UNITS OF SOCIAL RESULT Assuming that this is a correct analysis of the situation the social gain from a patent system is the remainder when social losses are subtracted from social gains, as represented by the stippled area on the graph. There would occur an area of social waste (represented in the graph as a dark) resulting from the granting of an excessively long monopoly for which society would obtain no compensating advantage. GRAPH INDICATING SOCIAL EFFECT OF DIFFERENT LENGTHS OF PATENT MONOPOLY LENGTH OF MONOPOLY IN YEARS Straight Line Represents Harmful Monopolistic Effect Of Patents Stippled Area Indicates Net Social Gain From Patent System. Black Area Indicates Net Social Loss From Excessively Long Monopoly. As with any social problem there are always an infinity of disturbing factors, but if social problems are to be consciously grappled with it must be done by isolating them and by drawing probable inferences upon the basis of such isolations. It has been said that life is the art of drawing sufficient conclusions from insufficient premises. The analysis that has been made of the desirable time for patent monopolies is believed to hold true for the question of how broadly a patent monopoly ought to be defined. Something of this sort is found in the opinion of the Supreme Court in the case of O'Reilly v. Morse, 56 U. S. (15 How.) 62; 14 L. E. 601, where Chief Justice Taney says (p. 120): The evil is the same if he claims more than he has invented, altho no other person has invented it before him. He prevents others from attempting to improve upon the manner and process which he has described in his specification-and may deter the public from using it, even if discovered. The expression used by chief justice, "more than he has invented" cannot be taken literally because Morse had invented what was expressed in the claim held void. The question was whether the claim was so excessively broad that it unduly "prevents others from attempting to improve upon the manner and process which he has described in his specifications." Following this line of reasoning a chart duplicating the time graph can be made in which the curved line would represent varying degrees of scope of protection afforded. According to such a graph it would appear that invention would be stimulated more than proportionately to the broadness of patents granted up to a particular range of breadth. By granting patents broader than this particular range the restrictive influence would continue to increase at about the same rate, but because of the speculative remoteness of extra gain from extra breadth the beneficial stimulating influence would fail to increase proportionately. In such a chart the solid line would be like the solid line in the figure. The dotted line in such a chart would represent the social gain from broader monopoly and beyond some point this social gain would fall off leaving a dark era of waste as in the case of the time graph. There are found in several court decisions statements that patents broader than the invention are void. Just what is meant by "broader than the invention'? Primitively an invention is thought of as a specific piece of apparatus or specific series of steps or specific composition of matter. Secondarily it is perceived that if the monopoly be restricted to the inventor's precise embodiment it will be worthless because variations from this embodiment can nearly always be made that will be substantially as satisfactory as the inventor's precise embodiment. It therefore becomes necessary to extend the protection to other forms and from that point onward there seems to be no guide as to how far the extension should be carried. Roughly speaking the rule in the United States Patent Office seems to be to allow a claim if it does not literally read upon some prior device or upon some modification of a prior device deemed to be unpatentably different from the prior device. Occasionally however claims are refused to an applicant even though they do not read upon any prior device or upon any variation of any such prior device deemed to be unpatentable. The case of In re Gardner, 32 App. D. C. 249; 140 O. G. 258; 1909 C. D. 306, affirmed the rejection of claims because they were for functions or results. The writer has never grasped why a claim should be refused upon the ground that it is for a function or result. If a novel function or result represents a substantial advance in technology it would seem to be as much entitled to a patent protection as any other form of advance. It is believed that claims refused as being functional or for a result are refused because of a feeling that they would be more harmful than beneficial, for the reasons indicated by the Supreme Court in O'Rielly v. Morse and hereinbefore analyzed upon a graphic basis. Sometimes it is said that no monopoly should be granted for all means of achieving a result when the desirability of such result was obvious or had actually been recognized. This seems to imply that broader protection should be given when both a need and its fulfillment are contributed than when the fulfillment alone is contributed. A rejection of claims as broader than the inven tion was affirmed by the examiners-in-chief in a decision rendered March 20, 1922, in connection with an application of La Montagne which has since become patent No. 1,435,713, granted November 14, 1922. Later the decision was reversed by the assistant commissioner the reversal being, however, without any decision as to whether the reasons given by the lower tribunals were valid. The principle was stated in the opinion of the examiners-in-chief as follows: The examiner states that he has rejected the claim in question on a principle of patent law about which there appears to be much diversity of opinion and as the situation is one of frequent occurrence he is anxious to obtain the opinion of the Board on this question of law, as a guide in the treatment of future cases. His position is that where a result to be produced is obvious or has been long recognized by the public as desirable yet has never been accomplished, an applicant who is first to do so is not entitled to claims of such a scope as would prevent other and later inventors from reaching the same resuit by substantially different means but must be confined to claims limited to his particular way of doing it expressed in terms which may be as broad as possible while still involving the principle upon which his device operates. It is interesting to observe that the patent on “a wire formed of ductile tungsten" previously sustained as mentioned in the opinion of the assistant commissioner (reversing the examiners-in-chief) has since been held void upon the particular ground urged by the primary examiner in rejecting the La Montagne application. General Electric Co. v. De Forest, 17 Fed. (2d) 90 (Del.: 1927). It seems to the writer that these rejections of claims as broader than the invention are in reality rejections of claims on the ground that claims of such very wide scope would be socially more harmful than beneficial. Another example of this general sort of rejection is based upon the ground that the claims are so broad as to cover inoperative embodiments. Such a rejection could hardly be made in machine cases, because almost any machine claim could be embodied into an inoperative structure. But in chemical cases and cases involving compositions or materials this reasoning is frequently applied. The British courts hold claims void on this ground, and the same reasoning occurs in American practice. The patent granted to Keyes, 1,622,519, on March 29, 1927, includes an opinion by the examiners-in-chief, reported in 2 U. S. Daily 352 in which they refused certain claims to Keyes, mentioning that "the claims are not restricted to the specific material employed by appellant but are broad enough to cover materials which are alleged to be impracticable". That this doctrine is not universally accepted will be seen in the opinion of Judge Denison in Perkins Glue Co. v. Holland, 18 Fed. (2d) 387; 2 U. S. Daily 400, 412 (6: 1927) holding the patent involved valid and infringed, and stating at F, p. 389: Not to save from anticipation, but to make operative and intelligible, there is an implied limitation to that base which, when comhined as stated, will give the result stated. In other words, out of the variety of starchy carbohydrates we must select one suitable for this combination. In this there is no forbidden vagueness, for the specification teaches that starch is suitable when its water-absorbing capacity is not too high nor too low, but is in what we may call for convenience the medium range. The problem of how broad patent monopolies ought to be, is one that exists in the nature of such monopolies. The German patent system in recent years has had adjudications from their supreme court on the same general subject. In Germany the patent office does not attempt to compel so precise a definition of the invention as does the Patent Office of the United States. The German patent claim is somewhat intermediate between the summary of invention customary in Latin countries and the long series of definitions which prevail in the United States. The claims being thus less sharply delimited than in the United States the problem of defining the scope of protection falls in a larger measure upon the courts. In "Propriété Industrielle" of April 30, 1927, on pages 6870 is a letter about the German patent situation signed by Wilhelm Kisch; the writer of this letter is the author of a comprehensive work on German patent law published in 1923 under the title: "Handbuch des deutschen |