INDUSTRIAL A N D ENGINEERING CHEMISTRY
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Vol. 15, No. 1
Patent Law of Interest t o Chemists. I-Patent
Rights’
By Frank E. Barrows2 185 BROADWAY, NEW YORK,N. Y.
MEANING OF
“PATENT”
The new inventions which mark the progress of chemical industry are to an important and often to a controlling degree protected by patents. Such progress is becoming more and more dependent on organized chemical research. Chemists, whether engaged in research or otherwise interested in such progress, are often called upon to deal with patent questions, and must give consideration to such questions if they would safeguard their interests and avoid unnecessary litigation. Most chemists must acquire their knowledge of patents and of patent law by experience or by individual study. In only a oery few of the colleges and universities do the courses in chemistry and chemical engineering provide instruction in patent law. The present series of articles will include a discussion of some of the principles of the patent law, as well as some of the practical questions that arise in dealing with patents and inventions. The articles are not intended as a treatise on patent law, but rather as a discussion of the law, and of questions of practical importance, from the standpoint of the chemist and chemical engineer. The present article will deal with the nature of patent rights; later articles will deal with the subject of patentable inventions, the procedure in obtaining patents, the construction and interpretation of patents, patent searches, foreign patents. and other questions of patent law and its practical application.
N ITS limited or legal sense the term “patent” is an abbreviation of “letters patent” and refers to the grant by the Government to the patentee of certain exclusive rights in the invention patented. In this sense patents are property, and are often referred to as “intellectual property.” In a more general sense patents are referred to without regard to any rights protected thereby. Patents, in this more general sense, include both domestic and foreign patents. The term “patent,” as thus used, is rather a means of identification or a descriptive term than a term having any legal significance. In this broader sense patents constitute a part of the technical literature and stand on much the same footing as other publications. Thus, we may consider patents merely for the information they contain, just as we consider the periodical literature as a source of published information. From this standpoint it is immaterial whether the patents are domestic or foreign, and, in the case of domestic patents, whether the patents have expired or are still in force. It is important to keep these different meanings of the term “patent” in mind, because in considering patents from their legal aspect we are concerned with the rights which they secure to the patentee, while in considering patents from the more general aspect we may not be a t all concerned with these rights. It is with the more limited aspect of patents as property, and the nature of such property, that we are primarily concerned in the following discussion. In some respects property rights in patents are similar to other property rights; in other respects they are governed by rules peculiar to themselves.
I
THESTATUTORY BASISOR PATENTS Patents are creatures of statute. There is no natural right to a patent. The only natural right which an inventor has in an invention is the right to keep it secret. As long as he may be able to keep his invention secret, and as long as others do not independently make the same invention, he will be protected, but his rights are subject always to the peril of independent discovery of the same invention by another, as well as to possible treachery on the part of confidants. If another should independently make the same invention, the first inventor could not prevent him from using it if his invention could not be protected by patent. Since patents are thus creatures of statute, we must look to the patent statutes, and the constitutional provision on which they 1 Received December 2, 1922. s Member of the firm of Pennie, Davis, Marvin & Edmonds, Counselors-at-taw.
are based, to find out what inventions are patentable, how they may be protected, and the nature of the protection obtainable. The basis of our patent system was laid in the Constitution as originally adopted in 1787, which provided that: The Congress shall have the power * * * * to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
The power to grant patents is thus delegated to Congress, and it has been in pursuance of this power that the patent statutes have been enacted. Their object, a s stated in the Constitution, is* “to promote the progress of science and useful arts;” and while this object has sometimes been lost sight of, yet it has been repeatedly emphasized by the Courts as the guiding principle of our patent system. The progress of science and of the useful arts is promoted by the early disclosure of inventions and by the stimulation of invention. In order to accomplish this result the inventor is rewarded or compensated by the grant of patent protection. A patent is therefore a reward or compensation to the inventor for disclosing his invention. It is also in the nature of a contract between the inventor and the public, whereby the inventor is accorded patent protection for his invention for a limited period of time, and whereby the public secures an early disclosure of the invention and the right to use it after the patent expires. THEEXCLUSIVE NATUREOF PATENT RIGHTS When a patent is issued by the United States Patent Office (to which Congress has delegated the authority), there is granted to the inventor, his heirs or assigns, “the exclusive right to make, use, and vend the said invention throughout the United States and territories thereof,” for the term of seventeen years from the date of grant. In this grant the rights conferred upon the patentee are referred to as “exclusive rights” the same as they are in the constitutional provision above quoted. It is natural for a patentee to assume that the right thus granted him is an affirmative right t o make use of the invention patented, and many a patentee has been misled by this assumption into believing that he could go ahead forthwith and use his invention. In fact, however, the grant of a patent does not give to the patentee any right whatever to use his invention. The exclusive right granted by a patent is exclusive only in the sense of a right of exclusion. The exclusive right granted is the right to exclude others from making use of the invention p a t e n t e d 4 e., the invention claimed. Whether or not the patentee is himself free to make use of his invention is a separate and distinct question governed by considerations independent of those which govern the grant of his own patent.
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I N D USTRIBL A N D ENGINEERING CHEMISTRY
A proper understanding of the “exclusive” nature of patent rights is of fundamental importance. Unless it is clearly understood it will be difficult to understand many of the practical questions that arise in dealing with patents. As pointed out above, the granting of a patent does not give the patentee any right to use his invcntion; it merely gives him the right to exclude others from using it. The measure of this right of exclusion is determined by the claims of his patent. Let us consider how a misunderstanding of the nature of patent rights may lead to serious loss or litigation. If the patentee assumes that the grant of his patent gives him the affirmative right to use his invention, he may go ahead with a sense of false security and disregard the rights of other patentees whose patents may dominate his own invention, that is, whose patents may contain broad and dominating claims that give a superior right of exclusion. The inventor who thus proceeds may find later that he has incurred a substantial liability €or the infringement of patent rights of others, and he may thus be exposed t o litigation, which, if successful, may involve substantial damages or may even result in the entire loss of the investment made in exploiting his own invention. Had such a patentee clearly understood the “exclusive” nature of patent rights, he would have appreciated that the grant of his own patent gave him no affirmative right to use his invention. He would have appreciated, moreover, that other patentees might perhaps have exclusive rights which would dominate his own. It is common experience in dealing with patents to find that an early patentee has secured a broad and dominating patent giving him rights of exclusion which will prevent later patentees from using the particular improvements which they have patented. An appreciation of this possibility of litigation naturally suggests that an investigation be made of the rights of other patentees before going ahead with the commercial exploitation of a new invention. Such an investigation will disclose whether or not other patentees have a superior right of exclusion which will dominate the invention in question. If such an investigation shows that there are no such dominating patents, the patentee may then proceed with a reasonable sense of security, although it is impossible to investigate applications for patents still pending in the Patent Office and which may mature into patents a t a later date. If such a preliminary investigation discloses a patent or patents of others that are infringed, the later patentee may govern his actions accordingly. The questions of infringement and patentability are two separate and distinct questions. The question of infringement depends upon whether there are patents which secure to other patentees a superior right of exclusion which will prevent the later patentee from using his invention. The question of patentability depends upon whether the invention is itself a patentable invention or improvement. The Patent Office in granting patents is not a t all concerned with the question of infringement. The only question which the Patent Office determines is whether the invcntion for which patent protection is sought is patentable. A large number of patents are granted for improvements upon the inventions of earlier patents, and often an earlier patent or patents may dominate the later improvements. The inventions of the later improvement patents cannot in this case be used without liability for infringement of the earlier dominating patents. It will be helpful to keep in mind that the first inventor in a new field may obtain a broad and dominating patent with comprehensive claims which will exclude others from that particular field, but that later inventors may invent improvements which will be patentable as improvements. The patentee of an improvement may prevent others, including the dominating patentee, From using his patented improvement; while the domi-
nating patentee, because of his dominating patent, may exclude the improver from using his patented improvement. When the dominating patent expires, the patentees of the improvements will be no longer excluded by the dominating patent.
THERIGHT TO MAKE,USE, AND VEND The exclusive right granted to a patentee is defined h the patent grant as “the exclusive right to make, use, and vend” the invention. The exclusive rights to make, to use, and to vend are three distinct rights. They are “exclusive” rights in the sense that the patentee can exclude others from making, using, or vending the thing which is patented. In the case of patents covering chemical processes, the right is essentially an exclusive right to use or to practice the process, and does not extend to the product made thereby. In other words, the patentee of a process patent has the right to prevent others from using his process, but he cannot prevent others from making the same product by other processes, or from importing the same product made in some other country. In the case of new chemical products or compositions or new articles of manufacture, and in the case of new apparatus or machines, the right granted to the patentee is a right to exclude others from making, as well as from using and from selling, the patented invention. The patentee in such cases can enforce his rights, not only against the manufacturer or the one who makes the invention, but also against the importer and against others who use it and who sell it.
THETERRITORY COVERED BY A PATENT The territory covered by a United States patent is the United States and its territories. A United States patent has no force and effect in foreign countries, and, if the invention is not patented in such foreign countries, the patentee of the U. s. patent cannot prevent the citizens or subjects of such countries from making*use of the invention in their respective countries. Similarly, foreign patents have no excluding force and effect in the United States. If there is no United States patent for an invention patented abroad, such invention becomes public property in this country. Accordingly, unless some patentee in this country has a dominating patent which will be infringed by the practice of an invention disclosed in such a foreign patent, any one in this country is free to use such invention. The question of foreign patents will be later dealt with in greater detail, but in considering the territory covered by a United States patent it should be kept in mind that these rights do not extend to foreign countries, and that foreign patents have no excluding force and effect in the United States.
THETERMOF
A
UNITEDSTATES PATENT
A United States patent is granted for a term of seventeen years from the date of grant. Upon the expiration of this term the invention becomes public property-that is, the patentee can no longer exclude others from using his patented invention. It is important to keep in mind that the term of a United States patent is from the date of grant and not from the date of application. In this respect a United States patent differs from patents of many other countries where the term of the patent begins to run horn the date of application. United States patents cannot be renewed or extended except by act of Congress, and for practical purposes the right may be considered not to exist. There are no taxes or renewal fees for the maintenance of a patent after it has been granted, nor are there any requirements for the compulsory working of the invention in this country. The granting of the patent secures to the inventor protection for the full term of seventeen years, without further expense for fees or taxes and without any obligation on his part to use his invention or permit others to use it. In these respects our patent laws are much more liberal than those of most foreign countries,
