Scott J. Asmus and Andrew P. Cernota (November 2005)


Scott Joseph Asmus is a name partner and registered patent attorney in the law firm Maine & Asmus. Mr. Asmus received his Bachelor of Engineering (BE) degree from S.U.N.Y. Maritime College and, in 1997, his Juris Doctor (JD) and Master of Intellectual Property (MIP) degrees from the Franklin Pierce Law Center in Concord, New Hampshire. Prior to attending law school, Mr. Asmus worked for ten years on behalf of corporations including Grumman Aerospace, Raytheon and Analog Devices, doing engineering work on a variety of analog, digital, RF, microwave and software applications. A former chair of the New Hampshire Bar Association's Intellectual Property Law Section, Mr. Asmus provides legal counseling and assistance on matters concerning domestic and international patent law, trademark, copyright, Internet domain names, trade secret protection, licensing and technology transfers, and enforcement issues.
Andrew Paul Cernota is a registered patent attorney also licensed before the U.S. District Court for the District of New Hampshire, the United States Court of Appeals for the Federal Circuit, and the U.S. Patent and Trademark Office. He received his Juris Doctor (JD) and Master of Intellectual Property (MIP) degrees in 2002 from the Franklin Pierce Law Center, and his undergraduate (AB) degree in Chemistry in 1999 from Dartmouth College, where he focused on Physical and Inorganic Chemistry. Mr. Cernota has been an attorney with Maine & Asmus since 2003, and was a law clerk with the firm from 2001 to 2003. Among his other offices, Mr. Cernota is currently a justice of the peace of the State of New Hampshire, and selectman for Ward 8, Nashua, New Hampshire.

The Legal History Project jointly interviewed Messrs. Asmus and Cernota between April and November, 2005.

In the spring of 2004, the two of you discovered more than a dozen "X-patents" in the Dartmouth College library and thus helped to recover some of America's lost legal history. Before we discuss the methods you used in your legal sleuthing, could you explain what an "X-patent" is?

"X-patent" is the name given to the nearly 10,000 U.S. patents issued from 1790 to 1836. These early patents were also known as "Name and Date" patents and were not assigned numbers. The Patent Act of 1836 overhauled the U.S. patent system and patents were subsequently issued with patent numbers. For example, U.S. Patent No. 1 was issued in 1836 to Senator John Ruggles. Ironically, Sen. Ruggles had helped draft the 1836 Patent Act.

Subsequent to the passage of the 1836 Patent Act, the prior "Name and Date" patents were assigned numbers with an "X" designation so that the two sets of patents were not confused. For example, U.S. Patent No. X1 was issued in 1790 to Samuel Hopkins for a Method of Making Potash. The U.S. Patent Office database allows limited searching capabilities for the older patents, but you can view them by their patent number. For example, you can view the first U.S. patent by entering "X1" at the following link: http://patft.uspto.gov/netahtml/srchnum.htm You can only view the image and it does require a free TIFF plugin which is available through the Help option.

There is some difficulty in identifying an X-patent's number in order to view the patent, and in identifying an X-patent that is not in the Patent Office records. There are a few public lists of X-patents that have been put together by individuals such as Jim Davie, who was the unofficial Patent Office historian for many years. These lists have been extracted from the Congressional Record. However, it is still a work in progress and there is no official list of all the early patents. Our site has one version of the list at http://www.maineandasmus.com/historic-patents/X-Patent-Info.htm

The original, pre-1837 American patent system seems rather peculiar, in that it required a presidential signature for each patent, but didn't involve numbering or the making of official copies for government storage in separate locations. Can you shed some light on why the first half-century of U.S. patent law took the approach that it did?

The U.S. patent system adopted in 1790 was a simplification of the system used by the English Crown. The term "patent" is derived from "Letters Patent," which refers to the open letters by which the Crown dispensed privileges and honors. The drafters of the U.S. Constitution and the early Congress recognized the benefits of rewarding inventors and that a patent system was needed in this emerging nation in order to spur innovation. Under the Patent Act of 1790, all inventions were reviewed for novelty by a patent commission consisting of the Secretary of State, the Secretary of War, and the Attorney General. The President signed as the head of state.

It soon became evident that this high-level scrutiny by these individuals was untenable, and the system became a registration system that did not require substantive examination. The courts were left to straighten out patent validity. Unfortunately, this left the naïve at the mercy of unscrupulous "inventors" who may have copied an issued patent and submitted it as their own invention. That registration system persisted, with the expected fraudulent practices, until 1836, when examination was reintroduced into the U.S. patent system.

Reports were made to Congress of the patents issued, and copies of the patents and patent models were retained in the Patent Office (which was originally just one small part of the State Department, with a part-time clerk). The only other copy of the patent was the patent certificate sent to the inventor. No duplicate copies were stored off-site. Perhaps they felt an unjustifiable confidence, as this building had been spared during the War of 1812 when the Patent Commissioner had argued with the British that destroying the Patent Office would deprive mankind of technological innovations. In addition, a new building that was reportedly "fire proof" was under construction at the time.

The first great fire of 1836 destroyed almost all of the original patent records retained in the Patent Office. Some patents were duplicated by having the inventor return the sole remaining copy to the Patent Office. However, out of the estimated 9,957 X-patents issued, fewer than 3,000 were ever recovered.

Today the destruction of legal records is more often conscious than accidental, the idea being that such documents are simply useless and a waste of space. In the case of the X-patents, for example, any claims based on them would now probably be stale by more than a century and a half. Where then is the value in recovering these patents?

While conceivably these patents could be used as prior art grounds for rejection of a patent application, or for invalidating an enforceable patent, for practical purposes their value is primarily historical. These patents provide valuable insights into the history of technology in our country. Similar to present patents, they provide evidence of the state of technology at a particular time in our nation's history. They show the challenges faced by inventors and how they attempted to solve these problems. Moreover, they demonstrate the inventive genius and imagination of the American nation.

Of the quarter of X-patents that have been recovered, roughly what percentage have been found through conscious research efforts, and what percentage through accidental discovery or out-of-the-blue notification by private citizens, for example patent-holders' descendants?

Most X-patents recovered were resubmitted by the patent owner following the Patent Office fire. In the legislation that authorized the reconstruction of the U.S. Patent Office after the 1836 fire, a provision was made that stated that only patents that were re-recorded could be enforced. Some patentees didn't know about the fire, were dead, or had patents that were already expired, so they just did not send their copy back to be transcribed by the Patent Office. Since that time, X-patent recovery has been a low priority, with occasional discoveries being made by patent history enthusiasts. However, no one in the Patent Office could recall the last time someone had attempted to restore an X-patent, and there was no internal process as to how such a patent is entered into the existing database.

Turning to your own work in this recovery effort, how did you find the Dartmouth X-patents? What was the process that led you there, and were you looking for them specifically when they turned up?

Our firm, Maine & Asmus, drafts marketing materials that highlight early patents. In a footnote to a biography of Samuel Morey (an early American inventor) published by the Orford Historical Society of New Hampshire, there was a reference to an original Morey patent located at Dartmouth. We searched the U.S. patent databases and records, and realized that the Morey patents were not in the Patent Office's records. As a Dartmouth alumnus, Andrew searched the college's card catalog for the Morey documents. The college's collection of Morey papers was significant and contained a number of patents and related materials. Having identified the Morey patents, we searched for other patents from that time period.

While we certainly did not "discover" these X-patents, we did recognize their significance. Since that time, we have been working with the Patent Office to restore these X-patents. It has been a long process, as they do not have a convenient system for handling such old documents. And, furthermore, they want only the highest quality reproductions in their system. Currently, the only way to view the X-patents found at Dartmouth is through our website at http://www.maineandasmus.com/historic-patents/press-release.htm

As an aside, Jay Leno (the talk-show host) also wrote an article about Morey for Popular Mechanics. He called our office one Friday afternoon to discuss Morey, and he requested copies of the Morey patents.

Do history textbooks still bear the scars of the 1836 fire that consumed the patents of Morey and others, in the form of misattributions or simple omissions? Also, have discoveries of X-patents caused any significant shifts in our understanding of early American innovations?

In some limited cases, inventions have been misattributed. Some misattributions resulted from contemporary disputes, but the absence of searchable patent records made the debunking of such legends much more difficult. As little scholarly research has been done on the X-patents, there have not yet been any significant shifts in our understanding of the early patents and of American inventions. There have been some efforts to prove that Morey invented the steam boat before Fulton, but this work has typically gone unrecognized.

There are some interesting discussions about Samuel Morey in a small publication by the Orford Historical Society, the text of which is available at http://kinnexions.com/smlsource/samuel.htm Morey's most remarkable invention seems to have been the internal combustion engine that he patented in 1836. There is a 1931 replica of this engine owned by Dean Kamen, who was exceptionally gracious and allowed us to take some pictures of it: http://www.maineandasmus.com/historic-patents/index.htm There is also a transcribed copy of the Morey internal combustion patent posted on our website.

Do you believe that more X-patents are waiting to be found, and what resources will be required to locate them? Moreover, do you believe it will be possible someday to reconstruct the whole collection of the ten-thousand or so that were lost?

We have been contacted by several other individuals and organizations that have more lost X-patents. Sadly, however, it is unlikely that the majority of the X-patents will ever be restored. This is a tragedy for U.S. history as these patents represent some of the technological accomplishments of the early U.S. inventors who helped forge our country into a technological powerhouse. Some of the documents we found were barely legible and required extensive manipulations to achieve the best possible images for the Patent Office archives. Time is not a friend to these documents and ink fades.

We are confident that other X-patents are out there in private or academic collections, and some may be in the hands of relatives. We have located several X-patents at the New Hampshire Historical Society, several others at Dartmouth, and we have identified others in certain college collections. It is important to note that the institutions that possess these patents may be unaware that they are lost from the U.S. patent database. Still, it is likely that many X-patents have simply been lost or damaged by neglect or ignorance.

If someone thought they had an X-patent sitting among their family heirlooms, what should that person do with it? Is it particularly valuable, and if they notify the authorities will they be forced to give up the document? Whom would one even call or write about such a document in the first place?

We encourage people who might have an X-patent to contact the U.S. Patent Office and take the steps necessary to resubmit copies of the X-patent to the electronic database. In general, the documents should be carefully copied with museum-quality reproduction techniques to ensure a high-quality copy. We can provide the appropriate contact information for sending the copied documents to the Patent Office.

If a party is concerned about the value of the original, we would also encourage them to have a professional conservator check the patent for condition. Original X-patents may be quite valuable. For example, certain documents signed by George Washington fetch prices upwards of $100,000. They may also want to contact a reputable university or historical society to consider a loan or donation of the X-patent. However, even if it has relatively low value, it does represent an important contribution to the technological backbone of our country, and we urge anyone with an X-patent to enter that patent into its proper place in the U.S. patent database.

Finding X-patents is a pretty rarefied sort of pursuit, but the Internet reveals all sorts of unusual groups and organized efforts that one would never think existed. Is there by any chance a group or community of people devoted to seeking out X-patents?

While we would be thrilled to have an "X-Force" searching for such documents, due to the relative scarcity of these patents we are not sure such a group will step forward.

What drew you personally to patent history and to the X-patents in particular?

We are patent attorneys and history enthusiasts. The combination of patents and history was irresistible. The history of the Patent Office is fascinating, and anyone interested in this topic should get a copy of The Patent Office Pony, which is available at most libraries and can be purchased at Amazon.com.

Besides the X-patents, are there any issues of early patent history that deserve greater attention and, if so, what needs to be done?

Like many historic works, the "value" of early patent items is never recognized until it is too late. One particular example is the patent models that used to be a requirement for obtaining a patent. Small models or replicas of the invention were submitted to the Patent Office along with the patent application. The second Patent Office fire in 1877 destroyed about 87,000 patent models, with only about 27,000 since restored. There are a few public collections of patent models, while others are being sold on eBay to the highest bidder.

Also, few people realize that prior to the adoption of the federal Constitution, the individual states (and before that, the colonies) granted patents. These colonial patents are even more difficult to find than the X-patents, and seem to have been a more political grant. These were often ad hoc affairs passed by legislatures to encourage some economic pursuit, but could be an important area for further research.

Assistance is also required to formulate a complete and accurate listing of the roughly 10,000 X-patents. Several lists have been started, but the data entry is significant. An accurate spreadsheet would be a valuable tool to those researching the X-patents.

Messrs. Asmus and Cernota were jointly interviewed by Peter C. Hansen.



© Peter C. Hansen, The Legal History Project.