than that theretofore performed or produced by them is not patentable invention. And the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination. Though the respondent so concedes, it urges that in the combination of the Butler patent, the headed nipple performs a new and different function from that which it has heretofore performed, in other combinations, in that, when the coupler is withdrawn from the nipple, at the end of the greasing operation, the rounded head of the nipple "cocks" the jaws of the coupler for the next operation. Moreover, the argument is unsound since the old art includes instances where the head of a nipple or fitting performs a similar function when the chuck is disengaged from it.”

* * *

69 Corpus Juris Secundum, section 55, p. 275, Copyright 1951, states that: "A test sometimes resorted to in distinguishing between inventiveness and mere mechanical skill is whether some new result is brought about by new means or by a new arrangement of old ones (40). The latter is an objective test (41). Measured by it, invention is involved if the result of an idea is a method or thing involving a new function (42) or an old function arrived at by new means."

The above exemplifies the use of the objective test in dealing with the functions of the elements even to 1937. The referring to functions shows that the Court is not thinking subjectively.

Surely this committee would not knowingly take away what basis we have for the applying of the objective test. By not including the proposed paragraph, the committee, in effect, it is submitted, would be taking away from inventors the protection they now have in applying the subjective test. Even when new functional relationships are established at present, the courts are under no obligation to hold patentable novelty exists. This is why the proposal includes the mandatory feature so that, after an inventor has spent years developing and marketing his patented invention, he will not have his rights lost to an infringer with the Court simply stating "we think the invention is within the skill of the art" or its equivalent.

X. CONCLUSION

With all humility and with all earnestness, the witness most sincerely petitions this committee to include the objective test as set forth herein. It is the key to overcoming the confusion which now besets the patent system.

The National Patent Planning Commission, Charles F. Kettering, chairman, in its 1943 report recommended "that patentability shall be determined objectively * * *"" That committee was referred to the text of Mr. Roberts by the witness so that it was the test of Mr. Roberts' text which was recommended.

This Judiciary Committee is the real national-defense committee, because you. have it in your power to recommend the test for patentable novelty which is a criterion derived from judicial authority, the only test proposed that has been so derived formally. Our workmen need the best of machines to enable them to turn out a thousandfold more goods than rivals abroad to maintain our economic life: our soldiers need equipment to make them the equal of a thousandfold of the enemy to preserve our liberties. Our very existence as a nation is in large measure dependent upon a sound patent system.

Including the objective test in section 103 (H. R. 3760), it is submitted, will help restore the wholesome incentive to the patent system and thereby help maintain our American way of life economically and militarily.

As a matter of irrefutable logic, it is submitted that the objective test should be included in the present bill.

If any question relative to the above arises which the committee or any member of the committee desires to have answered, the witness will appreciate the opportunity of seeking the answer.

Most sincerely and respectfully submitted.

G. WRIGHT ARNOLD.

WASHINGTON, D. C., June 18, 1951.

Hon. JOSEPH R. BRYSON,

Chairman, Subcommittee on Patents, House Judiciary Committee,

Washington, D. C.

SIR: You will probably recall that I appeared before your committee last week as chairman of the patent committee of the Bar Association of the District of Columbia to express the approval of said association with respect to H. R. 3760, as amended, particularly by the proposed amendments of the coordinating com

mittee of the National Council of Patent Law Associations, which amendments had been presented to your staff and dated May 22, 1951.

Having attended these hearings, I would like to suggest individually and on my own responsibility, as a member of the bar of the District of Columbia and as a practicing patent lawyer, four further amendments which seem to me to be desirable and which probably may compose the differences between the present language of the bill and some points urged by several of the witnesses. These proposed amendments are as follows:

1. In section 100 of the bill, subsection (a), I would revise to read as follows: "(a) The term 'invention' includes, but is not limited to, discoveries made in the useful arts."

Also in section 101 of the bill, line 1, after "discovers" insert ", in the useful arts,".

My contribution in the above-revised sentences resides in the words "in the useful arts." This definitely limits inventions and discoveries in the manner defined in article 1, section 8, clause 8 of the Constitution of the United States. Patents for inventions and discoveries, according to the balanced phraseology of this portion of the Constitution, are limited to the useful arts, and it is my contention that the implementing law should recite this fact. In accordance with this balanced writing, science (or general knowledge) was never intended to be subject matter of patents but the subject matter of copyrights, and no previous implementing law passed by the Congress has ever included science as patentable subject matter. It should, therefore, as said above, be definitely stated in the present bill that the inventions and discoveries are those made in the useful arts.

2. I am in agreement with the statement made or given to your committee by Mr. G. Wright Arnold of Seattle, Wash.; and, therefore, suggest that at the end of section 103 of the pending bill that the following paragraph be added for the reasons that he has urged:

"Whenever there is established a new functional relationship between any of the factors which are required for rendering an invention in the useful arts practically operative, patentable novelty shall be found."

3. With respect to the discussion before your committee concerning section 231, I have the following suggestions to make which I believe will compose the differences which were emphasized in the discussion between Congressman Rogers, Mr. Fugate of the Department of Justice, and Mr. Rich. Consequently, I suggest that subsection (c) of section 231 be rewritten as follows:

"(c) Whoever sells a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention especially made or especially adapted for use in an infringement of such patent and not a staple article or commodity of commerce suitable for substantial noninfringing use, and who has knowledge at or prior to said sale that said component material or apparatus is to be used in a manner that will result in an infringement of such patent, shall be liable for infringement as a contributory infringer."

4. My other and last suggestion has to do with subsection (d) of section 231 and consists merely of inserting the word "solely" after the word "done" in line 4 of said subsection (d). All witnesses seem to agree that neither any nor all of the three acts by a patent owner, as mentioned in subsection (d), should or would constitute a misuse of the patent, if only these three conditions are present, or any one of them, and consequently relief should not be denied nor should there be any guilt of misuse or of illegal extension of the patent right. Thus, the inclusion of the word "solely" at the place indicated in subsection (d) and the rewriting of subsection (c), as above suggested, should remove all objections raised by Mr. Fugate.

I know that your correspondence on this matter has been very large, and I hope that the above does not overburden you, but I sincerely offer the above suggestions with the recommendation that they be incorporated in the present bill. Respectfully submitted.

EDW. R. WALTON, Jr.

86988-51-ser. 9- -14

PHILADELPHIA, PA., June 18, 1951.

Re H. R. 3760

Hon. JOSEPH R. BRYSON,

Chairman, Subcommittee No. 3,

United States House of Representatives,

Washington, D. C.

DEAR SIR: I appreciate the opportunity you have given me during the hearings on H. R. 3760 to file a statement. I have been a student of the patent system for over 25 years, having been an examiner in the Patent Office from 1923 to 1935 and in private practice as a patent attorney since 1935, representing large and small corporations as well as individual inventors. I have thus had an opportunity to observe the workings of our patent system inside the Patent Office as well as in industry.

I should like to state that I am heartily in favor of the enactment of H. R. 3760 and urge your committee to give it favorable action and also to take into serious consideration the suggestions presented by the coordinating committee of the Patent Law Association. I attended all the hearings and have been impressed by the remarkable unanimity of agreement of representatives and industry from all over the country in favor of this bill.

There is just one matter I should like to mention which is not in H. R. 3760, but it has been suggested during the harings to insert a provision for permitting the Patent Office to publish patent applications which would merely serve as publications or disclosures of technical information without having the status of a patent. However, it was proposed to make such published applications effective as of their filing date. I regard this suggestion as being highly undesirable because it may be very harmful to inventors. It would be possible to file applications in the Patent Office containing a great deal of speculative technical material which might vaguely refer to possible desired improvements or results without having any technical or factual basis. Such applications could be kept pending for several years and then finally published so as to prevent a bona fide inventor from getting a patent because such publication would be effective not from its publication date but from its filing date in the Patent Office. During all the time the application was pending. it would not be available to the public since the Patent Office processes all applications in secrecy. Such hidden disclosures secretly slumbering in the Patent Office for years would bring panic and disaster upon bona fide inventors working on their own who might spend all their time and money in developing an invention without any inkling of such hidden data and then suddenly find themselves cut off from any chance of getting a patent by a published application suddenly issued by the Patent Office having a date going back perhaps 4 or 5 years. Accordingly such proposal would be very detrimental to inventors.

Furthermore, such proposal would pervert the function of the Patent Office which is established to grant patents and not to function as a publication agency of what may be unreliable or questionable technical information which may be vague, unchecked, highly speculative, and never examined rigorously for its technical competency and reliability. Under the proposal the Patent Office would publish a great mass of technical data which has not been subjected to any critical evaluation and would thus give additional imprimatur to technical information which may be incorrect, misleading, and worthless. Certainly industry and the public welfare will not be promoted by such proposal which at best would operate as a vicious secret technical booby trap to be sprung upon bona fide honest inventors by those who would deprive them of their hard-won inventions.

I am convinced H. R. 3760 as a whole is a much-needed step in the right direction. We are badly in need of cod.fication and clarification of our patent laws since no complete overhauling has been done since 1870. Our patent system operates equally and effectively for the little inventor as well as the big corporations in offering a powerful incentive to the inventor to make inventions and to the businessman to invest capital in new enterprises. From these joint incentives the public has obtained tremendous benefits which it would otherwise never get. As a result, we have achieved during the past century a remarkable technical advance never made previously in all of human history. Our patent system has thus been the mainspring of our entire industrial development. It has spurred on the individual inventor and the businessman to apply their brains, energy, and resources to give us our technology and standard of living which are foremost in the whole world.

In recent years, however, there has been a serious decline in the number of inventions made in our country, although our population and economy has

been steadily growing. In spite of the greatly increased expenditures by Government and industry on research work the number of inventions made annually as measured by the patents granted each year has steadily declined at an alarming rate. I believe one of the causes of this decline can be attributed to the confusion and uncertainty of our patent laws as shown by the decisions of the courts in patent cases. As a result the incentive to invent has been greatly diminished.

The number of individual inventors working on their own has steadily declined so that as a result today most of the research and inventing is done only by corporations and large research organizations. The businessman today hesitates very much in backing an inventor because of the state of uncertainty of our patents and the very unfavorable attitude of the courts, especially the Supreme Court, in enforcing patents. Today our Federal judges look for every possible technicality and excuse to invalidate a patent and they seem to overlook the social benefits which the public derives from benefits so wisely provided for in our Constitution. I therefore believe that H. R. 3760 is a step in the right direction and should help to eliminate some of the existing confusion and uncertainty. We are involved today in a world struggle which may subject our economic and political philosophy possibly to the ultimate test of survival against the completely hostile and destructive philosophy of communism. Today we seem to be outnumbered by the total population dominated by Communist philosophy. Fortunately, our superior technology, I am sure, will enable us to preserve our social system which stands for the dignity and freedom of the individual.. However, we must make certain that we maintain our technical superiority and this can be done only by encouraging and developing new inventions. This can be accomplished effectively as we have done in the past by offering adequate incentives and rewards to inventors and business to develop inventions and put them to work for us.

The individual inventor must be encouraged and rewarded more than ever before if we are to win our fight against communism. I refer you to my book, The Psychology of the Inventor, to indicate further the vital role of the individual inventor in our economy and some of the pitfalls which he encounters which we should help remove.

He was a

The inventor is our greatest and most vital national resource. vital agent in building our present industrial economy in a region void of any technical facilities when the colonists settled here. He deserves to be honored and duly rewarded for his creative work which enriches the public welfare. The inventor should be recognized as a citizen of great importance because he is a public benefactor. He should therefore be given an opportunity to obtain his due reward through his patents by making sure that proper respect and adequate legal consideration is given to his patent property.

President Franklin D. Roosevelt said:

"Patents are the keys to our technology; technology is the key to production; production is the key to victory." (TNEC hearings, pt. 1, p. 2, 1942.)

The Supreme Court has aptly summed up the vital function of the inventor by saying in U. S. v. Dubilier Condenser Corp. (289 U. S. 178):

"An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge."

In a recent editorial in Chemistry and Engineering News, June 11, 1951, the following very important statement is made:

"Research palaces and superduper production facilities are meaningless unless adequately staffed with highly skilled scientists and technologists. Completely outnumbered reputationwise by those behind the iron curtain, our one chance of survival is the continuation of our superiority in fundamental and applied research and vast production of literally thousands and thousands of items vital to both our civilian economy and modern warfare. The fast-approaching bottleneck of too few scientists and technologists can well be the most efficient secret weapon possessed by Stalin and the Politburo. If the present trend is not shortly reversed, our leadership in science and technology will disappear and will be supplanted by Russ'an domination in science and technology for we can be dead sure that Russia is straining every effort to overcome our present lead. Once our technical superiority is lost our political liberty will be gone."

Dr. James B. Conant, president of Harvard University, recently stated at the dedication of the new laboratories of the du Pont Co. the following:

"The typical inventor was essentially an empiricist. indeed, we used sometimes to speak of the cut-and-try methods of experimentation as Edisonian

methods. Therefore, as theory developed in physics and chemistry and penetrated into practice, as the degree of empiricism was reduced in one area after another, the inventor was bound to disappear. Today the typical lone inventor of the eighteenth and nineteenth centuries has all but disappeared. In his place in the midtwentieth century came the industrial research laboratory and departments of development engineering.

"The second point is that the revolutionary advances in theoretical science were made very largely by amateurs. And clearly almost all the great advances in industry until this century were made by the independent inventor. These men have passed. They have no intellectual descendants. Will their twentieth century equivalents-the professional scientist, the applied-science laboratory, the engineering group-be able to carry on? Some of you may be inclined to laugh at this question. Why, of course, you will say. Look at what has happened in the past 30 years. You yourself have just spoken of the startling advances in applied chemistry. Look at the electrical industry; the new way of advancing science, pure and applied, is far better than the old. Perhaps; but I submit it is too soon to draw definite conclusions. There is such a thing as momentum in human affairs as well as in physics. And I submit that we of the midtwentieth century have been moving forward to a considerable degree because of the momentum accumulated in the days of the amateur and the lone inventor. At all events, there is sufficient doubt about the ability of the new ways to be substituted for the old for us to examine the problem with some care."

I believe that one of the best ways to insure the continued and increased production of inventions is to make sure our patent system is in a healthy state. H. R. 3760 will help toward that end, but we need more action and I urge you, Mr. Bryson, to have your committee investigate other phases of our patent system with a view to possible legislation so as to make sure inventions will be produced at an adequate rate to maintain our technological superiority to insure our survival over communism.

I therefore suggest that your committee hold hearings to investigate the following subjects which I believe urgently need legislative action :

1. REFORM OF PATENT OFFICE PROCEDURE

The Patent Office is one of the most efficient and oldest administrative agencies in our Government. It has done a remarkably fine job under the present statutes and with insufficient personnel and facilities. The present Rules of Procedure were completely revised in 1949 and are a tremendous improvement over the old rules. However, the Patent Office necessarily must operate within the confines of the present patent statutes and accordingly has not been able to make much needed reforms in procedure. We have today a highly complex and involved procedure in the Patent Office full of hazards and pitfalls for the inventor. Our whole patent-claim structure has grown to a gigantic monstrosity, full of metaphysical and semantic absurdities. This is costing inventors endless grief, expense, and loss of patent rights. The prosecution should be simplified to reduce present-day high cost of prosecuting patent applications. The Patent Office also needs better facilities for literature and prior-art searches.

The present interference procedure in the Patent Office involving conflicting claims to the same invention is extremely technical, complex, and expensive. This procedure should be thoroughly overhauled.

2. PATENT LITIGATION REFORM

Patent litigation has become extremely expensive and hazardous in the Federal courts. Most Federal judges frankly don't like to handle patent cases because they lack the necessary technical background. Justice Frankfurter has said, for example, "Judges must overcome their scientific incompetence as best they can." (Marconi v. U. S. (320 U. S. 1).) Your committee should give consideration to the establishment of special patent courts for adjudicating patents.

3. STIMULATING INVENTIONS

Congress should study the question of stimulating and fostering new inventions and how to best accomplish this through the patent system or perhaps through additional means such as through grants-in-aid of inventors to help inventors develop inventions, to patent them and to enforce them so as to get their due reward.