Part I

The Surprisingly Engrossing History of Patent Examiners

Kara Swanson

I once silenced a seatmate on a transatlantic flight who threatened to be overly chatty by (truthfully) telling him that I was

traveling to London to speak about the history of the patent examiner. Horrified I might tell him about it, he quickly

returned to his own, apparently more interesting reading.

One glance at the ​Manual of Patent Examining Procedure​, a government publication more than 3,000 pages long,

would seem to justify his suspicion that patent examination is dry as dust. The manual, familiarly known as the MPEP,

provides instructions to the employees who review patent applications as well as guidance to inventors seeking patents.

The MPEP ​is​ dull reading. Its dullness, however, hides the nearly magical task of the patent examiner. It also papers over

decades of lively controversy about how patent examination should occur, if at all.

Application review in patent-speak is “examination,” and those who conduct it are “examiners.” Examination is the chief

task of the patent division of the ​U.S. Patent and Trademark Office​, which currently employs about 8,000 patent

examiners.

Examiners decide which ideas are useful, new, and clever enough to be patentable. If a patent application is granted, the

idea becomes intellectual property. It is no longer freely available to anyone who happens to think of it but is the exclusive

property of the patent owner, at least for a period of time (currently 20 years from the application filing date). Since 1790,

the dream of American inventors has been that the patent system will spin the rough straw of their ideas into gold.

The first U.S. Congress began the federal patent system but saw no need for a patent office. The ​Patent Act of 1790

required the secretary of state, the secretary of war, and the attorney general to consider each application. (If this act

were still in force, John Kerry, Chuck Hagel, and Eric Holder would have read more than 500,000 applications in 2013).

These men decided whether each invention was new and also “sufficiently useful and important” to justify the gold of an

exclusive grant. Thomas Jefferson is sometimes called the first patent examiner because Jefferson, then secretary of

state and an inventor himself, took a leading role in considering patent applications. As described by Jefferson biographer

Dumas Malone​, in March 1791, Jefferson set aside his worries about relations with Europe in order to welcome scientific

luminaries to his office. The men gathered to watch Jacob Isaacs demonstrate his device to turn seawater into fresh

water. The device did not work, and Isaacs, like more than two-thirds of those whose applications were considered by this

elite group, did not receive a patent.

It soon became apparent that the secretary of state lacked sufficient time to consider patent applications. With Jefferson’s

encouragement, Congress ​revamped the patent system in 1793​, making it more like the British system, although

according to ​Edward Walterscheid​, about one-fifth the cost, even factoring in the need to prepare drawings and models.

Any inventors who filed the necessary paperwork with the State Department, swore their invention was new, and paid $30

could receive a patent. Applications were simply registered rather than examined.

For the next 40 years, getting a U.S. patent was quick and cheap. The catch was that despite the inventor’s oath, many

issued patents did not describe a new and useful idea, either through ignorance or fraud, and were therefore invalid. The

only way to identify valid patents was a court case. Examination by litigation was time-consuming and expensive.

The examiner was inserted into the patent system to chart a middle ground between granting patents only to those able to

satisfy the secretary of state that an invention was sufficiently important and handing them out to all comers. In 1836, Sen.

John Ruggles of Maine, an inventor who visited the State Department to learn about patent applications soon after he

arrived in Washington, D.C., sponsored an act that created a patent office and the position of examiner. The examiner,

relying on his knowledge and the patent office library, would consider whether each invention was new, useful, and more

than just an obvious improvement over existing inventions. Charles Keller, whose long career working with patent

applications before the new law passed is ​described​ by historian Kenneth Dobyns, was appointed the first full-time patent

examiner, and granted Ruggles ​patent No. 1​ for a steam engine.

From the outset, considering each invention against the prior sum of knowledge to decide what is truly new and not

obvious was virtually impossible. Ruggles envisioned that examiners would have “a general knowledge of the arts,

manufactures, and the mechanisms used in every branch of business” as well as of the scientific and technical principles

behind each existing U.S. and European patent. By 1836, there were already about 40,000 patents.

Keller, a self-educated man, had gotten the job due to his experience with the old system. As Congress gradually

authorized more examiners to deal with the ever-growing volume of applications, examiner jobs were hotly sought after by

the scientific elite. There were not many men (and almost no women) with scientific training in the early-19th-century

United States, but there were even fewer scientific positions. Noted antebellum scientists, like ​Charles Grafton Page​, a

chemist and expert in electromagnetism, and Titian Ramsay Peale, a naturalist, were grateful to find well-paid work as

examiners.

Page, Peale, and their colleagues quickly found themselves in the hot seat. Their job was to avoid issuing invalid patents,

and in the 1840s, they were rejecting more than 50 percent of applications. Rejection made inventors unhappy. Many

were unwilling to believe that their idea, while new to them, was not new, or was too obvious. Examiners received the

blame. As historian Robert C. Post has ​noted​, ​Scientific American ​and​ ​the ​New York Times​ fulminated against
“conceited, crabbed, mulish” examiners who denied the hardworking inventor the anticipated gold from his idea. Rejected

would-be patentees argued that these “scientific men” relied on “what they have read in books” and lacked practical

experience.

One examiner in 1850 was nicknamed “the guillotine,” having seemingly never met an application he could not reject.

Inventors who closely watched applications saw the process as unpredictable and unfair—they thought that it depended

on the state of mind of the four examiners, which seemed to shift from week to week. In 1850, ​Scientific American​ called

for one of the four—W.P.N. Fitzgerald, who trained both as a lawyer and in mathematics and natural philosophy at West

Point—to be fired. The publication said that it would prefer a “simple headed” man to one who had no common feeling

with inventors. In 1852, Fitzgerald and three other examiners, all under attack in the press, resigned.

For the next century, patent officials sought to make examination less impossible and controversial by adjusting hiring

procedures and rejection rates. In the 1850s, Secretary of the Interior Robert McClelland, who held authority over the

patent office, pushed a solution that neatly fit his own goals. In place of the best-trained scientific minds as examiners, he

sought to hire political supporters, a common and legal approach in the 19th-century civil service. By the end of the

decade, these less-scientific examiners were granting two-thirds of applications. The patent commissioner in 1858 ​urged

examiners​ to welcome “the inventor as a friend” and fired those who were too “unsympathizing” when considering

applications.

Patent commissioners resented political meddling in their hiring and used a different approach to hire examiners who

would spark less inventor resentment yet have relevant skills. In 1869 the patent office became one of the first federal

offices to use written examinations to screen potential hires, seeking to replace reliance on elite credentials and scientific

reputation with standardized proof of “general knowledge.” These hires rejected a little more than one-quarter of patent

applications, and the commissioner ​boasted​ that Americans were saved from the inefficiency of “worthless patents,” and

could instead invest thousands of dollars “with scarcely a reading” of a patent, knowing it to be valid. The ​New York

Times,​ too, now praised patent examination as the chief virtue of the U.S. system.

Administrator efforts to keep rejection rates at a Goldilocks level—neither too high nor too low—also included the

beginning of what grew into the massive MPEP. In 1879, the patent commissioner ​detailed the 57 steps​ the office took to

process applications, demonstrating to the public that his systematically selected examiners followed known procedures,

rather than whim and custom. But it was only in 1949 that the MPEP was finally published.*

Patent examiners are no longer discussed by name in the popular press. But there is still ​intense​ ​interest​ in grant rates.

Americans remain hopeful that the patent office will spin their ideas into golden intellectual property—and remain

disgusted by worthless patents. When we argue about whether our patent system is broken, we are arguing about
whether the examiners are succeeding well enough at their impossible, magical task, or whether it is time to try another

way of “promoting the progress of science and the useful arts.”

*Correction, May 9, 2014:​ This article originally misstated that the Manual of Patent Examining Procedure ​was

published in 1945. It was published in 1949.

1) Explain what a patent is, and how it is meant to protect “intellectual property” of an inventor.

2) Why was the position of “Patent Examiner” created at the Federal level? Describe the role of the examiner in the patent
process.

3) Why were they considered “celebrities” In the 19th century?

4) Why do you think the earliest patent examiners tended towards rejecting applications? How did the press and inventors
respond to this tendency?

5) Why is the patent system still controversial today?

Part II: Choosing and Researching an Inventor and Invention

1) Cyrus McCormick - Mechanical Reaper

2) Henry Blair - Corn Planter

3) Thomas Jennings - Dry Scouring (Dry Cleaning)

4) Samuel Morse - Telegraph

5) Elias Howe - Sewing Machine

6) Tabitha Babbitt - Circular Saw

7) Walter Hunt - Safety Pin

8) Linus Yale - Cylinder Pin-Tumbler Lock

9) Charles Goodyear - Vulcanized Rubber

10) Thomas Davenport - Battery-Powered Motor

11) Joseph Henry - Multiple-Coil Magnet

12) George Pullman - Sleeping Car

13) Charles Grafton Page - Circuit Breaker

14) Platform Scale - Thaddeus Fairbanks

American History I
Ms. Page
American Patent: From Innovation to Intellectual Property

"Congress shall have the power...to promote the progress of science and useful arts by securing for limited
times to authors and inventors the exclusive right to their respective writings and discoveries.” - U.S.
Constitution, Article 1, Section 8

“Before... any man might instantly use what another had invented; so that the inventor had no special advantage from his own
invention. The patent system changed this; and secured to the inventor, for a limited time, the exclusive use of his invention; and
thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.” -​ ​Abraham Lincoln

Trademark - ​Protection of a slogan, design, color, smell, or other symbol that identifies the​ source​ of a product (or service).
Copyright - ​Protection of the rights of authors in their original creative works.
Patent - ​Protection of the rights to an invention deemed to be “new, useful, and non-obvious,” and also clear.

Inventor: ________________________ Invention: _________________________

Step I: Invention Research. ​Do some informal internet research on the inventor and invention to which you were assigned. Take
notes on this page. Formal citations are unnecessary, but be sure to include the title of any page you use, including the URL.

Biography Notes:

Invention Notes (What was the need to be filled? What was the process of inquiry and invention?):

Other Notes (including any particularly interesting information related to the granting of this patent):
Step II: Patent Proposal. ​The year is 1840, and you are ___________________. Using what you know and your informal research
into the background of the ______________, create a patent proposal to submit to the newly-created U.S. Patent Office. As you
create your patent proposal, consider the following:
a) What is the problem that your invention is addressing, and why does your invention provide a particularly useful
solution? (​Be sure to frame this in the context of the 1820s-1850s, the market revolution, and the needs and
desires of Americans during that time.)
b) By what process did you come to create this invention? Are you certain it is novel (new)?
c) Why do you want a patent?
d) The patent process is intensely competitive at this point. Why should the patent office approve your patent over
others? ​(Think about the needs of different regions. Think about the potential role of your invention in
westward expansion.)

Step III: Patent Examination.​ Each of you is both an inventor and an employee at the U.S. Patent Office, reinvented after a
disastrous fire in 1836.

1) Think about your philosophy of patent-granting:

a) What purpose do you think the role of patents is--how will you balance the interests of the inventor and the
interests of the public?
b) What are the costs and benefits of granting a patent?
c) What are your three central criteria by which to judge an application? How might you tailor those criteria to our
time period of study (1820s-1850s)?

As you listen to the presentations, you will evaluate the patents put forward to you using the criteria you developed. I will ask
everyone to defend their patent decisions--the reasons for granting that patent, and the reasons for denying the others.
Bonus Extension

The year is 2018. With your partners, identify a problem that many teenagers may face in these times. Then, with your partners, use
the following steps to identify and address the problem with an invention.

■ Identify a problem, something that needs fixing, or pick something that would make a daily task easier to
perform
■ Research solutions or inventions that might already exist to solve the problem you identified. Search
everywhere!
■ How does your invention offer a solution that is different from others that exist?
■ Sketch your ideas on paper.
■ Ask yourself: Does my invention address the problem or need? If not, you may want to rethink the original
problem you were set out to address or perhaps you have come up with a solution to a new or different
problem (that can still have value)
■ The cycle of invention does not end here. Improving your invention may require you to begin the process again
and may lead to additional inventions or improvements on your current design