The Importance of Scientific Literature in Patent Applications' PAUL J. CULHANE E. I. d u Pont de Nemours and Company, Wilmington, Delaware
A
tection and that of attempting too much in patent protection. The research in many cases opens up new possibilities, and a literature survey adequate a t the beginning of the research may need supplementing to explore the new possibilities. An adequate literature background for the patent application must therefore include any supplemental survey called for by the results of the research. The second result of an inadequate literature background is that of attempting too little in patent protection, i. e., that of a deficient appreciation of the implications of the invention. While this necessarily involves inventive genius, nevertheless the scientilic literature furnishes the material on which the genius of the inventor may work, and if the scientific literature is unknown the material is lacking from which the invention may be wrought. Thus an inventor working with a class A of materials but unacquainted with prior knowledge that this class is equivalent in some relationships to another class B of materials (i. e., unacquainted with the complete literature background with respect to class A) makes an invention with respect to class A but does not extend his investigation to class B. Another investigator with a better appreciation of the literature, on making an invention with respect to class A, is inspired to investigate class B and finds that class B is equivalent to class A in the inventive respect. He may further put two and two together and find that what was true of classes A and B is true of some genus inclusive of classes A and B and other classes. Should both inventors apply for patent protection, the less appreciative inventor can a t most have protection on class A. The more appreciative inventor can a t least have protection on class B and may even have protection on the broad genus if he is early enough. The less appreciative inventor may, because of special circumstances, even come to appreciate the related class B or the broader genus, but too l a t e a n d be debarred from patent protection on the related class and the broader class. Furthermore, should the less appreciative inventor issue a patent on class A, an investigator with adequate knowledge of the literature may, with the necessary "flash of genius," correlate classes A and B, file on class B, and obtain a patent thereon. The third result of an insufficient literature background is that of attempting too much in the way of Presented before the Division of Chemical Education of the American Chemical Society, 106th meeting, Pittsburgh, Pennsyl- patent protection, i. e., claiming an alleged invention so broadly as to include what is already available to the vania, September 7, 1943. 601
N IMPORTANT aspect of research is that of patent protection on the results of research. The first officialstep in the obtaining of this patent protection is the filing of a patent application. The importance of an adequate patent application cannot be too strongly stressed since nothing new in substance can be added to the patent application after i t has been filed. The wording of the application can be changed, claims may be added, amended, or canceled but all the changes must be within the framework of the application as filed. The preparation of the patent application is therefore deserving of great care. While the form of the application demands adequate attention, so that the invention may be presented to the Patent Office in such manner as to ensure its best consideration, an even more important requirement is that of the substancethe subject matter gathered together in the application and declared to be the invention of the applicant. The knowledge of what may and what may not be included as the invention of the applicant is largely determined by the work done by the inventor and that done before him. The work done before the inventor is, for many cases, that recorded in the literaturepatents, journal articles, etc. This scientfic background for the invention should, in many cases, be available to the inventor when he initiates the laboratory portion of his research, since othexwise he cames through his research as though blindfolded. At times, however, the background of the research is not thoroughly explored and we have the situation in which the researcher, in ignorance of what has been done before him, proceeds to repeat the work of others, to obtain the same results as those others, to waste time, money, and material, and to advance the frontiers of knowledge not a t all. This is perhaps the most expensive result of inadequate knowledge of the scientific literature in connection with patent applications, for facts experimentally determined are expensively determined. When experimentally redetermined, they are redetermined a t an expense ordinarily not justified, since the scientific literature has them available a t lower cost. The wastage involved in useless repetition of laboratory work is usually not the direct concern of the patent attorney. The second and thud results of the incomplete utilization of the literature do, however, concern him, i. e., that of attempting too little in patent pro-
public. Such claiming leads to difficulties in the protection of the patent application in the Patent Officeor, if not there, to difficulties in the defense of the patent in the courts. These difficulties are psychological and legal. It might better be said that the difficulties are in the range from psychological to legal. In this case, when the invention is presented to the Examiner, the true invention is presented together with what is old as an essentially homogeneous unit. Should the Examiner determine, from his search, that the applicant seeks domination of that which is old, it is but human for h i to consider the new equivalent to, or obvious from, the old, i. e., not inventively new. The cases are numerous wherein applications are rejected by the Patent Office or Courts appellate therefrom because the applicant has made his improvement equivalent to what was already known. "Since appellant's disclosure appears to treat intaglio and cameo marks as equivalents we are unable to see how he can successfully urge the patentability of a claim specific to one equivalent when the other is clearly shown in the prior art."In rc WITHINGTON 26 CCPA, 1290 (1939).
Such an unfortunate outcome may be avoided where the applicant can convince the Examiner or the appellate tribunal that the equivalence is not a prior;, but found by the applicant.
"We do not feel that a case of an applicant should be rejected on his own showine It is anlv where the eouiva.. of eauivalencv. . lency of certain material, i, known to the prior art that thcsultstitution of one for another is nor invention." -Ex park SHIILTGN. 49 U.S. Polents Qi~arlerl).36, 37 (1911).
This frequently requires, however, an appeal from the Examiner with the attendant expense, which is usually considerably more than a good literature survey would have cost in the first place. The final unfortunate result, one which is probably less frequent, is that a patent is obtained which, because of ignorance of pertinent literature by both applicant and Patent Office,is so broad in its claiming as to be invalid. This patent, if sued on, would merely be a sink down which litigation costs would be poured without useful result, except that the patent would be removed as an unjustified obstacle to progress. When not sued on, the patent may prove to be disadvantageous to others than the owner, who may be forced to consider i t and to have searches made to invalidate it, if they are sufficiently interested in the field. A proper appreciation of the value and necessity of an adequate literature survey is not prevalent enough. This is particularly marked with less experienced chemists. The older chemist probably has seen the unfortunate results above noted sufficiently often that he is aware of the danger.
