Gilchrist, James E.

English

University of Tulsa College of Law

Tulsa Law Review Volume 3 Issue 2 1966 Patents: Action by United States Government for Infringement of Government Patent James E. Gilchrist Follow this and additional works at: https://digitalcommons.law.utulsa.edu/tlr  Part of the Law Commons Recommended Citation James E. Gilchrist, Patents: Action by United States Government for Infringement of Government Patent, 3 Tulsa L. J. 205 (2013). Available at: https://digitalcommons.law.utulsa.edu/tlr/vol3/iss2/13 This Casenote/Comment is brought to you for free and open access by TU Law Digital Commons. It has been accepted for inclusion in Tulsa Law Review by an authorized editor of TU Law Digital Commons. For more information, please contact megan-donald@utulsa.edu. NOTES AND COMMENTSjustification the racial classification . . . is reduced to an in-vidious discrimination forbidden by the Equal ProtectionClause. 7It was also pointed out in McLaughlin that the interpretation of the equalprotection clause handed down in Pace had been swept away by subse-quent decisions of the Court. With the overruling of the effect of Pace,the basis of the Stevens case and ultimately the basis for upholding themiscegenation statutes like that in Oklahoma was greatly diminished.Where are state courts to turn? The Oklahoma court was faced withabundant precedent upholding the constitutionality of these statutes andat the same time faced with a liberal trend on a national level, which canonly be resolved by the United States Supreme Court which has beenreluctant to decide this issue. The Court had an opportunity to decide thequestion in Naim v. Naim,'8 but refused certiorari on a procedural point.Likewise, as indicated above, they had an opportunity to go more directlyto the issue at hand in McLaughlin, but chose not to.The next move is up to the Supreme Court, because of the reluctanceof the state courts to lead in changing and the vast amount of case lawsupporting constitutionality. Until the highest Court either upholds orvoids these laws, they will continue in force on this uncertain footing.In forecasting the outcome of this situation, Mr. Justice Stewart's con-curring opinion in McLaughlin should be noted, for he indicated that". .. it is simply not possible for a state law to be valid under our Con-stitution which makes the criminality of an act depend upon the race ofthe actor. Discrimination of that kind is invidious per se." 19Problems of racial discrimination are of growing concern in our coun-try. The civil rights of all citizens of the United States must be protectedin an equal manner. As long as laws exist which make it a crime to marryanother because one is a member of the African race and the other is ofanother race, or which prohibit marriage for the same reason, it cannotbe said that equal protection exists.John TurnerPATENTS: ACTION BY UNITED STATES GOVERNMENTFOR INFRINGEMENT OF GOVERNMENT PATENTThe United States Court of Claims held in the recent case of TektronixInc. v. United States' that the general policy of free-use of governmentpatents over the past 100 years gives an unlicensed user an implied license17 Id. at 192-93.Is 350 U.S. 985 (1956).19 McLaughlin v. Florida, supra note 14, at 198.'351 F.2d 630 (Ct. Cl. 1965).Vi56)1Gilchrist: Patents: Action by United States Government for Infringement of GPublished by TU Law Digital Commons, 1966TULSA LAW JOURNAL owhich precludes an infringement action by the United States Government.As pointed out in the case, this is the first time that the government hasattempted to sue for infringement of one of its patents.In Tektronix the plaintiff manufacturer brought a patent infringementaction against the United States. In its unprecedented counterclaim thegovernment alleged that since the plaintiff was the unlicensed user ofcertain government patents, plaintiff was liable for damages thereon. TheCourt of Claims stated that: "... . The government's tacit approval ofthe unlicensed use of the patents in suit during the period of the allegedinfringement granted to plaintiff an implied license, which precludes de-fendant from recovering on its counterdaim."2Patent law has its foundation in Article I, Section 8 of the UnitedStates Constitution: '"he Congress shall have the power ... to promotethe progress of science and useful arts by securing for limited times tothe authors and inventors the exclusive right to their respective writingsand discoveries." But both the Constitution and the most recent codifica-tion of the patent laws in Title 35, U.S.C. are silent as to authority forsuits by the government for infringement of its patents.At the time of the framing of the Constitution there was probably verylittle thought given to the possibility that the government would becomea holder of patents; but the government gradually began to acquire titleto a number of patents, largely as a result of the confiscation of alienproperties during two world wars. This trend was accelerated by thepassage of the Atomic Energy Act of 19544 and the National Aeronauticsand Space Act of 19585, both of which contain provisions whereunderthe government may take title to inventions developed on governmentsponsored research and development contracts.6 Consequently, today thegovernment holds more patents than any individual or corporation in theUnited States.7There has developed over the years a general policy of giving anyinterested party a nonexclusive, royalty-free license of any government-owned patent." This policy amounts to little more than a public dedica-tion of government-owned patents. That the government is aware of and2 Id. at 633.3 See 1 Report and Recommendations of the Attorney General to the President,Investigation of Government Patent Practices and Policies 111, 112 (1947) [here-inafter cited as Att'y Gen. Rep.]; see generally Somericb, Treatment by UnitedStates of World War I and 11 enemy-Owned Patents and Copyrights, 4 AM. J.CoMP. L. 587 (1955).4 68 Star. 943-48, 42 U.S.C. § 2181-90 (1958).5 72 Stat. 426, 42 U.S.C. § 2451 (1958).6 See Daddario, A Patent Policy for a Free Enterprise Economy, 47 A.B.A.J.671, 673 (1961).7 Watson, Management of Government-Owned Inventions, 21 FED. Bj. 121,123 (1961).8 See Att'y Gen. Rep., op. cit. supra note 3, Vol. 1 113, 114.[V l. 3, No. 22Tulsa Law Review, Vol. 3 [1966], Iss. 2, Art. 13https://digitalcommons.law.utulsa.edu/tlr/vol3/iss2/13NOTES AND COMMENTShas given its tacit approval to the unlicensed use of government patentsby not enforcing them is well documented in several government pub-lications.9 So, in the absence of any statutory procedure, a policy of free-use of government-owned patents has developed.The government recognized in its allegations in the Tektronix casethat there is no statutory authority for an infringement action, and thatthe free-use policy has existed for over 100 years. However, it maintainedthat: (1) the Attorney General always has the power to sue for the misuseof government property; and (2) there was an established policy con-trary to the free-use policy which applied to these particular patents.In analyzing the case the court paralleled the law in the government-owned patent field with that of the free-use of public lands prior to thepassage of regulations governing their use. In finding that there was animplied license to use, the court quoted from Light v. United States:And so, without passing a statute, or taking any affirmativeaction on the subject, the United States suffered its public do-main to be used for such purposes. There thus grew up a sortof implied license that these lands, thus left open, might beused so long as the Government did not cancel its tacit consent.10Thus, in holding that there was an implied license, the court rebuttedthe government's allegation of the power of the attorney general to suefor a misuse of government property. In answer to the government'sargument of a special policy pertaining to these particular patents, thecourt indicated that there was no evidence to establish this policy duringthe period of the counterclaim. It was pointed out also that licensingagreements for these patents entered into by the government subsequent tothe filing of the counterclaim obviously did not establish any exception.Further, in the absence of any specific recommendation regarding thetreatment of these particular patents, there is no support for the govern-ment's contention that there is an exception which ". .. applies to aconcern which occupies a dominant position in an industry and is theprincipal beneficiary of such dedication.""' lIt can be concluded from Tekronix that- the courts will uphold the free-use policy as it applies to government-owned patents to which no specialtreatment is accorded until the government takes some action to negateits implied consent. Until such time, the public shall continue to enjoyat will the utilization of these government-owned patents.That the counterclaim was filed at all is indicative of government dis-satisfaction with past patent administration of government-owned patents.0 See, e.g., Att'y Gen. Rep., op. cit. supra note 3, Vol. 2 at 312.10220 U.S. 523, 535 (1911).11 Tektronix Inc. v. United States, supra note 1, at 634.1966)3Gilchrist: Patents: Action by United States Government for Infringement of GPublished by TU Law Digital Commons, 1966

Patents: Action by United States Government for Infringement of Government Patent

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Patents: Action by United States Government for Infringement of Government Patent

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