PATENT LAW AND PRACTICE OF FOREIGN COUNTRIES Food and

PATENT LAW AND PRACTICE OF FOREIGN COUNTRIES Food and Drugs. Thomas H. West. Ind. Eng. Chem. , 1938, 30 (12), pp 1424–1430. DOI: 10.1021/ie50348a017...
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PATENT LAW AND PRACTICE OF FOREIGN COUNTRIES Food and Drugs THOMAS H.WEST Board of Trade Building, Chicago, 111.

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ROTECTION for an invention can be obtained in more than one hundred countries. I n some countries the form of protection is somewhat nebulous--for instance, when a country has no patent law and the measure of protection which is obtainable can be secured only by depositing a certified copy of the United States patent with the United States consular office in the capital city of the country. Many of these countries are not of general importance, and patents are seldom obtained outside of a group of about thirty countries. Forty-one countries are members of the International Convention for the Protection of Industrial Property. This International Convention was first set up in Paris in 1883 and has been the subject of amendments a t various dates. The principal provision of this International Convention in the field of patents is that which creates the right of priority upon the filing in a Convention country of the first application upon a certain invention. This article of the Convention provides that applications which are filed in other countries adhering to the Convention within twelve months of this first application are entitled to the priority of the filing date of such first application and are, therefore, not affected by any publication or public use of the invention occurring subsequent to the date of filing of the application in the first Convention country. For example, if an application had been filed in the United States Patent Office December 10, 1937, an application could be filed not later than December 10, 1938, in Great Britain, Germany, or any other Convention country and, because of the priority it would receive, would not be affected by any publication or public use of the invention which had occurred in the United States or elsewhere, since December 10,1937. Such an application would also enjoy the same priority as against other applications with which it might be in conflict. A few of the Convention countries, however, do not include the anniversary of the filing date within the Convention year and in such countries the application would have to be filed not later than December 9, 1938, in order to be entitled to the priority of the United States application. Most countries do not permit the free use of an invention before the filing of the patent application. This is one of the general respects in which the patent law of foreign countries differs from that of the United States. Here an invention may be used freely before an application is filed in the United States Patent Office, provided that the application is filed before the invention has been the subject of a printed publication in the United States or any foreign country and shall not have been in public use or on sale in the United States for more than two years. Generally foreign countries do not recognize any such right to a free use of the invention prior to the filing of an application for a patent. On the contrary, they usually require the application to be filed before the invention has been the subject of any free use. Canada is an exception. Its patent law permits an applica-

tion to be filed within two years of printed publication in Canada or any other country or within two years of first public use or sale in Canada. The application in Canada must be filed before the first of these two-year periods has expired and in any event before a patent issues on the same invention in a country foreign to Canada. The foregoing statement does not take into account a very recent court decision which interprets the law as requiring, when an application has been first filed in a country other than Canada, that the Canadian application be filed within twelve months of this application in another country. Another exception is Germany. The United States ratified the International Convention in 1887. Prior to this date the United States law required that the United States patent be the first to issue upon a n invention; that is, it was necessary for the United States patent to issue before a patent issued in any other country. After the United States ratified the Convention, the United States law was amended so as to abrogate this requirement if a United States application is filed within twelve months of the filing in a foreign country. If, however, the United States application is filed more than twelve months after the filing in a foreign country, it is still necessary that the United States patent be the first to issue. There now seems to be no particular reason for retaining this requirement. With certain few exceptions the general practice of foreign countries is to require the filing of an application before the invention has been the subject of any free use. The industrially important countries can be classified in one or the other of the three following groups: 1. Those countries which take the territorial view of a patent and permit an application to be filed if the invention is new in the territory for which the patent is being granted. This means that an application must be filed before the invention has been the subject of printed publication or public use in the country and that printed publication or public use in other countries is of no consequence. The principal countries which come within this group are Australia, Great Britain, India, Irish Free State, Italy, Japan, New Zealand, and Switzerland. 2. Those countries which require that an invention be new as t o the whole world, both from the point of view of printed publication and public use. The principal countries which come within this group are Argentina (patents of invention), Brazil, France, Holland, Hungary, Mexico, and Sweden. 3. Those countries which treat printed publication and ublic use differently. They require an application to be filed iefore printed publication in any country and before public use in the country in which the application is being filed. The principal countries which come within this group are Belgium, CaechoSlovakia, Germany, Norway, Poland, Portugal, and the Union of South Africa.

Germany is an exception to the general rule, and therefore the inclusion of Germany in this last group must be modified by the statement that, according to the new German patent 1424

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law of October 1, 1936, prior publication which occurs anywhere during the six months preceding the filing of an application in Germany and which originates with the inventor himself, is not considered to invalidate a German patent. In certain of the countries included within these three groups, patents are also obtainable under other conditions, which cannot be given in detail here. Not all of the countries mentioned in the three foregoing groups are members of the International Convention. But in the Convention countries the foregoing conditions are modified in the sense that the requirements of that particular country are considered in relation to the Convention datethat is, the date of filing of the first application in a Convention country instead of in relation to the date of actual filing in the particular country, provided that this last mentioned date is within twelve months of the date of filing of the application in the first Convention country. The priority granted by the International Convention does not operate to offset in countries of groups 2 and 3 the anticipatory effect of printed publication and/or public use of an invention prior to the filing of a United States application as permitted by United States patent law. This is obvious since all that the Convention priority does is to substitute the date of filing of the United States application for the date of actual filing of the application in such other countries. I am, of course, here considering the United States application to be the firs!, filed application on an invention. At the International Convention meetings of 1928 and 1934 the American delegates urged the adoption of a clause in the Convention which would allow the free use of an invention prior to the filing of an application as is permitted by United States patent law. This is a somewhat revolutionary idea to foreign countries, and but little progress has been made in that retipect a t the present time, although undoubtedly the provision in the new German patent law is partly due to the agitation of this question by the American delegates. It should be emphasized that the American law permits the grant of a patent only to the first inventor whereas the laws of practically all foreign countries give the right to the patent to the first applicant. Thus in foreign countries except Camada there is no interference practice such as there is in the United States, since the determination of priority between two inventors is not necessary. I n foreign countries other than Canada, the relation between applicants, whose applications may be in conflict, is determined by their respective filing dates, either in the sense of the actual date of filing in the country or the priority date under the International Convention. Moreover, the United States law requires the inventor to be the applicant, but this is not always essential in foreign countries. I n many instances an assignee, whether individual or corporation, can apply; in some cases without filing proof of title to the invention. An inventor who has been defrauded can usually take steps to have a fraudulent patent or application set aside and a substitute patent issued to him. Another general difference between the patent laws of the United States and foreign countries is the conditions attached to a patent when issued-i. e., the necessity of paying renewal fees to maintain a patent in full force and effect and the requirement to work the invention. No such conditions are attached to a United States patent which is issued for a term of‘ seventeen years and, unless it falls foul of the courts, automatically remains in effect for that full term. At the meetings of the International Convention in 1928 and 1934 the American delegates urged the reduction or abolishment of these renewal fees; but since they represent a considerable portion of the receipts of foreign patent offices, it is not likely that any change in these fees will take place. Although financial reasons might seem to be the basis for these fees, their

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actual purpose is entirely different. This purpose is to remove a monopoly which has not gone into use sufficiently to provide an income which would justify the payment of the fees to maintain the patent in effect. Thus industry is freed of monopolies which are nonproductive. I n a few instances this undoubtedly works a hardship; occasionally inventions are made in advance of their time and cannot come to fruition until improvements are made in other lines. This is the exception rather than the rule, and the general effect of the requirement to pay fees to maintain a patent in effect is thought to be beneficial. The obligation to work an invention is based upon the idea that the monopoly represented by a patent would otherwise be prejudicial to the industry of a country. There has been a considerable change in the international field in this respect in the past twenty years. At one time the universal penalty for nonworking was the revocation of the patent, but in a large measure this penalty has been superseded by the liability to the grant of compulsory licenses. This change was written into the International Convention in the revision effected a t the Hague in 1928 and was due to the recognition of the fact that the revocation of a patent destroyed the monopoly represented by the patent without ensuring that the industry of the country obtained the benefits which were intended by the working provisions of the patent law. The compulsory license, which is granted by the patent office or some other authority without the acquiescence of the patentee, is a means of maintaining the patent monopoly in existence while freeing industry from an abuse of that monopoly by the patentee. Perhaps the most effective system of compulsory license is that which exists in the English patent law, and in view of the agitation for the introduction of compulsory licensing provisions into the United States patent law, a discussion of the English law in this respect follows.

Compulsory Licensing i n Britain The law defines a number of conditions which constitute an abuse of the monopoly rights under a patent; one of these conditions is the failure of the patentee to establish the working of the invention in Great Britain within three years from the date of sealing of the patent. The law provides that, if a patent is not being worked on a commercial scale in Great Britain a t the conclusion of that period, any British manufacturer who desires to use the patented invention can make application to the Comptroller of Patents for a compulsory license. This result can be avoided only by establishing manufacture of the patented invention in Great Britain before the third anniversary of the date of grant and by continuing such manufacture thereafter. I n the event of a license being granted, the patentee would probably be precluded from importing into Great Britain. If it is not feasible to work a patent commercially in Great Britain, a ‘‘nominal working ” is often conducted by offering the patent for sale or license by means of advertisements in appropriate publications and by direct offers to people who might be interested in the patented invention. Such nominal working in itself will not be effective to prevent the grant of a compulsory license and is of little, if any, real value unless a sale or license follows, a result which is infrequent. A nominal working should obviously not be conducted except in good faith-that is, only when the patentee is prepared actually to sell the patent or grant a license if the nominal working should disclose an interested party. Also, if a patentee is willing to grant licenses, he can so notify the public by having his patent endorsed “licenses of right,” and if this is done actual manufacture will not be necessary nor will there be any object in effecting a nominal working. A partial loss of control of the patent results for

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which the patentee is compensated by the reduction of the annual renewal fees to one-half. This procedure might be followed if the patentee has no intention of either manufacturing in or importing into Great Britain, but holds his patent simply with the idea of deriving profit, either from the sale of it or from the grant of licenses. Of itself the endorsement will not result in profit to the patentee, but it will reduce the expense of holding the patent. There is no actual provision in the statute requiring the Comptroller to satisfy himself that it is impossible for the parties to reach a mutual agreement. But he would no doubt so satisfy himself before proceeding with a hearing on a petition for a compulsory license. There is every reason why the parties should come to a mutual understanding, since it would be advantageous to both. The patentee could undoubtedly secure a higher royalty by means of a mutual agreement than he would be given by the Comptroller in a compulsory license; the would-be licensee, although paying a higher royalty, could obtain the technical direction and assistance of the patentee together with the right to improvements made in the subject matter to which the patents already possessed by the patentee related. In addition, the mutually arranged license could be exclusive in character which would only be the case in very rare exceptions if a compulsory license were issued, These compulsory licensing provisions have been in the English law since 1919, and few compulsory licenses have been ordered since that date. One might conclude, therefore, that these provisions were ineffective, but the very fact that only a few licenses have been ordered appears to be adequate proof that patentees are careful to avoid the abuses stated in the law. In determining as to the issuance of a compulsory license, the question which the tribunal considers is not so much the position of the applicant for the license as whether in the circumstances the issuance of such a license is in the interest of British industry. These clauses of the English law appear to be in accord with economic conditions, particularly that clause requiring the working of a patented invention to be established in Great Britain within the three-year period. Whenever economic conditions are such as to justify the actual manufacture of an invention in Great Britain, it is difficult to imagine any valid reason why the patentee should not arrange for such manufacture or permit some interested party to manufacture under license. When such a party does come forward, the patentee has nothing to fear from the law unless he acts contrary to it, which would mean that he would have to refuse to permit the granting of a license or be unreasonable in his demands for granting such a license. Unless, however, there is some economic reason justifying the granting of a license on an invention in England, it would hardly appear likely that some interested party would come forward to obtain a license. Upon this basis it does not seem that in general a British patent is endangered by failure of the patentee to conduct nominal workings. From another angle, it would seem that a patentee does not receive by means of a nominal working .any real value for the money which he expends, since a nominal working does not discharge the personal responsibility which the law places on a patentee. The writer’s own view is that no action need be taken either to effect nominal workings or to have a patent endorsed “licenses of right,” but a patent should be continued in force by payment of the %axesas long as the patent appears to have value warranting its maintenance. The foregoing discussion is necessarily general; although it is indicative of the general theory of compulsory licensing provisions, it is not complete nor is it exactly applicable to other countries, but space does not permit an explanation of the compulsory licensing requirements of other countries.

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Foods and Drugs In the particular field of foods and drugs the American patent law is much more liberal than that of foreign countries. In the United States a large proportion of medical discoveries can be patented. However, medical formulas (prescriptions) cannot be protected. Patents are also obtainable for substances which may be used as drugs. As to foods, the issue of a patent for what is practically a recipe is not unknown, but the tendency of the United States Patent Office is to become very strict in this class of cases. Patents for a new process of preparing a substance, which may be a drug or a food, are obtainable in the United States. If the substance is new, both the substance itself and the process of preparing it may be protected; but if the substance is known, then only the process is patentable, since in that case the invention resides solely in the process and not in the substance. The importation of a known substance into the United States, even if it has been prepared by a process which is patented in the United States, is possible because, unless the process itself is carried on within the United States, there can be no infringement of a process patent. The patent laws of foreign countries are in general more restrictive in the field of food and drugs than that of the United States, but are more liberal in one respect. I n most European countries a substance cannot be patented, regardless of whether it is known or new. The process of preparing the substance may, however, be patented; and although the claims of a patent may be process claims only, the effect of the patent extends to the product when prepared by the claimed process. Thus, in general, the importation into a European country of a substance prepared in another country by a process which is the subject of a patent in the said European country is an infringement of such a patent. With this general statement as the background, the patent laws of particular countries will be considered.

Great Britain Prior to an amendment of the British act in 1919, it was customary for British patents dealing with the manufacture of new chemical substances to include claims for the substances themselves independent of the actual process of manufacture. Although this was customary, there was considerable doubt as to the validity of such claims. The matter of these claims in British patents received particular consideration in 1919, since during the World War many British patents containing claims to new chemical substances, particularly in the field of dyestuffs and drugs, were found to be in the hands of German proprietors. An act was therefore passed in 1919 limiting the claims in a British patent for a chemical product or a substance intended for food or medicine to the process by which such a product or substance is obtained and to the product or substance obtained by the process. The principal object of this change, which was made with the approval of the chemical industry of Great Britain, was to prevent an inventor who had found a way of preparing a new chemical substance from claiming the substance when prepared in other ways. Prior to the amendment of the act in 1919, the law did not give the British Patent Office authority to refuse applications for mere prescriptions. Therefore, whenever such a patent was issued, the Pharmaceutical Society would present a petition for the revocation of the patent, which always was obtained. The British Patent Office is strictly limited in function to a determination of novelty, which is the “qualitative” value of an invention, but it does not have authority to determine subject matter, which for comparative purposes is the “quantitative” value of an invention. In other words,

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an invention to be patentable a t all must have the “quality” of novelty, but whether the patent is valid or not dependq upon the “quantity” of novelty. There was an ambiguity in the change of law made in 1919 and this was not removed until 1932, a t which time care was taken not to open the door again to the granting of patents for prescriptions. This result was obtained by wording the paragraph of the law to state that a mere admixture resulting only in an aggregation of the known properties of the ingredients of a substance intended for food or medicine should not be deemed to be a particular process of manufacture. A special compulsory licensing clause relates to patents for inventions intended for or capable of being used for the preparation or production of food or medicine. This clause provides that the Comptroller of the British Patent Office shall, unless he sees good reason to the contrary, grant to an applicant a license limited to the use of the invention for the purpose of preparing the food or medicine but not otherwise. I n settling the terms of such a license, including the determination of the amount of royalty or other consideration payable, the Comptroller is directed to have regard to the desirability of making the food or medicine available to the public a t the lowest possible price consistent with his giving the inventor due reward for the research leading to the invention. At public hearings preceding the amendment of the English patent law in 1932, this last provision was strongly criticised from several quarters as recognizing and sanctioning the principle of deriving private gain from the patenting of medical inventions. I n consequence a proposal was submitted to the Departmental Committee of the Board of Trade (which was conducting the hearings as to the amendment of the patent law) for a scheme of “dedicated patents,” under which i t was to be compulsory to dedicate all patents for inventions subserving medical purposes, whether taken out by British or foreign workers. It was thought that this scheme would safeguard the principle that there should be no uncontrolled monopoly in Great Britain, that publication would be assisted, and that workers would be protected from exploitation. The patents were to be dedicated to a department of the government, and i t was thought that the administration of dedicated patents by the government department would allow an effective control over manufacturers by a system of licenses and would provide the necessary inducement for firms t o develop new remedies. This proposal apparently represented a compromise between the medical profession and the chemical manufacturers. A large section of the medical profession was resolutely opposed to the taking out of medical patents, whether of purely chemical or of biological origin, and declined to give any assistance in these cases. Thus the medical research worker objected to medical patents on ethical grounds while the manufacturer was desirous of adequate protection. The Departmental Committee of the Board of Trade came to the conclusion that no sufficient case had been made out for compulsory dedication of medical patents, and that any such alteration of the law would operate adversely to the British fine chemical industry and discriminate unfairly against chemical research workers in Great Britain. The major problem in connection with all patents is the determination of the “quantity” of novelty in the invention. This problem requires not only that the extent of public knowledge prior to the invention be ascertained, but also involves the consideration of the question of analogy between the invention and the ascertained prior public knowledge. This question of analogy is perhaps more acute with chemical patents than with patents for any other kind of invention, since the analogy between the ascertained public knowledge and the invention is often more apparent in chemical

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than in other patents. This difficulty is not made easier by the requirement of British law (and of the laws of most other European countries) that the invention of a new chemical substance be expressed in terms of the process by which the substance is prepared. A new chemical substance is frequently obtained by applying a known chemical method, reaction, or operation for the first time to a new initial material. I n such a case it can be argued that the result of applying the known chemical method, reaction or operation t o the new initial material can be predicted from the manner in which the known chemical method, reaction, or operation has been previously used. When testifying as an expert witness in a patent suit in Great Britain, James Dewar is reputed to have made the statement: “There is no pre-vision in chemistry.” This statement is undoubtedly an exaggeration today, but i t is still true that the argument of chemical analogy is not an accurate guide to prediction in chemistry. One English writer has suggested that, in general, chemical inventions will fall within one of the following five classes: 1. Pioneer inventions, so-called, such as saccharin, viscose, or rubber vulcanization. 2. Analogous or nonanalogous substances and reactions. 3. Variation in conditions in a process. 4. Change of operations. 5. Combinations of parts or steps-i. e., a combination by which some novel result, and not merely the additive function of the components of the combination, is obtained.

The argument as to analogy in determining the quantity of novelty of an invention would be applied differently to these different types 6f invention. I n most instances it would not arise in connection with inventions of type 1, but would nearly always be involved in inventions of types 2, 3, 4, and 5. One suggestion will indicate how the argument of analogy would probably operate in Great Britain. Let us assume that the prior art indicates that a known chemical reaction can be applied to two different starting materials, and that these starting materials are the first and second members of a certain organic series. The new invention is to consist in submitting a higher member of the same series to the same known chemical reaction, the end product of the invention being EL highly efficient and therefore commercially valuable disinfectant. If the known product resulting from the application of this known reaction to the second element of the series also had disinfectant qualities which, however, were not sufficient to give the product commercial significance but were greater than the disinfectant qualities possessed by the end product resulting from applying the said known chemical reaction to the first element of the series, the invention would probably be held to be unpatentable because the highly efficient disinfectant qualities of the end product would not be unexpected but largely predictable. On the other hand, if the end product resulting from the treatment of the second element of the series possessed no disinfectant qualities a t all, the invention involved in applying the known chemical reaction to the higher element of the series would probably be held to be patentable, since the result would be contrary to the indication of the prior art.

British Dominions Since 1923 the patent law of Canada has been similar to that of Great Britain in limiting the claims for a chemical product or a substance intended for food or medicine to the process by which such product or substance is obtained and to the product or substance as produced by the process in question. It also contains the same special provision for the

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granting of licenses under patents for inventions intended for or capable of being used for the preparation or production of food or medicine. The patent law of New Zealand contains the same restrictions as the British and Canadian laws and also provides for the grant of licenses under patents for inventions intended for or capable of being used for the preparation or production of food or medicine. On the other hand, the laws of Australia and the Union of South Africa do not contain these restrictions or provide for the grant of such licenses.

France French law is very indefinite in this particular field and therefore quite liberal in some respects. The definition of invention in the French patent law refers to new industrial products and to new means and the new application of known means for obtaining an industrial result or product. Chemically produced materials are patentable as such, and it is possible to patent a novel application of a known substance. I n that case, however, the French courts make a differentiation between a new and patentable application of a known substance and a new but unpatentable use of the substance. This seems to involve a subtle distinction between the words “application” and “use,” but analogy helps us to interpret this distinction. A new use which is unpatentable is one which is analogous to a known utilization of the known material, whereas a new application which is patentable is an application of the known material in a manner and for a purpose for which there is no analogy. It can also be argued under French law that the synthetic form of a material which is known in nature can be patentedi. e., the synthetic material itself and not the process by which it is synthesized. The law apparently also includes mixtures. This does not mean that prescriptions are patentable. One peculiarity of a French patent is that it does not contain any claims, everything of novelty disclosed in the patent being protected. A substance which is known in one form can be patented if produced in a new and industrially usable form. A foodstuff is patentable in France, but medicines are unpatentable. Thus, if a substance is both a food and a medicine, its patentability depends upon whether its medicinal properties or its nutritive properties are preponderant. An invention pertaining to chocolates containing cod liver oil has been held patentable, but an invention relating to bread containing a quantity of iron salts has been held unpatentable. Substances which are capable of use both as medicines and in industry are patentable, provided that the industrial use is plainly set forth in the patent. Theoretically such substances are protected only in respect to their industrial use. Dental fillings, prophylactics, and disinfectants are patentable, although some question might be raised in the case of a disinfectant which is used as a healing agent. Serums are classed with medicines and are therefore unpatentable. While the patenting of medicines is definitely prohibited in French law, the question as to whether a process of producing a medicine is patentable appears to be an open and controversial question. When an application is filed for a process of manufacturing a pharmaceutical product, the French Patent Office always submits the application to the examination of the Technical Committee of Industrial Property. The decisions of this committee have been quite contradictory and thus reflect the lack of unanimity of the legal authorities on this important question. Nevertheless, a definite practice seems to be in formulation, and for some time the committee has seemed willing to recognize the patentability of processes of manufacture of known pharmaceutical products. However, it is necessary according to

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this new practice that the pharmaceutical product obtained by the novel process be a perfectly definite substancei. e., that it be possible to define its characteristics and its physical or chemical properties in a manner sufficient to be able to identify it with the same products obtained by other methods previously known. It does not seem that the process of preparing an entirely new product would be patentable; in any event, a process which was the only known means of producing a given pharmaceutical product would not be patentable, since the grant of such a patent would create a monopoly similar to that which would be created by a patent upon the pharmaceutical product itself. The latter mpnopolies are definitely forbidden by the French patent law.

Belgium The Belgian patent law, dated 1854, contains no provision as to the patentability of drugs, pharmaceutical products, or foods. The report which the parliamentary commission niade on the patent law has been interpreted as implying that no kind of remedy can be patented. A decision to that effect was rendered by the Belgian Supreme Court in 1894 and has been adhered to strictly. It is possible, however, since the law is silent on this question, that a determined assault upon the present practice might be successful and secure the granting of patents for drugs and pharmaceutical products. The opposite view has been taken in regard to foodstuffs, and they are held to be patentable. A process of preparing a drug or pharmaceutical product may be patented, provided the process is not the only means available for producing the substance. Products which are merely tonics or appetizers or are used for hygienic, antiseptic, and similar purposes are patentable.

Italy I n Italy chemical substances which are not medicines are patentable as are also processes for producing such substances. These chemical substances must, however, be claimed, since a process patent would not otherwise extend to the product prepared by the process, The law specifically prevents the patenting of medicines. As the law is interpreted, however, processes for preparing medicines are also held to be unpatentable.

Germany The patent law of Germany definitely prohibits the patenting of chemical substances, medicines, and foodstuffs, whether for nourishment or for enjoyment. This prohibition appears always to have been contained in the German law. The apparent reason is that chemical substances either exist in nature already and thus have no novelty in themselves, or have a “latent” existence in that their production depends upon natural laws which will act when the hindrances to the operation of such laws are removed by the act of man-for example, when man brings about conditions of temperature and pressure which do not exist in nature. The removal of these hindrances is the process which man has invented, but man did not invent the substance itself and should not be able to prevent another person from obtaining the same product by the removal of other hindrances-i. e., by another process. The same reasoning applies to medicines, but in the case of foods the prohibition seems to be based on consideration of public welfare-namely, that a monopoly in a foodstuff is undesirable. The prohibition is general in character, but if one could imagine a foodstuff which is not prepared by a chemical process and which is not intended for consumption

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in the actual form in which it is prepared, it might be possible to obtain a patent for it. I n the discussion of the British patent law, a supposititious case was mentioned of an invention which consisted in applying a known chemical reaction to a new starting material in the form of a member of an organic series to which the reaction had not yet been applied with the result that an end product with new and valuable properties was obtained. Such an invention would be patentable in Germany, although there would be little novelty in the process itself. The technical effect of the invention, which must be established under German practice, is the new and valuable qualities of the end product. This technical effect will have to be more significant if the invention is directed to the manufacture of a member of a class of substances which has already been used repeatedly or in numerous cases for a certain therapeutic process. The therapeutic effect may also be of importance in establishing the patentability relating to the manufacture of a known chemical substance. For instance, it would be possible to establish the patentability of an invention on the argument that it is of importance, on account of the use of the known substance as a medicine, to be able to start on a new process for the manufacture of the substance even if this new process has no particular inventive merit as compared to the process or processes by which the known substance had already been prepared. In such a case the patent must be definitely directed to this new and different process, and it is not possible to obtain as broad a claim as might be obtainable for the production of a new chemieal substance. A mixture is patentable in Germany if a technical effect can be established by showing that the mixture possesses a significant quality which is not merely the sum of the qualities of its component parts.

Netherlands I n Holland foods and drugs are not patentable, not because of any direct prohibition in the patent law but because the law prohibits the grant of patents for “substances” while it permits such grant for “articles.” Here again we have a somewhat subtle distinction between words. The patent law of Holland does not contain a definition of either of these expressions, but the words are interpreted in the sense that an “articleJJhas form, whereas a “substance” has not. In case a food or drug can be considered an (‘article” in this sense, it may be patented, but in so far as a food or drug is a ‘‘substance” i t is not patentable except as to the process by which it is prepared. This means, as in other countries discussed, that the patent for a food or drug must be directed to the process by which the food or drug is prepared, although the patent will extend to the food or drug itself when prepared by such a process.

Switzerland The Swiss patent law is unusually restrictive. Chemical substances of all kinds are not patentable. Chemical processes for the preparation of substances intended principally as articles of food are also unpatentable, although processes fqr obtaining other chemical substances-that is, substances not intended principally for food-are patentable. The Swiss law also prohibits the patenting of remedies but permits the patenting of chemical processes for the production of remedies. Foodstuffs and beverages which are obtained otherwise than by chemical processes also are unpatentable. Chemical processes for preparing foodstuffs and beverages are unpatentable when the foodstuff or beverage has a definite chemical composition, such as sugar, but these processes are patentable if the foodstuff is chemically indeterminate, such as bread. The Swiss patent law permits a patent to cover

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only the manufacture of a chemical substance by a single process which, by the use of sharply defined starting materials, results in a single final product. The use of generic or group names is therefore not permitted, and the starting materials must be identified by their specific names. Moreover, a Swiss patent does not extend to any equivalent or homologous material, but a patent of addition may be obtained when the initial materials of the main patent are replaced by equivalents,.provided the end product is capable of the same industrial use as the end product of the main patent.

Scandinavia The Danish language, like many other languages of Continental Europe, uses in relation to foods, two words which are not directly translatable into English. One refers to what can perhaps best be called “food necessities,” the other, to “food luxuries.” A food necessity is a food which, a t least to an appreciable degree, provides the physical organism with ingredients contributing to the compensation necessary to make up for its loss of energy. Under Danish law it has been decided that sugar and chocolate are food necessities whereas beer and coffee are food luxuries. This distinction is not important in other countries. In Denmark, however, although both food necessities as well as food luxuries are unpatentable, and although processes for the manufacture, treatment, and preparation of food necessities are also unpatentable, processes for the manufacture, treatment, and preparation of food luxuries are patentable. Machines and other means for carrying out the manufacture of either food necessities or food luxuries are patentable; processes for sterilizing, preserving, cooling, freezing, corning, shaping, and smoking of food necessities and food luxuries are also patentable, provided that in the case of food necessities such processes do not in any way, physically or chemically, influence the ingredients. Medical remedies, which do not include disinfectants or cosmetics, are not patentable but processes for the manufacture of medical remedies are. Chemical substances which are not drugs are patentable, as are also processes for the manufacture of such substances. For many years chemical analogy processes-namely, processes which involve the application of a known chemical reaction to a new initial material resulting in a new end product were patentable in Denmark, but in 1936 the Danish Patent Office suddenly changed its practice in this respect and refused to grant patents for such processes. Recently, however, the old practice has been restored. In Norway chemical substances, foods, and drugs are all excluded from patent protection but processes for producing any of these substances are patentable. I n the case of chemical substances a simple mixture would be patentable on the same basis as in Germany. But in the production of foods a simple mixture or blending of foodstuffs is, in general, not patentable although a particular process of cooking or preserving a food such as a meat or of roasting coffee might be patentable. As in other countries, although only the process of producing chemical substances, foods, and drugs is patentable, the effect of a patent extends to the articles produced by the patented process. It would apparently not be objectionable under Norwegian law should the patented process be of such nature as virtually to give a monopoly upon the product itself. Foodstuffs are not patentable in Norway because the consumption of food by a human being is not considered to be a use of the substance in industry. On the other hand, a feed for livestock is patentable since it is regarded as a use of the feed in the industry of preparing the animals for human food, for the production of clothing, or for some similar purpose. Under Norwegian law disinfec-

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INDUSTRIAL AND ENGINEERING CHEMISTRY

tants, cosmetics, dentifrices, plasters, surgical instruments, artificial teeth, bandaging materials, hair lotions, mouthwashes, skin creams, and the like are not regarded as medicaments or drugs and are therefore patentable products. The parliamentary commission which reported on the Norwegian patent law before it was adopted was divided on this question of barring chemical substances, foods, and drugs from being patented, but the majority view which was stated in the report of the commission was as follows: Firstly, these articles are of such great importance for the community in general and especially for the public health that we ought not by granting privileged rights to incur the possibility of contributing t o render them more difficult of access or to raise the prices thereof. Secondly, a patent on such things entails in especial degree the danger of misuse through its being used to delude a credulous public with a view to personal gain. Both of these objections disappear when it is not the article itself, but the method proposed for its production that is the subject of patent.

A substantial, if not a majority, opinion is now stated to exist in Norway to the effect that these restrictions in the patent law should be withdrawn. The Swedish law permits the patenting of chemical substances which are not foods or medicines but prohibits the grant of patents for foods or medicines. But it does allow the patenting of processes for the preparation of such articles, the effect of the patent for the process extending to the article produced by the process as in other countries. Mixing is not considered to be a patentable method. The reasons for the exclusion of foods and medicines were stated by the government in presenting the patent law to the parliament, as follows: Firstly, such products are of such a value for the living of the whole people and the common hygiene that it is not consistent to make it difficult for anybody to achieve such articles in the cheapest way. Secondly, patents on such articles are rather apt to mislead the public to think that such a protected article has better .features than similar articles which are not patented, and it therefore seems that a patent on foods and pharmaceuticals would do more harm than good to the public.

A committee was appointed in 1919 to study and report upon the question of the amendment of Swedish patent law;

it proposed the cancellation of the restriction against the granting of patents for foods and drugs. On account of the unstable world conditions following 1919, the Swedish law was not amended. Another committee, however, has been appointed, but it remains to be seen whether the new Committee will also suggest the removal of these restrictions.

Latin America On the American continent we find more resemblance to the law of the United States. The patent laws of Brazil and Cuba contain no restrictions as to the patenting of chemical substances, drugs, or foods. I n Argentina pharmaceutical compounds are unpatentable by specific prohibition stated in the law. This prohibition, however, does not seem to cover chemical substances which are not pharmaceutical compounds. Processes for preparing chemical substances which are not pharmaceutical compositions are patentable, but since 1931 the Argentine patent office has refused to grant patents on processes for pharmaceutical products. This practice is likely to change, for in March, 1938, the patent office was reversed on appeal to the Ministry of Agriculture. The law is silent as to foods, but patents on foods and the processes of producing them are regularly granted. I n fact, patents have been granted on compositions to be used as foods. I n Chile chemical substances, drugs, and foods are all unpatentable, but processes of producing them can be patented. Mexico prohibits the patenting of chemical substances but allows patents to be granted for the process of producing them. On the other hand, medicinal formulas are patentable in Mexico, as are also foods.

Japan I n Japan chemical substances, foods, and medicines are all unpatentable. Substances, which are produced by chemical processes, but which are not medicines, and chemical processes are both patentable. RECEIVED September 12, 1938,

NEEDS OF OUR PATENT SYSTEM DELOS G . HAYNES 818 Olive Street, St. Louis, Mo.

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UR patent system operates for the most part so quietly

and efficiently that the general public from day to day hardly knows of its existence. The word “our” is emphasized. The patent system belongs to every one of us. The constitutional origin of the system is as follows: “The Congress shall have power **** to promote the progress of science and useful arts, by securing for limited times to **** inventors the exclusive right to their respective **** discoveries.” We know that patents’ are applied for, granted, licensed, and litigated. Ever since our present patent system was started in 1836, almost every advance in applied science and the useful arts has centered around one or more patents. The inventive person is stimulated to “think up something new” and to spend his time and money in making it ready for the market, knowing that if he is entitled to a patent the patent system will reward him by giving him a temporary

monopoly of the right to make, use, and sell his invention. Magnificent advances have been made through research supported by the lavish use of private capital. The holders of private capital know that there is a patent system which gives temporary monopolies of inventions and thus permits the investor in research to recoup his investment and perhaps make a profit on the enterprise. All these things we know and take for granted, because they have been true for all bf our lifetimes and longer in this country, and because they are true to a greater or less extent in every other civilized country in the world. I n both theory and operation our patent system is not basically different from those of other countries which “examine” as distinguished from merely “registering” patents. Our patent system is working well, but like every other branch of human endeavor, it is not rigid and forever inflexible. It keeps abreast of the times-or it should.