WHILE our patent system has commanded the W admiration of the world and has had many imitators, it is certainly susceptible of much improvement, as any one familiar with the details of its workings will testify. The delays and expense involved in securing a patent, against the opposition of an adverse claimant, the enormous cost and delay involved in attempting to enforce a patent when granted, and the lack of conclusiveness of the judgment finally secured, save in the particular jurisdiction in which it is rendered, call loudly for reforms 'in procedure. Under the law, as it now stands, if an applicant for a patent encounters in the Patent Office a rival claimant to the same invention, a proceeding is instituted, known as an interference, for the purpose of determining the question of priority of invention as between the two claimants. Opportunity is given each claimant to adduce evidence in support of his claim and, when the evidence is all in, the case is first argued and submitted to an officer, known as the Examiner of Interferences, for determination. The Examiner of Interferences reads the record of testimony (which, by the way, is apt to contain much irrelevant and immaterial matter because of the uncontrolled way in which it is permitted to be taken) and, after from two to four months' delay, renders a decision awarding priority to one or the other of the parties, and fixes a limit of appeal from !lis decision. Within such limit, which is never less than twenty days, the unsuccessful party may appeal to the Board of Examiners-in-Chief, a tribunal of three judges. This Board sets a day of hearing one or two months distant, and, on that day, there is another argument and submission. After a period of from two to six months, the Board renders its decision and sets a limit of appeal of not less than twenty days. The party unsuccessful on the last appeal may then appeal to the Commissioner of Patents, in person. If -— he does so, a day of hearing will be fxed from one to two months distant, when there will be another argument and submission. Within a period varying from one to four months, the Commissioner will hand down his decision and the party aggrieved thereby may, within forty days of the entry of the judgment, give notice of appeal to the Court of Appeals of the District of Columbia, and, within forty days after said notice, may docket his appeal in such Court of Appeals. The last named court is a tribunal of three judges, sitting in Washington, and bearing the same relation to the Supreme Court of the District of Columbia and to the Patent Office that the United States Circuit Court of Appeals for any one of the nine judicial circlits bears to the Circuit Courts of that circuit. If the appeal to this Court of Appeals is, for instance, docketed in May, it cannot be heard for six months, or till the November term following. When the court hears the appeal taken to it and hands down its decision, it might be thought that the controversy would b settled; but this is not the case. The decision of the Court of Appeals is not final as to any question litigated before it and the unsuccessful party has still the right, under the provisions of Section 4915 of the Revised Statutes, to file a bill in equity against his so-far successful rival, in the judicial district in which the latter may be found, asserting anew his claims to priority. In this bill-in-equity proceeding the plaintiff is entitled to make an entirely new record of testimony and may again call all the witnesses he called in the Patent· Office proceeding and as many more as he can find, with, of course, the privilege of the defendant to do the like. It will take the better part of a year to get this equity case ready for hearing and, after it is heard, the Circuit Court will probably hold it from two to six months before deciding it. The defeated party may then appeal, as a matter of right, to the United States Circuit Court of Appeals for that particular judicial circuit, at any time within six months of the entry of the decree in the Circuit Court. After the docketing of this last appeal it may take six months more before the appeal is heard and several months more may elapse before the appellate court hands down its decision finally setting the question of priority at rest. lt will be seen from the foregoing recital that a priority contest may involve the taking of testimony in the initial Patent Office interference proceeding; a first hearing and judgment by a tribunal consisting of one person; a review of that judgment by a tribunal of three; a further review by a tribunal of one; and a still further review by a court tribunal of three; all upon the same record, followed by a further review, on an enlarged or an entirely new record, by another trial court and a final review by another appellate court. Even if the judgment of all the tribunals to which the controversy is submitted be in favor of the same applicant, still, before the final judgment is arrived at, he must submit to being dragged through this long and devious course of litigation, at ruinous ex- pense, before his right of priority can be said to be firmly established. There is absolutely no necessity for such protracted litigation. The inordinate number of appeals permitted serves no useful purpose whatever. The submission of the controversy to a single tribunal of frst instance in the Patent Office, with the allowance of one appeal to an appellate tribunal outside of the Patent Office-the Court of Appeals of the District of Columbia, for instance-with power in that court to make a judgment that shall be final and conclusive, as between the parties and those claiming under them, as to every matter involved in the litigation, would seem to be a complete and satisfactory solution of the problem and tend to the furtherance of the cause of justice. There is no more reason for providing a long series of tribunals to try out an applicant's right to priority of invention over a rival claimant than there is for determining, in the same way, any other matter of private right. A claimant to a piece of land containing a gold mine brings his action of ejectment in a Circuit Court of the United States (the requisite diversity of citizenship existing) against the person in possession” and, if judgment goes against him, he may, by writ of error, remove the case to the United States Circuit Court of Appeals for that circuit, and if the judgment below is there affirmed, the litigation ends. But, under existing law, an applicant for a patent may contest with another a claim to priority of invention not through two only, but through . different tribunals. The right to invoke the aid of so many tribunals works a hardship upon both the inventor and upon the public. Experience has shown that the final judgment reached Mter submission of a case to two tribunals is as liable to be correct as that reached after submission of the same case to six different tribunals. An inventor enamored of the value and importance of his invention will, of course, pursue his claim through as many tribunals as the law provides, or until his money gives out, hut it is no real kindness to him to afford so many additional outlets for his enthusiasm. On the other hand, it would seem to be contrary to public policy that the judicial machinery of the government should be susceptible of being put into motion so many times for the protection of this particular kind of private right. The first great reform our patent system needs is, therefore, the cutting down of the number of appeals in priority cases. But the trials of an inventor by no means end when, after undergoing the delay and expense consequent upon the vast number of appeals provided, he at last secures his patent. If his ancient adversary, who has contested his right while he was getting a patent, shall continue to practise the patented ^^^^^j invention, he must, under the present state of the law, bring a new suit against him for the purpose ot stopping him. This usually takes the form of a suit on the equity side of a Circuit Court of the United States, in which he asks for an injunction and an accounting of profits and damages. In such a suit, the defendant may challenge the novelty and utility of the patented invention, the identity of his appliance with that covered by the patent-though it may be the same appliance that was involved in the prior interference proceeding-and about the only thing he may not do is to again assert his claims to priority of invention. When this suit in equity is, by the pleadings, brought to an issue, time is given for the taking of testimony by the plaintiff and defendant, respectively. The witnesses examined are not produced in open court before the judge, so that the latter may observe their demeanor while testifYing, and pass upon the competency, relevancy or materiality of the testimony offered, and generally control the proceedings, but, as in the Patent Office proceeding, the testimony Is introduced in the form of depositions taken before notaries public, or standing or special examiners of the court, who have no power whatever to pass upon the competency, relevancy or materiality of the evidence offered, or otherwise to control the proceedings, but who simply act as recording officers, taking down everything that is offered by way of testimony, as well as the objections and arguments and irrelevant remarks of counsel, and returning all to the court for the latter's examination. Because of this lack of restraint in the production of evidence, the depositions are extended and long drawn out, some of them, especially the depositions of experts, continuing for weeks and even months, until the record, as one of the federal judges has said, looks as though it were afflicted with elephantiasis. When it is remembered that good patent lawyers charge from twenty-five to one hundred dollars a day for their services and that good experts charge fifty (Conllued on page 464.)(continued from page 446.) or seventy,fve dollars a day for their services in preparation and while testifying, it can readily be seen how enormous the expenses of patent litigation may become under this mode of producing evidence. The system places the poor inventor at the mercy of his rich adversary and, sad to relate, renders it possible for lawyers with easy consciences to protract examinations for the mere purpose of multiplying per diem charges. The impression should not be gained, however, that this system of producing evidence is peculiar to patent cases. It extends to all causes brought on the eqnity side of the court, but its evils are perhaps not so frequently manifested in other classes of cases. There is a universal cry for a remedy. President Taft in his messages to Congress has referred to it. Three members of the Supreme Court of the United States, namely, Chief Justice White, Mr. Justice Lurton . and Mr. Justice Van Devanter, have been assigned to look into the matter and have conferred with committees appointed from the bars of the various Circuit Courts of Appeal with the view to ascertaining if something cannot be done by way of curing the evil. No definite result has yet been reached, but it is the expectation of the bar that, at an early day, the General Equity Rules will be so modified by the Supreme Court, under the power given that court by the statute, as to req)ire that the testimony of all witnesses living within the jurisdiction of the trial court shall be taken in open court, in the presence of a judge, and that only the testimony of such witnesses as live beyond the reach of the process of the court (i. e., one hundred miles, qr to the limits of the district) may be presented to the court by way of depositions. Such a change of practice as this may, and doubtless will, develop difficulties that will have to be met as they arise, but it is believed they will be met and that the net result will be that the volume of testimony taken will be very much reduced and that generally the dispatch of business wiII be facilitated and the cost of litigation very materially decreased. Time and space will permit of an allusion to but one other need of our patent system, namely, the establishment of one great Court of Patent Appeals to which appeals from all the trial courts may go and whose judgments as to the validity of the patent in view of all de--fenses actually raised against it, will be fnal and conclusive and, in operation, coterminous with the whose territory of the United States. At the present time, an appellate court called a United States Circuit Court of Appeals is provided in each of the nine judicial circuits, and while the judgments of this court are final, as to that circuit, they have no force beyond the limits of the latter. The result is, that a patent may, after most strenuous litigation, be held valid and infringed in one circuit, and, on substantially the same record, be held invalid and not in-fringed in another circuit. Such a condition of affairs has become intolerable and for many years past Congress has been importuned to divest the Circuit Courts of Appeals of their appellate jurisdiction in patent cases and to create a new appellate court for the disposition of all patent appeals. There seems to be a general recognition of the necessity for such a court, but the diffculty of reconciling the various plans that have been suggested and advocated as to methods of organization has so far prevented a favorable outcome. President Taft, in his address to the American Bar Association last August, at Boston, made extended reference to the matter and suggested that the recently created Commerce Court, composed of circuit judges, might take over the jurisdiction of patent appeals and thus solve the problem. It remains to be seen whether his suggestion will be acted upon by Congress. The plan advocated for so many years by the American Bar Association of having- a new and independent court composed of a permanent presiding judge and four associate judges selected, because of their demonstrated aptitude to deal with patent cases, from the U. S. Circuit and District benches, would seem to be more nearly ideal.
This article was originally published with the title "Needed Reforms in Patent Procedure" in Scientific American 105, 21, 446 (November 1911)