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caused the U. S. Patent Officeto establish a separate class, Class 260, for organic chemicals, which is now the largest of all classifications and is still rapidly growing. The special problems in the handling of chemical inventions and the importance of having scientists and management understand their fundamentals has evoked a number of publications such as Deller’s “Patent Law for Chemical and Metallurgical Industries” (a), Hoar’s “Patent Tactics and Law” ( d ) , and Thomas’s “Chemical Inventions and Chemical Patents” (8). The nurturing and development of the patent embryo is a subject touched on lightly or not a t all in most of the publications on chemical patents, usually only to the extent of discussing the elements of a good disclosure and the importance of dating notes. Consequently, the writer, in discussing this subject with patent department representatives of oil and chemical companies, found them eager to know of the patent procedures employed by others, even though they may have a smooth working system of their own in operation. With the increase in the number and complexity of patent suggestions and the opening of new fields of activity, the need became most apparent for well organized systems to secure, evaluate, classify, and follow up these suggestions rather than to rely on a few good attorneys with excellent memories, just as the growth of the scientific literature engendered better indexing and abstracting procedures. With these facts in mind, the ACS Division of Chemical Literature organized this symposium on The Evolution of a Patent, jointly with the ACS Committee on Patents to cover two phases of the patent protection question: first, the methods employed by a variety of industrial concerns with different chemical interests to stimulate, evaluate, and develop patent suggestions; and secondly, the suggestions from various industries for improving Patent Office practices, particularly in respect to the granting of chemical patents. The variety of procedures which are currently and effectively employed in industry are illustrated in the first part of the symposium which is presented here. Modifications or even widely varying procedures may be used by several companies in the same chemical line or even by different branches within one company. As in Monsanto Chemical Cos’s organization, a system may be established under the research management with the legal department acting only in an advisory capacity until after the suggestions have been thoroughly reviewed, evaluated, and supplemented by data. The extent of responsibility for evaluation and the high level of the functions of the research group in this well organized system is somewhat unusual. The teamwork necessary between attorney and research worker is stressed a t the Socony-Vacuum’s laboratory but this liaison is most effective in smaller companies or divisions where relatively few inventions must be considered. A current trend, especially in large companies, such as Merck & Co., is toward the maintenance a t the laboratories of a staff of liaison men, who have technical training and some knowledge of patent law fundamentals. These men assist inventors, handle much of the preliminary work for the patent attorneys, and make literature and patent novelty searches. In a paper on “Patent Coordination a t Humble’s Baytown Refinery” (6),Litton explained the operations of a similar group, called a staff of Patent Coordinators. It has become increasingly self-evident that a good research worker as well as the patent attorney and liaison man must become familiar with the prior art (6). To search the patent art with the most economical outlay of time (a requisite in any modern system) requires frequent use of the U. S. Patent Office Classification Manual and the individual classification bulletins of the U. S. Patent Office. The major concepts determining the classification of a patent and its cross references are discussed and a prpcedure to be followed in making a patent search is described by a classification examiner. The second half of this symposium, which has been published in Chemical and Engineerzng News [29, Nos. 43 and 44 (1951)],
Vol. 43, No. 11
reveals the keen interest in proposed changes in patent practices and includes a n interesting resume of replies by large and small industrial concerns to the questionnaire sent by the chairman of the ACS Committee on Patents and Related Legislation.
TRANSFORMING IDEAS INTO PATENT PROPERTY Herbert J. Krase Monsanto Chemical Co., Dayton, Ohio
A patent granted by the Government allows its owner to exclude others from the practice of the claimed invention, This right is possessed by the owner for a period of 17 years from the date of the grant; a t the expiration of this period the invention may, in theory a t least, be practiced by anyone. Since the patentee takes his patent subject to all patents with prior filing dates, however, it may happen that dominating patents are still in existence a t the time the patent in question expires. The owner may waive his right t o exclude others by means of a license, for which a royalty may be demanded. He may also sell or exchange his patent. Accordingly, the patent has all of the attributes of any other kind of property, except that it terminates a t the expiration of the stated period. An idea or a secret process based thereon has no standing once the idea has become public knowledge. However, if the owner of such a process desires to maintain it in secrecy, he may have the aid of a court in enjoining a threatened breach of secrecy, He may also have damages as a result of a breach of confidence on the part of persons who are in a confidential relationship to him. This is not based on any theory of property of the subject matter of the idea but rather on the breach of confidence. Thus, any legal rights, which the owner of the secret may have, are founded not on the fiction that there is a property right involved but on equitable principles stemming from the relationship of the parties. STIMULATION OF IDEAS OR SUGGESTIONS
I n modern research groups staffed with young and ambitious scientists, it is not generally necessary to offer specific rewards for suggestions made. As a matter of fact, it is believed that specific monetary rewards offered for patents applied for or granted to staff members are a definite hindrance to the team work necessary in such organizations. Although outstanding contributions should certainly be recognized, since they are the seeds for future growth of the business, the recognition should come from management by way of salary adjustment and not by way of the patent department. The stimulation offered by the nature of work, association with like-minded people, and loyalty t o the organization should be, and generally are, sufficient incentive. Graduate chemists coming to industry for their first jobs are woefully unprepared and generally lack any conception of what industry expects in the way of “patent consciousness.” It seems that in this respect universities could well afford to offer undergraduates a series of lectures on the basic principles of patent law and practice. These would be helpful not only t o industry, which always has been patent conscious, but also to the many university-sponsored research foundations engaged in research of a practical, as contrasted to a purely scientific, nature. If a research organization includes a patent department the problem of developing patent consciousness in the research man may be solved by on-the-job training courses. Even the more or less haphazard contact between the patent staff and the chemists will, in the course of time, develop an appreciation of the importance of patents to the company and what is expected in the way of record keeping. It is, however, desirable to keep patent consciousness on the part of all concerned within reasonable bounds and in line with
November 1951
I N D U S T R I A L A N D E N G I N E E R I N G CHEMISTRY
the ultimate corporate objective. If the income of the corporation is derived from the manufacture and sale of chemicals the principal efforts of the research and patent groups should be directed t o this objective. If the income of the corporation is derived from the sale or licensing of patent rights, the business of the patent and research departments will necessarily be different. This does not mean, of course, that manufacturing corporations do not engage in licensing patent rights or that the patent licensing business may not enter into the manufacture and sale of chemicals. The regular reading of new patents is another important factor in stimulating the flow of new ideas in research groups. Each week the U. S. Patent Office issues a substantial number of new patents in every field. Appropriate classes of these patents should be ordered and made available by the organization, and research chemists should be encouraged t o read these with the same diligence that is devoted to current chemic$ journals. By faithful attention to this branch of chemical literature a practical knowledge of developments by competing companies can be acquired. PROCEDURE FQR HANDLING SUGGESTIONS
Suggestions from research organizations can be evaluated t o best advantage by a committee. The committee, depending on the size of the organization, should be composed of the director or assistant directors of research and several senior staff membersthat is, those having experience and authority in the organization. Such groups are qualified t o decide quickly, on the basis of the following points, whether suggestions should be pursued or dropped:
1. Does t,he suggestion offer a soiution .to any of the major problems concerning the research organization? 2. Does the suggestion relate to products currently manufactured by the company or products scheduled for development by the company? The consideration of the committee should be especially sympathetic t o young research workers so that their interest is maintained. This can be an important morale builder at a time when it is particularly necessary. The committee should meet a t sufficiently frequent intervals t o keep the syggestion file reasonably current. It may be desirable t o consult the originator of a suggestion at the time of itEl Consideration, so that a full discussion may be had. The maker of a suggestion is entitled to a written reply, stating what the committee thinks about his suggestion and giving the reasons for ita actions. This, as stated, should be on the optimistic side if possible. IDEA REVIEW COMMITTEE
Out of considerations such aa these came the idea review committee a t Monsanto's Central Research Laboratory. Here technical staff members write their suggestions in memos directed t o the committee, and a copy is sent to the patent department; this constitutes a disclosure to others and also identifies the inventor. Such a record is of value t o the patent department should interference proceedings subsequently develop. The patent department copy is read by the attorneys for their information, and is then placed on file in the library where it may be consulted by any member of the organization. At times the patent department may be requested t o give a n opinion as t o novelty and patentability of a suggestion before work is authorized, but this is not the usual procedure at this stage. The idea review committee meets and considers the suggestions submitted; i t may dispose of the suggestion as follows:
If an idea is not practicable, the reasons far its rejection are stated. (If its usefulness ia doubtful, it is better to authorize significant experiments than to be didactic about it.) If an idea has not been fully developed, it is recommended that
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it be followed up experimentally by the suggestor or by some other
person or group enga ed in related work. If the experi-entJ evaluation is favorable, the suggestor is requested to send a disclosure to the patent department. A disclosure consists in a relatively simple statement of the nature of the invention, transmitted on a mimeographed form supplied for this purpose. The form calls for notebook references t o experimental work and any prior or related art with which the suggestor may be acquainted. If progress reports or literature searches have been made relating to the problem, reference to these should be included. The disclosure is routed through an assistant research director in charge of the group for his information and indication of the relative importance of the work. He then sends it to the patent department. HANDLING THE DISCLOSURE IN THE PATENT DEPARTMENT
The patent department assigns a number to the disclosure and enters a record of the disclosure in a book kept for that purpose. As far as the patent department is concerned, best practice requires that applications be prepared and filed in the order in which the disclosures are received. In order to establish diligence on the part of the inventor, it is sometimes necessary to consider the activity of the attorney preparing the case; lack of activity on the part of the attorney during the critical period for an application might be imputed to the applicant. Disclosures representing work for which applications can be prepared are generally submitted to the attorney handling related work. After conference with the inventor the attorney sometimes decides that additional experimental work is necessary or desirable", and preparation of the case may be delayed. Therefore, it is desirable that the disclosure be submitted to the patent department as soon as possible after significant experimental results are obtained. Prior art searching and library work should be done by the chemist and/or by the patent department before an application is prepared. A study of patents that are pertinent to theproblem under consideration is important; when it is really exhaustive ideas which often lead to a quicker and cheaper solution of the problem may resdt. Adequate examinations of the patented art are not possible unless the'corporate patent department has available files of all issued patents relating to the business of the corporation and directs the attention of chemists to the classes and subclasses of patents that relate to their problems. The patent attorney who is to prepare the patent application will want t o read the important literature and patent references relating to the case so that he will be able t o draft the application and claims to establish the invention in the broadest possible terms. He should also consider possible objections that the Patent Office may raise; these may require additional evidence and the facts to overcome such objections should be a t hand. SELECTING THE INVENTOR
One of the most troublesome aspects of patent practice often encountered in corporate patent departments concerns selection of the proper inventor from among a group of people who are active on the project. It is easy to apply the rule, which requires that the person who first had the probable mental conception ,of the invention leading to the successful reduction to practice is the proper first inventor, but difficulties arise because a number of persons may have devoted a great deal of effort and hard work toward bringing the problem to a successful conclusion and m&y feel that they are ignored if they are not named as inventors. The answer t o this, of course, is that the patent department applies a legal test of invention to the facts of the case. It is not concerned with weighing the quantum of personal effort which was expended by the various claimants. A consideration concerning the individual efforts contributed by various parties i~ a proper consideration for management but not for the patent de-
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partment. A clear understanding of these principles should aid in keeping the inventor problem in its proper perspective. After an application has been filed by the attor’ney, prosecution takes its normal eourse Sometimes developments require further attention by the inventor-for instance, additional comparative tests may be requested by the Patent Office and these will necessitate reopening the experimental work relating to the invention. If the project has been completed by the laboratory, major and expensive efforts may be involved. At this point the value of the expected patent protection must be considered carefully in the light of the cost of the additional experimental expense. Although large research organizations may meet additional, unexpected demands without too much difficulty, this burden can be severe for small laboratories (1). The choice which smaller organizations face is that of foregoing all patent protection on the invention and relying on secrecy alone, a course which is none too attractive in view of the obvious hazards involved.
A TECHNICAL-PATENT LIAISON GROUP Richard F. Phillips Merck & Co.,Znc., Rahway, N. J . Whereas the act of invention must always be a personal matter and concerns an individual or is the result of an idea jointly arrived a t by coactive thinking of two or more individuals, the ramifications of a single invention may become fairly extensive. In order to provide supporting data and prepare a good patent application it is frequently necessary for several people of highly specialized knowledge and skills to contribute to the work as a team. The preparation of patent applications, establishing the claims, and matters of form and general prosecution strategy are the business of the patent attorney. There is one basic requirement of the patent law, however, for which the technical man must shoulder the burden of responsibility-namely, preparation of a disclosure that is sufficiently clear and complete to enable a person skilled in the art to carry out successfully the embodiments of the invention. This is especially true in chemical inventions, which are characterized by complexity and unpredictability. Technically trained patent liaison men can usually be very helpful in clarifying hazy or contradictory points and can save attorneys and research workers much time by ensuring that nothing is omitted from the disclosure to render the method inoperative. Intermingled with the problem of an operative disclosure is breadth of claims. This question relies heavily on the attorney’s discretion, but the technical man must support the attorney by furnishing him reliable data. The attorney can then plan his original attack and know what points may be conbeded during prosecution of the application without jeopardizing attainment of the fullest protection for the invention to which the patentee is entitled. A mechanical engineer who knows his basic principles can determine, with some assurance, equivalents in structure and function of particular embodiments of a machine on the drawing board. The chemist, in spite of molecular models and quantum mechanics, cannot yet do this. Often he is dealing with compounds of unknown structure and processes that are empirical. Unpredictability and unexpected results make a good argument for invention, but they also make the definition of boundaries difficult and uncertain. All patent attorneys recognize the strategic importance of the earliest filing date in an interference. Accordingly, the qttorney should know a t the earliest date possible the true boundaries of the invention and whether its real economic value can be pro-
VoL 43, No. 11
tected by claims of relatively narrow or moderate scope. Broad claims should be backed up with very strong supporting data, extremely careful scrutiny of the prior art, and exact information on the limits of operability. If the protection of an invention demands claims of much greater scope than those supported by actual results, the best action, if feasible, is to persuade the chemists in the laboratory to run definitive experiments. It is also important to know exactly what the invention is before any disclosure is made in foreign applications. Most important foreign countries are parties to the International Convention, whose provisions allow applicants one year in which to file a foreign application, entitled to the priority date of the original United States application. If an original application, which has reached the Patent Office, contains an error, it may be corrected by amendment or by filing a continuation-in-part as the circumstances dictate. In large research organizations, composed of many technical people specializing in a number of different fields, it is helpful t o have technically trained men correlate scientific findings and furnish disclosure reports which patent attorneys may use in preparing patent applications. This service may be provided by a technical-patent liaison group. At Merck & Co. the patent liaison group is composed of men primarily trained as chemists or chemical engineers, several of whom have also had legal training. To attain more rapid progress the patent liaison man must continually act as interpreter between technical men and attorneys. Questions that are important for atent reasons often are not appreciated by the chemist in the faboratory. Often the patent attorney needs to know the background of the invention and potential trends in the field which the chemist assumes is common knowledge or of no significance. A patent liaison man is assigned to a case as soon as it appears that an invention may have been made. He follows the subsequent laboratory work and, as soon as possible, prepares a disclosure report including a literature search which is dispatched to the patent department. He stays with the case actively until the patent application is filed. Cases vary in complexity; some require considerable review during preparation both with chemists in the laboratory and with the patent attorney. The patent liaison man follows developments in the interim period between official actions and is prepared to work actively again in compiling information needed to answer the official action. The patent liaison man and the patent attorney have opportunities to suggest laboratory work that may lead to creative results. For example, a member of Merck’s patent liaison group was drawin up a disclosure on a process for purifying a product by selectivevy concentrating it by treatment with a certain class of reagents and was trying to define the class for the broadest permissible claims. Fortunately the process was a rather simple one, and the chemist doing the laboratory work was of an especially inquisitive turn of mind. He was quite willing to run an additional number of experiments. From these it was found that one reagent in the class as originally conceived was not only inoperative in concentrating the original product but was unexpectedly valuable in knocking out troublesome impurities. Thus, not only was the definition of the original class of reagents revised to exclude the inoperative species, but a new invention was made. As it developed later, this second invention was the only one actually used in production.
SELECTION OF PATENT COUNSEL Harold S . Meyer The E . F. Goodrich Co., Akron, Ohio
In selecting patent counsel, the principal choice is between an independent practicing attorney and a resident attorney or patent department. This choice is largely dictated by the volume of business involved. If the quantity of business is sufficient, general experience indicates that the advantages of economy and constant availability of the attorney for consultation make it preferable to employ a resident patent attorney or establish a patent department. Nevertheless, some large concerns prefer to rely on outside attorneys, for a variety of reasons. For example, at-
