the immediate adoption of a modified version of Section 103 having as its confessed purpose to lower the standard of invention and to legislatively "overrule" A.&P. and its progeny."

20

In truth, there is no place for trivial inventions in the constitutional scheme and the legislation by which the patent pressure groups seek an attempted denigration of the constitutional patentability standard is invalid on its face.

23

At the time the Constitution was adopted, there was a deep-felt need to protect private rights from state and congressional encroachments." Madison, at the Convention, admonished that "interference" with "the security of private rights and the steady dispensation of justice... were evils which had. more perhaps than anything else, produced this Convention".* Governeur Morris in the Convention stated that "Every man of observation had seen... excesses against personal liability, private property and personal safety". In a letter to Lafayette written in June 1787, Washington wrote that he had attended the Convention to determine "whether we are to have a Government... under which life, liberty, and property will be secured to us"." Madison, in "The Federalist," adverted to the "alarm for private rights which [is] echoed from one end of the continent to the other". In October 1787, Madison wrote to Jefferson that "A reform therefore which does not make some provision for private right must be materially defective". Concern that the guarantees written into the Constitution were inadequate led to a struggle for more assured protection against federal encroachments which eventuated in the amendments comprising the Bill of Rights.

These various amendments are limitations upon the authority vested in the Congress by the Constitution itself-including the "limited authority" to authorize the grant of patents for invention." Included was the Fifth Amendment which mandates that "No person shall be... deprived liberty, or property, without due process of law".

of ...

Elucidation of the constitutional standard for patentable invention accordingly entails a balancing of the objective of the patent clause with the paramount "liberty" and "property" concepts of the Fifth Amendment to which all patent laws are subservient.

In 1959 the Court restated the basic premise that "the right to hold specific private employment and to follow a chosen profession free from unreasonable governmental interference comes within the 'liberty' and 'property' concepts of the Fifth Amendment", Greene v. McElroy, 360 U.S. 474, 492, citing with approval the 1886 decision in Allgeyer v. Louisiana, 165 U.S. 578. In Allgeyer v. Louisiana, 165 U.S. 578, 589-590, the Court held: "... The liberty mentioned in that [14th] amendment means, not only the right of the citizen to be free from the mere physical restraint of his person, as by incarceration, but the term is deemed to embrace the right of the citizen to be free in the enjoyment of all his faculties; to be free to use them in all lawful ways; to live and work where he will; to earn his livelihood by any lawful calling; to pursue any livelihood or avocation,

See the "Patent Law Revision" Hearings, etc., Parts 1 and 2.

An informed Subcommittee for Patents, Trademarks and Copyrights of the Senate Committee on the Judiciary rejected the proposed amendment to Section 103 on October 13, 1971.

The "crisis" campaign continues. It may confidently be expected that the same rejected amendment to Section 103 will be reintroduced in at least the forthcoming American Patent Law Association bill.

See generally, R. Berger. "Congress v. The Supreme Court", Harvard University Press, Cambridge. Mass. (1969), p. 16, et seq.

221 Farrand 134.

1 Farrand 512.

3 Farrand 34.

Federalist, No. 10 at 54.

25 Madison Writings 27.

It is axiomatic that the authority vested in Congress by the body of the Constitution is subservient to the Bill of Rights. Nimmer. "Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?", 17 U.S.C.A. L. Rev. 1180 (1970). points out that the copyright clause is subservient to the First Amendment and states:

If the constitutional grants of power to the Congress were not subject to the limitations imposed by the Bill of Rights, then such limitations would have no meaning at all to a government whose only powers are derived from such grants." (p. 1182, n. 4).

and for that purpose to enter into all contracts which may be proper, necessary, and essential to his carrying out to a successful conclusion the purposes above mentioned.

"It was said by Mr. Justice Bradley in Butchers' Union S.H.&L. S.L. Co. v. Crescent City L.S.L.&S.H. Co., 111 U.S. 746, 742, in the course of his concurring opinion in that case, that 'the right to follow any of the common occupations of life is an inalienable right.... And again, on page 765: 'But if it does not abridge the privileges and immunities of a citizen of the United States to prohibit him from pursuing his chosen calling, and giving to others the exclusive right of pursuing it, it certainly does deprive him, to a certain extent, of his liberty; for it takes from him the freedom of adopting and following the pursuit which he prefers; which, as already intimated, is a material part of the liberty of the citizen.' It is true that these remarks were made in regard to questions of monopoly, but they well describe the rights which are covered by the word 'liberty' as contained in the 14th Amendment."

Significantly, Mr. Justice Bradley's concurring opinion in Butchers' Union adverted to "The granting of patents for invention" as one instance of a legitimate monopoly because "This is done upon a fair consideration", 111 U.S. at 763. But long prior to Butchers' Union, "fair consideration" for a constitutionally valid patent had been defined in Hotchkiss v. Greenwood, 52 U.S. 248 (1851), as requiring the disclosure of an invention exceeding "the ordinary skill in the art".25 The compelling reasons for this patentability standard were more fully explicated fourteen years before Allgeyer in Atlantic Works v. Brady, 107 U.S. 192, 199–200 (1883) (cited and quoted in 1950 in A.&P. Tea Co., supra), as follows:

"The process of development in manufactures creates a constant demand for new applicants, which the skill of ordinary head workmen and engineers is generally adequate to devise, and which, indeed, are the natural and proper outgrowth of such development. Each step forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant to a single party a monopoly of every slight advance made, except where the exercise of invention, somewhat above ordinary mechanical or engineering skill, is distinctly shown, is unjust in principle and injurious in its consequences.

"The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favors. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary pogress of manufactures....

See also Reckendorfer v. Faber, 92 U.S. 347 (1876); Concrete Appliances Co. v. Gomery, 269 U.S. 177 (1925); Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477 (1935); Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350 (1939); and Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941), as well as Graham and Anderson's-Black Rock, supra.

When the paramount right of every citizen to "earn his livelihood by any lawful calling", and in that pursuit "to be free in the enjoyment of all of his faculties", is contrasted with the "limited authority" conferred by Article I, Sec. 8. Cl. 8 to grant private monopolies but only "to promote progress in science and the useful arts", it is apparent that there is no place in the constitutional scheme for trivial patents. Such patents not only run afoul of the Fifth Amendment, but also bring progress in the useful arts to a standstill and thus defeat the objective of the patent clause itself.

2 The "ordinary skill in the art" test was not new in 1851 but represented only a concise expression of the same patentability standard which had been applied from the inception of the patent system. As stated in Graham, supra:

"Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business, merely distinguished between new and useful innovations that were capable of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson..." 383 U.S. at 11. Section 2 of the 1973 Act provided:

"... And it is hereby enacted and declared, that simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery."

Exclusive patent rights are constitutionally reserved for the truly creative and unexpected advances by which progress in the useful arts is clearly promoted.

B. The Necessary Role of Actual Inventors

One of the substantive changes which has been included in every major patent bill since 1966, including S. 1321 (see §§100 (d), 111, 115 and 116), is the provision for the filing of a patent application by the mere assignee of the alleged actual inventor. These provisions substantially depart from present and all prior practice pursuant to which the inventor must make oath or solemn declaration to his personal inventorship of the disclosed and claimed subject matter at the time of filing the application.

There has always been some question among lawyers as to whether the provisions for assignee filing are constitutional. Though carefully drawn to require inventor identification and an inventor's oath before the application issues and hence to preserve some surface gloss consistent with the mandate of the constitutional patent clause that congressional power to establish a patent system is limited in that the patent right may be secured only to "inventors", these provisions have all raised some significant problems. In the first place, opportunity for gross error in the original specification is enlarged exponentially in a system where the true inventor does not read the description of his invention until after his application is on file. Since S. 1321 [Sections 120 (c); 132(d); and 201(a)] is properly consistent with present law in stringently prohibiting an applicant from introducing "new matter"-i.e., matter that was extrinsic to the original disclosure and at the same time retaining his original filing date, whole new problem areas must be anticipated if assignee filing is adopted. Thus, in some cases, an application filing date may be lost because the inventor finds the original disclosure incorrect and inconsistent with what he in fact originated. In others, the inventor may refuse to make oath to an application inconsistent with what he did, and the result may be litigation between assignee and inventor. Other inventors, though knowing the application describes subject matter they did not invent, may make perjured oaths rather than battle with the assignee thus rendering the patent invalid as a matter of law.

In this connection, it should be noted that assignee filing as proposed in Recommendation V of the 1966 Report of the President's Commission on the Patent System was designed only to complement the since wholly rejected first-to-file provision of Recommendation I-and both were implicitly a part of the Commission's overall objective of attaining greater uniformity and compatibility with the patent systems of other major industrial countries." It is reasonable to assume that the Commission members had in mind a frequent European plaint that the need to obtain the inventor's signature before filing sometimes occasions such delay in filing a United States counterpart to an already filed foreign case that the priority date available under 35 U.S.C. 119 is lost, and that they believed assignee filing would correct this situation. Since the Commission's working papers are not available to the public, it is not known whether the new problems consequent from assignee filing were considered at all-and it is to be doubted that the effects of assignee filing independent of a first-to-file system were assessed.

ever

From the very problems that are immediately implicit in assignee filing, it is apparent that adoption of this expedient would necessarily invert the importance of inventors (assignees) and inventors in the statutory scheme.

The Commission particularly said as to assignee filing, inter alia, that "The present patent act requires (with specified exceptions) that the inventor, at the time of filing, must sign the application and make an oath or declaration that he made the invention. Occasionally, inventors are unavailable or unwilling to sign an application immediately after it is prepared. Moreover, it is sometimes difficult to determine the identity of an inventor at the time the application is prepared. Delay in complying with the requirements has resulted in loss of rights to the application owner. Such delay would be more serious when the effective filing date is treated as the date of invention.

The intent of this recommendation is to simplify the formalities for filing an application by allowing the owner of the patent rights to sign and file the necessary papers. Many detrimental delays thus would be avoided.

"Before publication of the application, however, the assignee must provide both a declaration of originality and a specific assignment from the inventor to safeguard the interests of the inventor and the public..." (pp. 14-15).

From henceforward the investor would dictate even the subject matter to be covered and the inventor, unless he were exceedingly strong willed or independently wealthy, would be at the economic mercy of the unscrupulous investor. Moreover, a particularly pernicious provision originally embodied in S. 643 has been perpetuated in S. 1321-to wit, §116(b), which on its face sounds innocuous and even efficient, but would actually result in underminding the inventor's importance and denigrating the concept of prior art as expressed in Sections 102 and 103 of S. 1321, consistently with statutes extending back to 1790 and precedent that finds support in the writings of Thomas Jefferson, first administrator of the patent system under the 1790 Act. Specifically, Section 116(b) provides that where an application names more than one inventor "it shall not be necessary for each person named as an inventor to be a joint inventor of the subject matter asserted in any claim". Present law requires that all claimed subject matter in a given patent application be invented by all named inventors and implicitly requires that subject matter not commonly invented by all of them be presented in a separate application. As so presented and claimed in a separate application having a different inventive entity, this subject matter is then independently evaluated under 35 U.S.C. 102 and 103, inter alia, for novelty and unobviousness over prior filed applications of other inventive entities within the same research team. As acknowledged in an article appearing in the August 1973 issue of the Journal of the Patent Office Society,30

"Our law has previously been based on the concept of individual inventorship. Consequently the law at present recognizes ownership by an employer only after identification of a particular inventor or group of inventors. In the case of major research programs requiring team effort of a number of people this means that the total accomplishment generally has to be divided up into parts each associated with a specified inventor or group of inventors. Patentability of the ultimate achievement of the team is then not based on its [overall] importance and unobviousness, but on a decision as to whether any particular part of it was obvious from the last preceding step made by a different individual member of the team." (p. 520)

This actual practice under present law gives the public an immediate free right to use those steps which represent trivial advances. It is the only practice consistent with the mandate of the Constitution "to promote progress in science and useful arts" by conferring exclusive rights upon inventors.

What §116(b) would do is to permit a monopoly over all the fruits of a research project in one giant multiclaim patent filed by the corporate assignee, with all team members named as its "inventors" even though some may have participated in inventing the subject matter of only one claim directed to subject matter obvious relative to the first step advance.

The result of $116(b)-a result greatly desired by those who would sub silentio rewrite the constitutional patent clause to substitute "investor" for "investor"-would be to afford to corporate research teams far more comprehensive patent coverage than an individual inventor could hope to obtain and to divest the public of the immediate right to free use of trivial or obvious advances over the invention covered by a basic patent. The individual inventor will be particularly prejudiced because his work at each step of a development would continue to be evaluated under Sections 102 and 103 against all prior art, including his competitors' interim improvements upon his basic patent. The corporate research team, on the other hand, will be able to immunize individual parts of its work from rejection over earlier completed parts and at the same time to blanket the whole field with a patent. Not only would business be enabled to monopolize great chunks of technology in a way and to an extent not permitted by present law, but a premium would be placed upon the size of the corporate investment and resultant research team in direct derogation of the constitutionally paramount public purpose of the patent laws.

In short, the provisions for assignee filing open a varitable Pandora's box of complex and difficult problems having constitutional ramifications. The entire subject should be carefully reevaluated, particularly insofar as it is inclusive of a proposed provision of the ilk of Section 116(b).

30 H. Meyer, "Obvious' Differences-What Should the Points of Reference Be?", Vol. 55, No. 8, J. Pat. Ofc. Soc'y (1973), p. 516.

IV. CONSIDERATION OF SPECIFIC SECTIONS OF 8. 1321

The preceding portions of this statement afford a proper context in which to consider the specific sections of S. 1321 particularly at issue at these hearings. It is believed self-evident that all of these sections substantially as presently articulated are essential if the patent system is to function in a manner consistent with its only legitimate purpose.

A. The Public Counsel

For the first time in the history of the patent system, S. 1321 would provide for an independent "public counsel" expressly charged with the responsibility for insuring that "high quality patents which meet the statutory and constitutional criteria therefor issue from the Patent Office". In the past there has been no individual with such a responsibility-and the agency product has been poor. The present Patent Office Solicitor performs no similar function, is answerable to the Commissioner and the Commerce Department rather than the public, adheres to the false philosophy of the Patent Office and has the duty of total defense of whatever position, right or wrong, the agency may take on any issue. Only through the mechanism of an independent advocate free from the restraint presently imposed by the Commerce Depart ment and the organized bar upon the Patent Office can it be insured that only constitutionally acceptable patent monopolies are granted. A particularly important provision of S. 1321 authorizes the public counsel to intervene at his own discretion at any stage of any Patent Office proceeding. It should be recognized at once that any limitation upon this discretion would defeat the primary purpose of the public counsel. For example, should the latter be permitted to intervene only when called upon by the Commissioner or an examiner to do so, the very evils which it is the purpose of these provisions of S. 1321 to correct would continue unabated.

B. The Establishment of the Patent Office As An Independent Agency

The establishment of the Patent Office as an independent agency is essential to preclude the present undue and unacceptable influence of the business oriented Department of Commerce upon the Patent Office function. Indeed, the establishment of the Patent Office as an independent agency strongly militates in favor of the adoption by the agency of a public interest oriented stance and thereby complements the proposal for establishment of the office of public counsel within the agency. In addition, independence of the agency may serve to promote greater stability in the administration of the agency-and, it is to be hoped, in attracting an administrator from outside the patent field who has no bias for or commitment to the present patent lobby.

C. Public Adversary Proceedings

S. 1321 wisely provides for public adversary proceedings consequent from the intervention of any interested party at any stage of any Patent Office proceeding. By this means the ex parte secret solicitation of private patent monopolies is terminated. For the first time the public can be assured of its right to be heard prior to the grant of any patent which purports to compromise its rights. These provisions, however, will be meaningful only if the salutary complementary provisions of $122 which guarantee the prompt public availability of all patent applications are concurrently enacted. Public adversary proceedings only after an initial agency decision of allowability would be of minimal value if any; the agency having made its determination of patentability cannot reasonably be expected to change its position at the behest of a third party. As any experienced lawyer knows, an attempt to induce a judicial or quasijudicial body to change a decision it has already made is an uphill struggle with only a small chance of success. The only real result of such an endeavor in the Patent Office would be prejudicial to the public in that the tenuous presumption of validity under Section 282 of the statute would be reinforced because the Patent Office would have "considered" and made public record the opposer's prior art references, evidence and arguments. In short, the predictable net consequence of an adversary proceeding only after a primary agency determination of patentability would be to aggravate the burden on already overworked courts in patent cases by artificially reinforcing the statutory presumption of validity of what are all too frequent worthless patents.