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INDUSTRIAL AND ENGINEERING CHEMISTRY
partment. A clear understanding of these principles should aid in keeping the inventor problem in its proper perspective. After an application has been filed by the attor’ney, prosecution takes its normal eourse Sometimes developments require further attention by the inventor-for instance, additional comparative tests may be requested by the Patent Office and these will necessitate reopening the experimental work relating to the invention. If the project has been completed by the laboratory, major and expensive efforts may be involved. At this point the value of the expected patent protection must be considered carefully in the light of the cost of the additional experimental expense. Although large research organizations may meet additional, unexpected demands without too much difficulty, this burden can be severe for small laboratories (1). The choice which smaller organizations face is that of foregoing all patent protection on the invention and relying on secrecy alone, a course which is none too attractive in view of the obvious hazards involved.
A TECHNICAL-PATENT LIAISON GROUP Richard F. Phillips Merck & Co.,Znc., Rahway, N. J . Whereas the act of invention must always be a personal matter and concerns an individual or is the result of an idea jointly arrived a t by coactive thinking of two or more individuals, the ramifications of a single invention may become fairly extensive. In order to provide supporting data and prepare a good patent application it is frequently necessary for several people of highly specialized knowledge and skills to contribute to the work as a team. The preparation of patent applications, establishing the claims, and matters of form and general prosecution strategy are the business of the patent attorney. There is one basic requirement of the patent law, however, for which the technical man must shoulder the burden of responsibility-namely, preparation of a disclosure that is sufficiently clear and complete to enable a person skilled in the art to carry out successfully the embodiments of the invention. This is especially true in chemical inventions, which are characterized by complexity and unpredictability. Technically trained patent liaison men can usually be very helpful in clarifying hazy or contradictory points and can save attorneys and research workers much time by ensuring that nothing is omitted from the disclosure to render the method inoperative. Intermingled with the problem of an operative disclosure is breadth of claims. This question relies heavily on the attorney’s discretion, but the technical man must support the attorney by furnishing him reliable data. The attorney can then plan his original attack and know what points may be conbeded during prosecution of the application without jeopardizing attainment of the fullest protection for the invention to which the patentee is entitled. A mechanical engineer who knows his basic principles can determine, with some assurance, equivalents in structure and function of particular embodiments of a machine on the drawing board. The chemist, in spite of molecular models and quantum mechanics, cannot yet do this. Often he is dealing with compounds of unknown structure and processes that are empirical. Unpredictability and unexpected results make a good argument for invention, but they also make the definition of boundaries difficult and uncertain. All patent attorneys recognize the strategic importance of the earliest filing date in an interference. Accordingly, the qttorney should know a t the earliest date possible the true boundaries of the invention and whether its real economic value can be pro-
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tected by claims of relatively narrow or moderate scope. Broad claims should be backed up with very strong supporting data, extremely careful scrutiny of the prior art, and exact information on the limits of operability. If the protection of an invention demands claims of much greater scope than those supported by actual results, the best action, if feasible, is to persuade the chemists in the laboratory to run definitive experiments. It is also important to know exactly what the invention is before any disclosure is made in foreign applications. Most important foreign countries are parties to the International Convention, whose provisions allow applicants one year in which to file a foreign application, entitled to the priority date of the original United States application. If an original application, which has reached the Patent Office, contains an error, it may be corrected by amendment or by filing a continuation-in-part as the circumstances dictate. In large research organizations, composed of many technical people specializing in a number of different fields, it is helpful t o have technically trained men correlate scientific findings and furnish disclosure reports which patent attorneys may use in preparing patent applications. This service may be provided by a technical-patent liaison group. At Merck & Co. the patent liaison group is composed of men primarily trained as chemists or chemical engineers, several of whom have also had legal training. To attain more rapid progress the patent liaison man must continually act as interpreter between technical men and attorneys. Questions that are important for atent reasons often are not appreciated by the chemist in the faboratory. Often the patent attorney needs to know the background of the invention and potential trends in the field which the chemist assumes is common knowledge or of no significance. A patent liaison man is assigned to a case as soon as it appears that an invention may have been made. He follows the subsequent laboratory work and, as soon as possible, prepares a disclosure report including a literature search which is dispatched to the patent department. He stays with the case actively until the patent application is filed. Cases vary in complexity; some require considerable review during preparation both with chemists in the laboratory and with the patent attorney. The patent liaison man follows developments in the interim period between official actions and is prepared to work actively again in compiling information needed to answer the official action. The patent liaison man and the patent attorney have opportunities to suggest laboratory work that may lead to creative results. For example, a member of Merck’s patent liaison group was drawin up a disclosure on a process for purifying a product by selectivevy concentrating it by treatment with a certain class of reagents and was trying to define the class for the broadest permissible claims. Fortunately the process was a rather simple one, and the chemist doing the laboratory work was of an especially inquisitive turn of mind. He was quite willing to run an additional number of experiments. From these it was found that one reagent in the class as originally conceived was not only inoperative in concentrating the original product but was unexpectedly valuable in knocking out troublesome impurities. Thus, not only was the definition of the original class of reagents revised to exclude the inoperative species, but a new invention was made. As it developed later, this second invention was the only one actually used in production.
SELECTION OF PATENT COUNSEL Harold S . Meyer The E . F. Goodrich Co., Akron, Ohio
In selecting patent counsel, the principal choice is between an independent practicing attorney and a resident attorney or patent department. This choice is largely dictated by the volume of business involved. If the quantity of business is sufficient, general experience indicates that the advantages of economy and constant availability of the attorney for consultation make it preferable to employ a resident patent attorney or establish a patent department. Nevertheless, some large concerns prefer to rely on outside attorneys, for a variety of reasons. For example, at-
