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selves in matters of literary expression and therefore prefer not to prepare their own descriptions. Instead they ask whether a certain idea is worth recording as a means of indirectly inviting the assistance of the recorder in preparing the necessary description. Such visits should be encouraged and assistance should be given freely, since many ideas will nevei be properly transmitted and recorded in any other way. CLASSIFICATION AND REVIEW OF RECORDS
Although decisions as to patenting can be handled in a very flexible way, it is important that some routine be established for periodic review. This pievents oversights that might result in an invention being published or in public use for more than a year before a patent application is filed and the right to a patent being legally forfeited. Because of this inflexible I-year statutory bar, the review should be at intervals of a fraction of a year; a review every 2 or 3 months i s generally adequate. Decisions on patenting should never be made by an individual; collective judgment always is more reliable, and these decisions govern competition for about 20 years in the future-that is, for the approximate 3 years required to obtain a patent plus the 17year life of the patent. In general, all such decisions should be made by a group including the inventor or his superior, because of their knowledge of what the invention is, and a management representative, because of his knowledge of the plans for future activities of the organization. The advice and assistance of the patent attorney are also important because of his knowledge of the possibilities for effective protection and the way in which such protection can be exploited. The keeper of invention records should function as clerk in recording the decisions and arranging for proper disposition of the invention records after decisions have been made. Some inventions can be classified immediately as most important, and instructions given for filing patent applications on them as promptly as sufficient information is available. These offer no problem except that of rcstraining enthusiasm for immediate filing where full information is not yet available; premature filing of a patent application may iesult in a wrong description or in an otherwise defective patent. More often inventions are designated for filing in ordinary routine. The invention records are then placed on the docket of work to be done by the patent attorney, each in its turn, after any that are of greatest importance have been taken care of. Still other inventions are marginal, and often it is difficult to detcrmine whether they are worthy of protection. There are various possibilities for handling marginal inventions; one is to put them on a deferred list for patenting after other work is out of the way, and another is to have them filed a t the discretion of the patent attorney if his studies indicate that reasonably good protection can b~ obtained. There will always be undeveloped ideas that must be held until subsequent work demonstrates their feasibility or importance. Finally, there are the invention records covering ideas that currently will not be exploited to the extent of filing a patent application. Here caution is expressed against marking such invention records indelibly as worthless. In the history of inventions, many important ones, a t first, have been ridiculed and iejected. Invention records on which patent applications ale not to be filed therefore should be designated by some other expression such as “inactive,” which will permit them to be restored to favor without embarrassment. Following a decision to file an application, the pertinent invention records must be transmitted t o the patent attorney, who will need full information as to the nature of the invention. In the simpler case mentioned, where the attorney keeps the invention records, he will generally have to go to the inventor or to the other technical personnel having knowledge of the invention for the information and data needed for preparation of the patent application. That can also be the case when invention records are handled by someone else, and it may sometimes be the most efficient procedure from the viewpoint of man-hours expended.
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However, this procedure is time-consuming, and it is often worth while to save time for the attorney by having as much as possible of the preliminary work of assembling information and data performed by someone else. This is most advantageous when the patent attorneys are independent practitioners. Many large organizations make it regular practice to require preparation of patent reports by the technical staff of the research organization; these are forwarded to the patent attorney, preferably with the original invention record. Such a patent report, if it is to serve its purpose, must include a history of the invention with an outline of the closest prior published information known to the inventor or the technical staff, as well as a comprehensive description of the invention in its most advanced form and of all the alternative embodiments known, with illustrative data of results obtained. If it is well prepared, the report can serve as a preliminary draft of the actual patent specification, requiring only revision and addition of claims and, of course, the formal signature papers. If the data presented do not conform to the examiner’s Views of their requirements difficulty may be encountered in the Patent Office.
REPORTING INVENTION DATA Guy R. M. del Giudiee Socony-Vacuum Oil Co,,Znc., New York,N. Y.
This part of this discussion is a summary of a time-tested procedure for achieving good results with the American research team of research worker and patent attorney. The procedure is perhaps more directly applicable to an industrial research Iaboratory of large size. However, it is broadly applicable through suitable modifications. The system discussed here is initiated by a formal system, open to all qualified employees of a company, whereby ideas, suggestions, or recommendations for possible research projects are cleared through organization channels and ultimately referred to the director of the laboratories, who is charged with the responsibility of selecting and establishing research projects. In this function, the director has the help and advice of qualified supervisory laboratory personnel and of patent counsel. Without knowledge of the prior art pertinent to the subject matter of a proposed research project, the establishment of the project should be on a tentative basis until completion of a review of the prior art by laboratory personnel directly assigned to the research project. Modern research workers generally are familiar with the prior art in their fietds of research and should be in a better position than patent counsel to interpret the disclosures of the prior art. A report on this review is submitted to the research director who, with the help and advice of other qualified personnel, including patent counsel, will decide whether the proposal should be established as an active research project. In accordance with this procedure, patent counsel becomes familiar with active research projects and knows the laboratory personnel involved; thus he is able to follow the work from its inception. In law, a patentable invention is the result of an act which consists in conceiving an idea and reducing it to practice. In the prosecution of an application for patent, it often becomes necessary to prove the dates of conception and of reduction to practice. Particularly in interference proceedings, the proof must be corroborated by a witness who is not an inventor of the subject matter involved. Although all ideas, suggestions, and recommendations for possible research projects do not constitute conceptions, such proposals should always be written and should describe the proposal as accurately and completely as possible; if susceptible to illustration, drawings or figures should be attached to the description
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in permanent fashion. The description and each sheet of drawings should be signed and dated, when prepared, by the person or persons making the proposals. A witness (preferably two), who is competent in the field to which the subject matter appertains and who so indicates by writing “read and understood’’ over his signature, should affirm the time of signing. DISCLOSURE RECORDS
In order to establish the data necessary to support proof of conception and reduction to practice, research workers are provided with diary-style laboratory notebooks. Each notebook is numbered and a record is kept of the date of issuance and the name of the individual to whom it is given. The pages of the notebooks are numbered consecutively and provided with a margin. Daily entries should furnish patent information as follows:
1. The date (month, day, and year), a descri tion of the day’s activities, and the signature of the person wfo made the entries-ordinarily that of the individual to whom the notebook is assi ned. Absences from the laboratory should be explained. 2. %hen ap aratw that is not of standard design is used, entries should &scribe the apparatus in detail and include illustrations, if necessary. 3. Complete literature references should be made for established techniques and procedures. 4. Sources of starting materials and analytical or inspection data (indicating whether the were furnished by the supplier or by the analytical division of %e laboratory) should also be given. 5. Any experiment or manipulation involved in testing the validity of a research pro sal may constitute a reduction t o practice or a art t h e r e o r Accordingly, such experiment or manipulation siould be carried out by a competent operator or o erators not involved in the conception. The supporting entry sgould note that the operator acted a t the request and under the direction of the research worker and should be signed and dated by the operator. 6 . At the end of the day, important entries are to be read by a colleague, ca able of understanding the subject matter but not connected &ectly with the research project, and signed and dated by him as a witness.
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The margin space of the notebook is reserved for corrections and cross references. Corrections should be avoided as much as possible, but if necessary each correction *and explanation should be signed and dated. Cross references may be of two types: As the notebook is a day-to-day record, continuity of entries pertaining to a given research project will be the exception rather than the rule. For example, chemical analyses or tests on a product obtained as a result of an experiment ordinarily are conducted by other groups and results are not known until several days after the termination of the experiment. These data will be entered in the notebook on the date when they are received, and, unless appropriate croas references are made, the entry may become meaningless after a lapse of time. The second type of cross reference is used whenever a sample or product is sent from one laboratory division to another. A11 samples are numbered, adequately identified by name, and accompanied by a data sheet. Identifying numbers are then entered in the margin of the laboratory notebook adjacent to the entries describing the experiment which produced the product. Each entry in a laboratory notebook is made immediately following completion of the particular activity recorded. Descriptions should be complete and accurate and should be written in the language of the art t o which it appertains. Members of the patent staff should arrange visits to the laboratories in order to follow the development of the research project, familiarize themselves with the nature of the work, and explore with the laboratory personnel the breadth and scope of the invention. Patent counsel may suggest corollary experimentation t o establish such breadth and scope. Any conflicts in inventorship entity should also be resolved at this time; all interested laboratory personnel are entitled to know
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the reasons for the ultimate decision. When work has proceeded to a point where the data a t hand are sufficient to justify the preparation of an application for patent, the research personnel involved should be so informed. APPLICATION REPORTS
Reports transmitting the information for patent applications to patent counsel should include all significant experimental data, whether favorable or unfavorable to patentability. This report ordinarily is called Information for Patent Application. It is identified with the laboratory from which it originates and includes the following:
1. A title which is descriptive of the subject matter involved. 2. A summary of the prior art including a complete list of the prior art searched, a summary of the pertinent disclosures, and a critical discussion and analysis of the most pertinent references. 3. A description of the new-idea in its broadest aspect, This section also sets forth the points of novelt and the advantages of the new idea over the practices or ~ s c l o s u r e sof the prior art. 4. Specific examples illustrating embodiments of the invention, sufficient in number to indicate the scope. Particularly when patentability is predicated on criticalness-for example, the range of variation of a reaction variable in a process or of the amounts of a material in a composition, an added step in a process or the absence of a step in a process, or synergism, the exam les should be sufficient in number and in substance to estabish such criticalness. For each example, reference is made to the laboratory notebook where the original description appears. If the invention is directed to an apparatus or a machine, sketches depicting different views of the apparatus or machine are gwen. When the invention may best be described through a flow sheet, a detailed flow sheet is provided. 5. A statement of equivalents and a recitation of the ranges of variation of reaction variables or of constituents of compositions. This is not meant t o be a summary of the data given in the recedin section. Rather this information should be based on t i e knowqed e of those skilled in the art and should reflect conclusions reacted from reasonable speculation with this knowledge. If the data given in the preceding section point to departures from such conclusions, this should be specifically mentioned. The information for patent application discussed in paragraphs 1 to 5 follows the usual form of a patent epecification. The next sections constitute, primarily, a readily available source of valuable information useful to patent counsel and of potentially great importance during the prosecution of the application for patent.
6 . A statement of all information pertaining t o the conce1)tion, including reference to the laboratory notebook where the description of the invention relied on as a statement of conception a pears; the names of the persons who signed the statement and t i e date; and the names of the witnesses and the date. When drawings have been made, this is noted and information as complete as that described for the statement of conception is men. If no drawings have been made, this should be noted. %inally, if the invention was described orally a t a meeting or a t a conference, this should be stated setting forth also the names of the individuals b whom the disclosure was made, the names of the persons to wzom it was made, when it occurred, and the manner in which the date of such disclosure can be established. 7. A recital of information pertinent to the reduction to practice, includin reference to the laboratory notebook where the experiment r3ied on for reduction to practice is recorded; the names of the persons who carried out the experiment and the date when it was done; and a list of all the collateral data sheets, identified by the nature of the data appearing thereon, the names of the persons who obtained the data and the dates when the data were received by the inventor or inventors. If the experiment relied on for reduction to practice is one of the specific examples described in the information for patent application, this should be noted and the specific example identified. 8. A chronological account of all activities by the inventor or inventors, occurring between the time of conception and the time of the reduction to practice, pertinent to the invention and describine; the steps taken to effect the reduction to practice. Each recital has a reference to the laboratory notebook where the activity is described, giving the date, the names of witnesses, and the date when they signed.
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9. Sipaturea of the inventor or inventors, dated as of the time of signing and read and signed and dated by two competent witnesses. The infarmsbtion for an application for patent, as described, should f u r ~ i s hthe patent attorney all the data needed for the preparation of a preliminary draft of the specification and claims, and when necessary, of the drawings. These should be sent to the inventor or inventors for critical review and comment. The preparation of the draft often will raise questions in the attorney’s mind which had never occurred to him during the conferences with the laboratory personnel. These questions are included in the letter covering the transmittal of the draft. After the inventors have had an opportunity to review the draft, the patent attorney usually has a conference with them to ascertain whether the invention is described accurately and completely.
CHEMICAL PATENT SEARCHES B. E. Lanham U.S. Patent Ofice, Wushington 25, D. C.
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Analyses of inquiries received by the Patent Office stress the fact that most difficulties and failures encountered in patent searching stem from inadequate preanalysis of the problem and inadequate use of the classification facilities. Such difficulties and failures have not been limited by any means t o the novice; experienced searchers, including patent attorneys, have likewise gone astray in the maze of the Patent Office classification which admittedly has shortcomings but which is not nearly so impregnable a fortress as,some imagine it to be. Extensive study and experience are the only adequate instructors in the scientific art of patent searching. Those whose activities have been confined to the field of searching have shown but mild interest in the numerous published articles describing the problems and procedure involved in making a classification. The procedures of searching and classifying are inseparable, however, and a knowledge of one requires some background in the other. It is axiomatic that before an adequate search can be made, a proper analysis both of the subject matter to be searched and the classification system is necessary, followed by a proper correlation of the two. PATENT OFFICE CLASSIFICATION
The Patent Office classification system must provide for documents relating to all branches of the whole of science and technology. Thus, to enable searchers to proceed with a minimum time expenditure to a segment of the arts in which the documents of interest may be found, such arts have been divided into (1) a total of 305 classes of subjects which are in turn further subdivided into (2) subclasses which total over 45,000. The subclasses in each class include a plurality of main, coordmate subclasses which may have subordinate subclasses thereunder in varying degrees of indentation. Each class and subclass is designated by a number and a descriptive title. Of the 305 classes all but 12 have been revised according to modern classification theory; most of the chemical classes are either quite modern in structure or reasonably so. All classes, with their subclasses, are listed in the U. S. Patent Office Manual of Classification, which is considered the key t o the classification system. The manual has an alphabetical index of subject headings which refer to corresponding specific classes and subclasses in the manual. Since the class and subclass titles in the manual are necessarily brief, definitions are provided which set forth the scope of each class and subclass and show what is included therein and excluded therefrom; search notes direct the searcher to related subject matter in other classes and subclasses.
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The manual with its alphabetical index may be obtained from the Superintendent of Documents, U. S. Government Printing Office, Washington 25, D. C., for $6.00. Classification bulletins containing the subclass schedules with the corresponding class and subclass definitions of many of the classes are obtainable from the Patent Office. Many similarities exist between the Patent Office classification and other scientific classifications but, in addition to the common characteristics, that of the Patent Office has superimposed upon it certain considerations necessitated by the patent laws of the United States. Hence specialized problems in classification are presented. Patent searches require that patents be classified on the basis of inventive or claimed subject matter rather than on general disclosure. Unclaimed but apparently novel features in the disclosures are made available to searchers by means of cross references. The criteria of patentability as dictated by legal considerations constitute the basis of classification adopted for Patent Office use. Such basis is the fundamental characteristic or necessary function or effect of the claimed subject matter rather than a remote or accidental use or application in industries or trades. The basis of classification of chemical compounds is thus their chemical constitution and all compounds of like characteristics are classified together regardless of disclosed uses such as medicine, dye, or insecticide. Compositions of matter (a mixture of two or more ingredients) are classified primarily on the basis of their necessary functions or inherent properties rather than on the basis of ingredients, otherwise compositions that are diverse in nature would be brought together, and such classification, as found by experience, would not suit the primary requirements of a patent search. This primary group including all compositions having like functions and properties-for example, catalysts-is then subdivided, for convenience in searching, on the secondary basis of selected ingredients. Processes of making compounds or compositions are classified with the product produced. Other manufacturing processes may or may not be classified with their products depending on the dictates of experience and the requirements of patent searches. I n class 117, “CoatingProcesses and Miscellaneous Products,” the product8 are included with the processes of making them only if not specifically provided for elsewhere. Machines and chemical apparatus are generally classified on the necessary mode of operation and effect produced rather than on the specific material handled as class 259, “Agitating,” and class 202, “Distillation.” However, other machine classes are based on the material processed-class 80, “Metal Rolling ” Nonmanufacturing processes and the apparatus for performing such processes are usually classified together where a search for one requires a search for the other, as class 209, “Classifying, Separating, and Assorting Solids.” A complete treatment of the subjert of the basis and principles of classification is set forth in referenses (?‘,9). Within a given revised class the subclasses are arranged in descending order of complexity of the inventions-for example, class 241, “Solid Material Comminution or Disintegration,” in which are first placed combinations of the class basic subject matter with features not required for the comminuting action, followed by the basic subject matter, and in turn by subcombinations or elements of the basic subject matter not provided for in other classes. Thus, any given subclass is superior to all coordinate subclasses which succeed it in the schedule, the numerical designations of the subclasses having no significance other than convenient identification. This order of superiority applies to all classes regardless of arrangement, types of subject matter, or whether revised or unrevised. This uniformity in placing patents in a class gives assurance t o a searcher that a search of the first appearing subclass (and possibly those subclasses indented thereunder) which provides for the sought subject matter will constitute the end point of a search, in
