Manhattan District History; Book I - General; Volume 13 - Patents

Page 2

CONFIRMED TO BE UNCLASSIFIED DOENSI DECLASSIFICATION REVIEW E.Q. 12958 For The Atomic Energy Commission

Page 3

It has been the policy of the Uiiited States to control by means of patents the inventions and discoveries made in the course of the Manhattan District program. This volume is an account of the policy developed, the procedures used and the organisation established to seoure and maintain such control. prior to the organisation of the Manhattan District patents were the same personnel executed the same functions under both organisations no distinction has been made herein between the two operations. The data on which this account is based are available in the files of the Central Office of the Manhattan District Patent Division, o/o Capt. Robert A. Lavender, DSN (Rot.), Advisor on Patent Matters, United States Atomic Energy Commission, 1901 Constitution Avenue, Sasic documents essential to an understanding of the operations of the patents Division are included in appendices following the text and are referred to in the text by the note **(App.___ )• A summary has been Inserted ahead of the main text. The summary is keyed to the text by using paragraph numbers and titles in the summary corresponding with section numbers and titl

Page 4

TABLE OP COKXIKTS Custody of Patent Rights Owned by the Government 2.1 Seorecy Orders Issued by the Commissioner of and OSRD Participation 2.2 standard Patent Clauses 2*9 Directive of the Control of the Project through (1) Directive of the President 2.4 2-9 Manhattan District Participation 2.6 Product Contracts Patent Clause 2.6 Production and Development Contracts 2.7 Production and Research Contracts . 2.7 Interpretation of Patent Clauses 2.8 Renegotiation of Patent Clauses 2.9 Exceptions in Patent Clauses 2.11

Page 5

P*r« Mo. Paga Ho. 2-4 Foreign Participating Countries 2.14 b. Exchange of Information 2.14 o. Combined Policy Committee 2.14 d. Filing of Foreign Applications 2.16 SECTION 2 - APPLICATIONS FOR PATENTS b. Locale of Preparation and Review 2.1 2-2 Prosecution la the 0. S. Patent Of flee 2*2 2-2 Prosecution in Foreign Countries 2.2 2-4 Issuing of Patents 2.4 2-2 Assignment of Inventions 2.4 o« When Assignments Not Required 2.2 SECTION 4 - CONTRACT ADMINISTRATION 4-2 Negotiations of Patent Clauses 4*1 4-2 Renegotiation of Patent Clauses 4*1 4-4 Personnel Gontrastual Relations 4.2 4-2 Clearance of Contrasts 4.2 b. Requirements for Clearance 4.2 (1) Examination of Notebooks 4.3 (2) Custody of Notebooks 4.2 (3) Examination of Reports 4*3 (4) Report of Filed Applications and Delivery (6) Report on Subcontracts 4.4

Page 6

c* The Deputy Advisor 6,1 SECTION 7 - COOPERATING AGENCIES Government Departments and Agencies Cooperating with Patent Division 7*1 OF OFFICE ORGANIZATION

Page 7

1. Introduction* - The Patent Division of the Manhattan Distriot, oreated when the District undertook the manufacture of the final product of the Special Project and the research and development incident thereto was initially staffed with patent personnel originally associated with the Office of Scientific Research and Development• It comprised com missioned fiavy and Army officers and civilians* exhaustively screened on a bawls of loyalty and ability, the original number being augmented as necessary during the progress of the work. The purpose of the DlviSion is to assist in the protection of the Government’s interest in in ventions made as a result of the research and development under the Project, to secure through patents the maximum control of the Project obtainable thereby, to carry out decisions in the field of international relations, and to negotiate the purohase of patent rights from inde pendent inventors* Problems of security* the lack of precedent for what constituted largely virgin soil as to both science and patent law, a the necessity for dealing with contractors having rigid patent policies, 2. Policy. * Patent policy ef the Manhattan District was to some extent inherited from the Rational Defense Research Committee and the 0SRD. All Government patent rights arising from project inventions are, by order of the President of the Dhited States, in the custody of the Dlreotor of OSRD. The Patent Division of the Manhattan Distriot has in vestigated the origin of early inventions to secure to the Government its due rights, concentrating them in the custody of the Director of

Page 8

OSBD. It has also supervised the. request of secrecy order issuance as to applications filed in the Patent Office. The presidential directive ordering oontrol of the Project through patents led to adoption of a short-form clause of assignment of rights in all subsequent contracts, plus similar appropriate renegotiation of all outstanding contracts em bodying the long-form patent clause (2>2b(l)), a task still being carried aut by the Patent Division* Patent clauses were standardised and four types of oontraots embodying them were adopted upon creation of the Manhattan District* The type* of contract were* production of stan dard apparatus or material, production and development, production and research, and research. Contracts were renegotiated where changes in the character of work thereunder warranted it. Contracting Officers of the District and Areas were authorised to select appropriate patent clauses for subcontracts. Government rights in inventions of loaned employees and consultants were defined* In a few instances exceptions to the use of the standard patent olauses were made, notably in the easea of duPont, General Electric, Area Engineers using the GE clause, and certain other miscellaneous cases* With respect to participation in the research by foreign countries the Division made arrangements for the protection of the Government’s Interest as to the exchange of information not falling within the Patent Interchange Agreement (2-4b). It also participated in the establishment of an international committee and the adoption of a system for filing 3. Applications for Patents. - Inventions are reported to the

Page 9

Central Office for docketing, search, classification and a decision as to patentability. As to those ruled patentable the Report on Patenta bility is referred to the originating Croup for preparation and review of the application, which is then forwarded to the Central Office for filing* The Teohnioal Advisor examines the applioation for soope and conflicts, return of the applioation to the field for correction being necessary in rare instances. Amendments to applications as required by Patent Office action are similarly prepared by the initiating Croup* Assignments of inventions are to the Government, represented by the Director of 08BD, but are not recorded until necessary in the hand ling of the oase. Where it is deoided not to file any applioation by the Government the contractor is so informed and may file Its own application subject to a license in favor of the Government• sents the Director of OSRD and the Officer in Charge of the Manhattan District with respect to negotiation and renegotiation of patent clauses in contracts, smployer-employee agreements, loaned employee and consultant agreements, and the keeping of visitors' records* The Advisor passes upon the clearance of contraots from a patent standpoint, checks the examination and custody of notebooks and examines reports of re search, reports on filed applications and assignments, and the reports 6. Records * - The complexities of the Project of neoessity re sulted in a somewhat extensive system of records, listed hereinafter for the sake of completeness* Possibly the most important are the indices to and copies Of projeot research reports, and the index of inventions

Page 10

by classes and subclasses, contractors, and inventors. As of SI December 1946 the number of inventions docketed by the Division amounted to 5600, representing 493 different classes of inven tions. Invention searches in the prior Art seemed advisable and have been made in 5700 oases. The total of inventions approved for filing thus far was 2100, of which 1766 applications had been actually filed. This total comprised 1260 applications filed in the United States, 257 in England, and 858 in Canada, respectively. Conflicts between reported Inventions arose in 89 oases, concerning 68 of which formal opinions have been issued, patent administration extends to 2424 contracts, com prising 1390 prime and 1034 subcontracts. Aa of said date the Division has reviewed a total of over 6524 preset technical reports and 6305 the Central Office in Washington, It. c •, and the various Field groups. The Central office is comprised of the patent Advisor, the Deputy Advisor* the Technical and Administrative Assistant Chiefs, the Technical Advisors!, and patent attorneys, invention reporters in the field are usually civilians although some have been enrolled as officers* Officers and enlisted men assigned to the Division are under the local Army or Havy senior officer present for purposes of pay, leave, and discipline, but are otherwise directly supervised by the patent Advisor, including assignments to the locale of duty, made so far as possible with due consideration of rank and past patent practice. The Administration of the Division is set forth in the formal Manual of Office Organization and Procedure. The Central Office is under the

Page 11

direct supervision of the Deputy Chief and le comprised of six technical divisions and the administrative personnel. 7. Cooperating Agencies. - The patent Division has received the fullest oooperation from other Government departments and agencies, in cluding the patent Office, National Bureau of Standards, Navy Depart ment, Department of Interior, Offioe of Scientific Research and Development. State Department, Offioe of Emergency Management, War Production Board, Department of Agrioultrue, and the Patent Division of the Office of the Judge Advocate General of the Army.

Page 12

1-1 • general» * ihe Patent Division or the Manhattan District la organised by the Advisor on Patent Matters to the Director of the Of fice of Scientific Research and Developnent, Office for feergenoy active supervision of the research and development of the Project* batten District. The duties and the responsibilities of the Patent Division have been unusually exacting and severs# as so »uch research and development by so many outstanding scientists and engineers In so nany highly technical fields have been crowded into so few months* Virgin soil was being broken In nany fields of solstice in which there were no available trained and qualified patent attorneys end there were no precedents for the organisation of a patent group for the handling of the lergs volume of inventions from so aany technical sources as were utilised by the District, the negotiations attending the letting of such a wide variety of research and development contracts * accompanied with or without production* required a great deal of time and attention, especially because tho negotiations were with so nany contractors that had already fixed and well established petent policies* Security regu lations were necessarily very striot* Corepartiaontatton of information the outgrowth of a group of patent attorney’s and technical advisors Managoaent* This group was assembled in OSRD when that office had the

Page 13

and activites added to the difficulties of organization* Scientists and engineers were moved on short notioe or were temporarily away from their regular sites for extended periods of time or otherwise unavail able &t their sites for consultation in the interest of getting the de sired results at the earliest possible hour. It was realised that the prise purpose of the project was "to get the answer15 as quickly as humanly possible and, therefore, compromises from a patent point of view were necessary from time to time in favor of that prime purpose. However, the administrative officers, the scientists, and the engineers and all their staffs as well as contractors * representatives eooperated and assisted in the work of the patent division. The patent Division had especially the unreserved support and encouragement of Or* Yannevar Bush and Major General Leslie R. Groves. It is impracticable to list the names of individuals who were outstanding in their cooperation, but special mention should be made in this regard of Dr. Irvin Stewart, Executive secretary of OSRD, and Dr. Harry T* Wensel, chief of the Re search Control Section of the District. 1-2. purpose. - The purpose of the Patent Division is to assist the Director of OSRD and the Officer in Charge of the Manhattan Project in establishing and administrating a sound patent policy* The patent Division through the Director of OSIID and the officer in Charge of the {Manhattan Project, is charged with the responsibilities of carrying out the directives received by them as to the control of the use of atomic energy through patents, the carrying out of International relations de cisions, the protection of the Government’s interests in inventions and discoveries made under the project, through the execution of contracts »r>ri

Page 14

through the filing srnd prosecuting of (applications for patents, and the scouring of rights froa independent Inventor* for the protection of the Government** intereats in the Projeot as a whol«»

Page 15

a. Early History* - The patent policy of the Manhattan District had its origin in the National Defense Research Goarnittee and the Office of Scientific Researoh and Development« The Government, through the Havy Department end national Bureau of Standards, had prev iously sponsored ease experiments through research contract* with Colum bia University under whloh contracts the Government obtained licenses under resulting inventions, the Savy also ttwrrled on Halted research at the fiaval Research Laboratory at Aaaoostla, D. C. At the time of these early contracts the direction of the Project was under the Advisory Committee on Uranium ef which the Director of the National Bureau of Standards was chairman and the memberi of which mire made up of Army and Navy representatives and scientists, principally from universities. Inventions made by assisting personnel of the Bureau of Standards mere. In accordance with the policy of that Bureau, assigned to the Government, but no contracts mere entered into with the committee members and their assistants for the assignment of their inventions to the Government. However, all of the inventions made by the committee members have later been assigned voluntarily to the Government and without profit to the individual members. Assignment of rights under some of the inventions made by some assistants to the member* are still under negotiation. Custody of Patent Righta Owned by the Government* - The Government holds patent rights, the same as other property rights, in the oustody of some Government department or agency and the custody of

Page 16

such rights is initially'In the department or agenoy that contracted for them. An some of the rights to invent ions came into the government as represented by the Seoretary of the Navy end by the Secretary of C«a» meroe, the President issued instructions that all patent rights relat ing to the Projeot should be in the custody of the Director of 03RD# These instructions were not changed when the Manhattan District was formed and patent rights arising out of contracts let by the District •• Seorecy Orders Issued by the Commissioner of Patents. tJnder the provisions of Public Law TOO (76th Congress), as amended (38 DSC 48), the Comaissloner of Patents is authorised to issue orders of secrecy against the inventors, their heirs and assignees, prohibit ing the disclosure of information contained in applications for patents* the Commissioner of Patents had requested the reconwendationa of the Director of OSRD# who delegated the examination of such applications as might be referred to him to certain technical aides* The Director of OSRD delegated the preparation of recommendations and …