President Truman’s Executive Order 10096 in 1950 established the rules under which the executive branch should claim rights to inventions made by federal employees. The implementing regulations for Executive Order 10096 give guidance with regard to the definition of “made.” Here’s 37 CFR 501.3(c):
The term made as used in this part in relation to any invention, means the conception or first actual reduction to practice of such invention as stated in In re King, 3 USPQ2d (BNA) 1747 (Comm’r Pat. 1987).
This definition of made is also used by Bayh-Dole, but without any guidance. Let’s have a look, then, at In re King.
In re King involves a dispute over whether the federal government owed compensation to Eddie King, who had invented a new way to connect pallets used to load and off load cargo from aircraft. In 1969, Eddie King worked as a civilian forklift operator for the U.S. Air Force, saw there was a problem, and spent his own time to come up with a workable invention. The Air Force tested the pallet coupler and found that it worked better than anything else they had, and started using it. The case ends up in dispute and gets decided on appeal in 1987 by the Commissioner of Patents and Trademarks. The outcome of the appeal hinges on nuances having to do with “first actual reduction to practice.”
First, timing. In September 1969, King makes a prototype coupler and engaged a patent attorney to prepare a patent application. At approximately the same time, King provided prototype couplers to an Air Force employee for testing by the Air Force. King’s patent attorney produces a draft patent application by December 1969, before the Air Force has done any testing. The Air Force tested King’s couplers on December 4, 1969. After the tests–which showed that the couplers worked well, except they could not be uncoupled in flight–King signed the declaration for the patent application and the application was filed December 29, 1969. King got his patent on February 22, 1972–3, 643,603.
In 1985, King requested compensation from the Air Force for using his invention. King’s Air Force supervisor stated that the coupler was “‘related’ to King’s duties” as a forklift operator. Well–yes–King no doubt had to couple and uncouple pallets, so there would be a “relationship” to the design of a new coupler, but clearly King was not hired to invent. In 1986, the Air Force decided King had a right to his invention but the Air Force had a right to a royalty-free license under Executive Order 10096. King appealed, and thus In re King, which sided with the Air Force.
Part of the PTO Commissioner’s decision rests on an understanding of “made” in Executive Order 10096. Here is a typical instance of usage in the Executive Order (emphasis supplied):
(a) The Government shall obtain the entire right, title, and interest in and to all inventions made by any Government employee (1) during working hours, or (2) with a contribution by the Government of facilities, equipment, materials, funds, or information, or of time or services of other Government employees on official duty, or (3) which bear a direct relation to or are made in consequence of the official duties of the inventor.
The use of “made” here is not just to designate “any invention of any Government employee.” It would be easy enough to claim all inventions of any government employee and then spit back the ones the government doesn’t want, but that would not be equitable, as an employee might invent something entirely outside his employment and why should the government have any claim to such inventions? Thus, scope of what’s claimable becomes an issue. That’s what the “made” here is all about–not when the invention is first completed in a form that is patentable, but rather whether the invention is within the scope of a government claim. Executive Order 10096 then attempts to set out the conditions under which it is equitable (or at least not easily resisted) that the federal government should claim ownership of inventions. Let’s rephrase:
(1) if you work on (“make”) the invention during working hours when the government is paying you to do other work;
(2) if government stuff, funds, information, or people doing their government duties contribute to your invention in any way (help to “make”);
(3) if the invention is related to your official duties in some way (you were hired to “make” or had a responsibility to “make” or an opportunity to “make”).
This is a broad scope and goes well beyond “course and scope of employment.” If you get distracted or diminish your paid work, if anyone employed by the government helps you, or if you use any government resources that government lawyers can think of, or if there’s some “relationship” with your government employment, then the government has a claim by regulation on your invention. One can see how “made” comes into play–it’s not the “when” of inventing so much as “in what way” the invention has been made. In particular, the act of inventing gets stretched out, as it were, so the government can consider contributions or the use of “working hours.” Thus, it becomes important to consider the actions of “conception” and “first actual reduction to practice”–because a contribution to either of these parts of “inventing” counts toward the scope of the federal government’s claim to the invention or a license to the invention.
The In re King decision finds that King didn’t use government information because he “had no responsibility to use any information he may have learned on the job to effect improvements in any deficient equipment or to keep Air Force personnel abreast of developments in the pallet coupler art. So far, so good.But the decision finds that King “‘made’ his invention using Government Resources.” The decision breaks the invention down into conception and reduction to practice, as would be done for an interference–a dispute over who has invented first, not one in which there’s a dispute over who has rights in a patent. Conception goes to King:
King has shown ‘conception’ prior to December 2-5, 1969, by virtue of (1) his having made a prototype of his pallet coupler and (2) the existence of a ‘draft’ of his patent application which contained an ‘enabling’ description of how to make and use the invention.
The odd thing here, however, is that the decision places the making of a prototype in the “conception” part of making an invention rather than in the reduction to practice. Further, the preparation of a patent application that hasn’t been filed does not count as constructive reduction to practice. Here’s the current MPEP (2138.05) on the matter:
Reduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application.
If King had filed his patent application before the Air Force did any testing, then apparently the invention would not have been “made” using government resources. Such a fine line, eh?
The decision continues:
The extent to which testing is needed to establish an actual reduction to practice of an invention is manifestly a matter which must be decided on a case-by-case basis.
This isn’t helpful. It amounts to “we will know it when we decide we see it.” The Commissioner may have well written, “We have no idea where to go from here, and we found a court decision that said as much, so we are free to make something up that matches what we have already decided.”
Then there’s this–that the Air Force had tested other coupler designs and they had all failed; thus, for this new coupler, according to the Commissioner, testing would have to be necessary or the invention could not be shown to be actually reduced to practice:
Based on this fact, it would seem that a person skilled in the pallet coupler art would have needed a test of a new pallet coupler to be satisfied that the pallet coupler would in fact perform its intended function…. It follows that testing was needed in this case to establish an actual reduction to practice of King’s invention.
Thus, because the Air Force used its resources voluntarily to test King’s invention for its purposes, then the invention comes within the federal government’s claim to have a license to the invention under Executive Order 10096.
That’s some powerful strange interpretation of “with a contribution” in the Executive Order. If the Air Force tests an invention because the inventor has to have that testing done to “make” the invention–to demonstrate that it has been reduced to practice–then the Air Force “contributes” to making the invention. But if the inventor does not need that testing, then there’s no contribution. Except In re King says it doesn’t matter. The government can interpose its own testing and gain itself royalty-free privileges, regardless of the inventor’s needs. Telling point: King did not modify his prepared patent application based on the results of the Air Force testing. No change in the patent application = no contribution by the Air Force’s testing to the making of the invention. One has to twist “contribution” to mean “a unilateral actual reduction to practice unnecessary for the making of the invention.”
Had King simply coupled two pallets with his coupler and saw that it did a decent job, it appears that the “test” requirement would have been satisfied. Any Air Force testing or use would then have been a separate matter. As it was, the PTO did not require any Air Force test results to issue to King a patent. There was no test requirement. The Commissioner ignores this fact of the case.
The In re King decision then turns its attention directly to the meaning of “made” in Executive Order 10096. It starts by reciting statutes that use “made” with the claim that these instances define “made,” but mostly they don’t. They just use “made” or assert that “made” means “conception or first actual reduction to practice.” Such a “definition” replaces one usage with another. That is, by defining “made” in this way, the definition displaces any common meaning of “made”: made does not mean made; it means “conceived or first actually reduced to practice.” Made does not even mean “made, including conceived or first actually reduced to practice.”
You see? This is a definition by substitution, not by giving a history of usage or an explanation. Here, however, the definition of “made” replaces a general meaning with a technical usage, and for all that, the technical usage has nothing to do with scope and everything to do with priority–in a competition between two inventors who claim to have invented first, the one who first conceived and then diligently pursued reduction to practice is the first to invent, the first to have started–and who then also completed–the making of the invention. And this misuse of the technical usage now doesn’t even matter in current patent law–except here in 37 CFR 501.3 and in Bayh-Dole, at 35 USC 201(g).
In the Commissioner’s list of statutes, only two, pertaining to inventions made under the auspices of NASA (42 USC 2457(j)(3)) and the Department of Energy (42 USC 5908(m)(3)) use this substitution definition of “made”:
the term “made”, when used in relation to any invention, means the conception or first actual reduction to practice of such invention
Again, this “definition” doesn’t define “made”; it replaces a single word having a common sense–made–with two complicated concepts drawn from patent practice used to sort who has invented first but here used for a different purpose, to define the scope of free of charge deliverables to the federal government. And these two complicated concepts don’t begin to cover the activities that an inventor might undertake to figure out how to solve a given problem or to do or make something otherwise unanticipated. That is, conception and first actual reduction to practice do not span the entire list of things that an inventor might do in inventing–none of the misdirection is accounted for, none of the learning how to build any of the various pieces of a prototype, no construction of jigs or special equipment setups necessary to make required parts–none of that is within the scope of either “conception” or “first actual reduction to practice.” One would have to define “made” to mean “any work leading to conception or leading to first actual reduction to practice.”
Thus, replacing “made” meaning “brought into being, done, created in performing the work defined” with “conceived or first actually reduced to practice” both narrows the scope of the government’s interest and stranges it, so to speak. We will explore this stranging next, and then consider what it all means for Bayh-Dole.