commissioner of a portion of the labor of the duties of office imposed upon him, but has utterly failed to secure this last-named object.

As now constituted under the law, the examiners-in-chief form a tribunal independent of the Commissioner in all cases of rejection or interference decided by the examiner. An appeal lies from the examiner to them, from them to the Commissioner, and from him to one of the judges of the circuit court of the District of Columbia.

The chief justice has decided that an appellant must go through each tribunal before the judge of the circuit court can take jurisdiction of the case.

This state of the law and practice is far from beneficial to the public, and does not tend to secure greater uniformity of action in the grant or refusal of letters patent, and does certainly greatly augment the labor of the Commissioner. The act, in my opinion, should be so amended as to render the duties of the examiner-in-chief advisory only, so that an appeal, as formerly, may be taken from the examiner or from the Commissioner to the circuit court. All appeals should be taken from the decision of the examiner directly to the Commissioner, who could then refer it to the examiners-in-chief, or, if his time permitted, hear it in person.”

June 17, 1862

In a failed effort to clarify that the Board is not independent but rather simply advisory, Rep. Dunn from the Committee on Patents reports on an amendment to H.R. 365 (“An act to promote the progress of the useful arts”) which reads, in part:

[Sec. 1] “That from an after the passage of this act the three examiners-in-chief created by the act of March 2, 1861, to which this is additional, shall not constitute an independent tribunal in the Patent Office to revise and determine upon the validity of the decisions made by the Commissioner of Patents in the refusal of letters patent, or in interference cases, but that the duties of said examiners-in-chief shall be only advisory to the Commissioner of Patents, who shall prescribe rules for their action.”

Congressional Globe; 37th Congress, 2nd Session, pp. 2762-2763. (image linked to debate on the amendment)

July 17, 1862

Senate considers H.R. 365 (“An act to promote the progress of the useful arts”) and strikes out Sec. 1. (Congressional Globe; 37th Congress, 2nd Session, p. 3403.)

March 3, 1863

“An act to promote the progress of the useful arts” is enacted into law (H.R. 365 without Sec. 1); 12 Stat. 796 (1863).

This statute provides, in part, that every patent must be dated no later than six months from allowance with final fee paid, otherwise “the invention therein described shall become public property.”

April 9, 1865

The American Civil War ends at Appomattox Court House, Virginia.

April 15, 1865

Abraham Lincoln is assassinated.

Andrew Johnson is inaugurated as the seventeenth President of the United States. His administration lasts until March 4, 1869.

August 1, 1865

Andrew Johnson appoints Elisha Foote as the fifth Examiner-in-Chief (to fill the seat rendered vacant by the termination of Joseph J. Coombs’ 4-year commission (July 15, 1865)).

August 17, 1865

Thomas Clarke Theaker, who had been appointed by Lincoln as one the first three Examiners-in-Chief, resigns and begins service as the tenth Commissioner of Patents for the Patent Office in the Interior Department. He would serve until January 20, 1868.

Source: USPTO; Biographical Directory of the United States Congress

November 23, 1865

Samuel C. Fessenden is appointed by Andrew Johnson as the sixth Examiner-in-Chief, filling the seat vacated by Thomas Clarke Theaker.

Samuel Fessenden is the cousin of Thomas Green Fessenden who published “An Essay on the Law of Patents for New Inventions” (1810 and 1822), the first treatise on U.S. patent law. 

April 5, 1868

Andrew Johnson appoints Benjamin F. James as the seventh Examiner-in-Chief.

He would be the first Primary Examiner (Engineering Class) to be appointed an examiner-in-chief.

July 23, 1868

“An act to authorize the temporary Supplying of Vacancies in the Executive Department” becomes law. 4oth Congress, Sess. II, Chap. 227.   It provided “That in the case of the death, resignation, absence, or sickness of the commissioner of patents, the duties of said commissioner, until a successor be appointed or such absence or sickness shall cease, shall devolve upon the examiner-in-chief in said office oldest in length of commission.”

July 28, 1868

Elisha Foote resigns as Examiner-in-Chief to become the 11th Commissioner of Patents, a position he would hold until April 25, 1869.

March 4, 1869

Ulysses S. Grant is inaugurated as the eighteenth President of the United States. His administration lasts until March 4, 1877.

April 21, 1869

Ulysses S. Grant appoints Rufus L. B. Clarke as the 8th Examiner-in-Chief.

Clarke would be the last person t0 be appointed via the old patronage system (1828-1883). For the next 140 years, the position of Examiner-in-Chief would be predominantly filled by classified service persons holding positions awarded by competitive examination; namely patent examiners.

The system of competitive examination in the Patent Office established under the Grant administrative “so approved itself that succeeding commissioners clung to it.” The Civil Service Record, Vol. X, No. 1, July 1890, pp. 6-8, published by the Civil Service Reform Associations of Boston and Cambridge. (Google Books).

April 26, 1869

Samuel Sparks Fisher is appointed twelfth Commissioner of Patents. He would serve until November 1870.

July 8, 1870

“An act to revise, consolidate, and amend the statutes relating to patents and copyrights” becomes law. 16 Stat. 198-217 (1970). (See also 1873-1874 Revised Statutes, 43rd Congress, Sess. I, Title XI, Ch. 6, Sec. 476 and Title LX, Ch. 1, Sec. 4909.):

“three examiners-in-chief, to be appointed by the President, by and with the advice and consent of the Senate”)

“board of examiners-in-chief”

January 16, 1871

General Mortimer D. Leggett is appointed the thirteenth Commissioner of Patents.  He would serve until November 1, 1874.

June 10, 1872

Ulysses S. Grant appoints Principal Examiner Ellis Spear as the tenth Examiner-in-Chief.  He resigns on October 31, 1874 to become Assistant Commissioner of Patents (October 6) and then, on January 30, 1877, he would appointed the 16th Commissioner of Patents, which position he would hold until 1878.

July 17, 1874

Clymer v. Riley, ex parte, C.D. 1874, p. 72 (July 17, 1874). Albeit Commissioner Leggett affirmed the Board, he felt compelled to invoke the Commissioner’s supervisory authority over Examiner-in-Chiefs’ actions, settling (temporarily) the question (since 1862) of Board independence.

“The question as to whether the fence or guide rail was or was not detachable, as was the case was originally presented to the Office, has been twice before the Acting Commissioner, and in both instances clearly and positively decided in the affirmative, and that should be so considered by the Examiner. In the second decision the Acting Commissioner takes occasion to suggest the impropriety of the Examiner or the Board having revived this question in further examination of the case. Yet, in the final action of the Board, one member [Examiner-in-Chief Rufus L. B. Clarke], with both of the Acting Commissioner’s decisions before him, and in full view of said suggestion, takes occasion again to revive and discuss the question, in a manner, too, not altogether courteous. In doing this he has been guilty of an official impropriety that cannot be passed in silence. The official decisions and directions of the Commissioner and Acting Commissioner are binding upon all in the Office, including the Examiners-in-Chief, until reversed by the Secretary. There is but one course open to officers and employees in the Patent Office who deny this relation between the head of the Office and the subordinates.”

November 1, 1874

Ulysses S. Grant appoints Principal Examiner Marcus D. Hopkins as the eleventh Examiner-in-Chief.  He resigns on March 1, 1875.

January, 1875

The Supreme Court of the District of Columbia decides Hull v. Commissioner of Patents, 9 D.C. 90, 2 MacArth. 90 (1875). This case explores the relationship between the Commissioner and the Examiners-in-Chief.  

Justice MacArthur (dissenting): “I will premise by observing that the Patent-Office has become a conspicuous feature in our Government. This branch of business had accumulated so enormously, that in 1870 Congress revised and reduced the whole system to order by the law of that year. The officers were classified, and their duties, to some extent, defined, so that the work might go on efficiently and harmoniously. In conformity with this idea the second section provides for three examiners-in-chief to be appointed by the President, by and with the consent of the Senate, and their duties are prescribed … Here we have a system judicial in form and substance for the express purpose of deciding upon the rights of applicants for patents, and there is nowhere throughout the entire law any power given to the Commissioner to set aside or disregard the rights of an applicant thus settled and pronounced, except in the cases which come to him by way of appeal from the adverse decisions of the board. It appears to have been the design of Congress to furnish in the Patent-Office itself a judicial method of determining when a patent ought to issue, giving to the Commissioner only an appellate power of revision, and it is simply in these cases that he is to exercise the right of refusing a patent. The examiners-in-chief are to be selected with reference to their fitness to perform the special duties assigned them. The law directs that they shall be persons of competent legal knowledge and scientific ability, and, therefore, specially qualified to pass upon the legal and scientific questions that are in most cases involved in deciding upon the validity of a claim for a patent. No such requirement is made in selecting the Commissioner. His position is undoubtedly one of high trust and great responsibility; but he is appointed on account of his general character and administrative capacity. The special duty of deciding upon the propriety of a patent is, therefore, confided to the examiners designated by the law for that purpose, and no appeal is given except upon an adverse decision. In no other case and in no other way does the law provide for a revision of their action. If their decision is favorable to the inventor, there is no authority given the Commissioner to defeat his rights by suspending the proceedings, or refusing to prepare and countersign the patent. On the contrary, the thirty-first section expressly makes it his duty, if upon the examination it shall appear that the claimant is justly entitled to a patent, the Commissioner shall issue a patent therefor.”

Caselaw Access Project, Harvard Law School (Library Innovation Lab 2021). (LINK).

March 16, 1875

Commissioner Leggett removes Examiner-in-Chief Clarke and President Grant appoints examiner of interferences George A. Nolen as the twelfth Examiner-in-Chief to fill the vacancy.

April 20, 1875

Silas Henry Hodges, the first Examiner-in-Chief, resigns.

April, 1875

President Grant reinstates Rufus L. B. Clarke to the office of Examiner-in-Chief.

July 1, 1877

The 1877 German Patent Act passes, credited to Werner Siemens.

September 24, 1877

Second Patent Office fire. This fire took place in the Old Patent Office Building within F and G Streets and 7th and 9th Streets in Washington DC. Construction of the building started in 1836 after the first fire of December 15, 1836 and completed in 1864. The north and west wings were destroyed, consuming over 80,000 models.

January 29, 1878

Commissioner Spear issues the 1877 Report of the Commissioner wherein he recommends a “patent court” in connection with the Office.

“Under the present organization of the office there is no hope of greater uniformity and no possibility of more careful supervision. … It is impossible for the commissioner to supervise personally one in a hundred of the patents issued. His duties are too diverse and numerous, and should rather be abridged. In fact, the business has outgrown the organization … But in addition to these duties he has those of the appellate tribunal next above the Examiners-in-Chief … I believe that the Commissioner sshould be relieved of these judicial duties, and that they, as well as those which now devolve to the board, should be cofided to a more permanent tribunal than either the board or Commissioner

Such a tribunal has been suggested, of the nature of a patent court, to be established in connection with the office, and to be composed of three members, appointed as other judges of the United States courts are appointed. To such a court all appeals from the adverse decisions of the examiners might be directly taken. This would save one appeal, would relieve the commissioner of all judicial duties, and would bring into direct connection with the office a permanent judicial head. The commissioner might then, with the other assistance already provided by law, inspect the patents which he signs, and refer to the court for revision such as might seem to him improper to issue.

I know of no plan which promises better than this to correct the evils arising out of granting patents for things which ought not to be patented. The law of 1836 provided for an examination as to novelty in order to guard against “the granting of patents for everything indiscriminately.” The amendments now proposed are in the same direction, and contemplate more careful and uniform examination and complete supervision in allowing patents.

The evils complained of under the present system are not occasioned by patents granted to true and worthy inventors, but by worthless patents. They are not essential to the system, but incidental to its rapid growth, and trifling in comparison with the benefits bestowed … .”

Hathi Trust (LINK).

1878

The second edition of the Revised Statutes (RS) is published. (First edition was published in 1875.) This fulfills Abraham Lincoln’s request made during his first annual message.

Library of Congress’s “A Century of Lawmaking for a New Nation: U.S. Congressional Documents and Debates, 1774 – 1875”, page 945 (LINK).
The American Presidency Project (LINK)

March 4, 1881

James A. Garfield is inaugurated as the twentieth President of the United States. His administration lasts until September 19, 1881.

September 20, 1881

Chester A. Arthur is inaugurated as the twenty-first President of the United States. His administration lasts until March 4, 1885.

November 3, 1884

The Supreme Court decides Butterworth, Commissioner of Patents, v. United States ex rel. Hoe & Others, 112 U.S. 50 (1884):

“The direct and immediate question, therefore, for our determination, is, whether the Secretary of the Interior had power by law to revise and reverse the action of the Commissioner of Patents in awarding to Gill priority of invention, and adjudging him entitled to a patent.”

“The true conclusion [ ] is, that in matters of this description, in which the action of the Commissioner is quasi-judicial, the fact that no appeal is expressly given to the Secretary is conclusive that none is to be implied.”

“It will be observed that the judgment and discretion vested by the original patent law of 1790, in a majority of the three executive officers, the Secretary of State, the Secretary for the Department of War, and the Attorney-General, who were authorized to cause letters patent to issue, “if they shall deem the invention or discovery sufficiently useful and important,” was transferred by the act of 1836, §7, to the Commissioner of Patents, it being made his duty to issue a patent for the invention, “if he shall deem it sufficiently useful and important;” and is continued in him by Rev. Stat. § 4893, the.language being, that he shall cause an examination to be made of the alleged new invention, “and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor.”

“It thus appears, not only that the discretion and judgment of the Commissioner, as the head of the Patent Office, is substituted for that of the head of the department, but also, that that discretion and judgment are not arbitrary, but are governed by fixed rules of right, according to which the title of the claimant appears from an investigation, for the conduct of which ample and elaborate provision is made; and that his discretion and judgment, exercised upon the material thus provided, are subject to a review by judicial tribunals whose juris- diction is defined by the same statute. In no event could the direction of the Secretary of the Interior extend beyond the terms in which it is vested, that is, to the duties to be performed under the law by the Commissioner.”

… “The conclusion cannot be resisted that, to whatever else supervision and direction on the part of the head of the department may extend, in respect to matters purely administrative and executive, they do not extend to a review of the action of the Commissioner of Patents in those cases in which, by law, he is appointed to exercise his discretion judicially. It is not consistent with the idea of judicial action that it should be subject to the direction of a superior, in the sense in which that. authority is conferred upon the head of an executive department in reference to his subordinates. Such a subjection takes from it the quality of a judicial act. That it was intended that the Commissioner of Patents, in issuing or withholding patents, in reissues, interferences and extensions, should exercise quasi- judicial functions, is apparent from the nature of the examinations and decisions he is required to make, and the modes provided by law, according to which, exclusively, they may be reviewed.”

September 20, 1881

Chester A. Arthur is inaugurated as the twenty-first President of the United States. His administration lasts until March 4, 1885.

March 4, 1885

Grover Cleveland is inaugurated as the twenty-second President of the United States. His administration lasts until March 4, 1889.

March 4, 1889

Benjamin Harrison is inaugurated as the twenty-third President of the United States. His administration lasts until March 4, 1893.

April 8-10, 1891

 

Celebration of the Beginning of the Second Century of the American Patent System at Washington City, D.C.

Proceedings and addresses of the 1891 Patent Centennial Celebration. Hathi Trust

Medal – courtesy of Administrative Patent Judge Allen MacDonald

March 4, 1893

Grover Cleveland is inaugurated as the twenty-fourth President of the United States. His administration lasts until March 4, 1897.

February 19, 1895

At the request of the Secretary of the Interior and with the President’s approval, Commissioner Seymour requests that Examiners-in-Chiefs Rufus L. B. Clarke and Henry H. Bates resign their positions, to take effect on March 31, 1895. Bates resigns; Clarke ignores the request.

February 28, 1895

President Cleveland sends a note addressed to Rufus L. B. Clarke saying “You are hereby removed from the office of examiner in chief in the Patent Office.”

President Cleveland places Principal Examiners John H. Brickenstein and Arthur P. Greeley in nomination before the Senate to fill the vacant positions due to the removal of Clarke and Bates, respectively.

Clarke’s protest file and Brickenstein’s Response:
> from the National Archives (LINK); and,
> from the Library of Congress (LINK).

March 3, 1895

Senate adjourns (last day of the 3rd Session of the 53rd Congress.)

March 5, 1895

President Cleveland appoints Brickenstein to take Clarke’s seat on the Board.

April 1, 1895

Brickenstein takes a seat on the Board as the 21st Examiner-in-Chief according to the timeline set by Commissioner Seymour’s on Feb. 19.

December 24, 1895

Senator Allison presents Petition of Rufus L. B. Clarke protesting against his removal as examiner-in-chief in the Patent Office. Referred to the Committee on Patents.

Congressional Record, Vol 28, Part 2, p. 295, Dec. 24, 1895. (LINK).

February 19, 1896

Senator Gear presents Petition of Rufus L. B. Clarke praying the Senate investigate the matter of his removal as examiner-in-chief in the Patent Office and remonstrating against the power of the President to make such removal. Referred to the Committee on the Judiciary (Senator Mitchell). Matter went no further. See Congressional Record, Vol 28, Part 2, p. 1910, Feb. 19, 1896.

Clarke’s basic argument was that the Board was purely judicial and thus, like Article III judges, he could only be removed by impeachment. Brickenstein responded by arguing that the Board was purely executive and so EICs could be removed at will. The prevailing view at the time was that Clarke was correct. But it is Brickenstein’s view that prevails today.

Clarke’s protest file and Brickenstein’s Response:
> from the National Archives (LINK); and,
> from the Library of Congress (LINK).

September 29, 1896

In re Appeals of Drawbaugh, 9 App. D.C. 219 (1896). The District of Columbia Court of Appeals (now the Court of Appeals for the District of Columbia) decides a case involving the propriety of the Commissioner to rely (sua sponte) on findings and authority of the decision of the Supreme Court in the Telephone Cases (126 U.S. 1) (whether Daniel Drawbaugh or Alexander Graham Bell was the first inventor of the art of telephony) in determining insufficiency of Drawbaugh’s affidavit that he first invented the particular transmitter claimed.

The court agreed with the Government which argued that:

Moreover, under the patent statutes, and Rules of Practice of the Patent Office, the Commissioner of Patents alone is the responsible head of the office; he, in the eyes of the statute, it is who refuses and issues patents, and it is no less his power than it is his duty to refuse a patent if he believes it should not be issued, particularly whether the ground of his refusal has been raised by his subordinates or not. Secs. 481, 4883, 4888, 4893, 4903, Revised Statutes, U. S.; Butterworth v. United States, 112 U. S. 50; Hull v. Commissioner of Patents, 7 O. G. 559; 2 MacArthur, 90, and ibid, 125 (1875).

Arguing for the Government was Levin H. Campbell who would later become the 25th Examiner-in-Chief.

“These provisions of the statute indicate very clearly the conditions upon which a patent is granted; and they also clearly indicate that the onus of showing that all the conditions and provisions of the law have been fully complied with is upon the applicant. It is incumbent upon him not only to comply with all the conditions and provisions of the statute, but, in the language of the statute, to make it appear that he is justly entitled to a patent under the law, and that the invention is sufficiently useful and important to justify the issue of such patent therefor. The patent should not issue as an experiment upon the public, nor to embarrass or infringe the use of other inventions having just priority. To every application for a patent the public is a party in an important sense, more than that of mere formal grantor. It is substantially interested in preventing the people from being harrassed by the claims of a monopoly, when in fact there may be no just grounds for such claims. It is the duty of the Commissioner of Patents, representing the public, and also the private rights of the inventor involved in the pending application, as well as all other inventors having the sanction of the Patent Office, to see that entire justice be done to all concerned. The law has provided certain official agencies to aid and advance the work of the Patent Office, such as the primary examiners, the examiners of interferences, and the examiners-in-chief; but they are all subordinate, and subject to the official direction of the Commissioner of Patents, except in the free exercise of their judgments in the matters submitted for their examination and determination. The Commissioner is the head of the bureau, and he is responsible for the general issue of that bureau. If, therefore, there be any substantial, reasonable ground within the knowledge or cognizance of the Commissioner why the patent should not issue, whether the specific objection be raised and acted upon by the examiners or not, it is his duty to refuse the patent; and especially is it so, when the primary examiner and the examiners-in-chief have found such ground for refusal to exist.”

Caselaw Access Project, Harvard Law School (Library Innovation Lab 2021) (LINK).

March 4, 1897

William McKinley is inaugurated as the twenty-fifth President of the United States. His administration lasts until September 14, 1901.

September 14, 1901

Theodore Roosevelt is inaugurated as the twenty-sixth President of the United States. His administration lasts until March 4, 1909.

February 14, 1903

 

Congress enacts “An Act to establish the Department of Commerce and Labor” (32 Stat. 826).

March 4, 1909

William Howard Taft is inaugurated as the twenty-seventh President of the United States. His administration lasts until March 4, 1913.

December 7, 1912

President Taft submits report to Congress pursuant joint resolution of Congress, approved August 21, 1912, “Requesting the President to cause an investigation of the Patent Office and make a report with recommendations to Congress.”

“3. That the Commissioner of Patents be the head of the Patent Office; that his duties be the same as are now prescribed by law, excepting that he be relieved from the consideration of cases on appeal … .” (Page 18)

“4. That one appeal within the United States Patent Office be eliminated; that the number of members of the board of examiners in chief of the Patent Office be increased from three to five; that all appeals within the office be taken to that board; that its decision be the decision of the Patent Office; that the appeal therefrom be to the Court of Appeals of the District of Columbia as now allowed from the decisions of the Commissioner of Patents.” (Page 18)

“The commission is of the opinion that the commissioner and assistant commissioners should be relieved of judicial work; that the appeal to the commissioner should be abolished; that all appeals in the office should go to the board of examiners in chief, which board should be increased to five members and its duties confined to judicial work; that the decisions of the board should be binding upon the office; and that the members of the board should be appointed by the President.” (Page 34)

“the sentiment is almost unanimous in favor of abolishing one appeal, the commission believes that the only appeal in the office should be to the one board of appeals known as the board of examiners in chief.” (Page 38)

“All judicial functions should be lodged exclusively with the corps of examiners and the board of examiners in chief. The decisions of this board should be final within the Patent Office on all questions of patentability and priority of invention. There should be no appeal to the Commissioner of Patents or to any other authority except the Court of Appeals of the District of Columbia. The reason for this recommendation is that it would greatly shorten the procedure to final adjudication and in no way impair the rights of appellants. It is not reasonable to allow the decisions of a technical body having judicial powers to be overruled by one officer who may have neither the technical nor the legal training to qualify him to exercise such authority. Commissioners of Patents are always likely to be appointed for political reasons rather, than because of any particular technical knowledge. On the other hand, the members of the board of examiners in chief are appointed to their places for the very reason that they do have, and are required by law to have, the special knowledge necessary to enable them to decide wisely where matters pertaining to patent rights are in dispute. It is unreasonable, therefore, and unwise as a matter of public policy, that the organization of the office should permit the overthrow of their decisions by one not necessarily qualified to pass judgment in the matter.” (Page 33)

Page 40:

“The office of examiner in chief was created in 1861, and the members of the board have always been appointed by the President by and with the advice and consent of the Senate. It is recommended that such appointment be made by the President alone, and it is to be expected that, as in the past, appointments as examiners in chief will be made, almost invariably, from the best qualified men in the office.

The commission is of the opinion that the duties of the board should be specifically stated in the law, and that the commissioner should not have authority to assign other duties to the board, nor should he have any control over their actions. While the President would no doubt charge the Commissioner of Patents with the duty of reporting to him any neglect of duty on the part of an examiner in chief, yet it is believed that the selection of members of this board ought to be made by the President upon such examination or independent inquiry as he might cause to be made when occasion arose for appointment.

The commission has seen no evidence that the present commissioner or any of his predecessors has attempted to control the actions and decisions of examiners in chief, although it is probable that most of the appointments to membership on the board have been made upon the recommendations of the different commissioners. If, as is recommended, the Commissioner of Patents is to be relieved of the responsibility for the decision of individual cases and but one appeal is to be had in the office, it is evident that the board, whose decision would be final in the Patent Office, should be as free from any suspicion of control in judicial work as is any court. Only in this way can the best work be obtained from the board and the confidence of those having business with the office be maintained.”

Caselaw Access Project, Harvard Law School (Library Innovation Lab 2021) (LINK).

March 4, 1913

Woodrow Wilson is inaugurated as the twenty-eighth President of the United States. His administration lasts until March 4, 1921.

June 2, 1913

The Court of Appeals of the District of Columbia decides Moore, Commissioner of Patents, et al. v. United States, ex rel. Chott, 192 O.G. 520, 40 App. C. C. 591 (D.C. Cir. 1913).

“In ex parte cases, the public is represented by the Commissioner. No right of appeal is provided from the decision of the Primary Examiner or the Board of Examiners-in-Chief in behalf of the public. It cannot be that one or both of these tribunals is given final jurisdiction to an extent which forbids any review by the Commissioner; for appeal only lies from the action of the Commissioner, when the Commissioner, as the executive head of the bureau, has been satisfied that an error has been committed by which the public will be damaged. In the case of Re Drawbaugh, 9 App. D. C. 219, Chief Justice Alvey, speaking for the court, said:

‘The patent should not issue as an experiment upon the public, nor to embarrass or infringe the use of other inventions having just priority. To every application for a patent the public is a party in an important sense, more than that of mere formal grantor. It- is substantially interested in preventing the people from being harassed by the claims of a monopoly, when in fact there may be no just grounds for such claims. It is the duty of the Commissioner-of-Patents, representing the public, and also the private rights of the inventor involved in the pending application, as well as all other inventors having the sanction of the Patent Office, to see that entire justice be done to all concerned. The law has provided certain official agencies to aid and advance the work of the Patent Office, such as the Primary Examiners, the Examiners of Interferences, and the Examiners-in-Chief; but they are all subordinate, and subject to the official direction of the Commissioner of Patents, except in the free exercise of their judgments in the matters submitted for their examination and determination. The Commissioner is the head of .the bureau, and he is responsible for the general issue of that bureau. If, therefore, there be any substantial, reasonable ground within the knowledge or cognizance of the Commissioner why the patent should not issue, whether the specific objection be raised and acted upon by the Examiners or not, it is his duty to refuse the patent;’ and especially is it so when the Primary Examiner and the Examiners-in-Chief have found such ground for refusal to exist.’

This general-supervisory power of the Commissioner has been upheld by this court in numerous cases. Podlesak v. McInnerney, 26 App. D. C. 399; Sobey v. Holsclaw, 28 App. D. C. 65; Moore v. Heany, 34 App. D. C. 31; Re Locke, 17 App. D. C. 314; United States ex rel. Hoe v. Butterworth, 3 Mackey, 229, 112 U. S. 50, 28 L. ed. 656, 5 Sup. Ct. Rep. 25.”

Caselaw Access Project, Harvard Law School (Library Innovation Lab 2021) (LINK).

February 15, 1916

The law is changed to permit the Board to have 5 Examiners-in-Chief. 39 Stat. 8-9 (1916) (“five examiners-in-chief, to be appointed by the President, by and with the advice and consent of the Senate”).

1920

Patent Office Society publishes “Manual of Details of Patent Office Practice,” by Examiners E.S. Glascock and H.D. Wilcox.

Decisions from ex parte appeals and inter partes appeals (interferences) from the Examiners-in-Chief, Commissioner, and Court of Appeals of the District of Columbia are “sent to the Docket Clerk” and the “file goes back to the Primary Examiner for proper action.” Page 41.

Where an Primary Examiner finds a potential interference a letter is sent to the Law Examiner proposing an interference. If approved, the Primary Examiner writes a letter to the Commissioner requesting jurisdiction. The letter goes first to the Examiner of Interferences for approval. After receiving jurisdiction, the Primary Examiner may withdraw of declare the interference. If the latter, the file is sent to the Docket Clerk who forwards it to the Interference Division “where, after the preliminary statements are approved, times for taking testimony are set and the day for final hearing is set.” Page 49.

Internet Archive (LINK).

March 4, 1921

Warren G. Harding is inaugurated as the twenty-ninth President of the United States. His administration lasts until August 2, 1923.

August 2, 1923

Calvin Coolidge is inaugurated as the twenty-ninth President of the United States. His administration lasts until March 4, 1929.

March 17, 1925

Calvin Coolidge transfers the U.S. Patent Office from the Department of the Interior to the Department of Commerce. By Executive Order 4175.

February 14, 1927

The law is changed to permit the Board to have 6 Examiners-in-Chief . 44 Stat. 1098-1099 (1927) (“There shall be in the Patent Office a Commissioner of Patents, one first assistant commissioner, one assistant commissioner, and six examiners-in-chief, who shall be appointed by the President, by and with the advice and consent of the Senate.”) No Member of the Board was appointed under this statute.

Board of Appeals

March 2, 1927

44 Stat. 1335-1337 (1927):

“The Commissioner of Patents, the first assistant commissioner, the assistant commissioner, and the examiners in chief shall constitute a board of appeals .. .”

“striking out the words ‘board of examiners in chief’ and substituting therefor the words ‘board of appeals’”

March 4, 1929

Herbert Hoover is inaugurated as the thirty-first President of the United States. His administration lasts until March 4, 1933. 

Summer 1929

Patent Office relocates from the Patent Office Building (F and G Streets and 7th and 9th Streets, N.W, Washington D.C.) to the Department of Commerce Building (now the Herbert Hoover Federal Building).

April 11, 1930

46 Stat. 155-156 (1930):

“There shall be in the Patent Office a Commissioner of Patents, one first assistant commissioner, one assistant commissioner, and nine examiners-in-chief, who shall be appointed by the President, by and with the advice and consent of the Senate.”

May 23, 1930

Congress enacts the Townsend-Parnell Plant Patent Act; Pub. L. No. 245 (71st Congress; Session 2, chap. 312) (“An Act to provide for plant patents.”)

This act amended sections 4884 and 4886 of the Revised Statutes (35 U.S.C. 35, secs. 40 and 31) to include asexually-reproduced plants other than a tuber-propagated plant as patentable subject matter.

“SEC. 4884. Every patent shall contain a short title or description of the invention or discovery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery (including in the case of a plant patent the exclusive right to asexually reproduce the plant) throughout the United States and the Territories thereof, referring to the specification for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent and be a part thereof.”

“SEC. 4886. Any person who has invented or discovered any new plant and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tuber-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceed- ing had, obtain a patent therefor.”

April 11, 1932

The Patent Office moves into the Commerce Building.

American Presidency Project.
(LINK).

March 4, 1933

Franklin Delano Roosevelt is inaugurated as the thirty-second President of the United States. His administration lasts until April 12, 1945. 

August 5, 1939

Congress passes:

“An Act To amend sections 4486, 4887, 4920, and 4929 of the Revised Statutes (U. S. C., title 35, secs., 31, 32, 69, and 73).”); 953 Stat. 1212, Chap. 450: changes the on-sale bar from a two-year to a one-year limit;

“An Act To amend section 4904, 4909, 4911, and 4915 of the Revised Statutes (U. S. C., title 35, secs. 52, 57, 59a, and 63).”); 953 Stat. 1212-1213, Chap. 451; Patent Act of 1939 (effective October 5, 1939):

establishes, among other changes, a Board of Interference Examiners to determine questions of priority when, in the opinion of the Commissioner, an application would interfere with another pending application or unexpired patent; and,

provides the option to have a remedy by bill in equity instead of an appeal to the Court of Customs and Patent Appeals (CCPA); and,

“An Act To amend section 4903 of the Revised Statutes (U. S. C., title 35, sec. 51).”); 953 Stat. 1213, Chap. 452; effective October 5, 1939: limits filing of amendments in an application presenting a claim that is the same or substantially the same as a claim in an issued patent to within one year of the patent grant. This affects interference practice.

April 12, 1945

Harry S. Truman is inaugurated as the thirty-third President of the United States. His administration lasts until January 20, 1953.

August 7, 1946

60 Stat. 873 (1946):

“The Commissioner of Patents is authorized to designate examiners of the principle examiner grade or higher, having requisite ability, to serve as examiners in chief and such examiners so designated shall be fully qualified to act as members of the board of appeals … no such examiner shall so serve for more than ninety days in any calendar year … no more than one such examiner shall be among the members of the board of appeals hearing an appeal.” (Expires August 7, 1949)

March 4, 1950

64 Stat. 11-12 (1950):

“That section 482 of the Revised Statutes (35 U.S.C. 7) is amended by adding the following paragraph:

‘The Commissioner, when in his discretion considered necessary to maintain the work of the board of appeals current, may designate any examiner of the primary grade or higher, having the requisite ability, to serve as examiner-in-chief for periods not exceeding six months each, and any examiner so designated shall be qualified to act as a member of the board of appeals. Not more than one primary examiner shall be among the members of the board of appeals hearing an appeal.’ .”

July 19, 1952

66 Stat. 792 (1952):

[Sec. 3] “A Commissioner of Patents, one first assistant commissioner, two assistant commissioners, and nine examiners-in-chief, shall be appointed by the President, by and with the advice and consent of the Senate.”

[Sec. 7] “The Commissioner, the assistant commissioners, and the examiners-in-chief shall constitute a Board of Appeals … . Whenever the Commissioner considers it necessary to maintain the work of the Board of Appeals current, he may designate any patent examiner of the primary examiner grade or higher, having the requisite ability, to serve as examiner-in-chief for periods not exceeding six months each. … Not more than one such primary examiner shall be a member of the Board of Appeals hearing an appeal.”

January 20, 1953

Dwight D. Eisenhower is inaugurated as the thirty-fourth President of the United States. His administration lasts until January 20, 1961.

September 6, 1958

72 Stat. 1793 (1958):

[Sec. 3] “amended by striking out the word ‘nine’ and inserting in lieu thereof the words ‘not more than fifteen’.”

January 20, 1961

John F. Kennedy is inaugurated as the thirty-fifth President of the United States. His administration lasts until November 22, 1963.

November 22, 1963

Lyndon Baines Johnson is inaugurated as the thirty-sixth President of the United States. His administration lasts until January 20, 1969.

1967-1969

Patent Office relocates from the Department of Commerce building (now Herbert Hoover Federal Building) to Crystal City, Arlington, Virginia.

Library of Congress on the Patent Office’s various homes: HERE.

January 20, 1969

Richard M. Nixon is inaugurated as the thirty-seventh President of the United States. His administration lasts until August 9, 1974.

August 9, 1974

Gerald Ford is inaugurated as the thirty-eighth President of the United States. His administration lasts until January 20, 1977.

January 5, 1975

88 Stat. 1956 (1975):

[Sec. 3] “(a) There shall be … not more than fifteen examiners-in-chief. The Commissioner of Patents, the Deputy Commissioner, and the Assistant Commissioners shall be appointed by the President, by and with the advice and consent of the Senate. The Secretary of Commerce, upon the nomination of the Commissioner, in accordance with law, shall appoint all other officers and employees.”

[Sec. 7] “The examiners-in-chief shall be … appointed under the classified civil service. The Commissioner, the deputy commissioner, the assistant commissioners, and the examiners-in-chief shall constitute a Board of Appeals … .”

January 20, 1977

Jimmy Carter is inaugurated as the thirty-ninth President of the United States. His administration lasts until January 20, 1981.

January 20, 1981

Ronald Reagan is inaugurated as the fortieth President of the United States. His administration lasts until January 20, 1989.

August 27, 1982

96 Stat. 319 (1982):

[Sec. 4] “Section 3(a) of title 35, United States Code is amended (1) by deleting the phrase “not more than 15”; and (2) by inserting the phrase “appointed under section 7 of this title” immediately after the phrase “examiners-in-chief.”

Board of Patent Appeals and Interferences

November 8, 1984

98 Stat. 3383 (1984):

[35 U.S.C. § 7(a)] “The examiners-in-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed to the competitive service. The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.”

[35 U.S.C. § 7(b)] “The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a) of this title. Each appeal and interference shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings. “

[35 U.S.C. § 7(c)] “Whenever the Commissioner considers it necessary, in order to keep current the work of the Board of Patent Appeals and Interferences, the Commissioner may designate any patent examiner of the primary examiner grade or higher, having the requisite ability, to serve as examiner-in-chief for periods not exceeding six months each. … Not more than one of the members of the Board of Appeals and Interferences hearing an appeal or determining an interference may be an examiner so designated.”

“striking out ‘Appeals’ and inserting in lieu thereof ‘Patent Appeals and Interferences’”

https://www.govinfo.gov/ (LINK)

January 20, 1989

George H. W. Bush is inaugurated as the forty-first President of the United States. His administration lasts until January 20, 1993.

January 20, 1993

Bill Clinton is inaugurated as the forty-second President of the United States. His administration lasts until January 20, 2001.

October 15, 1993

Official Gazette of the United States Patent Office, v. 1156, no. 2, p. 32 [1156 OG 32], (November 9, 1993):

“The Chairman, Vice-Chairman and Examiners-in-Chief of the Board of Patent Appeals and Interferences have been authorized to use the respective titles Chief Administrative Patent Judge, Vice Chief Administrative Patent Judge, and Administrative Patent Judge for signing all correspondence and decisions, and for other business-related activities. The respective titles Chairman, Vice Chairman, and Examiners-in-Chief will continue to be the official titles for personnel, budget and fiscal purposes.

Oct. 15, 1993

BRUCE A. LEHMAN Assistant Secretary of Commerce and Commissioner of Patents and Trademarks“

https://www.uspto.gov/ (LINK)

November 17, 1999

Q. Todd Dickinson is sworn into office as the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks. He would be the first to assume the title Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) upon passage of the AIPA. He had been Deputy Commissioner of Patents and Trademarks since June 1998 and the Acting Commissioner of Patents and Trademarks since January 1, 1999. He  would remain in office until January 20, 2001.

November 29, 1999

Congress enacts the American Inventors Protection Act of 1999 (113 Stat. 1501, 1501A-552 to -591 (“AIPA”)).

The AIPA establishes the inter partes reexamination procedure – appeals from which are reviewed by the Board. (Read more: Cooper Technologies Co. v. Jon W. Dudas, 536 F.3d 1330 (Fed. Cir. 2008).

5 U.S.C. [“striking section 7 … inserting after section 5 the following:”] § 6:]

> “(a) Establishment and Composition. There shall be in the United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Board of Patent Appeals and Interferences. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Director.”

> “(b) Duties – The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a). Each appeal and interference shall be heard by at least three members of the Board, who shall be designated by the Director. Only the Board of Patent Appeals and Interferences may grant rehearings.”

https://www.govinfo.gov/ (LINK)

January 20, 2001

George W. Bush is inaugurated as the forty-third President of the United States. His administration lasts until January 20, 2009.

December 10, 2001

James E. Rogan is sworn into office as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). He would remain in office until January 9, 2001.

2003-2005

USPTO relocates from Crystal City, Arlington, Virginia to Carlyle, Alexandria, Virginia.

November 23, 2004

Jon W. Dudas is confirmed as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). He had been Deputy Under Secretary and Deputy Director since January 2002 and the Acting Under Secretary and Acting Director since January 10, 2004. He had taken the oath of office on July 30, 2004 and would remain in office until January 20, 2009.

August 12, 2008

122 Stat. 3014 (2008):

“SECTION 1. APPOINTMENT OF ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK JUDGES.

(a) ADMINISTRATIVE PATENT JUDGES.—Section 6 of title 35, United States Code, is amended— (1) in subsection (a)— (A) in the second sentence, by striking ‘‘Deputy Commissioner’’ and inserting ‘‘Deputy Director’’; and (B) in the last sentence, by striking ‘‘Director’’ and inserting ‘‘Secretary of Commerce, in consultation with the Director’’; and (C) by adding at the end the following:

(c) AUTHORITY OF THE SECRETARY.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge.

(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.”

https://www.govinfo.gov/ (LINK)

January 20, 2009

Barack Obama is inaugurated as the forty-fourth President of the United States. His administration lasts until January 20, 2017.

August 7, 2009

David Kappos is confirmed as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). He is sworn into office on August 13 and would remain in office until February 1, 2013.

September 16, 2011

The Leahy-Smith America Invents Act (“AIA”; 125 Stat. 284) is enacted into law.

AIA Section 24 designates the ‘‘Elijah J. McCoy United States Patent and Trademark Office’’ to be located in Detroit, Michigan.

AIA Section 23 requires that three or more satellite offices be established in the United States by September 16, 2014.

(Effective September 16, 2012:)

> [Sec. 7] “There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board.”

> “The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director.”

https://www.govinfo.gov/ (LINK)
https://www.uspto.gov/ (LINK)

HISTORY OF THE AMERICA INVENTS ACT
(scroll ↓)

1995

Bronwyn H. Hall and Rosemarie Ham Ziedonis, “The Patent Paradox Revisited: An Empirical Study of Patenting in the U.S. Semiconductor Industry, 1979-1995,” The RAND Journal of Economics, Vol. 32, No. 1, Spring 2001, pp. 101-128.

1997 – 2001 (partial list)

Peter C. Grindley and David J. Teece, “Managing intellectual Capital: Licensing and Cross-Licensing in Semiconductors and Electronics,” California Management Review; Winter 1997; Vol. 39, No. 2;  8-41.

Michael Heller & Rebecca Eisenberg, “Can Patents Deter Innovation? The Anticommons in Biomedical Research,” 280 Science 698, 699 (1998).

Michael A. Heller, “The Tragedy of the Anticommons: Property in the Transition from Marx to Markets,” 111 Harv. L. Rev. 621, 622 (1998).

Mark A. Lemley, “Rational Ignorance at the Patent Office,” 95 Nw. U. L. Rev. 1494, 1503-04 (2001).

Carl Shapiro, “Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard Setting,” 1 Innovation Policy and the Economy, 119, 120 (Adam Jaffe et al. eds., 2001).

2003

“To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” A Report by the Federal Trade Commission, October 2003; LINK.

Bronwyn H. Hall, Stuart J.H. Graham, and Dietmar Harhoff, “Prospects for Improving U.S. Patent Quality via Post-Grant Opposition,” National Bureau of Economic Research, Working Paper 9731, May 2003; LINK.

2004

Bronwyn H. Hall and Dietmar Harhoff, “Post-Grant Reviews in the U.S. Patent System-Design Choices and Expected Impact,” Berkeley Technology Law Journal, Vol. 91:1, 2004; LINK.

Stephen A. Merrill, Richard Levin, and Mark B. Myers, National Research Council. 2004. A Patent System for the 21st Century. Washington, DC: The National Academies Press. https://doi.org/10.17226/10976.

2005

Patent Reform Act of 2005 (H.R. 2795) introduced in House by Representative Lamar S. Smith on June 8, 2005. Not enacted.

2006

Senate Hearing 109-929, “Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Reforms,” Hearing Before the Subcommittee on Intellectual Property of the Committee on the Judiciary, U.S. Senate; May 23, 2006; LINK.

Patent Reform Act of 2006 (S. 3818) introduced in the Senate by Senator Orrin G. Hatch on August 3, 2006. Not enacted.

2007

“Antitrust Enforcement and Intellectual Property Rights – Promoting Innovation and Competition,” Issued by the U.S. Department of Justice and the Federal Trade Commission, April 2007; LINK.

Patent Reform Act of 2007 (H.R. 1908) introduced in the House by Representative Howard L. Berman and in the Senate (S. 1145) by Senator Patrick J. Leahy on April 18, 2007. Not enacted.

2009

Patent Reform Act of 2009 (H.R. 1260) introduced in the House by Representative John Conyers, Jr. and in the Senate (S. 515) by Senator Patrick J. Leahy on March 3, 2009. Not enacted.

2011

America Invents Act (H.R. 1249) introduced in the House by Representative Lamar S. Smith and in the Senate (S. 23) by Senator Patrick J. Leahy on March 30, 2011 and January 25, 2011, respectively. Passes House (304-117) on June 23 and Senate (89-9) on Sept. 8.

President Obama signs the America Invents Act (AIA) into law on September 16, 2001, thereby chaging the name of the Board from BPAI to PTAB and adding conducting Inter Partes Review (IPR) (35 USC 314(a)); Post-Grant Review (PGR) (35 USC 324(a)); Covered Business Method Patent Review (CBM) program (Section 18(a)(1) of the AIA; transitional: 8-year period); and, Derivation (35 USC 135(a)) proceedings to the Board’s statutory duties (35 USC 6(b)).

July 12, 2012

The USPTO announces plans to open regional offices in Denver, Colorado; Dallas, Texas; and, San Jose, California.

The Elijah J. McCoy Midwest Regional United States Patent and Trademark Office in Detroit, Michigan, opens for business. Click on image to read the Gala brochure.

https://www.uspto.gov/ (LINK)

Patent Trial and Appeal Board

September 16, 2012

The Board operates under a new name: The Patent Trial and Appeal Board (PTAB).

Effective on this date, the Board is tasked with these additional duties:

• Inter partes review (AIA Section 6)
• Post-grant review (AIA Section 6)
• Transitional program for covered business method patents (AIA Section 18) [CBM program]

https://www.govinfo.gov (LINK).

February 1, 2013

Teresa Stanek Rea (appointed Deputy Director by U.S. Secretary of Commerce Gary Locke on February 17, 2011) assumes the position of Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office (USPTO). She would remain in office until November 21, 2013.

https://www.uspto.gov (LINK).

June 30, 2014

The Rocky Mountain Regional United States Patent and Trademark Office, located in The Byron G. Rogers Federal Building in Denver, Colorado, opens for business.  Click on image to read the Gala brochure.

https://www.uspto.gov (LINK).

March 9, 2015

Michelle K. Lee is confirmed as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). She is sworn into office on March 13 and would remain in office until June 6, 2017.

https://www.uspto.gov (LINK).

October 15, 2015

The Silicon Valley United States Patent and Trademark Office, West Coast Region, located in San Jose, California opens for business.

https://www.uspto.gov (LINK).

November 9, 2015

The Texas Regional United States Patent and Trademark Office, located in the Terminal Annex Federal Building in Dallas, Texas opens for business.

https://www.uspto.gov (LINK).

January 20, 2017

Donald Trump is inaugurated as the forty-fifth President of the United States. His administration lasts until January 20, 2021.

February 5, 2018

Andrei Iancu is confirmed as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). He is sworn into office on February 8 and would remain in office until January 20, 2021.

September 16, 2020

The CBM program sunsets.

January 20, 2021

Joe Biden is inaugurated as the forty-sixth President of the United States.

January 21, 2021

Drew Hirshfeld, Commissioner for Patents, performs the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO until April 4, 2022.

September 21, 2021

Senators Leahy and Tillis introduce “Unleashing American Innovators Act of 2021″ (S. 2773).

September 29, 2021

Senators Leahy and Cornyn introduce the “Restoring the America Invents Act” – S. 2891.

November 4, 2021

Representatives Massie, Gohmert, McClintock, and Gosar introduce H.R. 5874: “To promote the leadership of the United States in global innovation by establishing a robust patent system that restores and protects the right of inventors to own and enforce private property rights in inventions and discoveries, and for other purposes.”

April 5, 2022

Kathi Vidal is confirmed as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).

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IN MEMORIAM

Hon. John Paul Pinkerton

Administrative Patent Judge
Patent Trial and Appeal Board
U.S. Patent and Trademark Office

Source: Sand Springs Leader

Hon. Stephen Julien Emery
Examiner-In-Chief
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. Norman G. Torchin
Examiner-In-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. John Thomas Goolkasian
Examiner-In-Chief
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. Alton Douglas Rollins
Examiner-In-Chief
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Rest Haven Funeral Home

Hon. Lawrence “Larry” John Staab
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Miller Funeral Home

 

Hon. Natalie Trousof
Acting Examiner-in-Chief
Board of Appeals, U.S. Patent Office

Source: Chapman, Cole & Gleason Funeral Home

Hon. Gordon K. Milestone
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Hines-Rinaldi Funeral Home

Hon. Donald D. Forrer
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Beall Funeral Home

Hon. Melanie L. McCollum
Administrative Patent Judge
Patent Trial and Appeal Board, U.S. Patent and Trademark Office

Source: Capital Gazette

Hon. Irving Pellman
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. James R. Boler
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. Frederick E. McKelvey
Senior Administrative Patent Judge
Patent Trial and Appeal Board, U.S. Patent and Trademark Office

Source: Fauquier Now
Memorial Service

Hon. James D. Thomas
Examiner-In-Chief
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Pumphrey Funeral Homes

Hon. Samuel Hermann Blech
Examiner-In-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: findagrave.com

Hon. Douglas W. Robinson
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Hon. Stanley M. Urynowicz, Jr.
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post

Hon. Paul Joseph Henon, Jr.
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Legacy.com

Hon. Harrison E. McCandlish
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: The Washington Times

Hon. John Francis Gonzales
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Times-Picayune

Hon. Evelyn K. Merker
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Legacy

Hon. A Donald Messenheimer
Examiner-in-Chief
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: findagrave.com

Hon. Jerry Smith
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Source: Washington Post 

Hon. Elizabeth C. Weimar
Administrative Patent Judge
Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office

Sources: American University Law Review | findagrave.com | Washington Post