definitely places a burden of demonstration and refutation upon an applicant when that applicant cannot establish a prior refusal to accept a patent reference disclosure at its face value. In other words, when applying a patent disclosure as a reference, the current practice is to give broad statements the same weight as would theoretically be accorded those statements if urged as a basis for claims. The office requires evidence from an applicant before it will consider such a disclosure to be unreliably broad. The practice, as outlined by Mr. Richard, seems sound enough, yet what better evidence would be needed if the record shows that the office itself has refused to accept the patent disclosure at its face value! Incidentally, this proposal is not at all contrary to the general principle that proof of invention rests upon the applicant for a patent grant. That general principle is not disturbed by requiring the Patent Office to furnish supporting evidence when it wishes to blow hot on a disclosure over which it had once blown cold.
Exchange of Ideas This proposal can be judged by the principles of need and approach. I believe it passes the principles of need with flying colors. It probably can be classified in the third category of approach. Even though members of the patent bar may b e impressed by it as a "good idea," how is it to be established as the practice? I t is probably not a '"burning" issue or one that would warrant intense study or preparation. I suggest that an organization such as the AMERICAN CHEMICAL
SOCIETY might exchange ideas, with the object of presenting this subject to the patent examiner during the prosecution of pertinent cases. If simple argument during prosecution is persuasive to some patent examiners, still others may be persuaded by reference to these case records and by the impetus thus established. There is always t h e test case in which such a matter as this is developed until it is crystal clear and then presented to the Patent Office Board of Appeals as an isolated issue. I am familiar with one case
in which the sole issue may turn out to be just as described. I doubt if there are many patent attorneys in the chemical field who are not familiar with pending cases of a similar nature. Perhaps a little exchange of ideas might develop a good test case. One of the fundamental purposes of this paper is to bring out the dynamic nature of patent practice. The brief analysis of need for change and the statement of principles of approach in accomplishing those needs may emphasize some of the tools by which the inventing public can exert its fair share of force in shaping patent practice. T h e patent system was designed as an ultimate benefit to the people. Any practice which places an undue burden on either the Patent Office or the inventor interferes with that purpose and certainly ought to be changed. The opportunity afforded for instilling into the practice desirable changes that ultimately may find their way into the patent system through rules and statutes is valuable and important and should not be overlooked.
L ' M T E D STATES P A T E N T OFFICE.
Chemical Patent Practice PIKE H . S U L L I V A N ,
Standard
Oil Co. (Ind.),
Chicago, III.
Rapid growth always presents problems, a n d the r a p i d growth which has taken place in the field of patents, a n d chemical patents in particular,
JL HE first patent ever issued in America was issued in Boston in 1641 by the Colony of the Massachusetts Bay in New England. And it was a chemical patent at that, relating to a process for the manufacture of salt. In the three centuries that have passed since that historical event, chemistry and chemical patents have played a vital role in the development of our country. It seems reasonable to assume that they are both here to stay, and merit our careful attention. It is interesting, in turning back the pages of time, to note that even this first American patent foreshadowed some of the problems which concern us today, for the grant was carefully limited to the particular process in question, and it expressly stated that notwithstanding the V O L U M E
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patent, any person might bring salt into the colony, or make salt in any other way, during the limited 10-year period for which the patent was granted. With the advent cf our modern industrial civilization, invention and patents have assumed an importance which could hardly have been foreseen in those early days. And yet, the same considerations which led Sam Winslow to apply for that early patent and led the General Court of Elections to grant it, and the same general limitations which were inherent in that grant, remain with us today, their validity and usefulness having been demonstrated in the unanswerable terms of time and experience. No one familiar with the thrilling story of chemistry fails to appreciate the truly
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remarkable rate at which chemical knowledge, and t h e practical utilization of chemical knowledge, have expanded in the last two generations. We have come into what many have called the "chemical age," in which modern civilization itself has become dependent upon chemical progress. By the same sign, chemical patents loom larger, and perhaps more important, than ever before as a means— in the words of the Constitution—"to promote the progress of science and the useful arts." Rapid growth always presents problems, and the rapid growth which has taken place in this field is no exception. My intention in these remarks is to discuss briefly some of the problems which arise in this connection, with the primary 4465
In t h e case of machines a n d devices of like character, it is usually a relatively simple matter to determine, on t h e basis of a description and drawings, if the device will work, how it works, a n d w h a t alternative means might b e used to accomplish the same result without departing from the inventive concept involved. Thus, there are generally, i n such cases, few questions as to the sufficiency of disclosure and the permissible breadth of claims which cannot b e answered with reasonable facility by those familiar with patents and well informed a s to t h e technical field in question.
In patent section covering organic chemicals E. Levow, Patent Office, checks a technical point in Beilstein
purpose of stimulating further thought a n d discussion. I am confident that if these problems are approached realistically a n d in proper perspective, the result will inevitably be to improve the patent system as applied to chemical inventions, and to make that system even more effective for its intended purposes. Simplicity the F u n d a m e n t a l Concept The fundamental concept of a patent is simplicity itself: In return for a full disclosure of his invention to the public, the inventor is granted the right to exclude others from practicing that invention for a limited term. But even this statement carries within it the seeds of t h e twin problems which today present t h e greatest difficulty in t h e day-to-day administration and operation of t h e chemical patent law. W h a t constitutes a full disclosure? How can w e define the area from which the patentee is entitled to exclude all others during the term of his patent? There are various reasons w h y these questions present real difficulty. One of the principal reasons is that the questions can hardly, in any particular case, be divorced from each other and considered separately. T h e two go hand-in-hand. Whether claims are too broad depends upon how basic an invention has been made, and how fully it has been disclosed. Whether a description is sufficient depends upon what claims the inventor asserts. T h e patent statutes themselves offer little specific guidance although they must, of course, b e strictly observed. They provide that an applicant for a patent covering his invention or discovery "shall make application therefore in writing to the Commissioner of Patents and shall file in the Patent Office a written description of the same, and of the m a n n e r and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person
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skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use t h e same; a n d in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions" (R.S. 4 8 8 8 ) . They further provide that an action for infringement may b e defended on the ground, among others, "that for the purpose of deceiving the public the description and specification filed b y the patentee in t h e Patent Office was made to contain less than the whole truth relative t o his invention or discovery, or more t h a n is necessary to produce the desired effect" (R.S. 4920). In respect to the claims, the statutes require that the applicant "shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery" (R.S. 4888). T h e Patent Office is charged with the difficult task of determining, as to each application submitted to it, whether these statutory requirements have been properly met. The applicant is charged with the equally difficult and dual task of meeting the requirements of the statutes and, moreover, establishing to the satisfaction of t h e Patent Office that h e has done so. In our patent system, the Patent Office is the administrative agency through which patents are brought into being, and it has a high responsibility to see to it that an applicant receives everything he requests to which he is justly entitled. But the Patent Office, also, because it is charged with the duty of protecting the public interest, must see to it that an applicant, before he receives a patent, has m a d e such a full and complete disclosure of his invention as to warrant the grant of that patent, and also to ensure that the claims of that patent are n o broader than those to which the inventor is entitled.
CHEMICAL
Chemicals Pose Problems Not so, however, in t h e case of chemical patents. Here it is much more difficult to determine, with reasonable accuracy, just what it is that an applicant has invented, and whether he has made a sufficient disclosure of that invention, and t o determine h o w broadly the invention so disclosed may b e claimed. T h e root of this peculiar difficulty lies in t h e nature of chemistry itself. T h e Supreme Court threw this contrast be- . tween mechanical and chemical cases into sharp relief when it stated i n 1868: "Now a machine which consists of a combination of devices is t h e subject of invention, and its effects m a y be calculated a priori, while a discovery of a new substance, by means of chemical combination of known materials, is empirical and discovered b y experiment." [Tyler v. Boston 7 Wallace (74 US) pg. 327 ( a t 3 3 0 ) . ] It is undoubtedly true t h a t at that early date chemistry was highly empirical. Chemical knowledge has greatly advanced since then, not only in ever-widening areas, but also in the development of a great fund of fundamental k n o w l e d g e which today makes possible chemical prediction on a scale and in a manner impossible in 1868. And yet, for all of this more recent progress, much chemical research remains, even today, either wholly empirical or heavily dependent upon experimental confirmation of results forecast by t h e extrapolation of previously established information. Here, then, is the core of our problem— the difficulty and uncertainty of determining and agreeing in any particular case, as to the extent to which reliance may be placed on chemical prediction. Let us suppose, for example, that Mr. Chemist has" discovered a new chemical reaction of A and B and decides to apply for a patent. He has used A and B in his experimental work and knows that they work; in fact, it was his discover)' that thev did which prompts his application, and he so states in his application. He also knows that B is a member of an established chemical family whose members Bt and Bo are known by skilled chemists t o possess qualities and characteristics comparable to those of B. Mr. Chemist is, therefore, entirely confident that Bi a n d B2 will react with A. and that for t h e purposes of his invention they may be regarded as equiv-
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alents of B. H e , therefore, in his application for patent, so refers to t h e m ; and in his claims, he seeks to cover not only these specific members of t h e group b u t all members of t h e group, which he designates generically by its family name. In such a situation, simple b u t typical, a host of questions arise. W e have seen t h a t Mr. Chemist, in all good faith, a n d on the basis of his knowledge as one skilled in the art, h a d no doubt that B, Bi, a n d B 2 were equivalents for purposes of his invention, a n d that he was properly entitled to claim t h e chemical family of which they were members. T h e Patent Office, however, in this hypothetical situation, might well see t h e matter in a somewhat different light. T h e examiner, let us assume, is satisfied that the reaction of A and B is operable and inventive, and that Mr. Chemist's disclosure with respect thereto is adequate. H e is, therefore, willing to allow a claim to t h e reaction of A and B. But he questions Mr. Chemist's predictions thr 3i a n d B 2 will also work, as equivalen I B. W h a t is more, the examiner poi. out that the family which Mr. Chemist attempted to claim generically includes also B 3 and B,, which were not even mentioned by the applicant; and he indulges the presumption that they would not work even if B, a n d B2 did; and h e concludes, therefore, that the generic claim is objectionably broader than Mr. Chemist's actual invention. Indeed he might not even allow a claim to Bi a n d B2 without a detailed factual showing having been made as to their operability, a n d he might even require t h a t this detailed factual showing be part of the original application. W h e r e should the line he d r a w n ? It is in situations of just this sort, which arise every d a y , that many applicants for chemical patents feel that the Patent Office is unduly strict and needlessly d e manding, and that it is unrealistic in failing to give sufficient credit to the predictability that is so often possible to one skilled in the art. Specifics Are Important T h e difficulty, of course, is that general propositions d o not decide concrete cases, as Mr. Justice Holmes remarked some years ago. E a c h situation must b e resolved on the basis of its own particular state of facts—a circumstance which, incidentally, necessarily contributes to the lack of uniformity in chemical practice of which complaint is so frequently made. If the Patent Office were invariably to require a detailed working example with respect to each specific member of a chemical genus before allowing a claim to the genus, t h e result would necessarily be a break-down of t h e patent system as we have known it, for the applicant would find himself squarely on the horns of a dilemma. H e could probably not afford to conduct experimental work, going far beyond his o w n practical requirements, on so extensive a scale for the sole purpose of satisfying Patent Office requirements as VOLUME
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Patent examiners at work in C h e m i c a l section of U. S. Patent Office to disclosure. But neither would it be worth his while to obtain a patent su limited in scope that infringers could appropriate the substance of his invention while technically avoiding any liability for infringement. Driving Invention Underground In such a situation there would be a very strong tendency to return to the stagnating practices of secrecy for, in the case of many chemical inventions, a policy of secrecy can b e successful for a good many years. Driving chemical invention underground would impose a severe handicap, indeed, on industrial a n d scientific progress and upon the public welfare. Hence, it is clearly indicated t h a t this question of disclosure must be dealt with sympathetically, and the inventor allowed a fair and reasonable degree of latitude. But h o w much? It would be perhaps as harmful to the public interest if an applicant who h a d made a narrow and specific disclosure were permitted, on the strength of it, to assert against the public claims of much greater scope than that disclosure really justifies. Clearly, the n e e d here is for reasonableness, self-discipline, and far-sightedness on the part of both the patent examiner and the applicant. Certainly it should be recognized that before an applicant may properly claim a broad class of chemical compounds he must have made such a disclosure as to support a claim of such breadth. Sometimes, where predictability is difficult or impossible, this may indeed require a highly detailed and well-documented disclosure, including numerous working examples throughout the area sought to be covered b y patent. But if such a claim would in fact b e proper, on t h e basis of more limited d a t a coupled w i t h predictability, t h e absence of exhaustive data should not bar t h e applicant from obtaining protection commensurate with the true scope of his contribution to the advancement of the art.
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Naturally, where invention resides primarily in procedural steps, and the nature of the particular materials employed is not critical, and a skilled chemist w o u l d know that those procedural steps might b e a p plied to a wide class of materials, the applicant should be entitled to claim his invention quite broadly a n d should not b e limited to the procedural steps as applied only to the particular materials h e specifically disclosed. It is interesting to note t h a t in t h e early days, when little was k n o w n about chemical theory, it was fairly common for applicants, on the basis of a quite limited disclosure, to obtain claims of sweeping scope; while more recently, despite advances in chemical knowledge which have vastly increased the possibilities for accurate predictability, the applicant, paradoxically enough, is frequently treated as an empiricist to a greater degree t h a n ever before. Another interesting paradox in current chemical patent practice arises in connection with t h e way in which some examiners apply prior art references;*^ They will permit a n applicant for a chemical patent very little latitude, if any, in respect of his disclosure and hold him to t h e specific details, and sometimes even to the working examples, set forth in his description. And yet, oddly enough, these same examiners w h o so restriotedly interpret an applicant's disclosure will often read into a prior patent the widest range of equivalency. Sometimes t h e applicant's lot is m a d e even more difficult by t h e most u n fair a n d improper practice of extrapolating the teachings of the prior art in the light of the applicant's own disclosure—a. practice which the Board of Appeals and t h e courts have repeatedly c o n d e m n e d , b u t which persists to some degree, nevertheless. T h e r e seems hardly room to question the essential Tightness a n d fairness of t h e proposition that t h e claims allowed to a n applicant ought to b e commensurate with his invention, if he has fully and fairly disclosed that invention for the benefit 4467
of a committee of the American Bar Asso- to this problem has been found. Under ciation under the chairmanship of John our patent statutes, an invention or disA. Dienner. It is to be hoped that their covery is not patentable unless it falls careful studies, and those of this Society within one of the four statutory classes of and other interested groups, will lead to inventions;. namely, an art—meaning a clarification and improvement. process—machine, manufacture, or comRunning all through the length and position of matter (if we may overlook breadth of all patent practice is the ever- plant and design patents for present purpresent question of "what constitutes in- poses ). The difficulty is that calling somevention?" From time to time, in recent thing which is old by a new name does years, there has been much concern about not make it new and patentable in fact. particular pronouncements of the Su- The classical example, of course, is the preme Court in this regard. You all re- discovery of the insecticidal properties of member the furor created by the so-called a long known composition of matter. In "flash of genius" decision, and are prob- such situations, the general practice is to ably familiar also with the general re- cast patent claims in process form coveraction to the minority opinion in the ing the new insecticidal use. UnfortuA&P supermarket case a few months ago. nately, such process claims do not always Certainly I am not one to minimize the afford the patentee a practical means of seriousness or importance of this ques- proceeding against the ultimate consumers tion, nor the difficulty of determining who, by practicing the process, are the whether invention may properly be found actual, direct infringers of such a patent. on a particular set of facts. But the point However, if the principles of contribuI would like to make is that despite all tory infringement are more liberally enthe talk of raising of standards of inven- forced by the courts—and there are indition and the like, there has probably been cations that they will be—patentees may no real change in this regard in the last find that their inventions are protected as 100 years. What has happened is that fully as could reasonably be expected the "man skilled in the art" has become where the material involved is itself old highly skilled indeed, as our scientific and and unpatentable. technological information has developed, Another of the special problems we with the result that it now takes a good often encounter concerns the difficulty indeal more of a contribution to rise above Flexibility Also Necessary volved in proving that a chemical invenLikewise, some particular examiners all the level of conventional practice or skill tion has actually been reduced to practice. too often apply, to an unreasonable and than it did 50 or 100 years ago. In my As you are no doubt aware, the requireexcessive degree, the requirements that opinion, the rule demanding of an appli- ments of law in this regard are very exactclaims be definite, and that they not be cant more than might readily be produced ing and strictly enforced, especially with functional. Of course, claims should be by one skilled in the art is a highly salu- respect to the need for corroboration. definite and not functional—but require- tary one, for it limits patent protection to There seem to be only two ways in which ments along this line should not be hyper- those situations in which it is truly war- these legal standards of proof can be met: technical or unrealistic. For it must be re- ranted and, at the same time, stimulates either a competent witness must personmembered that if the patent system is to inventors to reach beyond and above ally observe and satisfy himself as to all continue to serve its intended function, existing levels of science and technology. vital details of a particular experiment; or, there must be maintained a careful balOne of the special and vexatious prob- he must, following the instructions of the ance between that which the inventor lems which we often meet has to do with inventor, fully repeat the experimental gives to the public and that which he re- the claiming of a new use for an old work himself. Obviously, neither of these ceives in return. As the Supreme Court material. No wholly satisfactory solution procedures can be regarded as suitable for said many years ago: everyday use in the average situation. The practical course most frequently adopted "The object of the patent law is to seas an alternative to such procedures is to cure to inventors a monopoly of what they rely upon the filing of a patent applicahave actually invented or discovered, and tion, as soon as possible to establish a it ought not to be defeated by a too strict and technical adherence to the letter of constructive reduction to practice. In legal the statute, or by application of artificial effect this is equivalent to a satisfactorily rules of interpretation." ( R E G . U. S . P A T E N T O F F I C E : ) proved actual reduction to practice. [Topliff v. Topliff 145 U. S. 156,171] It is interesting, in this connection, to In fact, the courts and the Patent Office revert to our discussion a few moments itself have repeatedly asserted the rule Money and brains may provide ago relating to the disclosures required in that all reasonable doubts should be rea man with the fuels of life, but patent applications. It is apparent that solved in favor of the applicant. But somehe still needs a good wife to prothe chemical inventor frequently finds times it would almost seem that this rule vide the spark. himself torn between filing as soon as posis more honored in the breach than in the sible, so as to get the benefit of the earliest observance. possible date for reduction to practice, Consideration of issues such as those and waiting to file until his data are more Success in this life is the bulVs mentioned above brings forcibly to mind elaborate or complete so as to lay a more eye, and in order to strike it you the desirability of a Lasic re-examination certain basis for claims of the desired must be the bullet. of relationships between the Patent Office, scope. applicants for patents, and the public. I • e • suggest in this connection that in recent T H E papers above were given at the Symposium years there seems to have developed a Many a self-made man had a on T h e Evolution of a Patent presentee by the Division of Chemical Literature jointly w i t h the substantial departure from the type of wife who was a good sculptor, ACS Committee on Patents at t h e 119th ACS administrative procedure contemplated national meeting, Boston, April 3 , 1 9 5 1 . A con—O. A. BATTISTA densation of the part of the symposium dealing when the Patent Office was established, with patent practices followed b y industry ap(ALL RIGHTS RESERVED) pears in the November issue of lirEC, page 2 4 8 7 . more than a century ago. This matter has T h e next t w o issues of C&EN will carry the recently received the careful consideration concluding articles of this series.
of the public. And yet, in the daily administration of the chemical patent law, applicants frequently find themselves confronted 'with rejections and requirements by some examiners which would have the effect of so limiting and restricting the scope of their claims as to deprive those applicants of such patent protection as they really deserve. One of the principal difficulties in this connection arises when examiners require applicants to include in their claims specific limitations which are disclosed in the course of the applicants' description but which, in fact, are not of the essence of the invention. This problem seems to arise chiefly, but by no means exclusively, in connection with proportions of ingredients, and operating conditions employed in carrying out a process, such as temperature, pressure, pH, or the like. Data with respect to these matters are usually included by the applicant, pursuant to the statutory requirement for a "full, clear, concise, and exact" description. But the mere inclusion of this information in the description should certainly not be used as the basis for needlessly penalizing and limiting the ^applicant in these respects if such factors are, in fact, not of the essence of his invention.
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