"Obvious": On the other hand, "obvious" is so generous to patents that it is likely not to be followed literally. In that event, it will lose all strength by the sheer necessity of departing from it and the consequent lack of statutory determination of where the line should be drawn. For example of excessive generosity, suppose a prior patent indicates that a certain ingredient should be added when a batch is at a temperature at which rapid precipitation will occur, between 150° and 200°, depending on degree of acidity. It is not obvious from this description that with one particular acidity the temperature should be 178°. Yet surely there is no intention to grant a second patent limited to this temperature which any chemist could easily determine by experiment.

"Skill in the art": This phrase does not say what is meant. If a prior patent in the printing industry controls ink supply by a photocell and an amplifier, building the amplifier would not be within the skill of the ordinary printer, but this should not justify granting a patent. Some skill of other arts must also be available and surpassed before invention is present.

The best wording I can think of at present is the following:

66*

* * the subject matter as a whole would have naturally occurred at about the time the invention was made to a person having only ordinary skill in the field to which said subject matter relates if he had knowledge of said prior art (all prior art readily available to persons in that field) [words in parentheses preferred] but had no guidance by its preselection, and said subject matter could have been worked out by such person with such ordinary technical assistance as he would have been expected to call upon."

Some other comments are enclosed, separately written up for different sections. In general, I urge that before reporting the bill, efforts be made to overcome all criticism that is or may be sound.

Yours very truly,

LOUIS ROBERTSON.

CONTRIBUTORY INFRINGEMENT SECTION 231

It is expected that an article I have prepared will appear in the July issue of the Journal of the Patent Office Society. It is too long to justify inclusion here, especially since a copy has already been sent to Mr. Federico.

In the meantime, I will merely say that subsections (b) to (d) of section 231 should be greatly improved before passage.

MISJOINDER-SECTIONS 116 AND 206

The inclusion as applicant of an extra person, i. e., one in addition to the true inventor, seems to be entirely harmless in all instances except when he himself would improperly gain by it, and in these instances the possible invalidity of the patent is often no discouragement to him but only penalizes the real owner who is innocent.

It would be far better to provide simply: "The naming of an extra person as applicant or patentee shall be disregarded, except that courts may refuse to enforce on behalf of such person his apparent rights as copatentee and, if he dishonestly permitted himself to be named, his rights by assignment. The Commissioner may strike his name, if satisfied that no claim would be jeopardized."

JOINT OWNERS-SECTION 212

The rule that a 1-percent owner need not account to a 99-percent owner is intolerable. There is no adequate excuse for writing into the statute an unjust rule, especially one not necessarily the law in all States. There is no excuse for having the patent system blamed for unjustness, even if it is to be the law by State determination. The alleged but falacious purpose of warning the ignorant could be accomplished by an express denial of a change, such as:

66* * * and the duty or absence of duty to account to the other owners is not determined by this act."

My preference would be to legislate away the old doctrine completely, but give power to the courts to render justice. For example: "with a duty to account to the other owners on such basis and subject to such exceptions as the courts may deem just."

TWO-YEAR REISSUE RULE-SECTION 201

The 2-year limit on broadened reissues is unjust. The more basic an invention, the less likely an inventor is to learn within 2 years that his patent cheats him of the protection to which he is entitled. To such extent as the time limit is justified on any fallacious theory of unfairness in letting the inventor cover later inventions he had not thought of, the time limit should date from his original patent and should apply in original applications long pending. The only additional equities against reissues are protected as intervening rights.

Nevertheless, if the theory must be applied selectively against reissues, it can be done in a less unfair way by canceling the present last paragraph of section 201 and instead adding to the last paragraph of section 202 the following: "In the case of any reissue patent enlarging the scope of the claims of the original patent, especially if applied for more than 2 years after the grant of the original patent, the principles of intervening rights set forth in this paragraph may be extended to protect investments of time or resources in invention, patenting, or development, even without the preparation specified in this paragraph."

Re H. R. 3760.

JOSEPH R. BRYSON, M. C.,

NEW YORK, N. Y., June 20, 1951.

House Office Building, Washington, D. C.

SIR: In answer to your letter of some while ago asking for comments on this bill I suggest the following amendments:

(1) Section 42, after "law" at end of section, insert: "or for service not rendered." This is particularly aimed at the return of a Board of Appeals fee when an examiner gets cold feet and does not transmit an appeal.

(2) Section 103, end of first sentence, insert: "An applicant's own statement in his application may not be used against him in interpreting prior art." If, within a composition or machine, applicant states he may use an element A or B, and previously A has been similarly used, prior art rather than applicant's application should be relied on to teach the equivalence of A and B if the skilled person does not already know it."

(3) Section 112, after second paragraph, insert: "But no claim shall be declared invalid for lack of distinctness or for undue breadth when the description clearly discloses the subject matter of the claim and the claim is as definite as is reasonably possible without arbitrary limitations."

This is in line with the recognition in plant patents (sec. 302) that the patent system need not rest on mere words. Justices Burton and Jackson hold this position in a dissent, Funk Bro. v. Kalo (333 U. S. 127). It should be remembered that the broad claim always expires and the patentee takes from the public only the use of independently made later inventions and he gives a perpetual disclosure of the invention.

(4) Section 132 in next to the last line insert the sentence: "The applicant shall have the right to amend any claim as often as new reasons for rejection are presented." This is an attempt to force the examiner to give thorough actions at the outset, but if the Patent Office makes an error at any stage applicant can be assured of an opportunity to alter his claim without need for a personal interview with the examiner. As the statute and rules of practice now stand, the distant applicant is at a disadvantage.

Broad valid claims help not only the inventor but progress as a whole. Each patent is a challenge to a subsequent inventor, and the broader a claim to be avoided, the more radical must be the line of attack.

As a former research chemist one of my jobs was to see how to avoid patents. The narrow claims did not cause me to learn nearly as much as the broad ones. At present, especially with chemical inventions, I frequently advise a client to keep his invention secret rather than risk meager patent-system protection of a new process that will possibly be mostly a suggestion to another chemist who may have greater facilities for further study. I have lost fees by such advice but I have gained the confidence of many clients.

I personally intend to work only in the chemical field where the chances of keeping the invention secret are good. Of course there are risks, but nothing seems to be more risky than trying to predict how a court will treat a patent claim under the present statutes. Even when the decision is in favor of the

patentee the Supreme Court is capable of reasoning in a manner I simply cannot follow (see Justice Douglas' dissent in Graver Tank v. Linde Air (636 O. G. 1), decided May 20, 1950).

Yours very truly,

F. R. JENKINS.

UNITED STATES COURT, EASTERN DISTRICT OF NEW YORK,
Brooklyn, N. Y., June 20, 1951.

In re H. R. 3760

Hon. EMANUEL CELLER,

Old House Office Building,

Washington, D. C.

DEAR MANNIE: Some thoughts concerning this bill have occurred to me which I should like to pass on to you if I may.

I am concerned mainly with the plight into which patents have fallen when the owners run the hazard of litigation. Fundamentally the difficulty in the courts stems from the fact that the term "invention" is not defined in the statute, nor has there been any affirmative legal definition.

More generally, in respect to patent litigation and the difficulties encountered by judges in wrestling with the problem of invention, let me refer to the opinion of Justice Frankfurter in Marconi v. United States (320 U. S. 61), and to the opinion of Judge Learned Hand in Parke-Davis Co. v. Mulford Co. (189 Fed. 95, 115). The difficulty apparently was very carefully considered by the National Patent Planning Commission which was appointed by President Roosevelt on December 12, 1941. In its report filed in 1943, it is said:

"The Commission, therefore, recommends the enactment of a declaration of policy that patentability shall be determined objectively by the nature of the contribution to the advancement of the art, and not subjectively by the nature of the process by which the invention may have been accomplished."

In a lecture that I was invited to deliver before the American Chemical Society, New York section, I took the position that the most satisfactory test of invention is just that suggested in the foregoing report. The contribution that an inventor makes to the art, which is presently in need of improvement or development, affords effective and definite evidence; no satisfactory subjective measurement can be employed as a rule of decision. One cannot take an X-ray of the mind.

Now another matter: Courts have lightly treated the so-called presumption of validity which is supposed to attach to the grant of a patent. Such a presumption could be made real and not merely figmentary if in the proposed legislation provision were made for adversary proceedings. Such proceedings could take the form, either before issuance of the patent but after publication of allowed claims in the Patent Office Gazette, of opposition, or of cancellation proceedings after the patent issued. The effect of such a provision would be that when the patent reaches the court for adjudication it could no longer be regarded as the result of merely ex parte consideration.

Another thought is in reference to the misuse of patents. Under present practice the courts, following a direction of the Supreme Court, will refuse to grant relief to one who has misused his patent unless he can show desistance from such misuse prior to the creation of issues in the case. But there is no power in the courts to void a patent for such misuse. That might well be the subject for congressional consideration.

I was glad to find in section 231, subdivision (d), the provision relating to contributory infringement. This provision if adopted will meet the hiatus in the statute pointed out by Mr. Justice Black in Mercoid Corp. v. Mid-Continent Investment Co. et al. (320 U. S. 661).

With kind personal regards, I am
Sincerely yours,

CLARENCE G. GALSTON.

CINCINNATI, OHIO, June 13, 1951.

Re H. R. 3760.

Hon. Jos. R. BRYSON,

Washington, D. C.

DEAR MR. BRYSON: I take this occasion to express my disapproval of the aboveidentified bill, together with various proposed amendments and suggestions adduced by various meetings of patent law associations and the like. Essen

tially my objection is directed to the attempt to accomplish, incident to codification, the inclusion of controversial aspects into the fundamental law of patents. It is my personal opinion, that patent laws should be codified without any change in substance or subject matter. Thereafter, any additions or deletions that may be proposed by any person or group of persons, may be considered seriatim. Any other handling of the matter will necessarily result in delay in codification, since it is my personal observation that there is no unanimity amongst patent lawyers as to the desirability of the proposed changes in the patent laws.

In making the foregoing observation as to the lack of unanimity, my impression is that there are more patent lawyers who are opposed to the indicated changes in patent law than there are those who approve thereof. I am not unmindful of the fact that the apparent approval of H. R. 3760 by various patent law associations and the like, would appear to indicate the converse of my observation. My observation is predicated upon the fact that at a meeting of the Cincinnati Patent Law Association on June 12, 1951, we considered the referred to H. R. 3760, together with the proposed changes and amendments referred to. After discussion, consideration was given to the question of whether the Cincinnati Patent Law Association should pass a resolution endorsing H. R. 3760, together with the proposed amendments. A motion was made and carried that the entire matter be tabled. The vote was overwhelmingly for tabling the matter. Consequently, I consider that as indicative of disapproval by the majority of the group of patent lawyers there assembled, of inclusion of such proposed changes of patent law in the codification of the current patent laws.

In voicing my objections to the proposed changes in patent law as incorporated in H. R. 3760, I do so as an individual and my reference to the action by the Cincinnati Patent Law Association must be understood as reflecting the background upon which I express my foregoing impressions. Incidentally, the Cincinnati Patent Law Association at that meeting, specifically desired to avoid going on record as an organization opposing H. R. 3760, inasmuch as by so doing it would be opposing the more or less concerted effort on the part of other patent law associations, to further the amendment of patent laws incident to codification thereof.

In view of all of the foregoing, I sincerely recommend that the effort of your committee undertake solely, codification of the current laws on patents and that there be excluded from the product of your committee any changes that any person, group of persons or interests, may now wish to incorporate in the codification of patent laws.

Very truly yours,

FRANK ZUGELTER.

BAR ASSOCIATION OF THE CITY OF NEW YORK-REPORT OF PATENT LAW COMMITTEE ON BRYSON BILL, H. R. 3760, CODIFICATION AND REVISION OF PATENT LAWS

This committee has studied the Bryson bill, H. R. 3760, and believes that if passed by the Congress, the patent laws will be materially improved.

This committee recognizes the difficulty of getting entire agreement among lawyers not only as to the contents of such legislation but also as to its form. It believes that if no changes were made in the proposed bill it would still be a substantial improvement over the existing law. Nevertheless the committee feels that the bill could be improved if the following changes were made: Chapter 2, section 103, page 9: In line 2, substitute "as" for "in the prior art" and change the word "that" which is the third word in the fourth line to "the." The purpose of this is to make it clear that all prior art is here meant and not merely the prior art referred to in section 102 which is limited to anticipatory art.

In the fifth line substitute "was" for "would have been."

The reason for this is to avoid the subjunctive form and to emphasize that the criterion of obviousness is to be determined as of the time the invention was made.

Chapter 2, section 121, page 13: In the third line substitute a period for the semicolon, and the word "If" for "and."

In the fourth line substitute "are" for "may be"; strike out the period and insert "directed solely to subject matter described and claimed in the original application as filed"; in the same line substitute "they" for "A divisional." In line 5 strike out "application."

In line 6 substitute "they comply" for "it complies."

In line 12 insert a period after "title" and strike out "if."
Strike out all of lines 13 and 14.

In line 15 strike out "and claimed in the original application as filed." In the same line substitute "The" and "the."

In line 16, after "execution" insert "of such divisional applications." The committee finds the thirteenth line of the section ambiguous. This section was intended to prevent the citation of a patent as a reference where division was required by the Commissioner and there was copendency with the application for the issued patent. This particular situation requires definition, which the proposed language accomplishes.

Chapter 2, section 135, second paragraph, page 15: In line 1 substitute "Any" for "No."

In line 2 insert "not" after "may."

Strike out line 3 and substitute the following: "application unless a claim for substantially the same subject matter was made in such application prior to the issuance of said patent or within 1 year from the date on which said patent was granted."

The purpose of this provision is to make sure that the 1-year period will not prevent someone who had previously had claims to substantially the same subject matter, making those claims even after such period. No such limitation was intended by the paragraph as originally drafted.

Chapter 3, section 202, page 19: Starting in the fifth line of the second paragraph substitute "unless" for "if," and at the end of the line insert "would have infringed."

In line 6 strike out "does not infringe a valid claim of the reissued patent which was in."

This is for clarification and to get rid of double negative.

In the second line of the third paragraph substitute "like things" for "such thing."

This is to make it clear that the court may allow replicas to be made of the specific things referred to in the second paragraph.

Chapter 3, section 211, page 21: In the first and second lines strike out "applicable rights" and substitute "attributes."

Chapter 3, section 212, page 22: Strike out entire paragraph and substitute the following:

"Whenever two or more persons own a patent jointly, either by the issuing of the patent to them jointly or by reason of the assignment of an undivided interest in the patent or by reason of succession in title to such interest, each of the joint owners, in the absence of any agreement to the contrary, shall be entitled to make, use, or sell the patented invention, or license others so to do, or assign or encumber his interest without accounting to the other joint owners." The committee believes that the existing law should be codified and not changed.

Chapter 3, section 231, page 23: In the second line of page 23 strike out "a contributory" and substitute "an."

In the third and fourth lines strike out "for infringement or contributory infringement of a patent" and substitute "under paragraphs (a), (b), and (c) above."

In lines 8 and 10 strike out "contributory."

In line 12 strike out "or contributory infringement."

Since contributory infringement is a form of infringement and the use of this term does not appear anywhere else in the bill, it seems preferable to refer to all of the acts mentioned in this section as infringement.

Chapter 3, section 252, page 26: The committee has not had sufficient time to consider the law as to whether jurisdiction could properly be obtained of a nonresident patentee served by publication. It believes that it would be preferable to add at the end of the paragraph the following:

"Acceptance of the grant of a patent hereafter shall constitute an irrevocable consent to be sued as provided in this section and appointment of the Commissioner of Patents as agent of the patentee to receive service of process under this section."

The eighth line should be changed by striking out "and summons shall be served by publication or otherwise as the" and the words "court directs" should also be stricken out in the ninth line.

Respectfully submitted.

Asher Blum, Dean S. Edmonds, James M. Heilman, Giles S. Rich,
Ralph M. Watson, John C. Blair, Cyrus S. Hapgood, Wilfren D.
Keith, James B. L. Orme, Dana M. Raymond, William R. Carlisle,
Francis X. Fallon, Jr., Walter H. Free, Oscar W. Jeffery, Ernest S.
Meyers, Alexander C. Neave, chairman.

MAY 18, 1951.