Patent Work as a Field for Chemists1 C. R. HOLLARAUGH
Hermrles Powder Company. he., Wilmington, Delnware
T
HE possibilities for a successful, interesting, and constructive career for well-trained chemists in the chemical patent field are being largely overlooked. Of a total of 1087 chemists registered for employment in the Clearing Houses of the last three meetings of the American Chemical Society, only about 1 per cent checked patent work as a field of interest. Reference to the excellent printed form furnished by the Clearing House for the applicant's vitae sheet, a part of which is reproduced in Figure I, shows that patent work is one of ten possibilities for employment listed. Thus, the Society definitely calls attention to the patent field as a possibility. Obviously, the low percentage of people who indicated an interest in the field cannot he explained on the basis of oversight. This situation is striking when considered in the light of published results of a survey made by the American Chemical Soaety of the economic status of its members. Table 1shows the median salary rates in 1941 for male members of the Society in the various lines of work listed on the vitae sheet as possible fields of employment. Patent work showed the highest salary rate of any of the fields listed, and was definitely above both industrial research and teaching, which the majority of applicants with postgraduate training seem to regard as their only possibilities. The more highly paid fields of administration and consultation shown in Table 1 are not immediate possibilities for the average applicant.
-
Presented before the Division of Chemical Education of the American Chemical Society, 107th meeting. Cleveland, Ohio, April 3.1944.
Administration, nonteehoienl. . . . . . . . . . . . . . . . . . $549 Cansultation, independent.. . . . . . . . . . . . . . . . . . . . 41.1 Admioistrstioo, technical.. ..................... 404 Patent > 385
Yale3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
333
Editing and writing.. .......................... 307 Design . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 289 Production . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 278 Research, industrirl 271 Technical service.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2% Developmmf ................................. 250 Teachins, mllege or university 258 Research in basic science.. . . . . . . . . . . . . . . . . . . . . . . 218 1.ibr.m and information service... . . . . . . . . . . . . . . 214 Analysis and t e s t i n g . . . . . . . . . . . . . . . . . . . . . . . . . . 20s * F r o m Table 31, pase 1639. in "The economic sfntur of the members of the A . C . S . . " News Rdirion of A. C. S.. I h c . 25, 1942.
+
+
Lack of information concerning the opportunities in patent work, or perhaps the adverse publicity the patent system has received, is probably responsible for this situation. Interviews with more than 100 chemists having postgraduate training have shown that the great majority showed an active interest in the field after only a brief explanation of the work. Those considering patent work as a profession have raised questions concerning the future of the patent system. Such questions have arisen because of puhlicity which has led supeficial readers to believe that our federal courts are invalidating patents as rapidly as they come before them, and that the Congress would some day emasculate the system by statute. To the contrary, it is believed that our patent system is not in danger.
Be.aring in mind that only controversial patents get into court, it is interesting to observe that the United States Circuit Courts of Appeals, in a total of 462 patent opinions rendered during a recent five-year period, invalidated only a little more than one-half of the litigated patents2 GRADUATE TRAINING OR EXPERIENCE (Check) SUBORDINATE
+
PRIN-
CIPa
Foods Metals Paint Patents Petroleum Plastics
0
Rubber Sales Teaching
0 0 0
0
0 0 0
0
POSITION WANTED (Check)
0 Analytical Development Management + Patent n Production 0 Research Sales 0 Testiig 0 ACADEM~C: Research Teaching Frou~x:I.-~-TAKEN FROM THE APPLICANT'S FORM, EMP L ~ V M E N T CLEARING HOUSE oa THE AMERICANCHEMICAL Socrsrv Furthermore, the record I I our ~ Congress fails to support the dire predictions which have been made concerning our patent system. Statutes recently passed have corrected minor weaknesses in the system and have made some improvement. Attacks on the patent system have brought about searching investigations. The result has been a widespread conviction that our system is sound and essential to the national welfare. The report of the National Patent Planning Commission of 1943 to President Roosevelt is typical. I t makes the following statement: "The strongest industrial nations have the most effective patm t systems, and after a careful study, the Commission has reached the conclusion that the American system is the best in the world. However, as with any system of long standing, conditions arise which were not foreseen at the time of its establishment. The American patent system should be adjusted to meet ' existing conditions without destroying its basic principle^."^
The report then goes on to recommend a number of changes in the system. As indicated by the above
.
[I.
3. Patent Ofice Soc 24, 19 (19Q). 78th Congress, First Session-House S. Government Printing Office
1)ocument Xo 239.
quotation, these changes are sincere proposds to improve, not to emasculate, the system. Successful chemical patent work requires a thorough working knowledge of both chemistry and patent law and procedure. A survey of 50 law schools made in 1940 revealed only five students with complete undergraduate training in chemistry who were receiving LL.B. degrees. A similar survey made in 1941 revealed only one man. These surveys did not include employees of the U. S. Patent Officewho were receiving LL.B. degrees. A fact which is generally not recognized is that our law schools do not prepare their students for practice as patent attorneys. Patent law courses are rare in our law schools, and even the more complete of these courses do not give the student a working howledge of the field. General legal training is a definite advantage. However, in many types of patent work, advanced chemical training a t least counterbalances this advantage. In 'the oast the Patent Office has been a lame source of supply of people for corporate patent work. These people have usually entered the examining corps with a bachelor's degree, and, while working as an examiner, have completed law courses leading to an LL.B. degree. Upon obtaining their degrees, many seek employment outside the Patent Office. However, such individuals are not necessarily effective patent attorneys, since their entire experience in the patent field has been on the negative side. Ordinarily, they have had no experience in segregating inventive material from the results of research, no experience in the presentation of such material in patent applications, and none in supporting the affirmativr side of arguments for patentability. Such individuals have the advantage of an intimate knowledge of the prl~cedureand personnel of the Patent Office, but still require training. A number of corporate patent departments follow the policy of training chemists for their work. Such men are either selected from their own technical staffs or employed for the purpose. Experience has shown that chemists can be trained readily in patent work. Further, it has been shown that in many phases of chemical patent work strong training in chemistry offsets legal training. In this connection, i t will be appreciated that general legal training or bar membership is not a prerequisite for registration to practice before the Patent Office. The necessity for strong chemical training is readily understood when i t is realized that a patent chemist must be prepared to meet many plant, sales, and research chemists in their own specialized fields. He must be able to assimilate and analyze months or even years of research and understand its significance so thoroughly that he can proceed with his own specialized work sithout loss of time. Further, he must be able to switch his thinking rapidly from one line of research to another. Chemical patent work is a field inherently very interesting to a research-minded chemist. I t is an essen-
-
tial corollary to the development of any industrial probblem. As a chemical process passes through laboratory evaluation, semiplant development, economic evaluation, and, finally, plant engineering and design, the patent work should proceed in close cooperation through the steps of a study of the patent structure existing in the field in question; the segregation of inventive improvements made in the research; the preparation and prosecution of the indicated patent applications; infringement studies to locate patents of others which may be violated by the operation; and validity studies of the patents which may be infringed to determine their true value. The two parallel lines of work are shown diagrammatically in Table 2. Each of the steps in the patent work involves chemical thinking and analysis, as well as analysis in terms of the patent law as formulated by the statutes and judicial decisions. TABLE 2 TBB DBVBLOPMENT OP A M A N U ~ A C I U F PROCBSS ~NG 1,
2.
Tcrhnicol Work Initial evaluation of project by rwearch. statistical, and economie studies. Semiplant development a i d market studies.
3. Plant dwign, engineering, and mst estimation.
P&nl W a k A study of the patent structure in the field of the project.
The preparation and pmrecutioo of patent applications on inveotions develooed bv the technical work (1) and (2) Infringement study of proees. selected and validity studies of any infringed patents.
From personal experience in working for a period of years in both academic and industrial research, the writer can state that patent work makes greater demands on chemical knowledge than most -research problems and is fascinating work. This experience has been confirmed by witnessing the growing enthusiasm of other chemists as they get into patent work. A patent is dual in nature. On one hand, it is a technical disclosure. On the other, it is a legal statement of a monopoly granted the patentee for a period of 17 years. It is, therefore, somewhat analogous to a real estate lease. In studying research to locate inventive material, the patent chemist must be able to recognize improvements in the field upon which experience indicates the Patent Office will grant a patent monopoly. In the preparation of a patent application, he is describing the improvement in such a manner that others may practice it, and drawing claims defining the requested monopoly. I n the prosecution of the application, he is working to convince the Patent Officethat the inventor is entitled t o a patent. The preparation and prosecution of the application are camed out within the framework of the rules of patent law. That framework remains the same from one application to the next and is changed only by statutes passed by our Congress, or very slowly by the trend of judicial decisions. However, the chemical facts involved are always diierent. The process described must be new to be patentable, and the claims must accurately distinguish it from all prior processes. The
examiners of the Patent Office know and follow the patent law. Hence, the arguments during the prosecution are primarily technical and must be directed to showing that the requested monopoly is an advance in the art. The three types of studies of patents, the patent structure, the infringement, and the validity study, are also chemical studies within the framework of patent law. The patent structure study is for the purpose of locating the fenced-off areas of patent monopolies which have been granted in a given field of chemistry, so that research can be directed along a path across the field which avoids them. Such a iob consists in locating the pertinent patents in the field in question, and placing them in their true technical and legal perspective. Obviously, it is necessary to have a thorough technical grasp to complete such a study. An infringement study is made for the purpose of locating all patent monopolies which will be violated by carrying out a carefully defined process or by the manufacture of a specific product. A first-hand study of the semiplant or plant operation in question is a prerequisite to such a study. An intimate understanding of the process or product under study, of the technical disclosure of each of the related patents, and of the legal construction of the pertinent claims, is essential to such a study. A validity study can be defined as an evaluation of the patentee's right to the monopoly which has been granted to him. Such a study may include many different lines of approach. The most important is ordinarily an exhaustive study of the prior art to determine whether the process or product covered by the claims was, in fact, new with the patentee. Another important approach is to determine whether the improvement claimed over the prior art is, in fact, an improvement. Ordinarily, this involves the planning of suitable experimental work to compare the claimed invention with the best in the prior art. Each of these lines of chemical patent work requires a broad and thorough knowledge of chemistry. Very few people have the combination of such a chemical background, and the highly specialized legal knowledge required. Experience has shown that the specialized legal knowledge can be acquired on the job. In fact, many parts can be acquired only on the job. Chemical training is less readily acquired. Every indication points t o a growing need for sound chemical training in patent work. Some 34,000 patents were granted last year. The proportion of chemical patents is growing steadily. The rapid growth of our chemical industry is certain to increase this proportion. Necessarily this will increase the already large demand for chemically trained patent personnel. The variety inherent in patent work makes it intensely interesting. The work is a constant challenge to the chemist's versatility and ability for straight thinking based on sound chemical knowledge.
-
