...._THEINDUSTRIAL CHYMIST NEW AND USEFUL B. J.Luberaf, Ph.D. To HELP you use patents in your work, we outlined in an earlier column some of their characteristics. I n brief, it was noted that when a government grants a patent to an inventor, it gives him the right to exclude others from using his invention commercially. He, in turn, must fully disclose this invention which must be new and useful. We mentioned that new meant unobvious, that useful meant capable of accomplishing some stated goal that the inventor sets out to accomplish, and that disclose meant describe the practice in enough detail to permit a skilled practitioner to achieve the desired goal. The new part doesn’t concern us much as users of patents; it is urgent, however, from the inventor’s viewpoint. Suffice it is to say that in the U. S., if there is a question of who discovered something first, then one of the critical dates is the date on
D R . L U B E R O F F has been working at the interface between chemistry and engineering since receiving his Ph.D. from Columbia in 7953. He has been associated with American Cyanamid and Stauffer Chemical Co., and is presently Manager of Process Researchfor The Lummus Company, Bloomfeld, N . J . His publications which aptear in the scientific and patent literature, both here and abroad, number several dozen. They are characterized by the diversity of fields they cover: from pesticide residue analysis through homogeneous catalysis to full process flow sheets. 4
which the idea was first described to some person capable of understanding it. T o protect your idea, it is worth writing it down and having someone else read, sign, and date it. The inventor is also required to pursue completion of his invention with “due diligence” since the law is designed to encourage him to open his idea for ultimate public use. Since several years lapse between the “conception date” and issue date, some patents may not look very new when they finally issue. Now the useful. Earlier, it was pointed out that the art disclosed in the patent only had to be “substantially operative,” not necessarily economical. Since a patent only prevents someone from doing something, many uneconomical or otherwise unsatisfactory things are patented in order to block a competitor from using a similar route or to prevent him from blocking you, by his getting the patent. Since the Patent Office is aware of this kind of objective it limits, quite severely, the area from which a n inventor can exclude others. The excluded area is defined by the patent claims which are at the end of the Letters Patent (patent, for short). Frequently, therefore, farmore is disclosed in a patent than is claimed. This is because the scope of the claims is determined by the Patent Office after the disclosure is filed. And, once filed, a disclosure can be altered only under exceptional circumstances. Understanding this concept of “disclosed but not claimed” can be extremely valuable to someone who wants to use information in a patent commercially. However, before doing so, one should get an
INDUSTRIAL A N D ENGINEERING CHEMISTRY
infringement opinion from a patent attorney. O n the other hand, and here is our main point, one can feel free to use any information contained in patents in research and development work. This is true because so doing does not substantially harm the inventor. Many people shy away from using the valuable information contained in patents because they do not realize this. And, of course, you may freely use, euen in commerce, material in expired patents; it is the purpose of the law to put this material in the “public domain.” (Recall that a U. S. Patent expires 17 years after its issue date.) Patent information is often discounted because it is ”unreliable.” Is it really? The best answer lies in understanding the fact that a patent is a “teaching,” or an instruction sheet for accomplishing some goal. It is not necessarily a record of the result of someone’s actually having followed that teaching. Generally, some of the art is a description of actual experimental work since the inventor wants to assure that his disclosure is substantially operative. Such experimental results are what one is usually looking for and they will be found in the “Examples.” The purpose of the rest of the disclosure is to delineate, as broadly as possible, the area the inventor hopes to “claim.” He, and his attorney, are therefore pretty imaginative in writing the overall description of the invention. But usually the EXamples, at least the first ones, describe actual valid experiments. You can usually spot them by their detail and their language. The law requires a full disclosure of the best embodiment of the in-
vention known to the inventor at the time he files his patent application. So, if he’s done some experiments, he’s inclined to describe a t least the “best” of them. I n such descriptions he will use the past tense, as one usually does in journals. He is usually saying, “I did this.” If a n example is in the present tense: “Caustic Soda (10 parts) is mixed with the polyamide. . . ” or the imperative: “Mix caustic soda (10 parts) with polyamide. . . ”, then such language carries a n implied If: “If caustic soda (10 parts) were mixed. . , ” Such examples should be read, “If you do thus-and-so, then you probably will get such-and-such. I didn’t actually do it, but I did think of it and the foregoing seems to be the best way to do it.” Needless to say, sometimes inventors don’t guess exactly right. This fact should not detract from the value of those Examples that are, in fact, records of careful, valid experiments. And with careful reading you can usually tell which is which, particularly in recent U. S. Patents. When one is schooled in the discipline of scientific journal reportage, then the foregoing aspect of patents seems rather freewheeling, if not downright dishonest. One, however, should realize that it is reasonable for an inventor to want to fence in the entire area that disclosure of his ideas has opened up, and that it is unreasonable to expect him to explore the entire area in detail before filing his patent application. Thus, he tells you about the things he has done and tells you how to do some related things the best way he knows how. Since you wouldn’t have known any of this
without his disclosure, he feels that he has a right to claim all that the Patent Office will grant him. I n summary then, when a patent is granted, the Government issues a legal document-The Letters Patent. You can get a copy of it from the Government or from large libraries such as The New York Public Library. This document has two main parts: the disclosure and the claims. The former describes the invention first very broadly, then more specifically in the Examples. Some, but not all, of these are descriptions of actual experiments. Chemical Abstracts abstracts illustrative examples and indexes new conipounds. T h e U. 5’. Patent Oj%e Gazette gives only the claims or the author’s abstract. Since the Gazette is right u p to date, it is excellent for current awareness, after one learns the classification system. O n the other hand, C A is best for retrospective work because of its excellent indexing. T h e only efficient way to search the Gazette retrospectively is to have a n attorney do it in the Patent Office. Finally, what kinds of things can you find in patents? There are patents on things and on how to do things. Usually, a patent on the thing itself is the strongest since it excludes others from making that thing no matter how he does it, or from using it no matter what the purpose. Chemical thing patents, or “composition of matter” patents can cover a single compound or a mixture. Sometimes the product is defined by the way in which it is made-socalled “Product by process” patents. Descriptions of many compounds and their preparation often appear
for the first time in the patent literature. Dosage form of a drug or a pesticide formulation can be found in composition-of-matter patents too. Again, one should emphasize that such information is, for all practical purposes, free for use in R and D. One kind of how to patent is the use patent: although aspirin is a n old compound that can be made by unpatented techniques, its use as a n automobile polish may be “unobvious.” If so, such use might be worthy of a patent application. One should be careful in using other people’s how to patents in his own work since the result may get into channels of commerce. Thus, you can safely sell Aspri-Polish only if making it infringes no one else’s patents. I t is, therefore, wise to get a professional, legal opinion before anything is to be sold. Finally, there is the process patent. It describes a way to carry out a unit operation, unit process, or sequence of one or both. This class of patent seldom contains descriptions of real plant experience although that is the area claimed. Frequently, but by no means always, process patents contain real laboratory data. Often process patents merely report good, original engineering design. Perhaps for the foregoing reasons and the proximity of process and commerce, it would be well to devote a future column to the reading of process patents. Acknowledgment
Thanks are extended to Richard Holton, Esq., to L. E. Marn, Esq., and to Dr. Girard Plateau for reading this manuscript and making helpful suggestions. VOL. 6 2
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