Library versus Laboratory Research' ARTHUR G. CONNOLLY Du Pont Building, Wilmington, Delaware
T
HE PROBLEM of the research scientist is today more complicated than ever before. He must invent bigger and better inventions in less time and under all the disadvantages of wartime restrictions on personnel, materials, etc. The average research director is attempting to solve these difficulties by increasing the size of his staff, where he is fortunate enough to be able to obtain additional personnel, and by spending more money on the materials and facilities that are still available. This, however, is but a partial solution of the problem. Far more could ordinarily be accomplished by placing increased time and emphasis on a careful analysis of the technical literature. Despite this fact, however, the war is used by many as an excuse to devote even less time to the technical literature than the few hours which were heretofore begrudgingly allotted for this purpose. The romance of discovering the secrets of nature in the laboratory still appeals much more to the average research scientist than the drudgery of carefully considering, digesting, and correlating technical treatises, publications, and patents. The disadvantage of embarking on an important and expensive research program without first making an adequate survey of the technical literature is still present, but pitifully few directors of research appear to recognize it or to be inclined to do anything about it. Statistics of the Patent Office indicate that a t least 30 per cent of the patent applications filed are abandoned, the great majority because they disclose nothing patentable over the technical literature. This involves a loss of millions of dollars annually, but i t still continues. Furthermore, it is likely that an even larger number of patent applications issue with patent protection so emasculated that they have, a t most, a nuisance value. Many of these abandoned and emasculated patent applications are supported by research programs as extensive and expensive as the small minority of important and valid patents which are issued. Public opinion to the contrary notwithstanding, ualid patents have not joined the dinosaur as extinct curiosities. If these research programs had been based upon an adequate search of the literature they would not have ended bv rediscoverinc what was alreadv described in
this literature. They would have been devoted to vugin fields wherein the inquisitive gaze of the scientist is sadly needed. In these fields the same time and money would have produced inventions upon which valid patent protection of genuine value could have been obtained. These inventions would not only have been of importance to humanity but the patent protection which could have been obtained on them would have defrayed the expense of further research by the organization in question. An endeavor will now be made to explain some of the more important advantages of library research, the reasons for these advantages, and certain popular misconceptions about them. Two outstanding advantages of library research are: (a) time and money will not be wasted by repeating work which has already been completed and described in the literature; (b) important inventions frequently may be made by a careful study and correlation of the pertinent literature. The first advantage is self evident. The second is not generally appreciated and will hereafter be discussed in some detail. It may first be asked how it is possible to make inventions merely by studying and correlating the pertinent literature. Obviously the invention is not described verbatim in the literature or it would be old. The vague outlines of inventions, however, may be, and frequently are, apparent from a careful examination of this literature. A prior investigator may have published an experiment which solved the problem in which he was interested. This experiment might also be the solution to an entirely different problem in which some other scientist is interested. Likewise, the prior investigator may have failed to solve his problem, yet another by studying the publication could see the reason for the failure and overcome it. No two people have identical knowledge, ability, and imagination, and a problem which baffles one may be relatively simple to another. This is particularly true when a scientist has the benefits of the published investigations of several others on the same or a related problem. He frequently has a better perspective than
A single piece of a jig-saw puzzle does not make much sense. Several pieces fitted together, however, may give the answer, men though some of the pieces are still missing. Having seen that it is possible to make inventions by studying the literature the next question is, why is this any better than making the same inventions in the laboratory? The answer is that it is quicker and cheaper, and generally produces better patent protection. Patent protection is now sought on practically all research in order to protect it and assure some return on the investment. It is, therefore, important to note that better patent protection can generally be obtained on inventions made in the library than on those based upon prolonged laboratory research. This statement, of course, is not applicable to all inventions but the exceptions are much less frequent than is generally realized. The reason better patent protection can be obtained on inventions made in the library is that a patent application can be filed on the invention a t a much earlier date than would be possible if a prolonged laboratory research program had to be completed. Library research on most problems requires but a few days or weeks, and the patent application may be filed immediately after its completion or, a t most, immediately after the completion of a few "high-spot" experiments to check the accuracy of the conclusions. The over-all time is but a matter of weeks or months, and very few important research programs are completed in such a short time. The importance of an early filing date on a patent application is that there is less prior art to contend with, and the inventor is in a favored position if his application becomes involved in an interference. Any scientist who has ever been in an interference appreciates fully this latter statement. Its full significance is, however, unappreciated by most scientists, so it might be helpful to explain it briefly. An interference is a proceeding instituted by the Patent Office, generally between two or more inventors seekmg patent protection on the same invention. Its purpose is to determine which of the inventors made ihe;nvention first. The first inventor then receives the patent and the others receive a liberal education on how not to keep records. In an interference, the applicant having the earliest filing date on his patent application is referred to as the "senior party." The later applicant is referred to as the "junior party." Practically all doubts on the qnestion of priority are resolved in favor of the senior party. He is presumed to he the first inventor until his opponent has proved an earlier date of invention. The junior opponent, in proving his earlier date of invention, is confronted with a multitude of obstacles. His records are subjected to the most minute scrutiny. Each and every detail of the interfering invention, as described by the counts, must be proved to have been a part of his original inventive concept and of his so-
called "reduction to practice." Omission of a single detail is fatal. "Reduction to practice" is generally accomplished by carrying out the invention in a laboratory or plant and testing it to see whether i t works. It sounds simple, but proving it is quite another matter. This proof is one of the great obstacles in an interference proceeding, because even though the inventor has excellent records describing in minute detail everythihg that he did, and even though these records dovetail perfectly with the interference counts, the proof is inadequate. The inventor's records and testimony must be corroborated by someone else. Since the inventor is presumed to be biased, his records and testimony are practically worthless in the absence of corroboration. This question of corroboration has sent chills down the spines of most patent attorneys who have indulged in the manly art of prosecuting interferences. The standard of corroboration has been raised to such a level that, according to a few decisions, nobody but a Siamese twin of the inventor could qualify. In various cases the Patent Office has held that the corroborating witness must be a skilled scientist who understands what the inventor is doing. He must be present and fully aware of everything which the inventor is doing a t the time the invention is embodied in physical form and tested. If there were any question of unemployment in the research profession this problem of corroboration would certainly be the solution. In effect, it would require each research staff to be doubled-one half of the st& would do the inventing and the other half would do the looking on. The junior party in an interference must therefore overcome all these obstacles before he can dislodge his opponent from the favorable position obtained as a result of having filed his application first. Until the junior party overcomes these obstacles the senior party need only rely upon the date when he filed his patent application. He need not take testimony to develop the background of his invention. The purpose of referring to these interference problems is solely to emphasize the importance of filing a patent application a t the earliest possible moment. This can be done only by making full use of the technical literature in the first instance. This does not, of course, mean that laboratory research should he neglected but only that the two should be brought into proper balance by placing more emphasis on library research. When a mountain of technical literature representing an investment of fantastic proportions is available to every research scientist, practically free of charge, it is a mystery why it is not put to greater use. The answer to this mystery may be that the average research scientist is temperamentally wedded to the laboratory. He prefers the manipulation of beakers, test tubes, autoclaves, etc., to the dull task of studying the literature. If this is the answer, then the scientist should endeavor to reappraise the relative values of the
laboratory and the library. By appreciating more fully what is to be gained from the literature he will undoubtedly devote more time to it. Another answer may be that because the literature describes so many investigations which either failed or were commercially impractical, the scientist cannot see how it would help him. An intimate knowledge of the scientific failures of others is helpful, however, if for no other reason than to avoid repeating them. Another reason may be that the scientist feels there is someth'mg unethical about making an invention in the library and describing it in a patent application, which may then be based to a great extent upon the published work of others. He feels that he should not reap where he has not sown; for this reason he should a t least duplicate what has been done by others, and if it must be duplicated, why not have the fun of doing it in the laboratory instead of wasting time in the library? It is an interesting fact that the average scientist is reluctant to file a patent application on an invention which he made solely by studying the literature. Yet, once he has duplicated this work in the laboratory his inhibitions-disappear entirely, although the invention in each case is identical. This latter reason deserves more than passing attention. It concerns a question of ethics, and it is believed that an improper conception of what is ethical has resulted in many scientists' forfeiting inventions which were properly theirs. A brief discussion of this misconception may be helpful. The person who deserves the reward is the one who makes the invention, and those who have failed in this endeavor, no matter how closely they have come, are not the inventors. If others have fallen short of the mark and ended in failure they could not have been the inventors-because the invention has not yet been made. It is believed that there can be little question as to the soundness of this contention. Since the one who finally succeeds is the inventor, there is no reason why a scientist should be reluctant to make use of the work of others. He is not claiming that he did this work-he is merely using it as part of a complete invention which he was the first to discover. Before using it he has to decide two questions: first, that the work of some one else was of value, as far as i t went; and secondly, that it could be improved by making certain changes in it. The resolution of these two questions was no unimportant task, and the scientist who was responsible deserves credit for his discovery. To succeed where others have failed is a worthy accomplishment, in science as elsewhere. Another costly misconception which confronts the scientist a t this stage is whether he can file his patent application when he has not completed the entire invention in the laboratory. He feels that there is something unethical about a patent application which is based entirelyupon conclusions derived from a study of the literature, possibly verified by a few "high-spot" laboratory experiments. Even though he is convinced of the accuracy of his conclusions, either from his general knowl-
edge of the subject or because he has verified them by "high-spot" experiments in the laboratory, he is still reluctant to file his patent application. As a result he wastes precious time and money conducting the entire investigation in the laboratory, and finally ends by proving his original conclusions were correct. By that time it is frequently too late to obtain patent protection on the invention. Someone else has already filed a patent application on the invention and the first inventor's records are too incomplete to prove his earlier date. The other person gets the patent and the first inventor cannot even use the invention without his permission. This situation, which occurs much too frequently, is based upon a misconception of what a patent is. A patent is a reward for a contribution to the art. The contribution to the art justifies the patent, not the amount of labor which the inventor devoted to the invention. In fact, recent decisions of the courts seem to favor inventions which spring from meditation rather than arduous experiments. If a scientist can make a valuable invention while sitting in an easy chair meditating, be is just as much entitled to patent protection as though he had devoted a lifetime in the laboratory to the invention-and he will probably have a better patent, too. An exhaustive laboratory investigation is of tremendous value in developing an invention to the nth degree of commercial perfection. If the patent application is delayed until it is completed, however, the entire investigation may be jeopardized, since someone else may obtain patent protection on it in the meantime, and in any event it will be too late to protect i t completely. The moral of this discussion is, therefore, that the research program should be initiated by a thorough survey of the technical literature. This survey will determine how the program will be conducted and what it will probably accomplish. If the procedure is reasonably clear from the literature survey a patent application will be filed forthwith, describing the results and how it is proposed to accomplish them. If there is some doubt as to the procedure a few "high-spot" laboratory experiments will be conducted to determine the correct procedure, and immediately upon their completion a patent application will be filed on that procedure which appears to be correct. Thereafter the laboratory investigation may continue until the invention has been developed to a commercially practicable stage. During the continuance of this investigation patent applications will be filed on such improvements as were overlooked in the original application. When the invention has finally reached the commw cia1 stage it is protected broadly by the first patent application, and it is protected in limited respects by the succeeding patent applications. The entire program is completed in less time and with less expense, and it is completely protected patentwiseall by maintaining a proper balance between library and laboratory research.
