did not themselves invent it, nor if the invention has been abandoned, nor if any of the following prior art exists: (a) the invention was known or used by others in this country, or patented or described in any printed publication in this or any foreign country, before the invention was made by the named inventors; or (b) the invention was patented or described in any printed publication in this or any foreign country or in public use or on sale in this country, more than 1 year before the date of the application for patent in the United States; or (c) the invention was described by another in an application for patent filed in the United States before the invention was made by the named inventors, and issued as a patent; or (d) the invention was first patented or caused to be patented by the applicant or his legal representatives or assigns in a foreign country before the date of the application for patent in this country on an application filed more than 6 months in design cases or 12 months in other cases before the filing of the application in the United States; or (e) the invention was, in fact, made in this country by another, who had not abandoned it, before it was made by the named inventors. In addition to the foregoing, I would like to comment on proposals to amend the bill by replacing the word "abandoned" by the phrase "abandoned, suppressed or concealed." I would like to urge most emphatically that this not be done, since the words "suppressed or concealed" have been used by judges to characterize certain acts as being tantamount to abandonment, but, if imported into the statute, would have far greater and entirely unintended effects in penalizing inventors who follow the normal practice of developing their inventions in secrecy. In conclusion, I wish to commend those who have devoted so many hours to work on this bill, for the excellent results, and to urge that it be approved with such corrections as may be needed to make it say exactly what it is intended to say. DEAR MR. BRYSON: I am writing to you to give you my wholehearted support of bill H. R. 3760, a bill to codify the patent laws of the United States. I have carefully studied this bill, and I sincerely believe that it is far better than the existing statutes. I note with particular interest section 103 in which the obviousness of subject matter is made the test of patentability, and I believe that this definitely improves the situation. In my opinion, the Supreme Court has by its recent decisions taken a long step toward ruining our patent system, and I believe that this bill, if enacted into law, will aid in curing some of the judicial misconceptions about the purpose, scope, and beneficial results of our patent system. While I do not know if it would be practical, it occurs to me if the bill could contain as a sort of preamble a statement of the sense of Congress to set forth the intent of the act that this might have some beneficial effect on its construction by the Supreme Court. It is amazing indeed to all who are familiar with the subject, as I know you are, that patents are treated so differently from copyrights when both stem from the same clause of the Constitution. The only answer I can think of is that while judges do not invent they do write books. It must. be a subconscious reaction which prompts them to treat the two classes of property so differently. I call your attention to the obvious error in the use of the word "of" instead. of "or", section 242 (4). Other than this formal change, I have no suggestions to make and certainly wish to congratulate you on a fine job. Let us hope that the bill will pass because I for one sincerely believe that it will be to the best interest. of the country for this to become law. Respectfully, JENNINGS & CARTER, By HUGH P. CARTER. Hon. J. R. BRYSON, GRAND RAPIDS, MICH., May 8, 1951. House of Representatives, Washington, D. C. DEAR SIR: I have a copy of the bill H. R. 3760, which was introduced by you and referred to Committee on Judiciary. At the present time the last sentence of section 103 that "Patentability shall not be negatived by the manner in which the invention was made" is an important matter which unquestionably should be in the bill. In addition, and perhaps supplementing it, it is believed that the matter of looking at or considering invention and patentability should be done objectively and not subjectively. When considered objectively, the test is, What did the invention do? When considered subjectively, which is the way most theorists and impractical men want to do the job, it is based upon the mental attitude of the individual, the judge, or the Patent Office examiner. Even the best-qualified cannot do justice when affirming or denying patentability subjectively. Some years ago, I believe in the first term of President Roosevelt, a committee was appointed which made a report recommending the objective method. I do not know where it could be introduced into the statute, but additionally I believe that it should be put into the statute appropriately the thought that a valid patent is property and not a monopoly. A valid patent must have as a basis creation of something new which did not exist before. Analogous to the building up of valuable property by hydraulic dredging, for example, to fill in swampland along a river, lake, bay, or the like, such property when created should belong to the creator. There is no question ever raised as to monopoly when real estate is created. But somehow through false propaganda it is the belief of many-and in the many are several of the judges who pass upon patents that an owner of a patent is to be treated as any other monopolist. This is based upon the fact that the owner of a patent has a right to exclude others from practice of his invention. Seemingly this right to exclude in the case of patent property is considered a monopoly, with all the odium which goes with the name; but right of all other property, either real or personal, to exclude others-in other words, to monopolize it is perfectly right and justified but not in the case of one who creates through invention valuable patent property, which is no more an odious monopoly than a farmer who owns 80 acres of land is, to all people except Communists and their helpers, a monopolist because of his right of exclusion, lasting forever to exclude others from his farm. Yours very truly, FRANK E. LIVERANCE, Jr., Associated With Laurence, Woodhams, Mills & Price. TOLEDO, OHIO, May 9 1951. In re H. R. 3760, a bill to recodify the patent laws, April 18, 1951, referred to the Committee on the Judiciary. Hon. JOSEPH R. BRYSON, Chairman of the House Committee on Patents, Washington, D. C. SIR: There is appreciated the supply of copy of the above, which forwarding is understood as submitted for comment from here. Page 9, section 102 (a), line 1. before "known" it is suggested there be inserted "publicly"; otherwise, it would seem that one having the know-how could keep such indefinitely from the public and thereby failing to promote the useful arts purpose of the patent laws. Unless "publicly" be inserted as above proposed, the secret operator who does not choose to let the public have the know-how after 17 years, or at any time, is thus enabled to stand in the way of protecting the one who is willing to take out a patent for the property-right term, thereafter leaving such open to all. Under this section, is it not proper to identify Patent Office-published Abstracts of Applications of no anticipation standing prior to such publication, regardless of how long prior thereto filing may have occurred. Section 103, delete all but the last sentence. This term "Obvious" opens the door for destroying all patent-invention property. The requirements of a patent applicant are that the disclosure made shall be "Obvious"; i. e., in such explicit detail that anyone who is skilled in the art, by perusing thereof, may carry through the invention at the time. The obvious support required to obtain the property right is by this proposed enactment blasted into a nullity. Page 10, section 202, second paragraph, line 3, change "grant" to "filing." Of course, the new claim developed for the reissue should have property right attach thereto only from the grant of the reissue deed, to which date the infringer is clear of liability. Quite frequently a patentee notes that a later-issued patent to someone else contains claims which the earlier patentee may rightly make as a prior inventor. Surely it is not the purpose of Congress to reward the second to operate clear of the property-right award in the reissue. Filing date of original should have like status as continuation (sec. 120) and divisional (sec. 121), and not give interferant and all others, active prior to reissue new claim grant, a noninfringement status. Otherwise, this H. R. 3760 is approved as desirable, and more so than Eightyfirst Congress' H. R. 9133. Respectfully, COMMITTEE ON THE JUDICIARY, House of Representatives, Washington, D. C. GEORGE E. KIRK. SHEPHERD & CAMPBELL, GENTLEMEN: This is in reference to H. R. 3760, a bill to revise and codify the laws relating to patents. I wish to suggest the following modification be made in the bill by adding sections 103a and 103b to read as follows: "103a. A case of patentability shall be deemed to have been established when the device of the application achieves a new and useful result, which no single prior device is capable of producing and which result goes beyond mere increased excellence of workmanship. "103b. A case of patentability shall also be deemed to have been established where a new assembly and relationship of parts accomplishes an old result in a markedly more facile economical and efficient way and especially where a marked saving in time or labor by the user results." My reasons for urging this modification are as follows: Section 103, as proposed in the bill, leaves the grant or refusal of a patent too much to the whim of the Patent Office examiners. What one examiner would deem to be "obvious" another might deem to rise to the dignity of invention. It is highly desirable to lay down some positive rule rather than a negative one, if possible. Just as no one would plant an orchard and prune and spray and cultivate the same through the early years of growth if Tom, Dick, and Harry could appropriate the fruit when the orchard came into bearing, so no creator of a new device will go to the very great initial expense of putting a new device on the market and building up a demand for it if the business pirate can then step in, have dies made from his device, and cut his market to pieces. This Nation has grown great largely because of the hundreds of thousands of small businesses built up through the activities of the American inventor, and all doubts should be resolved in his favor. If the old and known devices are just as good as his, then let the infringer stick to them. If they are not as good, to the extent that the purchasing public consistently demands the new article, then that should be sufficient to show that a nonobvious thing has been done. It must be borne in mind that the patent examiner looks at patent applications with eyes instructed by the applicant's work, and the tendency is strong to dismiss with the wave of the hand that which might represent many days of work and experimentation and the expenditure of large sums of money. That such tendency exists has repeatedly been recognized by the courts, and the more learned and experienced the judge, the more likely is he to recognize that fact. See Faries Mfg. Co. v. Brown & Co. (121 Fed. 547): "The eye that sees a thing already embodied in mechanical form gives little credit to the eye that first saw it in imagination, but the difference is just the difference between what is common observation and what constitutes the act of creation. The one is the eye of inventive genius; the other of the looker on after the fact"; and International Tooth Crown Co. v. Richmond (30 Fed. 775) : "It is not difficult, after the fact, to show by argument how simple the accomplishment was, and by aggregating all the failures of others to point out the plain and easy road to success. This is the wisdom after the event that often forfeits invention, and levels it to the plane of mere mechanical skill." Mr. Justice Grier, one of the ablest patent jurists this country has ever had, in Livingston v. Jones and Adams v. Jones (1st Fischer 526 and 531), said that the patentee of the earlier patents "came so near the patented device or machine that they might have discovered it if they had only thought of it.” In Sickles v. Gloucester Manufacturing Co. (1st Fischer 234), Mr. Justice Grier said: "But it is not an unusual case, even among learned engineers, to see a thing after it is done, which never occurred to their minds before. I am disposed to distrust that wisdom which succeeds the event. Respectfully submitted. FRANK G. CAMPBELL. LAFAYETTE, IND., May 22, 1951. Re H. R. 3760, patent codification. Hon. JOSEPH R. BRYSON, Chairman, Patents Subcommittee, Judiciary Committee, DEAR CHAIRMAN BRYSON: As a member of the American Patent Law Association, I have voted in support of recommendations of the APLA committee in regard to patent codification. It is important to minimize controversy, not only in your committee hearings but also in the functioning of the patent system. The APLA committee's recommendations that the courts maintain a hands-off policy as regards disputes amongst joint patent owners by prolonging the established rule that a joint owner can grant licenses exemplifies this desiderata of minimizing litigation by relatively unambiguous, though sometimes unjust rules. The likelihood of patent litigation could be greatly reduced, and the cost of what patent litigation did occur could be significantly lowered, by eliminating the obsolete public-use defense. Under modern conditions, any public use of significance is described in printed publications. It should be the public policy to encourage the publication of anything susceptible to public-use interpretation instead of promoting what is judicially classified as "public use" but which for practical purposes is substantially secret. Since starting your patent-codification work several years ago, you probably have not encountered significant opposition to what should be your guiding principle that the infringer with unlimited funds should be given no advantage for invalidating a patent not available to a cautious businessman studying the advisability of investing large sums in a patent. For the same reasons, literature search standards should be imposed upon the printed publications invalidating a patent. Foreign newspapers, nonanalogous textbooks, fantastic fiction, etc., so remote from a businesslike literature search, should not benefit the infringer. Accordingly, I urge that sections 102 (a) and (b) be revised. I have underlined the essence of my proposal: (a) The invention was, in this or any foreign country, begore the invention thereof by the applicant for patent, patented or described in any printed publication discoverable by professional literature searchers using the diligence appropriate to evaluating the wisdom of purchasing a patent, or (b) The invention was, in this or any foreign country, more than 1 year prior to the date of the application for patent in the United States, patented or described in any printed publication discoverable by professional literature searchers using the diligence appropriate to evaluating the wisdom of purchasing a patent. My suggestions could probably be incorporated in the bill without arousing controversy among the patent bar. If, however, substantially these same proposals have been urged, thoroughly investigated, and vigorously opposed by significant segments of patent specialists, it might be more expedient for your committee to ignore my belated recommendations. Accordingly, I am submitting these comments to you, while encouraging you, through my vote in support of the recommendations of the APLA committee, to pass the recodification without extensive changes in H. R. 3760. Respectfully, JOHN EWBANK. Re patent bill H. R. 3760. Hon. JOSEPH R. BRYSON, House Office Building, Washington 25, D. C. NEW YORK, N. Y., June 21, 1951. DEAR MR. BRYSON: This bill contains some very troublesome clauses which ought to be well considered in their implications before the bill is enacted. In its present form, the bill represents the complete destruction of the patent system, if I understand the implications of the bill correctly. In order to make this clear to you I will explain it very briefly: 1. The harsh attitude of the courts toward patents threatens to destroy the rewards of research by giving developed inventions, by court action, to the first person who is willing to seize them for profit. 2. This unfortunate severity has driven research organizations to contemplate the abandonment of the patent system and the institution of a policy of secrecy. This is simple self-defense. 3. Paragraph 102G of the patent bill goes beyond this right of secrecy, permits every research organization to keep its inventions secret and then makes those secret inventions an anticipation for any similar patent granted to, an inventor who is willing to publish his invention under the provisions of the patent law. 4. At present, inventions kept secret do not anticipate those which are made public under the patent system. This paragraph adds to the prior art every invention which has been secreted in all the research organizations and will destroy the patent system by making the patents of such precarious nature as to be worthless. 5. The research organizations which contribute their funds to the development and well-being of the Nation are entitled to protection, but that protection should come from a just enforcement of patents against infringers. Very truly yours, JOHN L. SEYMOUR. CHICAGO, May 18, 1951. Re H. R. 3760 (Bryson) Patents. HOUSE JUDICIARY COMMITTEE, House Office Building, Washington, D. C. GENTLEMEN: Section 103 (p. 9) is considered objectionable as tending further to confuse the question of what constitutes patentable invention. It is recommended that the section be (a) deleted; (b) amended to read as follows: "SEC. 103. CONDITIONS OF PATENTABILITY.—A patent may be obtained provided the invention is not identically described or disclosed in the prior art set forth in section 102 of this title, and provided that the differences between the subject matter sought to be patented and said prior art are such that the subject matter as a whole could not be reproduced without modification of the prior art as it existed at the time the invention was made." Proposed section 103 purports to codify (without clarifying) a theory of case law which is responsible for a great deal of confusion in the administration of the patent law, i. e., What is mechanical skill? What constitutes “mechanical skill" is a purely subjective question, and like "invention" is practically indeterminate and not susceptable of ultimate definition. Section 103 as printed would perpetrate a source of confusion. Respectfully, CALLARD LIVINGSTON. Hon. JOSEPH R. BRYSON, JUNE 25, 1951. Chairman and Members of House Judiciary Subcommittee No. 3, Old House Office Building, Washington, D. C. DEAR SIRS: This is written to answer certain questions which have arisen relative the testimony of the witness. Parenthetically let it be noted while witness criticizes the subjective test (now comprising sec. 103) to contrast same with objective test, yet witness would let subjective test remain but also would include objective test. |