Flash of Genius1 JOSEPH N. NIELSEN THE impression is gained from reading various articles relating to t h e U. S. Supreme Court's decision in Cuno Engi neering vs. Automatic Device Corp., that the Court has set up a newly defined standard whereby an invention can be evaluated; but a reading of the decision does not support this view. A crystalliza tion of opinion along t h e lines thus pub licly expressed may, however, work harm in the future prosecution of patent appli cations and the litigation of patents. To illustrate the effect of the criterion laid down by the Supreme Court, these articles point to the Edison patents and those of corporation research departments as ones which would not have been granted under the rule, since they are based on patient research with no guiding "flash of genius". This does not follow, because the argument confuses two independent sources of new and useful contributions which the statutes recognize as entitling a person to a patent; one of these i s inven tion and the other is discovery. The Supreme Court case only relates to the first, while research work lies in t h e realm of discovery. There is a fundamental distinction be tween invention and discovery. For an invention there is required a concept or mental image of t h e invention a s a pre liminary to (sometimes simultaneous with) a reduction t o practice; as expressed in patent law, this concept must be sub stantially complete, that is, sufficient if communicated to another t o enable its embodiment in practical form without the further exercise of invention. I n a dis covery, however, t h e concept factor is not necessarily present; an illustration is Edison's phonograph which he did not know he had discovered until he acci dentally heard the reproduction. Most inventions are in the nature of improve ments in which the mental concept is t o a greater or less degree dependent on the knowledge of the art or previous contribu tions made by others; and likewise most discoveries are in the nature of Improve ment discoveries which have their origin in the continuations of research along paths which have been marked by others. But even so there is the condition present in in ventions that the bridging from the prob lem to its solution (or a recognition of the existence of a problem) involves a mental act of a character which for the lack of a better term may be called a n inspiration; in a discovery the element of surprise lies in the realization of a new and unexpected property or result inherent in the dis covery. The existence of an invention 1 Reprinted from J, Patent Office Soc, 24, 371 (1942).
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may be said to be in general determined by a condition precedent to its completion while a discovery may be said to depend on a condition subsequent. That which has been herein termed an inspiration can just as well be called a "flash of genius" as the Supreme Court has denominated it. In common patent parlance it is usually called the unobvious, and the Supreme Court terminology says nothing more than this. To insist, as these various articles seem to do, that the Supreme Court test of a "flash of genius" necessitates an order of invention to be found only in few revolutionary inventions and excludes discoveries goes far beyond the facts upon which the decision rests. The farts as stated by the Court are in effect that the Mead device there in issue consisted of a thermostatic control, which in itself was old, applied to a removable heating unit whereby the circuit was opened when the heating coil reached the predetermined temperature and thus re lieving the operator of manually holding the plug. In the Court's opinion t h e use of the thermostat to break a circuit was analogous to or the same in character a s the use of such a device in electric heaters, toasters, or irons; and while ingenuity was required to effect the adaptation it was n o more than to be expected from a mechanic skilled in the art. Whether the judgment is right or wrong may be questioned. B u t i t seems evident that the Court did n o more than what the Examiners of the Patent Office do every day in their rejec tions when they hold that a substitution or modification does not involve invention; instead of using the office language the Court denominated the invention a s one lacking in "the flash of genius". The facts of the case are of more than passing interest in that they point to a remedy for one of the besetting sins of patent practice and that is the "use" patent. T o illustrate, the Cottrell patents on preciptation were followed b y hun dreds of patents covering uses of the inven tion in specific fields where the problem of separating dust and fumes was present; in this way a meritorious invention can be so hedged about that the real inventor is denied the return which the patent statutes are supposed to provide. A corrective for this appears in the reasoning of the deci sion which in the particular case involved held the cigar-lighter, toaster, and flat iron to be in the same class; this is in line with the "proximate function" principle of classification that Mr. Sewall tried s o hard to embody in the Patent Office classifica tion and which official opposition largely nullified. The proximate function com mon to the three devices mentioned is the
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heating by electrical means of some object separable' therefrom; the differences are dictated by the use or art to which each one relates and consist only in shaping and proportioning the elements of the devices to the object with the bread-holding means added in the case of the toaster, and inter posing the smoothing surface in the case of the iron. This principle of proximate function has to m y mind a peculiar appropriateness to "use" patents, i. e. adaptations of known practices to specific arts. An analogous principle applicable to discoveries is the doctrine of "reasonable expectation" explained by D r . Ely in his paper on "Chemical Inventions and Dis coveries" before the Patent Office Society. Instead of following this doctrine, the stock reasoning for supporting the grant of pat ents on discoveries is reliance upon the in ability to foretell what a research will pro duce; while the established rule m a y be pertinent in many cases, other improve ment discoveries are nothing more than applications of known variants and the results are to be expected rather than the contrary. As with principles generally, their state ment is relatively easy ; it is their applica tion to specific cases that is difficult be cause in the final analysis it reduces to per sonal opinion. T h e ones here indicated do, however, have a place in patent prac tice; and with a recognition of the spirit behind them rather than the letter in which they are expressed, they should offer guid ance in the consideration of inventions and discoveries as indicative of the presence as well a s of the lack of patentability. T h e foregoing considerations indicate to m e that the Supreme Court decision is not deserving of the criticisms leveled against it, and the facts of the case d o not warrant the inferences that any new measure of patentability has been instituted. ©^©
Τ FOUND much of interest in Mr. Poole's letter but I shall only make a brief comment on the question he raises con cerning the alleged "erroneous impression" created b y the writer's previous discussion. T h e impression in question was t o the effect that the future of industrial research appears t o be endangered because most patents based thereon will probably be in validated by the courts, if the "flash of genius" patentability test is applied. The law of course is what the judges, not necessarily what counsel or writers, say it is. However, this is not the place to analyze all of the pertinent cases reported since the "flash of genius" case was pub lished. I t is also noted that the U . S. Supreme Court has not again had occasion to pass directly on the question. Never theless, one decision may be singled out for special note because of its particular pertinence and because of the high stand ing of the court which rendered it. Refer ence is made to Picard vs. United Aircraft
AND ENGINEERING
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Corp., 53 U . S. P. Q. 564, C. C. A. 2, (1942). I t is doubted whether anyone who reads this decision carefully can believe that the foregoing impression is erroneous. THOMAS C I P E L U , J R . 3 CLARENDON PL·. BLOOM FIELD, N. J.
July 27, 1942
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Editor, Chemical and Engineering News: U V E R since the appearance of Mr. J J - Cifelli's article 1 , people interested in chemical industry and research have been expressing deep concern stemming from what this observer believes is an erroneous impression created by that contribution. Initially, I, too, was much concerned by Mr. Cifelli's article, and immediately set about securing a copy of the reference in question. I found m y interpretation thereof to be at distinct variance with Mr. Cifelli's. Furthermore, I have conferred with eminent patent counsel and have found that such authorities consider the "Flash of Genius Decision" to be strictly free from "new law" and to constitute no more than a conscientious attempt to be consistent with statute and precedent. It is not the courts b u t Mr. Cifelli who would write new law. I n all this fuss and feathers there has been no recognition whatsoever of the basic principle that invention m a y not be accomplished by mere exercise of the skill of the art. To be sure, just when we pass to a point more lofty than can be encompassed by "mere skill" is perforce a matter of opinion. Moreover, I personally feel that to devise the cigaret lighter of the "Flash of Genius Decision" would require more than ordinary skill and that the flash of genius—if we choose t o use such phraseology—did occur; but we must not forget that judges usually are skilled only in law, not in the scientific arts. N o one, not even the greatest judges, can be expected to possess infallibility or even good judgment in subjects about which they know little. In case any one cares t o argue that point, I a m quite prepared t o cite obviously worse decisions including instances when the boot was on t h e other foot and "inventions" were validated although no more than mere skill was required for their accomplishment—and precious little skill a t that. When w e complain about the philosophy of decisions like this one, which bids fair t o become a cause célèbre, we are away off o n a tangent. I agree that it was probably a poor decision but I am just as deeply of the opinion that it was good law, and am still more deeply convinced that attacking t h e "Flash of Genius" from the viewpoint of law will accomplish nothing toward t h e real problem's solution. For one thing i t is looking for an answer to a doubtfully existent problem, while ignoring a very real and clearly discernible problem. » Chetn. Eng. N«wst 20, 523 (April 25, 1942).
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This writer, probably in common with many others, has seen intricate technical disputes adjudicated by eminent jurists, who did not know the difference between a mole and a molecule, a cylinder and a piston, or heat and temperature; and under such circumstances it is inconceivable that judgment by men of the highest intelligence and integrity can fail to work frequent and grave injustice. I imagine that in the hands of our nonscientific jurists about the right number of patents have been and will continue t o be sustained—we get sort of an "average" justice in our decisions by having enough invalid patents sustained t o offset the number of valid patents which are thrown out. We have something similar to choosing b y lot from our country's population which one of us would receive the Priestly Medal and which one would hang for murder. Obviously, if a great advance had been made in chemistry and a murder had been committed, such a system would mete out the right amount of reward and punishment. The question is: Just what should w e scientific people do about jurisprudence which fails to make use of pertinent facts? If we, operators and research men, yell any old way about the "Flash of Genius Decision", we might possibly stir up enough fuss to get a bill introduced which would in effect declare all patents valid. B u t more likely—and I believe preferably— than such a bill being passed, one would be enacted which would really give u s something to yell about. We cannot e x pect that under a system of free enterprise people are going t o stand for being sued, enjoined, and mulcted for doing t h e same thing that Grandpa would have done if there had been any point in doing it i n Grandpa's time. Continuing t o be a bit dogmatic, there is only one logical solution t o the question of how to have valid patents validated and invalid patents voided—viz., have both jurists and scientists judge the evidence. With due respect to our most able judges, they are no better qualified in t h e legal aspects of ecience than are our best scientists. In general, the legal problems relating to patents are no more profound than are the scientific aspects, regardless of how many lawyers unskilled in science hold opinions t o the contrary. The idea that the present practice of introducing expert testimony provides t h e jurist with a sufficient grasp of the scientific facts at issue is a myth. Why t h e court cannot safely depend on such sources of information is a long story and is, moreover, probably known to most of those who have had much to do with litigation of chemical patents. Briefly, expert testimony is very far indeed from being unbiased, and an impressive qualification carries more weight than does scientific fact. Many years of observation have led the writer to suspect that a t least 50 per cent of all suits would have been decided
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differently if the litigants had swapped witnesses. Further, the instance is rare wherein a judge actualh comes to comprehend the scientific facts involved in a case of moderate scientific complexity. The job is too great for any one kind of expert. A proposal for Law ever t o share the bench with Science would doubtless be abhorrent to legalists; but t o a progressive jurist any resort which is conducive to more perfect application of the law should be no less than acceptable. In fact, we should be able to work out a scheme whereby competent and unbiased scientific opinion could be assured, short of formally cloaking it with judicial powers. What is important is assurance that such opinion will enter into patent decisions, and will be competent, and unbiased. This in turn means that it be surrounded by the same freedom from economic pressure and political exigency which has proved uniquely conducive to a thoroughly judicial attitude. The scientific, as well as the legal, minds which contemplate the evidence should be those of men appointed for life and compensated on a scale comparable t o that of our federal judges. Whether their decision shall be legally binding, or whether their functions shall be advisory only, is not a vital question, but unless such opinion shall decide all scientific aspects of patent disputes it is the writer's firm conviction that we shall have not only more decisions as debatable as "The Flash of Genius Decision", but continue to have many which are grossly unfair. There is far less improvement to be enjoyed by altering patent law—either of statute or precedent—than b y setting up a judicial procedure designed to meet those conditions which are peculiar to patent litigation. Since such cases typically include profound questions, both legal and scientific, and it is a practical impossibility t o find the best scientific minds and the best legal minds combined as a single intellect, there is but one apparent answer. Judgment must b e the joint responsibility of jurist and scientist. J. W. POOLE, Manager
Research
Division
LION O I L REFINING C O . E L DORADO, A S K .
July 8, 1942
Howard D . Grant has been elected president and Stevens H . Hammond executive vice president of the Whiting Corp., Harvey, 111. Morris Kaplan, who has been assistant to the chief, Division of Laboratories, Bureau of Customs, Treasury Department, for several years, has become chief chemist of the customs laboratory in Baltimore, Md. E . F. Kenney is succeeding Mr. Kaplan in Washington. Joseph O. Broussard of the Honolulu customs laboratory is being transferred to the Baltimore laboratory.
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