p o r t a n t . T h e purpose a n d reason for t h e ex istence of the manufacturing industries are, of course, to manufacture and sell some thing t h a t people want a n d need—in other words, to satisfy demands for some article or material. In doing this patents play an extremely important role. P a t e n t protec tion on a new process or product is often necessary t o obtain the money necessary for t h e equipment and facilities required to begin manufacture. M a n y writers s t a t e t h a t the American p a t e n t system is re sponsible in no small measure for t h e re markable development of American indus try. However, the subject of p a t e n t s is one o n which the views of many academic investigators and industrial research in vestigators and business men differ widely. To achieve a n y real cooperation it is most i m p o r t a n t t h a t both academic and indus trial scientists achieve as thorough an understanding as possible of t h e purposes, benefits, and limitations of our American p a t e n t system. I n conclusion some general comments
on the significance and social value of this food accessory business, t h e manufacture of synthetic vitamins, may be of interest. Through Claude R. Wickard, Secretary of the U. S. D e p a r t m e n t of Agriculture, t h e Government has issued a little pamphlet entitled "Food Will Win the W a r and Write the P e a c e " . I t states, "Food is a whole arsenal of weapons in this struggle for h u m a n freedom. I t is the driving force behind high production by munition work ers, a n d top-notch performances a n d strong morale among soldiers and sailors." Somewhat in t h e same vein, Russell M . Wilder of t h e M a y o Clinic and former chairman of the Committee on Food and Nutrition of the National Research Coun cil has written, "Famine has always con tributed to defeat of armies and subjuga tion of nations. This has long been recog nized, b u t in t h e past it was mistakenly thought t h a t famine could be prevented if only t h e supply of food sufficed. T h e newer knowledge teaches t h a t the nutritive quality of t h e foods supplied is of the ut-
most importance. . . . Caloric energy i s needed, b u t no more than much else i n food. . . . T h e new knowledge of n u t r i t i o n has emphasized particularly the impor tance of what once were called accessory factors, namely salts and vitamins. . . . Vitamin deficiencies constitute t h e prin cipal 'hidden hungers', subclinical a b normalities which until lately, for t h e m o s t part, were unrecognized." This new industry in synthetic vitamints is making it possible to satisfy m a n y o f these "hidden hungers" and t o improve th.e nutrition and well-being of our people. In comparing t h e contributions of thte nutrition workers of the 2 0 t h century with those of earlier workers in the 1 9 t h cen tury, such as Pasteur a n d Lister, from whose work came a recognition of thie bacterial origin of disease, we m a y con clude t h a t the social value of the present work in nutrition would appear t o be fits significant as t h a t of the 19th century i n vestigators to whom mankind owes s o much.
"Flashof Genius" Patent Doctrine and the Chemist T H O M A S C I F E L L I , JR., 3 Clarendon Place, Bloomfield, N. J.
Π Ρ Η Ε United States Supreme C o u r t has recently sanctioned a doctrine of p a t e n t law which, it is t h o u g h t , will vitally affect the chemical industry and the future of industrial research in America. I n the case of the Cuno Engi neering Corp. vs. the Automatic Devices Corp., U . S., 62 Supreme Court 3 7 ; 51 United States Patents Quarterly 272 (1941), the court held t h a t the test of patentabil ity is whether a "flash of creative genius" is revealed by the alleged invention. T h e high court proclaimed t h a t , unless a s t r i c t application of t h i s test reveals the presence of such a flash, a p a t e n t is invalid for w a n t of invention. T h e m a t t e r is deemed sufficiently im p o r t a n t t o t h e chemical profession t o w a r r a n t a note on certain aspects of t h e situation even though others (#, 8) have already delineated the significance of this principle of law. T h e hope is expressed t h a t t h e chemists of the N a t i o n will clearly see t h e situation as it affects t h e m and their entire industry a n d will take proper action t o protect their legitimate interests. T h e new test of patentability, if ad hered t o , will necessarily result in t h e invalidation of most chemical p a t e n t s . T h e s e p a t e n t s are in great p a r t t h e result of planned, scientific research. I t is n o t seen how t h e chemical inventor, along
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with other technically trained inventors, can qualify under a strict application of the Cuno case test in the majority of cases. In this connection it m a y be well t o con sider t h e remarks of one of the ablest present-day jurists on p a t e n t law, Judge Learned H a n d of the Second Circuit Court of Appeals, who in Ruben Condenser Co. vs. Copeland Refrigeration Corp., 85 F . (2d) 537 (1936) s t a t e d : Especially in chemical and electrical exeriments h a p p y solutions m a y be reached y testing o u t variants reached merely by Epermutations of old elements. Possibly the p a t e n t law should protect such indus trial achievements, b u t it does n o t ; t h e work of t h e well-equipped laboratory which by trial and error checks off a series of formulas m a y be t h e proper p a t h of industrial advance, as t h e Germans found it t o be before t h e Great W a r ; b u t it does not d e m a n d w h a t we call "invention". T h u s , although no line of cases in point is as y e t available in aiding one to grasp an intelligent idea as to how t h e test will be applied in practice, it seems likely t h a t a strict application of t h e test as called for by t h e Supreme Court will result adversely t o chemical inventors. I n view of t h e long line of statements (e. g., 4) t o the general effect t h a t the United States p a t e n t system is one of the most i m p o r t a n t factors in t h e development of industrial research as we know it, t h e sig-
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nificance of the impact of the n e w test of patentability on the future of industrial research is apparent. If industry finds it all b u t impossible t o acquire valid p a t e n t protection on inventions, will industry continue to expend large sums of money o n research? Here the problem touches t h e chemist, inventor or no, for with retrench ments in research a decrease in t h e n u m ber of chemists employed in industry would appear t o follow. Of greater i m portance is the adverse effect t h e t e s t , which will likely discourage inventiveness, will have on t h e "progress of science a n d the useful a r t s " in the United States—for which quoted purpose t h e Federal Con stitution empowers Congress to legislate o n patent matters. Before considering what part t h e chemi cal profession can play in combating t h e new t h r e a t to t h e future of research, it might be well t o consider t h e foundations upon which the Cuno case test rests. It» is believed t h a t n o foundation can b e found in t h e United States Constitution o r in oxry of t h e patent statutes. T h e conclusion one arrives at is t h a t the test is based o n a concept which is t h e product of t h e juristic mind. T h e judges have decided t h a t fehe drafters of t h e Constitution a n d fehe statutes did not intend t o reward inventors other t h a n those of the "genius" type. One is entitled to give thought to 523
whether the new test is even calculated to reward inventors who actually contribute to the progress of science and the useful arts. D e m m a (#) points out that Edison's incandescent lamp, Marconi's wireless, Morse's telegraph, and Bell's telephone inventions were all the result of hard work and tireless effort ; none were creatures of "flashes of genius". N o one can seriously contend that the manner in which an in vention springs into being bears any rela tion t o its contribution to progress. Con sequently, it is not understood how the Cuno test meets the constitutional direc tive that inventors are to be rewarded for their contributions to society. I t seem ingly leads to the conclusion that even the outstanding inventions above are not en titled to patent protection and it stresses form—how the invention comes into existence—to the exclusion of substance— what the invention contributes to progress. Having recognized the stake of chemists in the situation, what can they do about the matter? The answer appears to lie in helping t o educate the general public on the true relationship between patents and industrial progress (#). T h e problem is essentially one which involves public rights. The courts actually believe that they are protecting those rights by apply ing a test such as the "flash of genius" doc trine. The general public knows prac tically nothing about the effect of the patent system on its economy and hence is not in a positition to know whether its rights are even remotely involved in pat e n t matters. So long as this condition pre vails, the public cannot be aroused t o make its voice heard when actions, sup posedly taken to protect its rights, actually affect them adversely. There is already practically conclusive evidence, if any be needed, of the results which can be o b tained when an informed public acts through democratic processes. One m a y feel confident that if the public is per mitted to realize the true part that the patent system plays in the Nation's economy, a doctrine such as the "flash of genius" concept, which appears to bear n o relation t o the progress of science and the useful arts, will soon find its resting place with other discarded doctrines. Education of the public is a task that, it would seem, can best b e accomplished b y responsible representatives of the groups from which most inventors come, working in collaboration with the patent bar. A committee of the Patent Section of t h e American Bar Association has al ready presented such a suggestion (J), b u t as y e t no definite action b y this body has been taken o n the matter. At the same time, since education of others presupposes knowledge in the ranks of the teachers, the advisability of grasp ing a clear concept of the fundamental principles and philosophy of the United States patent system might well be con sidered b y the chemists and by other large inventor groups. The principles concerned
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are relatively few and easy but it is nevertheless true that many chemists, even those who have obtained several patents, have misconceptions concerning these principles. Probably many chemists believe that a patent gives the patentee the right to practice his invention. This is not so. T h e patent merely gives the patentee the right to use the federal courts to try to exclude someone from practicing the patentee's invention. T h e patentee himself may not be entitled t o practice his own invention. The reason for this state of affairs lies in the fact that the patentee, by practicing his own invention, may in fringe an adversely-held broader or domi nating patent. Education of chemists in patent matters may proceed along several directions. One would involve the sponsorship by pro fessional and scientific organizations of more talks on the patent system. Prac ticing chemists should find these talks of interest. As for the chemists of tomorrow, colleges and universities might offer special courses in patent law for chemists or in clude some lectures on the patent system in another course given in the senior year. Another task with which the chemical profession might concern itself is a fair and critical study of Monograph 3 1 , T . N. E. C. (5). This monograph is believed to bear a close relationship to the subject at hand. I t is a strong indictment of the patent system for many of its aUeged abuses. T h e monograph contains a number of proposals for changes in the system. A n inkling of its importance is indicated b y the fact that the Temporary National Economic Committee's recommendations for changes in the patent system seem to be based entirely on this monograph. Also it might be well to consider the similarity between the "flash of genius" doctrine enunciated by the Supreme Court and t h e following excerpt from page 156 of the monograph which, it may be added, was cited with apparent approval in the Cuno case: An insistent task is a definition of "patentability". All inventions derive
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from common knowledge; they differ in the quality and magnitude of their con tribution to the industrial arts. As respects origin they fall into three rather distinct classes: first, creations which exhibit individual insight; second, de rivative processes, worked out by pro fessional staffs, equipped with laboratory facilities . . . The mark of the first is genius; o f the second professional com petence . . . It was patience on the part of t h e man of genius which the Constitu tion wished to reward; the mere display of capacity to contrive has been reeatedly frowned upon b y the United tates trails which need t o be followed.
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I t is perhaps proper to point out t h a t new machinery which may result in placing the patent system on a proper foundation is probably even n o w beginning to func tion. A new five-man National Patent Planning Commission has recently been set u p by the President t o make a com plete study of the patent system and to present i t s recommendations for proposed changes therein, with particular regard to matters relating t o postwar conditions. The personnel of t h e commission is out standing, including Charles F. Kettering, chairman, Owen D . Young, Chester C. Davis, Edward F. McGrady, and Frances P. Gaines. However, it is hoped that the chemical profession will not permit any complacency, arising out of the creation of this investigatory commission, to interfere with the profession's task.
Literature C i t e d (1) American Bar Assoc, Rept. of Com mittee on Corrective Publicity, Sec tion of Patent, Trade-Mark and Copy right Law, J. Patent Office Soe.t 23, 851 (1941). (2) Demma, S. Α., Ibid., 24, 32 (1942). (3) Littell, N., Ind. Bug. Chem., 34, 88 (1942). (4) National Research Council, Rept. of Patent Committee, Ibid., 11, 250 (1919). (5) Temporary National Economic Com mittee, "Patents and Free Enterprise, Investigation of Concentration of Economic Power", Monograph 31, Washington, D . C , U. S. Govt. Printing Office, 1941.
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