SYMPOSIUM ON
American Patent Practice and Procedure Presented before a joint meeting of the Divisions of Medicinal Chemistry, of Agricultural and Food Chemistry, and of Biological Chemistry a t the 96th Meeting of the American Chemical Society, Milwaukee, Wis., September 5 to 9, 1938.
PRESENT AMERICAN PATENT SYSTEM FRANK E. BARROWS Pennie, Davis, M a r v i n and Edmonds, New Y o r k , N. Y.
T
HE grant of patents for inventions began long before
the Christian era. The earliest patent system of which we have authentic record was in the Greek province of Sybaris and related to inventions of new foods. Sybaris was destroyed in 510 B. c. and with it the record of its experience with a patent system, but the Greek historian Phylarchus, writing in the third century B. c., tells us about the provisions of the system (1). It provided that any cook or caterer who invented a n unusual and peculiar dish was entitled to a monopoly of this new invention for a period of one year. Only the inventor was entitled to the profit to be derived from its manufacture during this period, and the purpose was not only to protect and reward the inventor but to encourage others to labor a t excelling in that field. Thus we have in the Sybaris patent law of twenty-five centuries ago the fundamentals of our modern patent systems. For practical purposes the earliest of our modern systems is that of Great Britain, established by the English Statute of Monopolies in 1623, more than three centuries ago. Our own patent system is next in point of time. It was established in 1790, shortly after the adoption of the Federal Constitution. Even before that time patents had been granted by some of the American colonies. The adoption of patent systems has spread until now practically all nations have patent systems.
Reasons for a Patent System Experience has shown that it is sound public policy to encourage the making and developing of new inventions. Without a patent system there is no way of protecting new inventions other than through secrecy and the withholding of the invention from public knowledge, in the case of inventions capable of being so protected. Without patent protection, the manufacturer who establishes a new industry or
who develops a new invention, a t large expense for research and development work, is a t the mercy of competitors, who are free to copy the completed development without the handicap of research and development expense, unless and to the extent that the industry can be protected by trade secrets. The result is to encourage secrecy rather than the public disclosure of inventions, or if inventions cannot be protected as trade secrets, the result is to discourage research, development, and the making of new inventions. The experience of Switzerland, which for years resisted the establishment of a patent system, and of Holland, which deliberately abolished its patent system, furnishes the answer to those who question the wisdom of patents. During the period when Switzerland had no patent system, it was argued that the Swiss would progress more rapidly if they were free to appropriate the ideas and inventions of the rest of the world without the grant of patents in Switzerland. But experience showed that the Swiss were not encouraged to invent or to adopt and introduce new inventions, and a Swiss patent system was adopted in 1888. Holland, after operating under a patent system for more than fifty years, abolished it in 1869, on the grounds that “grants of exclusive rights for inventions promote neither industry nor the public interest.” But its experience was like that of Switzerland and showed the futility of the experiment; after operating without patents for more than a generation, a system was reestablished in 1912. The end sought in our patent system is not the rewarding of inventors and the protection of new industries based on patents. That is merely the means. The object is to promote the public interest by the encouragement of new inventions. Our Constitution states the purpose of the p a t e n t , system as the promotion of the progress of science and of the useful arts, and the means of accomplishing this purpose by securing to inventors, for a limited period of time, the ex1420
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clusive .right to their inventions. Our patent statutes have been enacted pursuant to this provision.
Nature of Patent Rights Our statutes provide that a patent shall grant to the patentee, his heirs, or assigns, for the term of seventeen years, the exclusive right to make, use, and vend the invention (U. S. R. S. Sec. 4884, U. S. C. 35, Sec. 40). The right granted is exclusive in the sense of a right of exclusion. The evclusive right granted is not the right to make, use, and vend the invention, but the right to exclude others from doing so. There is a more or less common misconception that a patent gives to the patentee or patept owner the right to practice the patented invention; but it gives no such right. The exclusive right which the patent gives is merely the right to exclude others. And from the nature of this exclusive right it follows that the only right which a patentee or patent owner can grant under his patent, by way of license, is the release of this right of exclusion. Our patent statutes provide for granting patents for improvements upon prior inventions; many, if not most, patents granted are for improvements in fields of invention which are already developed. The patentee of the improvement invention has the right to exclude others, including prior patentees, from using his improvement, but he may himself be prevented from using his improvement by the superior right of exclusion of some prior patentee. For example, a later inventor may patent a new catalyst which gives greatly improved results in a previously patented catalytic process, but his patent gives him no right to use the patented process of the prior patentee. All that it gives him is the right to prevent others, including the prior patentee, from using his improved catalyst. An inventor may patent a new process for making a previously patented product, but his process patent gives him no right to make the patented product before the product patent expires. This distinction between the right to use a n invention, which may be subject to the superior rights of prior patentees, and the right of the later patentee to exclude others from using his particular patented invention, is important and should be clearly understood. The Patent Office does not concern itself with the question whether the invention for which a patent is granted is one which the patentee can use. If a new invention for which a patent js sought has the necessary statutory attributes to make it patentable, the Patent Office will grant a patent, regardless of any question of infringement of prior patents. Accordingly, in dealing with patents in a practical way and in connection with any commercial exploitation of a patented invention, it is necessary to consider prior patents in the same field of invention from the standpoint of possible infringement.
Who Can Obtain Patents? Under our patent statutes a patent can be granted only to the inventor or to his heirs or assigns. The application for patent must be made by the inventor himself, if living, and must include the necessary oath of inventorship. I n the case of an invention made by two or more joint inventors, the application must be made by the joint inventors. The question of ownership of an invention and of a patent is a different question from that of inventorship. An inventor may by assignment transfer his invention and his patent application and patent, in whole or in part. Inventions, pakent applications, and patents, while not commodities in the ordinary sense, are nevertheless bought and sold, or rights thereto are licensed or otherwise transferred. But only the inventor, or the joint inventors, can apply for a pat-
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ent under our patent statutes. It is common for inventors to assign their inventions and patent applications so that the patents issue to the assignees upon applications made by the inventors.
Employer-Employee Relation This distinction between the questions of inventorship and of ownership of an invention is important in employeremployee relations. The general rule is that the inventions of an employee are the property of the employee, even though they relate to the business of the employer; and the employee is entitled to patent his invention for his own benefit, subject only to a shop right or license to the employer. The exception to the general rule is where the employee is employed for the very purpose of making inventions, or where the nature of the employment includes the making of inventions for the benefit of the employer, in which case the inventions so made and the patents therefor are the property of the employer. Misunderstandings between employers and employees have sometimes arisen and litigation has resulted over the ownership of inventions and patents of employees. To avoid such misunderstanding and litigation, and for the protection of both employer and employee, it is common and desirable for contracts of employment to define the respective rights of both employer and employee.
What I s Patentable? Kot all inventions are patentable. For more than a century our patent statutes have provided for patents within the classes defined as arts, machines, manufactures, and compositions of matter, and improvements in these four classes. Recently there has been added a fifth class of asexually reproduced plants other than those which are tuber-propagated. An early instance of a n invention which was held to be outside the classes of inventions patentable under our statutes was the discovery of the anesthetic properties of ether (Morton v. New York Eye Infirmary, Fed. Cas. KO.9865). More recently it has been held that citrus fruit treated with borax to prevent decay by blue mold was not a patentable article of commerce under our patent statutes (American Fruit Growers v. Brogdex Company, 283 U. S. 1). From a practical standpoint, in the fields of invention relating to foods and medicines we are concerned with apparatus and equipment, processes, and products and compositions. Apparatus, machinery, and equipment used in these industries and processes applicable therein may be patented if they possess the necessary patentable attributes. New products and compositions, if they possess these attributes, can similarly be patented. The patent systems of some foreign countries exclude foods and medicines from patent protection. Our patent laws make no distinction between inventions relating to foods and medicines and inventions in other fields. There are three requisites of patentability under our patent statutes-namely, novelty, utility, and invention. Novelty, under our patent laws, is different from novelty in the popular sense or novelty in the commercial sense. A product may be new commercially without being new in the sense of the patent law. I n order for an invention to be new within the meaning of our patent statutes, it must not only be something that has not been known or used commercially in this country, but also that has not been previously patented in this or any other country nor previously described in any printed publication in this or any other country. A publication in some out-of-the-way library or a patent granted in some country which does not publish its patents may
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negative patentable novelty. For practical purposes, patentable novelty is determined on the basis of readily available patents and publications, and other readily available public information. Utility is another requisite of patentability. Patents are granted only for inventions which are useful as well as novel. I n practice, few inventions are held unpatentable for lack of utility. The third requisite is invention, used in a special sense of the term. The term “invention” is employed in other senses and with different meanings. It is used, for example, to mean the inventive act as well as the thing invented. But in the sense in which it is a prerequisite of patentability, it designates a quality, attribute, or quantum which is difficult t o define but which is commonly distinguished from the expected skill of those skilled in the art to which the invention relates. An invention may thus be both new and useful, but may be lacking in invention because it involves merely the expected skill of the engineer or chemist. It has been repeatedly held, for example, that the application of an old process to a new and analogous material does not involve invention even though the process had never previously been so applied. A patent on the preservation of fish by freezing out of contact with the refrigerating atmosphere was held invalid as involving merely the principle of the ice-cream freezer (Brown v. Piper, 91 U. S. 37). A patent on the canning of green corn, covering both the process of preserving the corn by canning and the canned sweet corn as a new product, was held invalid because other food products had been similarly preserved by canning (Sewall v. Jones, 91 U. S. 171). The determination of whether invention is involved in any particular case is one of the difficult questions in the practical application and administration of our patent laws. The courts have found it difficult to define invention in a sense which enables its presence or absence, as a patentable attribute, to be determined. Its presence or absence is a question on which differences of opinion frequently exist, both in the Patent Office and in the courts, where its determination is often controlling in deciding whether a patent shall be granted by the Patent Office and whether, in case of litigation, the patent is valid or invalid. I n the field of medicine we are particularly concerned with new products and compositions-for example, new synthetic organic chemicals useful in the medical field, biological products, vitamins, and compositions compounded from two or more substances, I n general, a new chemical or biological substance is patentable. Instances where such products have been patented and the patents adjudicated and sustained are the patents for phenacetin (Maurer v. Dickinson, 113 Fed. 870), adrenalin (Parke-Davis v. H. K. Mulford Company, 196 Fed. 496), and the Dick scarlet fever toxin and antitoxin [Dick v. Lederle Antitoxin Laboratories, 43 F (2 d) 6281. An old product, pToduced synthetically for the first time, cannot be patented if it is the same as a known product, as was held many years ago in the case of synthetic alizarin which had previously been extracted from the madder root (Cochrane v. Badische Anilin & Soda Fabrik, 111 U. S. 293). But patents have been granted and sustained for pure products, even though the same products in an impure state were known, where the known impure products were not commercially valuable but the pure products were. Instances are the patents for a water-soluble safranine aeonaphthol dyestuff (Badische Anilin & Soda Fabrik v. Kalle & Company, 104 Fed. 802) and aspirin (Kuehmsted v. Farbenfabriken of Elberfeld Company, 179 Fed. 701). An early instance of a composition of matter which was held patentable was an antiseptic cotton bandage containing
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both glycerol and boric acid. Although bandages had previously been made of cotton with boric acid, and although the hygroscopic properties of glycerol were well known, the Supreme Court held that the combination of the three ingredients was a new and patentable invention (Seabury v. Am Ende, 152 U. S. 561). Medical compositions made up of known medical ingredients are not in general patentable because they involve merely the expected skill of the physician, as in physician’s prescriptions. But where a new composition, even though made up of known chemicals, has new and unexpected properties, it may be patentable. An illustration is the Hart patent of the Wisconsin Alumni Research Foundation covering the combination of copper sulfate and an iron salt for the treatment of anemia [Wisconsin Alumni Research Foundation v. Breon & Company, 85 F (2 d) 1661.
Determination of What Is Patentable For most practical purposes, the determination of whether an invention is new and patentable is made by a (‘prior art” search. A complete search from the standpoint of novelty would have to include the entire field of prior patents, whether published or unpublished, in all countries, as well as all printed publications throughout the world, and all possible instances of prior knowledge and use in this country. Practically this is impossible, and searches are usually limited to the more readily available patents and publications. I n the chemical field prior-art searches are greatly facilitated by formula indices and abstract journals. Chemical Abstracts is one of the most valuable tools of the chemical searcher, but it alone should not be relied upon. The classified patents available a t our Patent Office afford one of the most valuable fields of search. The importance of an adequate prior-art search in connection with research and development work should be emphasized. A tremendous economic waste is involved in reinventing, and in attempting to patent, inventions which were previously known but with which the later inventors were not familiar through lack of an adequate prior-art search. During the history of our patent system more than three and a quarter million applications for patent have been filed. More than a million and a quarter of these applications (more than 40 per cent) have been abandoned. A major reason for this high mortality is the lack of novelty or lack of invention because of prior patents or publications with which the applicant was not familiar when he filed his application.
Procedure in Obtaining Patents
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I n order to obtain a patent, an inventor must make his application in accordance with the provisions of the patent statutes. The application papers include a formal petition and the oath of inventorship. They include a description of the invention, called the “specification,” and they must include one or more claims setting forth the novel features of the invention. Having in mind the public interest involved in granting a patent and the consideration for the grant-namely, that the invention shall be available to the public a t the expiration of the patent-the statutes provide that the patent specification shall contain a full and complete description of the invention. The description must be so full and complete as to enable those skilled in the art to practice the invention, and the failure to do so makes the patent invalid. For more than a century our Patent Office has been organized and required to investigate the novelty and patentability of inventions covered by patent applications, and to grant patents only when after examination the inventions are found to be patentable. At present there are some sixty-
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five examining divisions, and about six hundred examiners are engaged in the examination of patent applications. Each examiner is assigned a special class or series of classes, and devotes his entire time to this field. The examiners are provided with classified United States and foreign patents, and have available the leading publications in their fields. The examiners engaged in examining patent applications in the chemical arts are trained chemists. They are continually making searches of the prior patents and publications in connection with the patent applications which they examine, and they thus acquire a special familiarity with and knowledge of the available patents and literature within their respective fields. It is because of this continued work in the same field that the examiners are able to handle the number of applications they are required to examine within the time available. The Patent Office had granted a million patents by August 1911, and another million between 1911 and 1935. Nearly three-quarters of a million patents are now in force, granted during the last seventeen years. As many as ninety thousand applications have been filed and as many as fifty thousand patents granted in a single year. Seven years ago there were nearly two hundred thousand pending applications. Through increase in the examining staff, reduction in the number of applications fled during the depression, and the effort of the Patent Office to reduce the number of pending applications, only about a hundred thousand are now pending; the delay in acting upon applications has been correspondingly reduced. Nevertheless, the number of new applications and of amendments filed requires about a quarter of a million actions per year by the staff of about six hundred examiners; in other words, each examiner must examine or reexamine an average of one or two applications per day. The greatly increased number of patents granted, both in this and foreign countries, and the rapidly increasing literature, particularly in the chemical and medical fields, correspondingly increases the field of investigation in determining patentability. With the broad requirements of our patent statutes as to novelty, i t is not surprising that patents are sometimes granted which are invalid for lack of novelty because of some prior patent or publication which the examiner did not find in his search before the patent was granted. Nor is it surprising that patents should occasionally be held invalid for lack of invention, as distinguished from lack of novelty. It is too much to expect of the Patent Office, as of any human institution, that i t be infallible; but our Patent Office does remarkably well with the facilities available, and its examination system compares favorably with that of any other country.
Interferences When different inventors seek patents for the same invention, the statutes provide that the Patent Office shall investigate and determine the question of priority of invention, so that the patent may be granted to the first inventor. A rather elaborate set of rules governs interference proceedings in the Patent Office. Of the applications filed, however, only a small percentage (around 5 per cent or less) become involved in such proceedings; and of the interferences declared, by far the greater proportion are disposed of during the preliminary stages and without proceeding to a final hearing and decision by the Patent Office. Only around 1 per cent or less of the applications are involved in interferences which reach that final stage.
Patents as Property Inventions, patent applications, and patents are property; as such they may be purchased and sold, and rights in them
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may be otherwise granted and obtained. Until the patent has been granted, no right of exclusion can be enforced. The nature of patents as property is governed by the patent statutes. It is the right of exclusion which gives value to a patent, and a license granted under a patent is merely the release of the right of exclusion. Patented products, like unpatented ones, are subject to other applicable laws. The pure food and drug law, for example, applies as well to patented as to unpatented products. One of the valuable aspects of a patent for a new product was brought out in the papers presented a t the Rochester meeting of the AMERICAN CHEMICAL SOCIETY in connection with patents for medical products (3). This point is that the patent owner can control the commercial exploitation of the product, even where that control is not for commercial gain but is merely for ensuring adequate standards and control of the products manufactured. I n the case of a patented product, he may, under certain conditions, fix the price of t h e product as a condition of a grant of a license to make and sell the patented product.
Patent Litigation Patent rights are enforced by suits for infringement in the federal courts. The court is usually called upon to determine both the validity or invalidity of the patent and the question of infringement. If the patent is held valid and infringed, the infringer can be enjoined from further infringement and made to account for profits and damages resulting from his infringement. The available statistics (2),covering litigation over a six-year period, indicate that only around 1 per cent of the patents granted were involved in litigation, and that of the patents litigated, about 25 per cent were held invalid and around 45 per cent valid and infringed; the other cases involved only the question of infringement or questions other than validity. Less than one-third of the cases decided by the trial courts were appealed to the appelate courts; and of these cases a somewhat higher percentage of the patents was held invalid (around 40 per cent), and a somewhat smaller percentage was held valid and infringed (about 31 per cent). Valid patents are generally respected and are not often litigated. The penalty for their infringement is too severe for them t o be disregarded. But patents which are improperly granted, as sometimes happens, and which are invalid are not deserving of respect, and should properly be contested if an effort is made to enforce them. Usually, however, it is when there is room for an honest difference of opinion as to the validity or invalidity of a patent, as t o its proper interpretation and scope, or as to its infringement, that litigation results. Most patent suits have been brought on the equity side of the court and have been tried and decided by federal judges. Very occasionally an infringement suit is brought on the law side of the court with a jury trial. The new federal rules of civil procedure will apply to patent litigation. These new rules are intended to simplify and facilitate litigation of all kinds in the federal courts, and it is t o be hoped that they will have that effect in patent litigation.
Literature Cited (1) Botsford and Sihler, “Hellenic Civilization,” p. 207 (1915);
Mtiller, “Fragmenta Historicorum Graecorum,” Vol. I, pp. 347-8 (1841). (2) Federico, S. Patent Ofice Soc., 18,685-96 (1936). (3) IND.ENG.CEEM.,29, 1315-26 (1937). RECEIVBD September 12, 1938.
