8
WHAT THE CHEMISTRY TEACHER SHOULD KNOW ABOUT PATENTS ROBERT CALVERT New York, New York
Patentable classes INPROPORTION to the nearlv universal nked, the future Ezamples chemists and chemical are taught'less of pat- C o y f ; o of matter Water-soluble vitamin A composition Making nylon or scrambling radio ent law probably than of any other subject. Those sienals Cryhllizing machine or corn hmwho are to succeed in their chosen profession and actu- Machine vester push back the frontiers of may reason- Article of manufacture Asbestos shingle or cigsrette lighter ably expect to make inventions. They have a right to Ornamental design Pattern of table silverware some education in advance with respect to patents, from Plant produced asexud1.v Sport.variety of apple tree teachers having a speaking acquaintance-at least with All other classes of subjects are unpatentable. Such the subject. excluded subjects are systems of doing business, seeds, For this reason, the teacher should know some patent plants produced sexually, as by cross pollination, law and, first of all, what types of discoveries are Pat- treatment of the human bodv, new use of an old comentable. position without any modification except as a method, production of fissionable material and use of it or of PATENT HISTORY atomic energy in a military weapon, abstract principles As early as the third cent,ury B.C. the importance of of nature, and mathematical formulas. incentives for even simple inventions was recognized. The additional requirements are as follows: I n Sybaris, one of the towns of Southern Italy, a con(1) Utility for a purpose neither immoral nor injufectioner or cook who "invented any peculiar and ex- rious to the health or good of society. Utility ordinarcellent dish" received the right t o make the dish ex- ily is easily proved. A new chemical compound will be clusively for a year, as an inducement to others "to labor understood to have utility as an intermediate in the in excelling in such pursuits" (1). manufacture of another compound at least. A toy has From such a rational beginning, the patent system utility. So does a cosmetic, in the sight of the law. degenerated into abuse in barbarian lands. For cen- The green fluorescence of a lubricating oil of a large turies, British monarchs, for example, issued patents on manufacturer, on the other hand, was questioned. Was almost any right they wished to bestow. Henry 11, it useful? The fluorescence was visible to the buyer as after 1100 A.D., granted to a picturesque Irish outlaw a identification but served no function during use of the patent on the right to raise a volunteer army in Britain oil. However, utilit,y was finally held to be present. to fight in Ireland (2). Queen Elizabeth issued to A method of manufacturing a useful article or composicrown favorites patents on such old products as wheat tion has utility. starch and playing cards (3). ( 2 ) NoveUy or newness over all that was previously Such abuses disappeared largely with enactment of known. the Statute of Monopolies in 1623. This in effect (3) Technical requirements as to dates. To be patentlimited the granting of patents to inventions or new able, t o an applicant, the invention must not have been: manufacture within the realm. (a) known or used by another before the date of inThe United States and also most foreign countries vention by the applicant. now require both newness and invention. (b) published in the United States or abroad or in The United States Constitution (4) gives to Congress public use in the United States for more than twelve the power "to promote the progress of science and the months before the date of filing of the United States useful arts by securing for limited times to authors and application for pateut. inventors the exclusive rights to their respective writings (c) patented in a foreign country on an application and discoveries." The period of time set by Congress filed more than twelve months (six months in cases of for inventors is 17 years from the date of issuance of designs) in advance of the United States filing date. the pateut. The purpose is encouragement ~f inven(4) Invention. Mixing sugar with a material to tion. sweeten it is not invention; the result is obvious. Protecting a material against oxidation by admixing sugar, REQUIREMENTS FOR PATENTABILITY on the other hand, is invention if such protection was A principal feature of our present patent laws is the previously unkn0i.n and particularly if the result is limitation of subject matter to be patented to the fol- contrary to what was to have been expected. Prescriplowing classes: tions, recipes, and those other compositions in which
NOVEMBER, 1931
each ingredient serves only its usual function are not inventions. To be invention a discovery requires the exercise of ingenuity above the reasonable skill of the worker in that art. TESTS FOR INVENTION
Invention defies accurate definition. After thousands of decisions on invention, it remains still as mysterious as that ever-elusive luminous body rising through the fog above the moor, the tantalizing will-o'-the-wisp that many claim to have seen but no one has either apprehended or comprehended. Invention is in reality a discovery that i s unobvious to the expert i n the art. Perhaps the greatest of all inventions is the scientific method. Within the walls of the research laboratory, the individual rises to heights of creativeness heretofore unapproached (5). As a result, the requirement "unobvious to the expert in the art" is continually rising, hand in hand, with the increasing skill available for making inventions. As tests for invention, the inventor should ask himself the following: Does the discovery produce a result unobvious to the mythical "expert in the art" knowing all that has gone before but possessed of only usual reasonable experimental skill? For invention, the answer must be "Yes." In case of doubt as to the above, would this expert have been expected to try what the inventor has done and, having tried it, to have found the same result? The answer must be "No." Has there been long delay in meeting a public need after the necessary materials became available? Has there been commercial success where others have failed? Affirmative answers t o these two questions are indications but not proof of invention. They cannot swing the balance t o the side of invention when invention, for other reasons, is considered clearly absent (6). Improvements. Nearly all patentable discoveries are improvements on something previously known. Examples are the argon filled light bulb over the previous vacuum bulb of Edison, one variety of rayon over another, plasticized lacquer films over unplasticized, ethoxyethyl esters over the corresponding ethyl esters, and television over radio, although TV uses many of the radio techniques and patents. To be patentable, the improvement must show an unexpected advantage. New Use. Consider the case of a recently discovered insecticide, AB, of epoch-making importance. The compound in crystal form was old. To claim "An in, sectieide consisting of the compound AB" is not permissible as the law has been recently interpreted (7). For patentability of the new use, it was necessary t o add after "compound AB" the following: "in the form of a powder and a diluent therefor" (8). The compound had not been previously powdered or mixed with a diluent and the inventor's contribution was so outstanding
589
that only slight modification of the old composition mas required to make the use as insecticide patentable. A new use frequently is patentable as a method. Thus the use of the compound AB in any formmight have been claimed as follows: "The method of killing insects which comprises contacting them with the compound AB." Substitution of Materials. As to substitution of materials, the incandescent light cases provide a series of decisions to the effectthat substitution of materials may constitute invention. Each of the folloming changes in turn were held to be invention: platinum for carbon filaments in the light bulb, pressed tungsten wire for platinum, and wrought tungsten for pressed tungsten. The changes gave an added function such as longer life, lower cost per candle power, and increased brillia&cy. Likewise, in make and break contacts for automobile ignition systems, change of material to tungsten mas held patentable; tungsten contact points, in oxidizing, give a coating that shakes off during use of the automobile so as to expose a fresh surface continuously. Would it be invention to substitute steel by stainless steel and find only decreased corrosion, low melting paraffin by a higher melting paraffin and find only that the resulting composition has a higher softening point, or cotton fibers by asbestos and find only decreased flammability? The answer, of course, is "No." Omitting or Adding an Ingredient. Subtracting or adding to a composition or other class of subject is frequently invention. Assume that removing carbohydrate from a hormone is found to be necessary before the hormone is dissolved in a solvent and emulsifier. A patent cited by the Patent Officeagainst the application for patent on such a method teaches, let us say, the necessity of adding carbohydrate before solution in the same solvent with a somewhat different emulsifier. The discovery here of the benefit from removing the carbohydrate is contrary to the teaching of the art. It is invention. Adding an ingredient also is invention when the result produced is not obvious. Adding oat extract to ice cream is not invention if the addition gives only an oat flavor. But the oat extract also prevents development of rancidity in the fat present. Such a beneficial property was not t o have been expected and its discovery when made was invention. Proportions. Proportions of materials used provide a basis for patentability when the proportions are critical. This is true particularly when the difference from previously used proportions is large and a differentfunction is served by the new proportions. In concentrating minerals by flotation, change in the proportion of frothing oil from the 4 per cent of oil previously used to "a fraction of one per cent" came before the Supreme Court. The use of the smaller proportion of oil was more economical. Also it caused the minerals to float instead of sink as in the earlier process. The Court held the patent valid (9).
JOURNAL OF CHEMICAL EDUCATION
590
Untried Inventions. These are patentable. One who speculates only, however, may miss the most important point of novelty that experiment would reveal. PATENT POLICIES
When a large investment is to be based on a discovery of doubtful patentability, it is good policy to file the application while continuing experiments to find some unexpected result, even in a secondary feature. If the product is a fireproof blanket, for example, and the fireproofness was to have been expected, mildew resistance, although of relatively minor importance, may be the unexpected result giving patentability. On the other hand, if a product has excellent patentability but poor prospects for use, it should not be patented unless funds are plentiful. Publication for a year before filing an application is a bar to pabenting in the United States. Publication for a single day is a bar in many foreign lands. Policy as to filing both domestic and foreign avvlications should be determined, therefore, heforepubl&ation. The proposed publication is best submitted to the patent attorney before it is released. He will note especially whether the chemist has made the development seem so logical as to destroy the lack of obviousness necessary for patentability. To have stumbled onto something by accident or found an unexpected result may be the last act that the chemist would like to admit. Yet this is an excellent route to patentable invention. Consider the case of Charles Goodyear. The proper manner of describing the circumstances of his discovery of rubber vulcanization would have been about as fol-
lows: "I had been trying unsuccessfully for many weeks to obtain a hard rubber by exposing t o sunlight a mixture of rubber with sulfur (10). Only slight hardening occurred. By accident I dropped a sheet of the rubber and sulfur mix on a hot stove. To my surprise, the sheet was cured." CONCLUSION
Invention did not stop with Charles Goodyear. I t is proceeding a t an increasing rate. Knowledge of the larv of inventions is more vital for technical workers now than ever before. The leaders in education as well as industry should impart to young men that patent consciousness which is so conspicuously lacking in most new graduates. These leaders, knowing the fundamentals here stated, should also be able to create a desire to learn more of this interesting and important subject. LITERATURE CITED RICH,G. S., J. Patent OJice Soe., 24, 159 (1942). DICKENS. C.. "Child's Historv of Zneland." HILT ON,^., ' ~ M 0 n 0 ~ 0 1 ~"~he~nc~clopoediaBritanniea," "in 1938, Vol. 15, p. 730. U. S. Constitution, Article I, Section 8. KAEMPFFERT, W., N m York Times, Nov. 1,1932; HOWARD, F . A., Chemical Digests, 1948, No. 2, p. 3. Jungersen versus Ostby and Barton, U . S. Snpreme Col~rl Reports, 335,560 (1948). InreThuau, U.S . Patents Quarterly, 57,324 (1943). MG-ELLER. U. S. Reissue Patent 22.922 (19471. Minerds 'separation versus ~ y d e ,U. S . ~ u p r e m eCanrt Repmts, 242,261 (1916); 250,336 (1919). ABBOT,C. G., Ann. Rept. Smithsonian Inst., 1944, 318.
