This does not mean that copying can or should be ignored in patent cases. If the accused structure constitutes a servile reproduction of a patented product or the defendant has tried alternatives without success-the fact of the copying stands as a most impressive indication that something more than the skill of the art is involved.229 Such proof accordingly bears on the question of invention.

In one area of patent system operation the coypright approach has a great deal of merit. This is the field of design patents. Here the "skill of the art" test is especially elusive and the considerations of scientific progress applicable to other phases of patent system operation do not usually apply. The decision in Mazer v. Stein goes far to place designs within the scope of the copyright law itself 230 A statute placing the entire field of ornamental designs on copyright principles would seem the most practical way to eliminate the vagaries of applying the invention concept in this most difficult area.

When all the alternatives are considered we return to the "skill of the art" test as the only reasonably adequate general measure of what is and what is not invention. Accordingly, attention should be directed towards minimizing the controversy associated with its application, and to facilitating its practical use. In great measure the opportunity for improvement here lies more in the area of recognizing the nature of the question and the circumstances in which it arises than in looking for new formulae for its application. Even within this limited compass, however, there is reason to believe that much can be accomplished.

It is futile to look for absolute consistency between invention determinations. The fictitious man "skilled in the art" is necessarily indefinite. What one person considers to exceed his capacities another may regard as common engineering skill. This condition is not unique to the law. Rather, there are endless examples of fact issues upon which reasonable minds may differ-as well as questions that in the last analysis are decided on little more than educated guess. An example of the latter kind is found in the decisions on proximate cause in the law of torts-such as the McAllister case recently decided by the Supreme Court.231 As the Court there recognized, the question of whether the plaintiff had caught polio from the Chinese was at most a matter of "balance of probabilities." 232 The field of negligence law relies heavily upon the conduct of the fictitious "reasonably prudent man," a concept that has defied definition as stubbornly as the traditional test of invention. And in those instances where the courts have attempted to set forth positive rules-such as the "stop, 229 See e. g., Colgate-Palmolive Co. v. Carter Products, Inc., 230 F. 2d 855 (4th Cir. 1956). 230 317 U. S. 201 (1954). Cf. Continental Art Company v. Bertolozzi, 232 F. 2d 131 (7th Cir. 1956). 231 McAllister v. United States, 348 U. S. 19 (1954) ("Of course no one can say with certainty that the Chinese were the carriers of the polio virus and that they communicated it to the petitioner. But upon balance of the probabilities it seems a reasonable inference for the district court to make from the facts proved, supported as they were by the best judgment medical experts have upon the subject today, that petitioner was contaminated by the Chinese who came aboard the ship on November 11, 1945, at Shanghai. Certainly we cannot say on review that a judgment based upon such evidence is clearly erroneous. We think it was an allowable judgment of the district court, and the judgment of the court of appeals is reversed" (348 U. S. at p. 22)). Mr. Justice Frankfurter dissented on the ground that the writ should have been dismissed as improvidently granted in view of the factual nature of the issue.

232 Id. at p. 22.

look, and listen" rule enunciated by Mr. Justice Holmes three decades ago 233-the effort has proven fruitless.

With respect to these analogous issues it is frankly recognized that reasonable men may reach differing conclusions. Uniformity is not attainable. For this reason the law has long followed the formula that the finding of the trier of fact-if within the bounds of reason—is final. The invention question should be given like treatment.234

In the first instance, the question of invention arises at the Patent Office level. The patent examiner searches the prior art and rejects or allows claims in accordance with his conclusion as to whether they represent more than the "skill of the art" in relation to the prior art before him. Necessarily, there are limitations in his decision. As a practical matter the examiner is confined almost entirely to the published "prior art"-and cannot consider public uses, prior knowledge, and similar items. Many elements of evidence that may ultimately bear on the invention question-particularly items of commercial success or its lack-have yet to come into being or are known only in part at the time the application must either be allowed or denied. Also, the examiner cannot be aware of the liberty the patent applicant may ultimately take with respect to claim language or assertions of "equivalents" to reach some accused infringer. Finally, the whole determination is made on an ex parte basis, a procedure that long experience has demonstrated often leads to failure to consider the matter in the same perspective it acquires when subject to the heat of partisan controversy.

235

Plainly, the Patent Office determination should not be considered conclusive. Nor does the test that "every reasonable doubt" be resolved in favor of the patentee fairly represent the situation.2 Rather, the simple test of section 282 of the 1952 Patent Code that "a patent shall be presumed valid" most nearly conforms to the real nature of the matter.

Any generalization, however, tends to obscure a fundamental and unique aspect of the situation. A distinction must be drawn between what the Patent Office has passed upon and what it has not. To the extent that the facts are the same, there is reason to believe that the courts have been in accord with Patent Office determinations, and have

233 Baltimore & Ohio R. R. v. Goodman, 275 U. S. 66 (1927). But see Pokora v. Wabash Railway Co., 292 U. S. 98 (1934). And see Prosser, Torts 284 (1941).

234 The question of whether the step forward exceeds the "skill of the art" is necessarily a fact question. The courts have so held. See, e. g., United States v. Esnault-Pelterie, 299 U. S. 201, 205 (1936); Goodyear Tire & Rubber Co. Inc. v. Ray-O-Vac Co., 321 U. S. 275, 278 (1944); Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U. S. 271, 274 (1949). The last case contains the following passage:

"Rule 52 (a) of the Federal Rules of Civil Procedure provides in part: 'Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.' To no type of case is this last clause more appropriately applicable than to the one before us, where the evidence is largely the testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some 3 weeks, during which, as the record shows, the trial judge visited laboratories with counsel and experts to observe actual demonstrations of welding as taught by the patent and of the welding accused of infringing it, and of various stages of the prior art. He viewed motion pictures of various welding operations and tests and heard many experts and other witnesses. He wrote a careful and succinct opinion and made findings covering all the factual issues" (336 U. S. at p. 274).

Cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U. S. 147, 153 (1950).

233 The Supreme Court came close to adopting this test in Radio Corporation of America v. Radio Eng. Laboratories, 293 U. S. 1, 7 (1934). As discussed in footnote 236, infra, however, this case involved a situation where the issue was one of priority of invention and had been decided in earlier patent interference proceedings between the rival inventors.

given them respect appropriate to their status.236 On the other hand, when the facts before the court are significantly different, a new determination is being made-and the Patent Office decision may be completely honored and yet a different ultimate conclusion reached as to the question of invention. In such instances there is no reason to regard the court decisions as contrary to accepted doctrines of administrative finality, for the logical justification for such finality is largely destroyed.

One may well ask whether it is really necessary to have a patent system wherein the opportunity exists for a decision on one set of facts in the Patent Office and another set of facts in court. The answer lies in experience that has shown that very frequently the Patent Office does not locate references that later become important in court; commercial success and like factors come to bear heavily on the issue of invention and cannot be considered in full perspective in the Patent Office; and prior use and like evidence inherently is not usually available in the Patent Office. It is just as unsound today to think in terms of foreclosing judicial inquiry on the invention question as it is to think in terms of repeating the unhappy experience of the Patent Act of 1793, when Patent Office consideration of this question. was foreclosed.

A different question arises with respect to the review of district court decisions on the invention issue. Here the facts before the appellate court coincide with those upon which the lower court decision is based. Whatever may be said of the difficulties of reaching the decision on the invention question in the district court, it is certainly a fact decision of the kind that should be treated as such on review and not overturned unless "clearly erroneous."

Finally, in all consideration of the invention question the basic nature and purpose of the requirement should not be overlooked. The extent of changes over the prior art vary from exceedingly rare giant strides forward, to the common day-to-day engineering improvement. A patent system based on patents solely to the giant strides would fail of its purpose for the prospect of patent protection would be too remote to stimulate research and development effort and investment. On the other hand patents extending to simple engineering improvement would result in a hopeless multiplicity of patent rights and the system would serve to deter rather than encourage activity. Between these extremes there is a proper place for patent protection. Again, the emphasis must be upon individual fact situa

236 See Frost, Patent Office Performance in Perspective, 54 Mich. L. Rev. 591 (1956).

The interference decisions form a particularly interesting illustration of respect for Patent Office decisions. Here the initial decision is based on an inter partes proceeding in the Patent Office and there are usually no new issues and no significant new evidence when the matter of priority arises in a subsequent case on direct review of the Patent Office under title 35 United States Code, section 141 or section 146, or in an infringement suit where the defense is that the losing party in the interference was really the first inventor (35 U. S. C. 102 (g)). The Supreme Court early laid down the rule that the Patent Office decision must stand in any subsequent suit between the same parties "unless the contrary is established by testimony which in character and amount carries thorough conviction" (Morgan v. Daniels, 153 U. S. 120, 125 (1894)). The Court held in Radio Corporation of America v. Radio Eng. Laboratories, footnote 235, supra, that this rule applies in considerable measure when the litigants are strangers to the proceeding in the Patent Office. Considering the various expressions as to the presumption of validity of the patent the Court stated: "・・ Through all the verbal variances, however, there runs this common core of thought and truth, that one otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious prepon lerance" (293 U. S. at p.). It is of interest that in the Radio Corporation case the Patent Office had awarded priority to Armstrong and that it was the reversing decision of the Court of Appeals for the District of Columbia in favor of DeForest (298 Fed. 1006) that gave rise to issuance of the patent and hence was the decision the Court was relying upon.

For a recent decision squarely refusing to follow the Patent Office on the art before the Patent Office see Wilson Athletic Goods v. Kennedy, 233 F. 2d 280 (2d Cir. 1956). See also, pp. 176-185 and 287-293, hearings, October 10-12, 1955, pursuant to S. Res. 92 (reporting the results of a study by Mr. P. J. Federico of the Patent Office of 50 recent cases where patents were held invalid by courts of appeals, and showing that of the 40 cases where the patents were held invalid on prior art only six involved such holdings on the same art as was before the Patent Office).

tions and the skill of the art test-coupled with the thought that the opportunity for patent protection should be sufficiently real to give rise to the research and development competition that lies at the heart of the whole system.

Much has been said of the "standard of invention" and the high level assertedly demanded by recent Supreme Court decisions.237 Indeed, one segment of the Supreme Court takes the position that the Constitution itself embodies a particular and very severe standard in this connection.238 Yet, on their facts, it is at least arguable that the Supreme Court decisions really impose no new standards,239 and statistics may be assembled to show that current decisions are no less favorable to the Patent Office determination than those of an earlier day.240

237 See e. g., cases cited at footnote 199, supra.

238 "The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law. The Court fashioned in Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 275, à rule for patent cases to the effect that this Court will not disturb a finding of invention made by two lower courts, in the absence of a very obvious and exceptional showing of error. That rule, imported from other fields, never had a place in patent law. Having served its purpose in Graver Mfg. Co. v. Linde Co., it is now in substance rejected. The Court now recognizes what has long been apparent in our cases: that it is the 'standard of invention' that controls. That is present in every case where the validity of a patent is in issue. It is that question which the Court must decide. No 'finding of fact' can be a substitute for it in any case. The question of invention goes back to the constitutional standard in every case. We speak with final authority on that constitutional issue as we do on many others." Mr. Justice Douglas, concurring in Great Atlantic and Pacific Tea Co. v. Supermarket Equip. Corp., 340 U. S. 147, 156 (1950). Cf. Alfred Bell &Co. Ltd. v. Catalda Fine Arts, Inc., footnote 227, supra.

239 The two decisions most frequently referred to as indicating a new standard of invention are Cuno Eng. Corp. v. The Automatic Devices Corp., 314 U. S. 84 (1941), and Great A. & P. Tea Co. v. Supermarket Equip. Corp., 340 U. S. 147 (1950).

In the Cuno case counsel argued that the "skill of the art" test laid down in Hotchkiss v. Greenwood, 11 How. (52 U. S. 248 (1850)), was wrong and that "degree of invention or ingenuity is not a test contemplated by the Constitution and the patent laws to determine whether or not an invention or discovery shall receive protection." See footnote 197, supra. The sweeping statements of the opinion appear to be more in the nature of an emphatic answer to this contention than an effort to establish a new standard. Indeed, the last sentence of the opinion states that the considerations set forth in the opinion "prevent any relaxation of the rule of the Hotchkiss case," (314 U. S. at p. 92). As the concurring opinion points out, the infringement charged was quite different in construction than the showing of the patent. It should also be noted that the case came up after two circuit courts of appeal had reached conflicting opinions on validity.

In the A. & P. case the structure of the patent was the three sided bottomless frame used in supermarket checking counters. The device had enjoyed great commercial success. Nonetheless, it is in that class of articles that are of obvious simplicity and tend to evoke violent reactions-one way or the other-as to the presence of invention. In any event, the district court and the court of appeals had both concluded that "the bottomless tray is not novel," and had sustained the patent on the ground that the extension provided on the counter to receive the three-sided rack was "decidedly a novel feature" (78 F. Supp. 391) Claim 4 in suit did not refer to the extension. Claims 5 and 6 arguably referred to it, but a majority of the Supreme Court considered otherwise. Reversal followed-on the theory that what had been relied upon below to sustain the patent (the extension) was not in the patent claims. The Court added that merely increasing the length of the counter could not of itself be invention. The major discussion of the majority opinion, however, was directed to the requirement that the elements of a combination must "cooperate" to produce something unusual-a point not considered by the lower courts. The concurring opinion of Mr. Justice Douglas, famous for its sweeping criticism of the Patent Office, was joined in only by Mr. Justice Black.

Figures for the 1926-54 period are taken from p. 183, hearings, October 10-12, 1955, pursuant to S. Res. 92. Other data are taken from tabulations prepared on a generally similar basis. Due to the effects of the institution of circuit courts of appeal in 1895, the introduction of discretionary certiorari jurisdiction in patent cases in 1926, and the statistically insignificant number of cases in some periods, the above data are

While it is thus possible to discount the "new doctrinal trend," the fact remains that the sweeping language used in some of the recent Supreme Court decisions reveals in at least some measure an attempt to impose more rigorous standards upon the Patent Office and the lower courts. The statutory expression of section 103 of the 1952 Patent Code should aid in eliminating the confusion that has been generated in this fashion. The recent opinion of Judge Learned Hand in Lyon v. Bausch and Lomb 241 is noteworthy in this connection because it squarely discards the statements of the recent Supreme Court decisions as the measure of invention. While there may yet be some occasion for additional legislative declaration of policy or an amendment to the statutes, the matter is now in a state of flux offering substantial prospect that the problem will be worked out within the confines of the present statutes.

The above comments do not point to any new formula by which the invention question may be resolved. They do not even provide a hope for uniformity between invention decisions in different cases. They do, however, suggest that the emphasis ought to be placed on the factual nature of each decision in question-and that it be given a degree of finality in accord with the extent the factual basis is the same in future decision. The Patent Office decision is not and should not be final-but on the facts before the Office it certainly deserves great weight. The district court decision should be treated as a fact decision and so honored on review. And above all, there should be no confusion between what is essentially fact determination and what is law. Finally-cutting across all of these concepts the courts in many cases can find considerable light on the nature of the invention question by comparing the position of the patentee as to the prior art with that respecting asserted infringement and insisting that consistent standards be applied.

One general consideration deserves final emphasis. It should not be assumed that some overriding public purpose is served every time an excuse is found to overturn a patent. In nearly every instance the real question is not whether the defendant shall stay in business but rather whether it can make the particular structure in question or use the particular process of the patent. Experience with the decisions such as the Ray-O-Vac case discussed above-shows that a decision of patent validity is more likely to lead to desirable research effort than otherwise. More often than not such effort leads to improvements superior to that which has been patented. There may be endless points of view on the question of whether a specific change exceeds the "skill of the art"-but there should be little doubt that if the change is of the kind that a trier of fact reasonably can classify as inventive the public interest is served more by honoring the holding made than striking it down because of the doubt that is rarely absent in litigated cases.

B. THE PATENT OFFICE

The Patent Office occupies a crucial position in the operation of the patent system, for it is charged with the task of initially passing upon

not truly comparable. Nevertheless, they do show that current experience is not such a departure from the past as is sometimes suggested.

Some commentators have found that the decisions really display only a trend toward earlier and stricter views on patentability. See, e. g., Smith, Recent Developments in Patent Law, 44 Mich. L. Rev. 89 (1946). Compare Davis, The Impact of Recent Supreme Court Cases on the Question of Patentable Inventions, 44 Ill. L. Rev. 41 (1949).

241 224 F.2d 530, 543–7 (2 Čir. 1955).