Getting It Patented WILLIAM S . HILL United States Patent Ofice, Richmond, Virginia
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HE United States Patent Office and the unique system of which it is the very heart have had few press agents in their long history. Probably no other government agency has contributed so much to the American way of living and has had so little recognition in return as has the Patent Office. As a result, the education of most chemists does not include any i n formation on either the use of patents as chemical literature or on the patent system and how to make use of it. The average American's information concerning the Patent Office is about as follows: Many great inventors have taken out patents. The term of a patent is 17 years. We have copyrights t o prevent pirating of publications. If you can thmk up a good gadget and get a patent on it yon can make a million dollars easily. If you want a mechanical patent you must submit a working model of your invention. Lots of articles have the mysterious expression "Pat. Pending" on them. Right here let us refute that statement about models. An inventor is not required to submit a model and has not been so required since 1880. The office has no room to store thousands of models. However, if an inventor thinks he has made a perpetual motion machine he must submit a model and prove that i t will do all he claims for it. For some reason the Patent Of6ce is suspicious of perpetual motion mach'mes! As for the words "Pat. Pending" there is no law which prevents anyone, whether he has a patent application pendmg in the Patent Office or not, from putting the words "Pat. or Patent Pending" on his product. Consequently, the expression has no legal status whatsoever. There is a reason for its widespread use, however. If an article is on sale anyone may duplicate it if it is not covered by patents. Obtaining a patent may take some time. Not wishing to wait until the actual issuance of a patent, the inventor may wish to begin marketing it a t once. But he has no patent numbers to stamp on it warning others away. What to do? If he places the expression "Patent Pending" on his articles he satisfies the requirement that warning must be given to possible infringers that he will prosecute them if and when his patent issues. The confusing part is that a manufacturer often puts these words on his product when he has no patent application pending on it. He hopes this will act as a "scare." We will later describe how a patent application is made and how it is handled in the Patent OEce, but first let us see how this patent right grew up. T=
VENETIAN SYSTEM
The earliest patent system having some semblance ta our own was that of the Republic of Venice in the 15th
century.' At this time, Venice was one of the most important centers of the arts and sciences. The art of printing had been newly introduced and many patents were granted which were concerned with this art. For example, apatent was granted to Aldus in 1501 covering the design of his famous italic type. Patents were granted on other subjects as well. In 1555 a patent was granted for an invention relating to carriages. Infringement was punished byforfeiture of thevehicle and its animals, and a fine was imposed, of which one-third went to the informer and one-third to the poor of the city in which the infringement took place. I n 1594Galileo was granted a patent for "a machine for raising water and irrigating land with small expense and great convenience." To obtain this patent, Galileo had to present a petition to the Doge who referred it to a committee which made a favorable report to a council. The council passed a resolution granting the patent. The actual patent was in the form of a decree from the Doge and was for a 20-year term. The decree carried its own provision for punishment of infringers and provided further "that the petitioner is obliged to construct, within one year, said new form of machine, and that i t has never before been the subject of a grant, otherwise the present grant will be as though never made." From 1490 to 1600 over 1600 privileges in the nature of patents were granted in Venice. But only a small part of these were for inventions, most of them were copyrights. ENGLISH PATENTS IN QUEEN ELIZABETH'S DAY
I n England, Queen Elizabeth, d w g her long reign, granted many patents on various s ~ b j e d s . Some ~ of these were for monopolies on products such as soap, saltpeter, and oil. Others were for processes involving the treatment of cloth, and still others were for mechanical devices covering dredging, ovens and furnaces, pumps, etc. There was no uniform practice regarding the nature of the grants; some covered not only the instant invention but all subsequent improvements. The term of the grant was anywhere from 6 to 30 years. Patents were granted only for those devices regarded as entirely new and not for improvements in existing devices. Many abuses arose under the system. Some necessities, such as salt, starch, and paper, were subject to monopolies held by unscmpulous persons who extorted large sums from the populace by charging whatever they pleased. I n 1624, after Elizabeth's death, all this culminated in the passage of the Statute of Monopolies.
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' "Outline of the history of the United States Patent Office,"
I.Patenl
Ofice Soc., 18, 2 1 4 (1936). Ibid., 25-32.
This famous statute marked the beginning of the English patent system and prohibited the granting of all monopolies except ". . . any letters, patents, and grants of privileges for the term of 14 years or under, hereafter to be made of the sole working or making of any new manufactures within this realm, to the true and first inventor. . .
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"It cannot be said that the English patents of the 17th and 18th centuries greatly stimulated or rewarded invention.' Comoarativelv few were =anted because the securine of a oatent was l o difficuit and complicated, the fees many andexorbitant, and the treatment of the courts extremely rigid and harsh. . .
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I t can easily be seen how the word "patent" came to be associated with the word "monopoly." Many people still regard the two as synonymous although this idea is entirely contrary to the provisions of our American law. EARLY COLONIAL PATENTS
Before the American colonies became welded into a nation, there were many instances of each colony's granting patents for the exclusive use of a certain process for a term of years.4 The General Court of Massachusetts, in 1641, granted Samuel Winslow the exclusive right to make salt by his own original process for 10 years. To show that this was not amonopoly in the Elizabethan sense, the colony later granted other patents for the manufacture of salt by various methods. To encourage the struggling infant industries of the Colonies, monopolies were often offered to the first builders of such things as drydocks, sawmills, and tobacco pipe factories (South Carolina in 1712). The first patent granted in America for machinery was by the General Court of Massachusetts, in 1646, to Joseph Jenks for making a water power mill for the manufacture of scythes and other edge tools. Later, in 1655, Jenks was given another patent for seven years for the invention of a scythe. He thus became the harbinger of our many great agricultural inventors such as McCormick, for his improvement resulted in essentially the modern blade.
CONSTITUTIONAL PATENT PROVISION
Our national patent system was founded by the framers of the Constit~tion.~Growing out of proposals by Madison and Pinckney, the Constitution as drafted by the Convention provided, in Article 1, section 8, paragraph 8: "The Congress shall have power.. . t o promote the progress of science and the useful arts, by securing to authors and inventors the urdusive right to their respective writings and discoveries."
The first Congress received several petitions for copyrights and patents. The total number of petitions was 18, and it was a t once realized that consideration of such petitions by Congress would prove too burdensome. The second session of the first Congress convened and was addressed by President George Washington. Among the recommendations contained in his message was the following:' "The advancement of agriculture, commerce, and manufactures, by all proper means, will not, I trust, need recommendation, but I cannot forbear intimating to you the expediency of giving effectual encouragement, as well to the introduction of new and useful inventions from abroad, as to the exertions of skill and genious at home, and of facilitating the intercourse between the t and oost roads. distant Darts bv a due attention to ~ o s office Nor am I less persuaded that there is nothing which can better deserve your patronage than the promotion of science and literature."
1790 The first Congress duly passed the Patent Act of 1790. The President signed i t and i t became law on April 10 of that year.8 The subject matter specified for a patent was "any useful art, manufacture, engine, machine, or device, or any improvement therein~not before known or used." The inventor was reauired to present a petition to the Secretary of State, Secretary of War, and Attorney General, who were empowered to grant the patent. The inventor also had to file a specification, a drawing, and a model if possible. Penalty for infringement was provided as well as a provision by which a district court might repeal a patent within one year of issue. The cost of filing was nominal, amountSTATE PATENIS ing to four or five dollars. The Department of State The individual states still continued to grant patents administered this first patent statute. It can readily be seen that the entire power of grantlong after their union was accomplished5and the federal Constitution had provided for the grant of federal pat- ing patents was vested in a three-member board. The ents. Fitch, Fulton, and others who developed the members of this first board called themselves the "Comsteamboat were granted patents in various states and missioners for the Promotion of the Useful Arts." fought each other for exclusive licenses to use their The first Commissioners were: Thomas Jefferson, boats. It was not until 1825, when the Supreme Court Secretary of State, Henry Knox, Secretary of War, and decided that the New York patent and licensing law was Edmund Randolph, Attorney General. Thomas Jefferson was something of a mechanical unconstitutional, that the conflict between federal and state patent grants was settled. The states still, theo- genius, as a visit to Monticello will prove beyond doubt. retically a t least, have the power to grant patents if No one can see the many mechanical coutrivances they should so choose. However, in the words of the which Jefferson built and incorporated in his home withSupreme Court ". . . they cannot exercise i t so as to re- out a great surge of admiration for the man's mechanical ability and scientific achievement. Thus it was that strain free intercourse among states."
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' Ibid., 34.
' Ibid., 3,542. 'Ibid., 43-54.
PATENT ACT OF
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"bid., 558. Ibid., 61-2. Ibid., 63-6.
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Jefferson became the first administrator of our patent system. His strong support of our patent system is shown by the following quotation from one of his letters! "An Act of Congress authorizing the issue of patents for new discoveries has given a spring to invention heyond my conception. Being an instrument in granting the patents, I am acquainted with their discoveries. Many of them indeed are trifling, but there are some of great consequence, which have been proved of practice, and others which, if they stand the same proof, will produce great effect. "In the arts, and especially in the mechanical arts, many ingenious improvements are made in consequence of the patentright giving exclusive use of them for fourteen years."
valuable models. His request was granted and the office was spared. For more than 40 years following the passage of the Patent Act of 1793, patents were issued with no regard to their merits.la This led to the inevitable result of many conflicting patents, long and expensive intetference proceedings in the courts, and the issuing of many patents totally without utility or quality. It was not until 1836 that our present system had its real beginnings. The Patent Law of 1836 created the systematic examination method of granting patents, established the Patent Office as a separate bureau, and placed it in charge of a Commissioner of Patents. In fact, except for some modernization and amplification, the act of 1836 is the outline of today's excellent patent system. Since 1836 a few of the high spots in the rise of the Patent Officehave been :
At least 114 applications were filed for patents during the first two of the three years covered by the first patent act. Of these, 49 became patents. Since no provision was made in the first patent act for several inventors' claiming a patent for the same inThe revision of the patent statutes in 1870. vention it must have given the members nervous prosThe revision of all federal statutes including patent statutes in 1874. tration when they received petitions from four different The omission of the filing of models in 1880 (unless an inventor inventors with conflicting claims for steamboats and thinks he has a peqetual motion machine). steam engines.1° These four men were John Fitch, In 1879 The Supreme Court's declaration that the Trade Mark James Rumsey, John Stevens, and Nathan Read. Law of 1870 was unconstitutional. Trade Mark Act of 1905. Hearings were held, and the Commissioners finally deEstablishment of the Court of Customs and Patent Appeals in cided to grant each one a patent. There is nothing to 1474 lead one to suppose that duplicate patents were issued. In 1930, the extension of the subject matter of patents to inIt is most likely that all four patents as issued were clude certain types of plants. distinct from one another. Fitch was no doubt disapThe success of our patent system may be judged pointed, for he sought a patent so broad as to cover all from several viewpoints. First of these is the way it is methods of operating steamboats. regarded by other countries. The Japanese have had a patent system since 1899. In preparation for the In 1793 the second patent act was passed." It pro- establishment of that system they sent Korekiyo vided for interfering applications but did away with an Takahashi as a special commissioner to study the U. S. examination to determine novelty and utility. Thus system. He spent several months in Washington and the second act reduced the issuing of a patent to a mere was given every possible aid. Finally Dr. P. B. Pierce, then examiner of designs, who had held many interviews clerical matter, a practice still followed in France. with the Japanese Commissioner, desired to ask Mr. In a few years the business of patents began to grow Takahashi a question of his own.14 rapidly. In 1802 it was foundnecessary to establish the "Well," said Dr. Pierce, "I would like to know why Patent Office as a distinct unit, and Dr. William Thornit is that the people of Japan desire to have a patent ton was appointed as its first superintendent. Dr. Thornton was not only a man of considerable system?" "I will tell you," said Mr. Takahashi. "You know scientific interests and attainments, but also a zealous promoter of the patent sy~tem.'~He and James Madi- it is only since Commodore Perry, in 1854, opened the ports of Japan to foreign commerce that the Japanese son were next-door neighbors in Georgetown-hence have been trying to become a great nation, like other his appointment when Madison was Secretary of State. nations of the earth, and we have looked about us to The two even owned a race horse in common. For some years Dr. Thornton was the Patent Office. see what nations are the greatest, so that we could be He regarded it with a sense of personal ownership. As like them. And we said, 'There is the United States, a consequence he sometimes neglected to collect fees, not much more than 100 years old, and America was did not bother to keep accounts, often issued con- not yet discovered by Columbus 400 years ago.' And flicting patents, and even went so far as to issue patents we said, 'What is it that makes the United States such to himself. In 1814 when the British burned most of a great nation?' And we investigated and found i t the government buildings in Washington, Dr. Thornton was patents, and we will have patents." Of course Mr. Takahashi was a little extravagant interceded with the British Commander and implored him not to destroy the Patent Office with its many with his praise of our patent system when he assigned it all the credit for America's greatness. Yet the Swiss
' Ibid.. 67.
" Ibid., 74.
" Ibid., 77. " Ibid., 83-7.
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1' Ibid., 93. "LEVY, "Commentary on Japanese patent system." Ibid.. 24, 583 (1942).
previously had made about the same observation. In 1876 a t the Centennial Exposition in Philadelphia there was a Swiss manufacturer named Bally. Switzerland had long won world-wide recognition tor her watch manufacturing and other industries, but at that time possessed no patent system. Do what she would, Switzerland was experiencing the unpleasant prospect of watching a vigorous American watch industry take away her markets. When Mr. Bally returned to his own country he addressed a group of his fellow industrialists urging that they establish a patent system similar to that of the United States. Although ire recognized that American zeal and activity had played a part in our industrial progress he assigned major importance to the effect of our patent system when he said:"
founded large industries. But a change in a process that brings a much better yield than it has previously been possible to obtain is just as good a subject for patent protection and is much more common. Besides, it is a part of our American way of living that a citizen has a right to protect his discoveries. He is giving the public something i t did not possess b e f o r e n o t taking something away from his fellow-men. Once a patent is issued the information is no longer seaet. Others can use his discovery to base further improvements. To make effective use of the patent system great care is needed. Carelessness in preparing and prosecuting a patent application may result in the issuance of a patent that is absolutely worthless. If a problem is important enough to spend months and years solving, the protection of it with one or more patents is certainly equally important. "I am satisfied from my knowledge that no people has made in The chemist will therefore do well to conduct all of so short a time, so many useful inventions as the American, and if today machinery apparently does aU the work, it nevertheless, his research with the idea in mind that he may some day by no means, reduces the workman to a machine. He uses it as wish to protect his results with patents. All notes a machine, it is true, but he is always thinking about some im- should be carefully and completely kept from day to provement to introduce into it; and often his thoughts lead to day in a bound notebook. Some inventors have their fine inventions or useful improvements. ". . . we must introduce the patent system. America has notebooks notarized a t frequent intervals, sometimes shown us how. May our sister republic serve as our model in daily. Drawings of apparatus or phcrtographs should this." he included where needed. The most important date for an inventor to establish is that of his constructive The Swiss patent system was subsequently estab- or effective reduction to practice. Since it is a distinlished in 1888. guishing feature of our patent system that the first inAnother way of judging the success of our patent ventor and not merely the first to file in the Patent system is to note how our industries have progressed Office is awarded priority when two or more inventors under its protection. Smce 1836 when our present are claiming the same thmg, the date when the invensystem of examining patents was established, a flood tion was first put in workable form must be established of new inventions has advanced industry by leaps and beyond doubt. This is not merely the time when two bounds. More scientific and industrial advance has substances reacted and a product having a certain aptaken place in the last 100 years than in the previous pearance was obtained. It is the date when that prod100,000, and our patent system has played a large part uct passed a series of exhaustive tests proving that it in it. had worth for some particular application. Final judgment must rest with American industry Suppose now the chemist is ready to file an applicaitself. What is the prevailing opinion here? Recently tion for a patent. What should he do? He may write certain elements in our Federal Department of Justice to the Patent Office for information. The office will no became alarmed a t the formation of "international doubt send him a small booklet containing general inforcartels" and "patent pools," the latter being formed mation of interest to inventors about to file applicaamong our own industries. In their attacks on these tions. This booklet outlines the general form which combines they directed the spotlight on our patent sys- the application must take and what the general procetem as well, and raised the question whether it might dure is in filing and prosecuting a patent application. not be time to introduce some sweeping changes, mostly It will also contain the recommendation that since in the nature of restrictions. Large manufacturers, Patent Office procedure is a complicated legal business, small manufacturers, inventors, the bar-all woke up the applicant will do well to secure the services of a with a start and rushed to the defense of the present reputable patent attorney. This is no idle suggestion. patent system. Many prominent industrial chemists The preparation of such an exacting document as a spoke their minds strongly. patent must be handled by following a rigid set of rules. To come to the meat of the matter, suppose you have These rules are contained in the booklet "Rules of an improvement upon which you want to take out a Practice of the U. S. Patent Office." This booklet is patent. Usually the chemist is surprised, not a t how also available to the inventor a t no charge but takes a radical an improvement is needed but how small it may great deal of study to become familiar with. Patent be. Few patents are issued for discoveries such as Examiners spend considerable time during their first Hoffmann's patent on the preparation of acetyl salicylic years in the office just going over the rules and seeking acid or Baekeland's "bakelite" process. These patents to interpret them with the aid of a S n p e ~ s o r yExaminer. The value of a patent depends mostly on the " COE."Statement before the Temporary National Economic skill with which the claims are drawn. The average Committee on January 16, 1934." ibid., 21, 92 (1939).
inventor can almost never do himself justice without some skilled aid. The inventor-chemist probably then asks himself where he can find a reputable patent attorney. The office maintains a list of all those licensed to practice before it. All of these are assumed to be reputable, but of course their abilities differ widely. One word of caution is needed here. Those attorneys who advertise freely in the popular scientific magazines are not necessarily the best ones to consult. If the inventor has any friends in a large chemical corporation or among university professors he might best get a recommendation from them. The Patent Office does not make specific recommendations. The first step after securing the services of a good attorney is usually to have him make a preliminary search in Washington for possible patents already issued in the same field. The attorney should then advise favorably or unfavorably on the advisability of preparing an application. The inventor may aid more in prosecuting his patent application if he understands what happens to i t in the Patent Office. After going through the formalities of receiving a filing date, a file wrapper, and a preliminary inspection as to correctness of form, the application is assigned to one of the 64 examining divisions. If the invention is a synthetic resinous composition, it may be assigned to Division 50, since that division handles Class 260, those subclasses dealing with the synthetic resinous compositions. Depending upon how the invention is being claimed, however, i t might be assigned to one of several other divisions. No matter to what division the application is assigned, the procedure through which it then goes will be about the same. The clerk enters it on her books; the Chief Examiner looks it over and assigns i t to an assistant examiner. The assistant examiner usually reads it over and assigns it to a ceitain subclass. It then goes on his docket to await its turn for consideration. When the application comes up for action the assistant examiner studies i t over very carefully and first notes any informalities that must be corrected. He then makes an examination on the merits of the supposed invention. If he thinks that the claims have been drawn to two or more separate inventions which should not be issued as a single patent his first requirement will be that the application be divided. If the inventor and the attorney agree with the examiner they must elect one invention to be further prosecuted in the present application. If they disagree they may request a ruling by the classification Examiner. Whatever the Classification Examiner decides must be complied with, although his decision may later be appealed to the Board of Appeals if desired. Supposing now that all formalities have been taken care of, the assistant examiner then makes his search through the "prior art." In his own division are cases with small filing drawers, each containing patents of a certain subclass. He has available, not only all pat-
ents which have ever been issued in each subclass (since patents have been numbered and classified), but cross references gathered from d over the office which have been found related to his own field. He also has photostats of published articles and copies of foreign patents through which to search. In his own division are also copies of textbooks, monographs, handbooks, and other publications relating to the art examinable in his division. The examiner's search is mainly in the priorissued patents in his own division, and sometimes in several other related divisiom. Any publication made public prior to the filing of the application, or any patent, application for which was made before the filing date of the present application, may be used as a "reference" to deny the patentability of the claims. Note that it is the claims which are examined to determine novelty. They must be drawn so as to avoid what has been disclosed in all prior publications. The examiner can hardly be expected to make a search through the "prior art" which is 100 per cent perfect or complete. At most he has about one day to act on each new case and about half a day to act on each amended case. He works under a quota system. If he falls below his quota of actions week after week, he stands little chance of promotion. This is an evil of the examination system for which no remedy has yet been found. If the number of examiners were doubled or tripled more attention could be given each application. But that would also greatly increase the cost of examination. The assistant examiner writes his letter with the approval and often very close supervision of the Chief Examiner, and i t is sent to the attorney. The inventor and the attorney should then get together regarding the reply. A reply may be returned a t any time within six months but if that period is exceeded the application will be held abandoned. Usually the examiner gives two or more actions and receives as many replies on each application. Then he may make a rejection final. Perhaps some claims will be allowed. Usually the prosecution results in the cancellation of some claims, the addition of others, or the amending of some, for the sake of clarity or to avoid the priorissued patents. After final rejection, if the inventor thinks that one or more of the rejected claims should have been allowed him, he may appeal to the Board of Appeals. He may then cany his appeal out of the office to the Court of Customs and Patent Appeals in the District of Columbia. An alternative to taking his case to the above court is to file suit against the Commissioner of Patents in the District Court and from that court appeal to the Court of Appeals of the District of Columbia. When the examiner has allowed an application he first makes a search for interfering applications (applications claiming the same subject matter). If he finds none the completed application is sent to the Issue Division. At this time the inventor must pay his final fee of 30 dollars, after which he can obtain his patent.
The above is the bare outline of what happens to an application for a patent within the Patent Office. There is nothing to prevent a chemist's making up his own application and prosecuting i t without the aid of an attorney. Some chemists do so, but sooner or later the inexperienced applicant will usually regret his hastiness. PATENT OFFICE TODAY
tremendous accumulation of records, including the files of both patented and abandoned cases. To give an idea of the volume of business handled by the office, the following is taken from the "Patent OfficeReport for 1942:"16 Net receipts-9s3,917,pi3,69, Applications for patents, including plants and designs53.551 as against 65,356 in 1941. Applications for registration of Trade Marks-12,103 compared with 14,302 in 1941. Applications pending at the end of the fiscal year, June 30. 1942-95.265. Cases disposed of during 1942-59733. Cases awaiting action46.240. The -mining had gotten their work up to within anywhere from three months to eight mouths of current.
The chemist may feel better acquainted with his patent office if a brief wdrd-picture is included of the , due to overbffice as i t is today. In ~ e b m a r y 1942, m w d e d conditions in Washington, part of the office moved to Richmond, Virginia. Moved to the southern citv were all examininn divisions includinp Trade and ~ ~ T{e classification ~ i ~ ~ i ~ irn~~ i It ~ ,may ~ , be noted that as this article is written the action terference ~ ~and L~~ ~~~~i~~ ~ came ~ aiona, i cases awaiting ~ ~ have been , reduced to between 409000 and41,000. as well as some of the necessary clerical units. I n all, The total n ~ m b e r of applications has dropped about 1000 employees made the move. Today there are about 400 examiners in the 64 examinine divisions. sharply since the start of the war because there are very Before the war there were more than 600 in & divisions. few received from foreign countries. Also, of course, ~ i ~ branch h ~is housed ~ ~ in da umade.overw many of our own citizens who would normally be sendare now in the armed forces. warehouse and factoryof the ~ ~~~~f ~~~b~~~~ ~ ing r in applications t If conditions parallel those following the last World Company. can ~ ~behind in~washington ~ are thei division ~ War, a flood i of applications ~ ~ be expected when hostilities cease. Will Yours be among them? which receives applications, the Scientific Library, search room, Board of Appeals, and practically all the 16 "Patent officereport for 1942." ibid.,25, 227 ff, (1943).
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