The House Patent Department THOMAS GRISWOLD, JR., The Dow Chemical Company, Midland, Mich.
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Y A house p a t e n t d e -
partment is meant that branch of a business org a n i z a t i o n handling p a t e n t matters. The objectives to be attained vary, but may include the following:
To rovide that patent matters shall e! handled bv mecialists in that line. To coordinate the activities of other departments respecting the requirements of patent and trade-mark laws. To organize invention data, research data, and patent data for instant availability. To centralize patent control for efficiency and effectiveness. To obtain and protect patent monopoly. To keep the business out of patent trouble. I
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Oberlin, and Fay). In spite of the g e o g r a p h i c s e p a r a t i o n , consequent i n c o n v e n i e n c e , and cost of time and travel to make c o n t a c t s , excellent and satisfactory s e r v i c e was given over a l o n g p e r i o d . W h e n , processes and products w e r e multiplied a n d t h e r e search I ) r o ~ a mwas exDanded, the number of inventors and inventions greatly i n c r e a s e d , and the arrangement, satisfactory up to that time, began to fail in various ways about 1926. The weaknesses lay in the geographic separation between inventor and attorney, the cost of time and money to make contacts, the infrequent and brief contacts made, the ensuing delay in filing, and the lack of effective centralized review and analysis of applications and responses. Allocation of priorities to urgent cases was imperfectly attained. Owing, further, to the fact that many of the new inventors were inexperienced and had not yet become “patent wise,” as had some of the older men, they were inclined merely to sign on the dotted line whatever was placed before them. The older men were, moreover, so engrossed in their own labors that cooperation with new inventors on patent work had become difficult and sporadic. The advantage of teamwork, so diligently sought in other activities, was largely absent. Division of the work among several attorneys did not solve the problem. A local centralized control and supervision became necessary if the company was to avoid troubles liable to grow out of the unavoidable weaknesses of the past arrmgemenfs when stressed with a heavy load of work. It was a t the suggestion of John F. Oberlin that the department was organized; the initial work was done under his supervision and has had his guidance since. The company had already about two hundred patent applications on file; file wrappers were nearly complete. The chemical library was one of the best of its kind in the country, and included a fair collection of bound United States Patent Ofice Gazettes and a selection of loose copies of patents in the fields in which we Fere actively manufacturing or in which we were interested. There was also a card indes of these patents prepared by the librarian. We had had, further, for years a n employees’ patent assignment agreement program in effect, under which known inventors or those suspected of inventive capacity had signed over their inventions t o the company in consideration of their employment. There was also in effect a routine review of literature and abstracts, both domestic and foreign, by research men who prompted the librarian in acquisition of patent copies, etc. Research reports were diligently being made and systematically assembled in one central file.
The objects io be attained, funcfions to be performed, and facilities required by a house patent department are enumerated. The why and how Of the organization Of such a by The DOW Chemical Company is described. The scope of the work done, the selection and training of personnel, the relations with associafe attorneys, and some of the results realized are stated.
T o attain these and other ends, the performance of various functions may be required. They may include: Collection and receiving of all data relative to patent matters, and acting as depository for such. Determining interest, patentability, inventorship, and disposal of disclosures of inventions and discoveries. Securing patents, trade-marks, etc. Drawing patent contracts, agreements, licenses, etc. Buying and selling atents and patent rights. Cooperating in deveEpment of and perfecting - the record of inventions. Attending to timely payment of fees, taxes, working, etc., of foreinn Datents. Wyitiig or securing opinions upon patentability, infringement, etc. Searching the art and reporting on same. Translating foreign language patents and literature references and citations. Acquiring and maintaining a library of patent art. Defending patent infringement suits. Prosecuting infringers. Any or all of such functions, and many others, may be performed by the department in whole, or in part, in cooperation with associate attorneys and established facilities. Among facilities or tools necessary or desirable are: Personnel having the ability, either latent or already developed, to handle necessary work. Library, both research and patent, either resident or handily available. Reference handbooks on patent law, procedure, adjudication, etc. Suitable forms for disclosures, applications, records, reports, means for docketing, ticketing for timely attention, etc. Entree to the Patent Office through registered attorney, either resident or associate. The scope of the work t o be undertaken will depend upon local conditions, such as: Geographic location relative to established adequate facilities. rlvailabilit of personnel to handle the work and the past experience o f such personnel. Volume of the work. Existing arrangements and the degree of success and satisfaction previously attained. Legal complications existing or contemplated, etc.
METHODOF ORGASIZATION
OF HOUSE PATENT DEPARTCAUSESOF ORGANIZATION MEKT O F DOTV CHEMICAL COMPANY Prior t o about June, 1927, the company’s patent work was handled chiefly by a firm of Cleveland attorneys (Fay,
Some rooms on the library floor were taken over by myself and an engineer assistant previously under my direction, an inexperienced high-school graduate stenographer who had taken a short course in shorthand and typing was hired, and we three opened shop. A search of our correspondence files and record files was made; all papers relating t o patent
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iiiatters and patent library and iiidex were taken out. 4 search of our associates’ files brought to light some applications and issued patents of which no local record existed, and our file wrappers were brought up to dat,e by securing copies of missing papers to make our files and our associates’ files alike. The old iiidex book of patent applications in which had been entered in consecutive order by serial number the applications as filed was completed to show all applications from beginning to date, and the status as to abandonment, issue, continuation-in-part, companiori cases, etc. A card index of all company-owiied applications was prepared and filed in two divisions4 e., active, and completed, each indexed as to inventorship and title. A disclosure record book was opened in wliich were entered initially all disclosure or invention data found in the several files searched. Entry of a brief title, name of inventor or inventors, and date of entry were made for each, following a serial number. Mr. Oberlin addressed a meeting of department heads, inventors, and research and operating men to introduce the new department. He gave an instructive talk upon chemical patents, principally, and pointed out the advantage to be gained by a local office. Ile explained points about inventorship, co-inventorship, title to inventions, shoprights, patentability, and infringement. He stressed the importance of Che specification as a disclosure of the invention and its relation to the claims and possible future adjudication of them. Ethics, procedures, pitfalls, and other related subject matter were discussed. He further furnished ns copies of fornial papers, paragraphs, etc., useful in preparing applications, list of desirable handbooks, journals, ete. In order to assure ourselves thnt wr vere startine offwith a t least some benefit of the e x p e r i e n c e of others in h o u s e p a t e n t work, my a s s i s t a n t visited several house patent departments courteously o p e n e d to us and obtained data arid advice, forms, ctc., of d u e in planning our organization. We acwrdingly prepared printed forms for disdosores, following in some respects those shown us by others. A docket book was opened, using the loose-leaf system in which were entered the due dates of all responses Co office a c t i o n s . Ifandhooks were purchased, and missing volumes of the Potent Ofice Gazette ordered. Along with preparation of, these facilities ure started to cooperate in drawing applicat.ions, amendments, and other responses, making translations of foreign language citations, interviewing inventors, and other technologists to secure teamwork, and began receiving disclosures of inventions and discoveries. Our initial effort was largely confined to contacting attorneys with inventors, drawing rough drafts of papqrs, obtaining opinions and help of others than the immediate inventors, building up our library and records, and acquainting ourselves with the technic of the business as well as with the engineering, metallurgical, and chemical arty in which the work lay. Becoming gradually more conversant and experienced, \ye took over by degrees the more complete preparation of papers and the more careful analysis of patentability, eitatiom, ete. After securing registration as patent attorney, we wore able to handle a growing proportion of the work
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directly, but under the review of our associate attoriiej-5: thereby relieving them of much routine work while preserving their background of experience, ability, and interest i n our patent work. As the scope and volume of the work expanded, several more men and stenographers were taken on. Mr. Oberlin proved to be an able teacher and a t least onr: iif our staff has shown ability in breaking in new men. The expansion wtw not only in volume of patent cases and extent of the work on cases done by the department, hut other collatitral services wer? instituted. Disclosures poured in upon us, and the work of rcvicning them, obtaining elaborations and supplementary data, analyzing them with informed iiirii and managemeut, allocating preference, deciding upun interest, disposal, ete., required much thoughtful atteutiou and time. The ease with u,hieli cooperation with and views of others could be secured by drawing upon some two hundred technologists, all easily reached by office telephone system, and easily brought to the office for conferences, enabled securing the teamwork formerly so difficult to be realized. The department now functions in nearly all fields of the patent rvork required. United States applications are prepared, filed, and prosecuted directly. Appeal and interference work is being taken over to some extent. Our associates bare been tliereby relieved of a further amount of the routitie work and function as legal advisers, patent counsel, prosecuting and defense attorneys, in reviews of, and reporting upon, infringement matters, applying for aiid prosecuting foreign applications, etc. Much service xork for the other departments is handled, including citations of Datent art. rmorts u w n uatentability, infringement, and scope of art. A comprehensive patent library hairing been acquired is kept up to date. We have been successfill in b r e a k i n g in i n e x j m e n c e d stenographers, lireferring them to those having a b a c k g r o u n d of general office work. The men hare all been d r a w n from the b u s i n e s s and lrave beeti selected for their educat,ion, training, e x p e r i e n c e i n chemical technology, a u d natural a b i l i t y for specific c l a s s e s of work-e. g., metallurgical, engineering, g e n e r a l c h e m i c a l technology, organic and inorganic chemistry, etc. Some men preferred other lines of activity after a more or less extended trial of the work, but men now on the staff have developed the ability and capacity to turn out a satisfactory volume of quality work. They have devoted outsidc time liberally to study of patent law and procedure, and adjudication of patent cases, and the like. The stenographic force ha. become expert in the vocabulary and technic of the profession and in recording, filing, posting, docketing, ordering, etc. The weaknesses which had developed in our patentiiig procedure under the stress of increasing volume have beerr largely overcome. Close cooperation between inventors and attorney is effected. Teamwork in preparing and prosemiting applications is realized. Patent data and records are more complete and promptly accessible. The status of any matter may be determined promptly. The valuable baekground of experience, intemyt, and expert technic of our associate attorneys has been retained, and their activities
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IN DUSTRIAL AND EN GIN EER IN G CHEMISTR
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Vol. 25, No. 3
have been more nearly confined t o functioning in matters requiring their peculiar abilities. The research and other departments are served in matters of searches, art citations, reports on patentability, infringement, etc. A greatly increased volume of work is handled, made up not only of a
matters are made and preserved for use as may be required. A system of records, procedure, forms, and technic has been developed to handle the work efficiently and safely. A more satisfactory standard of quality has been attained.
larger Of patent in a wider but an extended service to the business* Records Of inventions, inventorship, reduction to practice, and other pertinent
RECEIVED December 27, 1932. Presented before t h e meeting of the American Institute of Chemical Engineers, Washington, D. C., December 6 t o 9, 1932.
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Comments on “The House Patent Department” WM. R. GREEN,JR., 60 E. Fifth Street, Corning, N. Y.
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RISWOLD has been, from necessity, rather general in many of his statements. Such a method of treatment is to be commended rather than condemned, because to do otherwise would lead to the introduction of much needless detail. It appears to me that the strength and weakness of the plan lies in the first of the objectives to be attained: “to provide that patent matters shall be handled by specialists in that line.” Obviously the efforts of the various specialists must be coordinated and synchronized, but this will accomplish nothing unless there are, in fact, true “specialists” actually doing the vital work. The centralization of patent control is one of the problems which vitally interests the key exerutives of an organization that depends to any extent upon patent control for the success of its business. Those who are familiar with the commercial exploitation of patents know that frequently huge sums are expended in the purchase of patents. Whether or not this expenditure is justified cannot be answered by any ordinary patent department. The questions to be determined by those responsible for the purchase of patents are many and varied in their nature. No executive would undertake the determination of such questions without a careful study of the probable market for the article made under or through the use of the patent and the cost of its production Such studies are obviously not in the capacity of any patent department now in existence. Such examples could be amplified almost indefinitely. Patent monopoly has involved in it the possibility of violation of the antitrust laws. It seems too much to ask any patent department to function in the capacity of adviser on such a subject. Among executives and lawyers it is recognized that this type of work calls for a specialist. The question of whether or not competitors should enter into an agreement for the exchange of patents, secret processes, and technical information, is one that requires the utmost from a group of specialists, and the executives contemplating such an exchange are exceedingly fortunate if they have in their organization men of sufficient breadth t o recognize the existence of various problems, much less having the ability to provide the correct answers therefor. “TOkeep the business out of patent trouble” (sixth objective listed) requires more business ability than any ordinary patent department should attempt to provide. IS the patent needed? Can it be acquired a t a reasonable cost? Are the owners friendly or hostile? Can an exchange of rights be effected? I s it possible t o develop a substitute? All of these questions arise in an effort to “keep a business out of patent trouble” and frequently require the consideration of the production, sales, and executive departments as well as of the house patent department I n the second paragraph the author has further and differently subdivided the n-ork into functions of an ideal patent
department. Under the first three functions he has set forth undertakings which are commonly carried forward by a patent attorney. The fourth--“drawing patent contracts, agreements, licenses, etc.”-may or may not fall within the province of the patent attorney, depending upon the nature of the contract or agreement which is needed. If, for example, questions concerning the Sherman and Clayton Laws are involved, or questions involving federal taxation, it would require a patent attorney with an unusual breadth of knowledge to prepare properly such contracts or agreements. The fifth function-(‘buying and selling patents and patent rights”-is commonly regarded as an executive responsibility. Patent attorneys are not ordinarily qualified to determine for the production department whether or not a particular patent is needed for the successful carrying out of the manufacturing enterprise, nor are they ordinarily qualified to determine as a practical matter which of two patented devices will operate the most efficiently, or whether the cost of the patent will be returned to the purchaser through savings effected as the result of its application in the factory. “Defending patent infringement suits” and “prosecuting infringers” are properly the functions of the patent attorney and should be carried on by him if he has had sufficient trial experience to enable him properly to present his company’s case in the court room, whether it be in the District or in the Appellate Courts. As a matter of fact, this type of work is now very generally handled by specialists in trial work, for the obvious reason that the ordinary patent attorney, even if admitted to practice in the courts, has had a very limited experience in trial work and is accordingly a t a marked disadvantage when he is opposed by counsel who are thoroughly qualified to engage in the trial of cases. The author has on paper set up the ideal house patent department. As a practical matter, it is not believed that any company in the United States has been able to establish a department qualified to function as proposed by the author. In the first place, the expense of maintaining such a corps of experts as would be required would be enormous. It is much cheaper, unless the company has a tremendous amount of trial work, to employ the best talent in the country by the day or annually on a retainer basis than to hire these men by the year with the understanding that they devote all of their time to the affairs of one company. In most companies the executive department continues to exercise its normal functions. Such companies have quite commonly a general counsel, with such assistants as are needed. A general counsel does not deserve to hold his position if he does not recognize that the company’s best interests demand the employment from time to time of specialists peculiarily qualified to handle the unusual types of questions which are constantly arising. Fortunate, indeed, is the general counsel who has a patent department with a per-
