Protection of the Results of Chemical Research: C . B. HOLLABAUGH Hercules Powder Company, Wilmington, Delaware
R .
ESEARCH can be protected either by secrecy or by securmg patents on its inventive concepts. Usually it is either impractical or impossible to keep research in secrecy for any period of time. When the results are used on an industrial scale, extensive precautions are necessary to insure secrecy. Even when such precautions are taken, there is always a possibility of leakage. More serious is the possibility of duplication by others resulting in adversely held patents which prevent the original worker from using his own results. On the other hand, patents protecting research can be used to prevent others from appropriating the results without due compensation. They preserve developments which are ahead of their time for future exploitation. They provide means by which research can be sold or licensed to others. Similarly, they are useful in maintaining a trading position to avoid infringement suits under patents owned by others. Finally, they provide an effective bar to patents to others which may interfere with manufacturing processes and products born of research. The current national emergency has particularly emphasized the value of protecting research by patents. In this emergency it has been necessary for industrial companies to pool their information to bring all units to the highest level of productive efficiency. Those companies which have followed the policy of protecting their research investment by patents have been in a position to freely "lend" their know-how to the
-
Presented before the Division of Chemical Education of the American Chemical Society, 107th meeting, clevelmnd, mi,,, April 4 1944.
Government and to competing companies under royalty-free license agreements. Such loans can be recovered after the emergency through the patent rights involved. Those companies which followed the policy of keeping their research secret are not in such a fortunate position. They were faced with the hard alternative of withholding information which would assist the nation in its crisis or of furnishing the information with no real hope of recovery after the war. Invariably, the patriotism of the companies concerned has led them to furnish the information, and it is unfortunate that they must face a permanent loss. Many unfavorable statements have been made concerning patents in relation to the war effort, particularly from the standpoint of international cartels. Many of these statements entirely ignore the differences in the patent laws of the various countries concerned. Moreover, the fact not emphasized is that our patent system has greatly facilitated the nation's war effort by providing a mechanism for companies to exchange information freely without entirely losing the research expenditure involved. The protection secured through patents can be no better than the research on which they are based. Patent structures based primarily on "educated guesswork" are by and large worthless and have brought our patent system under criticism. The principles of sound research are well recognized by the chemical profession. However. from the viewpoint of the attorney, a thorough knowledge of the prior art in patents as well as in the general literature is to be particularly emphasized. Too many of
322 our younger chemists disregard patent disclosures and blandly proceed to waste money in rediscovering what has long since heen disclosed in patents. It should be borne in mind that a far greater proportion of the results of industrial research is being recorded in patents than in the general literature of the chemical profession. There is a common erroneous belief that the disclosures of patents are inaccurate as compared with articles on research. This should be dispelled. It is conceded that some patents are based solely on guess-work and others, notably some of those filed from abroad, are inaccurate or deliberately misleading. Such patents form a small minority. The primary purpose of the majority of patentees is to obtain a valid legal monopoly on the invention disclosed. Factual accuracy and completeness of description are prerequisite to the validity of a patent. The great majority of U. S. patents are accurate presentations of technical fact and, therefore, are valuable disclosures. While sound research is basic to obtaining strong patent protection, equally important is sound chemi1 cal patent work. The research chemist has a definite part to play in patent work. Weaknesses in chemical patent work are frequently due to a gap between the research chemist and his patent attorney. The research chemist's part in assisting his attorney to secure patent protection extends from the conception of the original idea to the issuance of the patent. This can be emphasized by considering each point of
cooperation on the basis of the steps required to obtain a patent. These steps are shown in Figures 1, 2, and 3. The procedure shown in Figure 1 is that followed by the writer's company in developing an application for filing in the U. S. Patent Office. This procedure varies with the organization concerned. The procedures shown in Figures 2 and 3 are fixed by the patent statutes. Figure 1 is unduly simplified in starting with a single inventive concept. In practice, a line of research can be characterized as a flowing stream of interrelated ideas. An important contribution of the chemist is to assist in the segregation of single inventive concepts from this interrelated maze. It is a job which the research chemist is in a position to cany out, because he is the most thoroughly familiar with the ideas which take their tangible form in experimental work. Chemists frequently have difficulty with the segregation of patentable material because of the difficulty of defining the term "invention." Our federal courts have. yet to establish what constitutes invention and have evolved only a series of negative rules as to what is not invention. An example of such a rule is that no invention is involved in finding that a given chemical compound will undergo a certain reaction which is already known for other members of the compound's homologous series. However, each of these rules has numerous exceptions. In practice, the working standard is whether or not
PROCEDURE LEAOING TO W C N T APPLICATIONS
the Patent Office will grant a patent on the concept. The tests to be applied by the chemist are: (1) is the concept novel, and (2) does it result in an improvement? If the answers to these questions are affirmative, the patent attorney should be consulted for appraisal. Certain patent attorneys advise foreshortening the procedure shown in Figure 1 under the slogan that "time is the essence of patent law" by jumping directly from the bare idea to the patent application. The writer cannot subscribe to this view, although he fully recognizes the importance of an early filing date. The filing of a complete description of an invention in a patent application constitutes a "constructive reduction to practice" in the eyes of the law. Its date is automatically established by the filing date of the application. The date of an actual reduction to practice is often difficult to prove. However, the advantage of an early filing date can be completely nullified by technical errors in the disclosure. Technical errors can easily invalidate a patent. An early filing date is important, but thorough laboratory development and wellkept notebooks are equally important. An invention does not come into existence until the idea is placed in tangible form and is tested in its intended use. Such tests should always precede the filing of a patent application. Further, the various alternative materials should be tested for equivalency to establish operable classes and exclude inoperable materials. Operable ranges of reaction conditions should be determined by experimentation. All boundaries of the invention should be developed by research. Patent attorneys sometimes advise reliance on "educated guess-work" to by-pass a major part of the experimental work on an invention, in order to rush an application into the Patent Office. To do so can lead to serious error. Educated guesswork should be used to guide, not to replace, experimental work. The chemist should guard against a very natural tendency to depend upon extensive reasoning by analogy, untested by experiment. Referring to Figure 1, it will be noted that the first step after the conception of an idea is to record it in a notebook. The recording of ideas is important to assist in proving the conception date of inventions. This is frequently neglected by chemists to their later chagrin. Similarly, the data resulting from laboratory investigation are recorded in the notebook. The importance of the notebook record can hardly be overemphasized. It is a key document in the legal protection of the property developed by research expenditure. A properly kept notebook is an infallible "memory" for the research chemist. The keeping of legally sound records is a subject in itself. However, certain cardinal principles concerning notebook records can be emphasized here. In the first place, the records should be kept in ink in a permanently bound notebook. They should be kept in sufficiently com~leteform and so identified as to be self-ex~lanatory' to any chemist familiar with the field.' Few
people seem to realize the inaccuracy of memory or the rapidity with which details fade. Each page of a notebook record should be dated so that it is absolutely clear when the various entries were made. It should be signed by the individuals making the entries and the signature dated. Further, it should be kept in such a manner that no basis for suspicion as to later falsification can arise. Each page of the research chemist's notebook should be read by another capable of understanding i t and signed by that person with the date of his signature. Such a reading is important to furnish a date of first disclosure of the data to another, as well as to provide a witness to the existence of the record. Also important is the recording of the name of anyone who was actually present during the work which resulted in the recorded data. It is desirable to keep a separate notebook record for each problem on which the chemist is engaged, and it is essential that each page be restricted to a single problem. Pages should not be skipped, and successive pages should bear successive dates. The record should fnlly identify the materials and each condition of reaction used. This admonition seems self-evident, yet few chemists fully live up to it. For example, if cellulose acetate is used as a material its identifying characteristics of viscosity and acetyl content should be recorded along with any special characteristics which the particular sample may have. If a tempetature is recorded the exact location of the thermometer should be noted. It is important to avoid a number of practices which may arise from thoughtlessness. Broad statements that experiments are unsuccessful should be avoided. Categorically negative symbols such as " N G for "No Good" should be avoided. A letter "R" marked across a page to indicate that it has been "reported can be twisted to mean "rejected." Erasures and other modifications which might appear to have been made a t a later date should be avoided. Coined names and trade names for materials should not be used without chemical identification. The "Record of Invention" shown in Figure 1 is prepared by the chemist. It consists of a brief description of the nub of the invention, with information as to the amount of data available to support a patent application. It should also include information as to proposed uses of the invention, dates of disclosures to others, and its relation to any other inventions with which the chemist may be familiar. I t is also worth while to list a t this point the closest prior literature or patent references. After a decision has been made to file a patent application on the basis of the "Record of Invention" the chemist's next job is to prepare a complete description of the invention, referred to as a "Disclosure of Invention." At this point any remaining experimental work to establish the bounds of the invention should be completed to provide an accurate basis for the patent application.
In the "Disclosure of Invention" the chemist should give a complete discussion of the invention. It is important to give at least two or three actual examples of the invention which have been tested in the laboratory. Also important is to list the broad class of the various alternate materials which may be used, with specific examples of each. The "Disclosure" should carefully state the ranges of the various reaction conditions which may be used. The statements should be facts established by laboratory work, not drawn from the imagination of the chemist.
The next important contribution of the chemist to his patent application is filling out a questionnaire on inventorship. This is done after a preliminary draft of the application is completed by the patent attorney, so that the questions may be answered in light of the exact scope of the application to be filed. I t is important to obtain information concerning the development of the invention a t this stage, because with the passage of time memory becomes hazy and records difficult to locate. The information recorded in the inventorship questionnaire should be that essential in an interference proceeding to establish the exact circumstances sur-
rounding the conception and development of the invention. This includes the dates of conception, disclosure to others, reduction to practice, and any subsequent development. The questionnaire should identify the notebook records, letters and reports concerning the invention, and any other documents which will establish the dates involved, so that they may be located readily years later. The research chemist should not accept the attorney's draft of his application as a legal document beyond his understanding, but should analyze it critically to see that it is technically correct in every respect. In the writer's organization, a preliminary draft of the application is prepared for the purpose of encouraging the research chemist to make suggestions and, if desired, to make corrections directly on the document itself. This intermediate step removes the average individual's psychological inhibition against mutilating a pretty legal document. Figure 2 shows the steps which may be taken in the prosecution of an application. The heavily shaded line indicates the steps followed in the majority of applications. The bulk of the work is ordinarily in the prosecution before the Examiner. The research chemist can support his attorney's work in a number of different ways. He can assist by pointing out differentiation between his invention and the prior patents and publications cited by the Examiner against the application. This information provides a basis for the attorney's arguments as to ~ a t e n t ability. The Patent Office is primarily concerned with the technical differentiation from the cited "prior art" and the improvement made. The chemist can provide information from his notebook records for use in the preparation of affidavits to prove that his invention was made prior to the effective date of the cited references. Further, he can suggest and carry out experimental work to prove the advantages of his invention. The results of such work are usually submitted by affidavit. A good affidavit is worth many pages of verbal argument. The chemist should keep his attorney fully advised as to any semiplant or plant development of the invention made after the filing of the application. This enables the attorney to direct the claims of the application to the most important phases of the invention. Figure 3 shows the procedure followed in an interference. The purpose of an interference is to allow the Patent Officeto determine which of two applicants claiming the same invention is the first inventor and is entitled to the patent monopoly. The chemist has a definite part to play in this procedure. His notebook records and the information furnished in his inventorship questionnaire provide the basis for the "Preliminary Statement," which sets up the earliest dates on which he may rely to prove inventorship. Similarly, the notebook record and the inventorship questionnaire may be used as the basis for affidavits to establish the date of the invention on which the application is based. Such affidavits are frequently
INTERFERENCE PROCEDURE INTERFERENCE DECLARED
APPLICATION ALLOWABLE
%'
APPLICATION'$
'A' PREPARES A
OF INTERFERENCE APPROVES PRELIMINARY STATEMENT AN0 SETS MOTION PERIOD
SATISFACTORY SETTLEMENT BETWEEN PARTIES AS TO P R I O R I T Y
8 $ $ >>
(APPLICATIONS
OF OPPOSING PARTIES
OPENED TO INSPECTION)
I
PARTIES REVERSED A s T o w H l c H 1s T n JUNIOR AND SENIOR
1
I
MOTION TO SWIFT THE BURDEN
MOTION TO AMEND
MOTION TO DISSOLVE THE INTERFERENCE
(ADD COUNTS. E T C )
E
*
DECISION OF PRIMARY ~ ~ ON ~ ~ ~ 0 ~ ~ ~1
~0
~ ~
~
.
INTERFERENCE OISSOLVED ON DECISION O f PRIMARY EXAMINER
f
TESTIMONY OF.#JNIOR PARTY
I
TESTIMONY OFSENIOR PARTY
f
X
REBUTTAL T E S T I M O M OF JUNIOR PARTY
AWARD O F PRIORITY
f
APPLICATIONS n E T U R N E 0 TO NORMAL
FIGURE 3 required by the Patent Office before setting up an interference. The testimony of an interference is for the purpose of proving the statements made in the Preliminary Statement. The inventor is usually the key witness. In giving his testimony the inventor answers a series of many questions propounded by his attorney to outline the story of the development of the invention. Others with whom the inventor has worked or discussed the invention are similarly questioned to corroborate the
statements made by the inventor. Each of these witnesses may be cross-examined by the attorney of the opposing party. In both the direct and cross-examination the inventor is usually questioned in great detail concerning his notebook records. It is in this phase of patent work that the value of a well-kept notebook is most apparent. Thus it will be seen that the research chemist has an important role to play in obtaining sound protection of the results of his research.
