Confederate Office debates process:
To examine or not
Most of the world's patent offices "examine" patent applications to determine if an "invention" is disclosed in the application before granting the applicant a patent. This process involves a search by the Examiner, who compares what is already publicly known about the subject matter of the invention with what the applicant claims as his invention. Only if the application discloses a new invention is a patent granted. The principal advantage put forward to justify the substantial expense of maintaining vast quantities of records and reviewing applications for invention is that many obviously worthless applications are weeded out, and the scope of the invention as claimed in granted patents is generally closer to that which the inventor is really entitled.
However, some countries, for example, Switzerland, do not examine most patent applications for "invention", but only to ensure that the application is formally correct and directed to patentable subject matter. The granted patent must thereafter be challenged by anyone who believes that the patent as granted does not, in fact, disclose a novel invention. This system is justified by the fact that no patent office can really examine an application so carefully that the granted patent is "guaranteed" valid, as is evidenced by the fact that a substantial percentage of litigated patents are declared invalid when fully reviewed by the Courts. So, the argument goes, why not leave it up to the patent owner's competitors to challenge the patent. After all, they have the most incentive to do a truly thorough job.
This argument is not a new one, and in fact arose during the War for Southern Independence in the Confederate Patent Office. At the start of the war the Confederate Patent Office adopted the same system used by the United States Patent Office - an examination system much like the one presently in use. However, the Confederate Patent Office was plagued by a scarcity of technical books and patent copies necessary to conduct a thorough examination for invention. In addition, the number of applications filed barely justified the maintenance of an examining staff and support personnel.
In 1863 a proposal was made to change the Confederate Patent Office from one that investigated the novelty of the claimed invention to one of simple record. In such a system the applicant would file an application and, subject to very few exceptions, soon thereafter receive a patent. The proposal was made for reasons not so different from those presently put forward by modern advocates. Rufus Rhodes, the Confederate Commissioner of Patents, was vigorously opposed to the proposed change, and devoted a substantial portion of his Annual Report of 1863 to an argument against the proposed change.
Because of the substantial similarity between some of the comments made by Mr. Rhodes and the arguments of present-day advocates of an examination system, Mr. Rhodes' comments are set out at some length below:
By making the Patent Office an office of record merely, patents would be granted to all applicants indiscriminately, and endless confusion, conflict and litigation, would inevitably result. Nor is such a system new. It was tried under the act of April 10, 1790, and the act of February 21, 1793, in the United States, but was found utterly insufficient to accomplish the objects of the constitutional provision, which is the same as ours. The defects of these laws were remedied by the act of July 4, 1836, of which our law, excepting some amendments, is substantially a transcript. The object and end of this law is to secure the exclusive right to practice an invention to the original and first inventor, and it has produced the most magnificent results in its practical operation in the United States. It encouraged the meritorious inventor, and stimulated the mechanical genius of that country to such a degree, that in the development of mechanical skill and the practice of the useful arts, the people of the United States entered into successful competition with the people of France and England, almost from the very day of its enactment. It was by virtue of the protection guarantied [sic] by this law to the true inventor, that the electric telegraph, the reaping machine, the sewing machine, and many other equally valuable labor and time-saving machines, were created and given to man. And even within the short period that has elapsed since the organization of the Confederate States Patent Office, the present law has been in successful operation; and notwithstanding that the minds of our people have been diverted from the pursuits of peace, and a majority of our thinking men have been in the army, and hence removed quite away from the walks of invention, it is not too much to say that it has earned some little measure of reputation as a useful and meritorious establishment. . . .
Finally, to make the Office a mere office of record, would be as unjust as it would be impolitic. It would invalidate, to a great degree, the vested rights of our citizens who have acquired patent rights under the old government, as well as under the Government of the Confederate States. It would bring into competition with them thousands of unscrupulous adventurers and speculators, who have nothing to lose and all to gain; and the flood gates of litigation would thus be thrown open to dishearten the true inventor. . . .In considering this subject, the fact has not been overlooked, that in England the patent-office is attached to the Court of Chancery, and is an office of record only.
But in England the mechanic arts have already attained a high degree of perfection, and need but little encouragement and protection from the Government. Litigation is also, to a great extent, prevented by the exaction of the enormous fee of five hundred dollars from every applicant for a patent - another object being to swell the revenue of the Government. But although, owing to this expedient, applications for patents are rarely filed, except for inventions of great value, and impostors are restrained from seeking conflicts with other patentees, the system has been found oftentimes to work great injustice.
But the restrictive expedients against the granting of patent rights, which obtain in England, could not be adopted in this country. The exaction of unreasonable fees from inventors would not only be unjust; it would also be unconstitutional. The Confederate Government has no right to tax one class of the community for the purpose of raising revenue for the benefit of all other classes; for taxation, declares the Constitution, must be uniform. The fees paid by inventors, under the present law, are intended only to sustain and support the Patent Office; and institution established for the exclusive benefit, in the first instance, of inventors, and they are not intended to be, and ought not to be, a source of revenue to the Government. The payment of prohibitory or restrictive taxes in the form of large fees by inventors, in a country where invention is still in its infancy, and needs the most kindly fosterage and encouragement, would assuredly be attended with the most disastrous results. It would crush to death all disposition and effort on the part of our people to cultivate natural philosophy and the kindred arts and sciences, and place them, after the war, in the same position of helpless dependency to our bitter foes which they held before the war, and force us once more to look to these enemies for nearly every appliance of comfort and convenience required in the economy of the humblest home in our land.
The fact that the vast majority of patent offices presently in existence throughout the world adhere to one degree or another to a system which includes an examination for invention is evidence that, on balance, the arguments made by Rufus Rhodes in 1863 remain valid and accepted. Also, the comments made concerning the high fees then being charged to inventors in England ring true today, as they did 130 years ago.
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