18 D.C. 14 (D.C.D.C. 1888), 29,068, United States ex rel. Pollok v. Hall

Docket Nº:At Law. 29,068.
Citation:18 D.C. 14
Opinion Judge:Mr. Justice MERRICK:
Attorney:Mr. PHILLIP MAURO for relator. Mr. L. A. PALMER for the Commissioner.
Case Date:November 12, 1888
Court:Supreme Court of District of Columbia

Page 14

18 D.C. 14 (D.C.D.C. 1888)




At Law. No. 29,068.

Supreme Court, District of Columbia.

November 12, 1888

1. Whenever a reasonable suggestion of its necessity for the purposes of evidence is made by the person requesting it, the Commissioner of Patents cannot lawfully refuse to furnish a certified copy of an abandoned or rejected application for a patent; the right to be furnished such a copy is given the public by statute, and the refusal thereof entitles the applicant to the writ of mandamus against the Commissioner to compel a compliance with such request.

2. An attorney at law who has requested such a copy in behalf of his client and been refused has such an interest in the subject-matter as entitles him to commence proceedings in his own name as relator for the writ of mandamus.

PETITION for mandamus against the Commissioner of Patents. Hearing in the first instance.

THE FACTS are stated in the opinion.

Mr. PHILLIP MAURO for relator.

Mr. L. A. PALMER for the Commissioner.


Mr. Justice MERRICK:

The court has had under consideration the application of Anthony Pollok for a writ of mandamus against the Commissioner of Patents to compel him to give a certified copy of a certain abandoned application for a patent remaining on file in the archives of that office.

In response to that application, the Commissioner sets up that, while he considers that the relator is an attorney in the regular practice of his profession before the Patent Office, and that he is also in point of fact the attorney employed by the party in whose behalf he makes the application for the copy in question, he has no right to it:

First. Because he is not the party having the legal title to the subject-matter;

Second. That it does not appear that the paper is really requisite for the purposes of evidence in the alleged cause; and

Third. That under Rule 179 of the Patent Office the Commissioner of Patents has a discretion to grant or withhold information in that class of cases at his pleasure, or at his discretion— the terms as used, seem to be convertible.

In order to ascertain if there were just foundation for the refusal of the Commissioner of Patents, as well as to understand the scope of that refusal, it is proper for a moment to advert to first principles. For what was the Patent Office established? What was the design of its institution? And what rights does it protect? We know that at common law there was no such thing as a monopoly in an invention, or a monopoly in the use of knowledge which the party possessing it had once communicated in any manner to his fellow beings; that the revelations of thought and intellect are common property, and there is no monopoly or exclusive right in such things, except so far as they have been conferred by positive law; and positive law has never gone any further to confer exclusive property in such things than for purposes of encouragement of science, and the development and advancement of art. That it may not be supposed that the court is for the first time announcing this as a general principle of the common law, though it is familiar to all lawyers, we refer to the language of the Supreme Court in the case of Gayler vs. Wilder, 10 Howard, 495, and read a certain passage from that opinion:

" Now, the monopoly granted to the patentee is for one entire thing; it is the exclusive right of making, using, and vending to others to be used, the improvement he has invented and for which the patent is granted. The monopoly did not exist at common law, and the rights, therefore, which may be exercised under it cannot be regulated by the rules of the common law. It is created by the act of Congress, and no rights can be acquired in it unless authorized by statute and in the manner the statute prescribes."

The authority for legislation on the subject is found in that clause of the Constitution which says: " The Congress shall have power to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

Here we find the entire scope of the right of exclusiveness; and as involved in the right of exclusiveness the entire scope of the right of secrecy. In pursuance of the above delegation of power, Congress has established the Patent Office, and has established certain rules and regulations with respect to it, and amongst those rules the only rule of secrecy is that which is made in aid of the inventor, who has not yet perfected his design, and which enables him to present an application to the proper authorities to secure his invention, and while he is using all diligence to confer upon the public the knowledge that he possesses, it gives him further opportunities to perfect his invention before he makes an application for a definitive patent. That limitation of the authority of publicity, that single grant of secrecy, is to be found in Section 4902 of the Revised Statutes, in these words:

" Any citizen of the United States who makes any new invention or discovery and desires further time to mature the same, may, on payment of the fees required by law, file in the Patent Office a caveat setting forth the design thereof and of its distinguishing characteristics, and praying protection of...

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