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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-
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torneys with a number of clients can be expected to have broad experience and outlook and sometimes will be able to render more impartial judgments than will employees who spend all their time on the problems of a single organization. In addition, management may treat advice of outside attorneys with more respect than that of its employees. Moreover, if the volume of business is variable, it can be handled more effectively by a large firm of attorneys who can absorb a temporary heavy load of work from one of a number of clients. In large organizations patent work usually is carried out a t a distance from the research staff, and a patent attorney is assigned to the research or development organization. If the volume of work is sufficient, he will be a full-time associate of the research and development staff, although he may not actually be a part of their organization. With a lesser volume of work, he may devote a specified fraction of his time, perhaps certain days each week, to work in the research organimation. In this kind of arrangement, the liaison attorney deals directly with the inventors and prepares rough drafts of patent specifications for revision and review by the central patent department. He will also be asked for data and technical help in answering Patent Office actions but does not have actual responsibility for the final patent application or its prosecution. This arrangement is particularly advantageous where somewhat related work may be going on in remote parts of an organization, since it permits the central patent department to exercise complete control over all the patent work and ensure proper coordination in order to avoid conflicts between inventions or patent applications arising in different places. The greatest degree of decentralization is to have resident patent attorneys handling the patent work of different branches of an organization on the spot and on their own responsibilities with only general supervision from a central office. This practice is satisfactory where the organization is very large and where the work carried on in the different locations is distinct so that overlapping and conflict do not ordinarily occur. Considering these various arrangements and procedures for handling a patent makes it evident that there are enough possibilities to fit any situation that might arise-for example, practices in the rubber industry.
In the five largest rubber manufacturing or anizations, one has its patent matters handled almost completeyy by its patent department; a second has the work of its patent department reviewed at frequent intervals by outside attorneys; a third has a atent department, but also has an outside attorney who takes Enal responsibility for its patent cases’ a fourth has it8 patent work handled by a firm of attorneys having only a few other relatively unimportant clients; and the ather deals with a firm of attorneys located in another city and ieceives visits from a patent attorney of that firm at regular intervals. Even within an organization great diversity can be found. Each of the large rubber companies has a number of divisions making rather different products and some located at considerable distances from its headquarters. In a single company, although most of the divisions keep invention records, one proceeds to prepare comprehensive patent re orts which are submitted t o the patent attorney; another reies on a combination of written reports and occasional visits by the patent attorney for assembly of information and data; and a third relies primarily on direct assembly of information by the patent attorney. Still other branches of the same organization do not keep invention records, but send them directly to the patent attorney.
INVENTION RECORDS Harold S. Meyer The B. F. Coodrich Co.,Akron, Ohio There is no one best way to handle preliminary patent procedures, as human beings of a most individualistic kind are involved. However, experience has shown that a regular system must be followed in any organization employing more than two
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or three research or development people. Such systems must provide for establishment of a record of every idea that might be patentable; it must provide for safekeeping of the records; it must place responsibility for making patent decisions; and finally, it must provide for transmission of all necessary information to the patent attorney. The recording of all ideas has two purposes-to guard against overlooking patentable inventions and t o furnish evidence for use in possible contests of priority. These purposes can be served only in part by the usual laboratory notes, develapment records, and progress reports, since they are too voluminous for convenient review and may have heen prepared in such form that they are worthless as evidence. The importance of proper dating and signing of all records of research and the absolute indispensability of corroboration by having records properly witnessed cannot be overemphasized. A continuous reminder of these requirements is offered by a properly planned system for preparing and keeping a signed, dated, and witnessed record of every idea that may be patentable. Such a record must, at the minimum, contain a description of the idea or invention, the date when it was conceived, the signature of the inventor and date of signing, and the signature of a t least one witness with the date of his signing. Some organizations add other features which may be helpful, such as a history of the development of the invention, instructions for filling in and forwarding the record, and even an assignment of the invention to the employer. Printed forms with spaces for the needed information are practical and ensure the recording of all necessary data. The record may have any of a number of titles such as “conception sheet,” “disclosure sheet,” or “invention disclosure,” but for simplicity “invention record” is used here to refer to such documents. One method of handling invention records is to have all of them transmitted to and kept by the patent attorney, He will then have to arrange for reviewing them with management representatives for decisions as to which are worth patenting. This system works well in a diffuse organization in which inventions arise in a number of different departments or even in different factories in different cities. The best results are obtained when the patent attorney can $scuss the importance of each case with a management representative and with the man directly in charge of the technical work which led to the invention. Such consultation ensures direct knowledge and interest of management in what is being done to obtain patent protection and the acquaintance of the inventor or his superior with the steps required for obtaining effective protection. When properly administered, this system therefore stimulates the making of inventions and encourages the technical and research staffs to maintain close contact with the patent attorney and to submit properly prepared invention records on all their ideas. An alternative way of handling invention records is to have them transmitted to and collected by a designated person in the organization in which the inventions arise. This person is sometimes an officer or manager of the organization, but may be a secretary or librarian in charge of the safekeeping of the records. The larger the organization the more likely it is that this responsibility will be delegated to a person such as a technical librarian rather than to an officer or manager. The reason for this is that a considerable amount of clerical routine is involved in proper filing of invention records. When invention records are kept by someone other than the patent attorney, the person designated as keeper of the records should be in the same location in which the inventive work is done. Thus direct personal contact can be maintained, for informal discussion of the invention records; omissions can be corrected imediately and ambiguities can be resolved by additions or revisions before a document is accepted for the permanent files. It is common experience to find inventors who are not sure of them-
