This file is from the National Archives and Records dediCated-administration (NARA2), College Park, Maryland, R.G. 457 (Records of the National Security Agency), Box 808
29 July 1946
- From: Op-20-L (Patents)
- To: Op-20-L
Subj: Final Report on Patent Matters at Naval Communication Annex.
1. Patent questions arising at the Communication Annex are classified in two general categories. These are questions involving contracts; and those involving assistance to personnel, as under General Order 31. 2. Contracts involving this activity do not have uniform patent provisions, and they vary from ownership of patent rights by the Government to ownership by the contractor, with many different and additional clauses providing variations of these rights. All of the contracts have been carefully reviewed to determine their individual status in a patent sense, and to determine whether any action on the part of the Government was necessary. In many cases, where more detailed information was needed, it was obtained from the files of the Bureau of Supplies and Accounts, as well as from the Bureau of Ships and Code 945. Copies of information obtained are in the files of the writer, as are copies of the patent clauses of the various contracts. The contracts are:
|NOS-52254||Dr. Vannevar Bush|
|NXx-3063||National Cash Register Co.|
|NXs-7892||” ” ” ”|
|NXss-18916||” ” ” ”|
|NXss-25120||” ” ” ”|
|NXss25344||” ” ” ”|
|NXsr-46045||” ” ” ”|
|NXsr-49702||” ” ” ”|
|NXsr-53322||” ” ” ”|
|N5sr-9580||” ” ” ”|
|N5sr-9581||” ” ” ”|
|N5sr-9582||” ” ” ”|
|NXs-7893||International Business Machine Co.|
|NXsr-76156||” ” ” ”|
|NXsr-69204||” ” ” ”|
|NObsr-29017||” ” ” ”|
|NXs-37812||” ” ” ”|
|NXs-6940||Gray Mfg. Co.|
|NXs-3994||Eastman Kodak Co.|
|NXss-19450||” ” ”|
|NXsr-49711||” ” ”|
|NObsr-28476||Northwestern Aeronautical Corp.|
|NXsr-79987||Western Electric Co.|
a. NOx-52254 is the original contract for development of the comparator, and a patent application covering this equipment has been prepared; and if approved by CNO will be submitted to Dr. Bush for signature and assignment to the Government, as provided in the contract.
b. All of the contracts with the National Cash Register Co. except N5sr-9580, N5sr-9581, and N5sr-9582 have final patent reports filed therein. The above three are being terminated and patent reports are expected later; but only N5sr-9581 is a development contract. The others are for services and parts. Of the remainder only NXs-3063, NXs-7892, NXss-18916, NXsr-49702 and N5sr-9581[ed. note: repeated] are development contracts, and the rest are for production or parts and services. All of these projects were discussed in detail in conferences between Navy patent attorneys, and Company patent attorneys and engineers. It was brought out that the developments were merely engineering design based on old basic ideas, or on designs submitted by the Navy; and the patent reports indicate that no patentable inventions were made by personnel of the Contractor with the exception of the case indicated below. A memorandum in the files of the writer indicates that no patentable inventions were made by Naval personnel in connection with these same projects. The Contractor has filed one patent application under NXss-18916, which convers all inventions thereunder. This is Serial No. 513520, filed 9 December 1943, in the names of Nelson and Lehman, for Calculating Machines. A license has been granted to the Government.
c. Of the contracts with International Business Machine Co., only NXs-7893 was for developmental purposes. NXsr-69204 and NObsr-29017 are rental contracts and NXsr-76156 is for production. The latter includes a statement in its file that no inventions were made thereunder. In NXs-7893 two partial patent reports have been filed, and the contract was subsequently terminated. Some of the inventions listed in the reports are highly classified, and the Chief of Naval Operations has written a letter to the Bureau of Ships outlining certain procedure[s] to be followed. Action thereunder will be taken by that Bureau. The Contractor has already filed the following patent applications under NXs-7893:
- Tholstrup, H. L. and Skinner, J. A. Serial No. 568161 files 14 December 1944 for Typewriter Operated Punch.
- Tholstrup, H. L. Serial No. 569288, filed 22 December 1944 for Reader Controlled Typewriter.
- Thostrup, H. L. Serial No. 598540, filed 9 June 1945 for Reader Controlled Typewriter.
- Tholstrup, H. L. Serial No. 589112, filed 19 April 1945 for Reader Controlled Typewriter.
- Tholstrup, H. L. and Skinner, J. A. Serial No. 593367, filed 12 May 1945 for Reader Controlled Typewriter.
Licenses under the above have not yet been granted, but the Bureau of Ships will request them.
The Navy has filed the following case in connection with NXs-7893 under General Order 31:
- Skinner, J. A. Serial No. 584991 for Reader Controlled Typewriter.
d. In NXs-6940 the Gray Mfg. Co. has filed a statement that it is not interested in any patents developed thereunder. It is noteworthy that the application prepared under Nos-52254 above discloses this subject matter, and will afford the Government all necessary protection.
e. NSx-49711 with Eastman Kodak Co. was a production contract and involved no patent questions. NXs-19450 includes a final report in which five developments are listed, but only two of which include any patentable features. The report stated that the Contractor would file a patent application on only one of these, which it did later, and submitted a copy to the Bureau of Ships. The Bureau is requesting the execution of a license. This office prepared an application on the other development, and obtained an assignment from the Contractor. This case is Serial No. 628603, filed 14 November 1945, in the case of C. M. Tuttle, for a High Speed Camera.
NSx-3994 is an active contract, but the assignment clause therein has recently been changed to a license clause as regards project 37 only. Considerable correspondence and a number of conferences were held on this matter, and the question was finally settled in a manner satisfactory to both the Contractor and the Government.
One patent application has been filed by this office under NXs-3994, and was assigned to the Government. This is Serial No. 626370, filed 2 November 1945, in the name of H. F. Bennett, for Telecentric Projection Lenses.
f. NObsr-30131 with the Justwriter Corporation and NObs-28476 with the Northwestern Aeronautical Corporation are both new development contracts in which there are no immediate patent problems.
g. NXsr-79987 with the Western Electric Co. produced equipment which was considered unsatisfactory by the Chief of Naval Operations, and which paralleled a prior and independent development of the Navy. Application No. 617909, filed 21 September 1945 in the names of Norris and Miller, for Automatic Communication System, listed below; covers the Navy development, and a license has been granted to the Government. The above contract
has been completed, and full payment made, although no record of any patent report has been found. The Bureau of Ships is requesting that the Contractor file a report.
h. Wherever necessary in the above contracts, steps have been taken to protect the patent interests of the Government has they appear therein. Due to the varied nature of the patent clauses and the very high degree of security maintained in this group of contracts, patent rights and interests very great among them. In some contracts considerable difficulty arose in reconciling the contractual rights of the contractor with the security restrictions imposed. In future cases of this type it is recommended that these special contracts include strict security clauses giving the Navy representative all necessary restrictive rights on both subject matter and personnel. This will tend to prevent future controversy over disclosure of any of the subject matter. It is also recommended that these contracts include a simple assignment clause granting all rights to the Government, but providing that the contractor furnish a written disclosure of any inventions desired. This will help to prevent controversy, and to prevent accidental disclosure of any classified matter.
3. Assistance of a patent nature has been rendered to personnel on many and varied occasions. Some of this has been in the form of legal advice; and other as liaison with the U.S. Patent Office, or the Office of Research and Inventions. A number of patent applications have been prepared under General Order 31, which are included in the list below. A royalty free license to the Government has been executed in each case under the above order.
4. The following patent applications were prepared: Norris, W. C. and Tompkins, C. B. NC-5494 Serial No. 602147, filed 6 June 1945 Radio Position Fixers Norris, W. C> and Miller, R. E. NC-6097 Serial No. 617909, filed 21 September 1945 Automatic Communication System Menzel, D. H. NC-6098 Serial No. 617910, filed 21 September 1945 Polar Coordinator for the Calculation of Bearings
Engstrom, H. T. NC-6156
Serial No. 621649, filed 11 October 1945
Tompkins, C. B. NC-6324
Serial No. 625673, filed 30 October 1945
Pulse Recognition Device
Miller, R. E. NC-6353
Serial No. 626370, filed 31 October 1945
Range and Direction Finder
Bennett, H. F. NC-6378
Serial No. 626370, filed 2 November 1945
Telecentric Projection Lenses (NXs-3994)
Tuttle, C. M. NC-6402
Serial No. 628603, filed 14 November 1945
High Speed Camera (NXs-19450)
Rose, E. NC-6775
Serial No. 639394, filed 5 January 1946
Rose, E. NC-6776
Serial No. 639395, field 5 January 1945
Column Arranger Circuit
Rose, E. NC-6853
Serial No. 640639, Filed 11 January 1946
Rose, E. NC-6854
Serial No. 640640, filed 11 January 1946
Automatic Plugboard Changing Circuit
Rose, E. NC-6855
Serial No. 640641, filed 11 January 1946
Rose, E. NC-6909
Serial No. 642774, filed 22 January 1946
Norris, W. C., Steinhardt, L. R. and Ribe, F. L.
In process of filing
Time Division Demultiplexer for Teletype Signals
In hands of CNO for approval
Electronic Comparator (NOs-52254)
5. In connection with patent problems which may arise in the future at the Communication Annex, it is recommended that a patent attorney from the Office of Research and Inventions be designated as a consultant to the Annex, to give patent advice on both contract matters and patent problems of the personnel there. The work is very highly specialized, and should be handled by one familiar with the art and background at the Annex. A knowledge of electronics is essential. It is particularly urged that the patent attorney be consulted on development contracts and on invetions thereunder while the contracts are active; rather than after they are completed. This necessarily results in more orderly action and increased protection to the Government.
R. H. Rose