B. C. Reid *

FOREWORD:

THE MEANING OF ACCIDENT

This frail barque of a paper is launched with some hesitation on its journey across the Atlantic Ocean. The foreign lawyer who presumes to opine on the mysteries of the United States patent law is to be regarded at best as being fearless, at worst merely foolish. Insofar as he may be wrong, the domestic patent lawyer will have the self-satisfaction of noting his errors; but insofar as he may be right, he will perhaps have made some slight contribution to the development of United States patent jurisprudence.

In this paper, I deal with the question of accidental prior use, specifically, with the doctrine that accidental prior use does not anticipate. My theme is that the doctrine really bears in the United States a somewhat different complexion compared to that conventionally attributed to it in much of the case-law and legal literature. I should explain that my interest in the doctrine arises from the recent House of Lords decision over here in the United Kingdom in Bristol Myers Co. (Johnson's) Application.1 Prior user had been alleged by the opponent; in reply the applicants asserted that the use was accidental. British jurisprudence on the subject of accidental prior use being sparse, the parties canvassed extensively the United States jurisprudence for assistance.

THE TILGHMAN LINE OF AUTHORITY:

In Deller's Walker on Patents (2nd Edition) the doctrine is defined generally as being:

Novelty is not negatived by any prior accidental occurrence or production, the character and function of which was not recog

* Barrister-At-Law, Middle Temple, London, England.

1 1974 Fleet St. Patent Law Reports 43; 1974 2 W.L.R. 79; 1974 1 A.E.R. 333.

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claimer or because a Rule 131 affidavit removed a pertinent reference and which would be invalidated by Bass, only those which issued on equivalent inventions would now be invalidated.

It might be argued that the proposed compromise is not much better than the actual Bass holding in the large corporation-group effort situation. Thus it is much more likely that equivalent inventions rather than only obvious inventions will result in a substantial number of cases due to the nature of the group effort, i.e., various parts of a group will each be working on related facets of a particular subject matter. Be that as it may, if each part of the group independently produces equivalent inventions, it would be inequitable to allow the common assignee to obtain patents on all of them whereas, if there had been no common assignee, only the first inventor would have been entitled to a patent. On the other hand, if there is no independence among the common-assignee co-workers, and all participants cannot be joined as co-inventors, then the additional problem of derivation 7 is presented, a topic beyond the scope of this paper. The only other solution to the assignee would be to allow for assignee filing of patent applications, a suggestion fraught with constitutional problems. It is submitted that with the proposed compromise herein, however, the common assignee does not come off that badly because it can still rely on the doctrine of equivalents 19 to protect itself from infringing equivalent inventions so that in this sense, its patent protection would indeed extend to all obviously equivalent inventions.

49

47 This problem pertains to 35 U.S.C. 102(f). See, for example, Examiner-in-Chief Federico in Ex parte Thelin, 152 U.S.P.Q. 624, 625 (1966) and Ex parte Stalego, 154 U.S.P.Q. 52, 53 (1966).

48 See, for example, Sears, The Continuation-In-Part PracticeShould It Be Abolished?, 55 J.P.O.S. 542, 561 (1973).

49 See Note 46, supra for a discussion of the doctrine of equivalents.

November, 1974, Vol. 56, No. 11

719

Neal Orkin *

THE LEGAL RIGHTS OF THE
EMPLOYED INVENTOR: NEW
APPROACHES TO OLD
PROBLEMS (PART II.
CONCLUSION)

IV. A CONSTITUTIONAL APPROACH TO EMPLOYED
INVENTOR RIGHTS

A. Proposed Legislation

Although Congressman Brown's proposed legislation
would have to some extent disregarded the employer's
contribution to any invention, it is unlikely that it would
have been deemed unconstitutional. The employer would
still have been protected by status or the common law;
depending upon the circumstances he would be able to
obtain either an assignment of all rights to the patent
or at least a shop right. There would probably have
been few instances in which the employee would obtain
full rights to the invention." Furthermore, the legisla-
tion was proposed pursuant to Congress' interstate com-
merce power (Article I, S8, C1.3); this power afforded
to Congress by the Constitution is a plenary power and
in recent years the Supreme Court has upheld all types
of legislation that may in the minutest way affect inter-
state commerce.16 Basically the only restraints on this
power are those found within the Constitution itself.47
Congress also had the power to enact this statute pur-

* Student, Temple Univ. School of Law, Operations Research
Analyst, Naval Air Development Center, Warminster, Pennsylvania.
44 It is difficult to conceive a situation in which an employee could
design and test an invention with the complex equipment that only
his employer could furnish for his doing so. Only very simple inven-
tions would not fall into this category.

45 "Congress shall have power to regulate commerce with
foreign nations, and among the several states, and with the Indian
tribes."

46 Congress has consistently sought to protect certain groups of
individuals through this power. See Heart of Atlanta Motel, Inc.
V. U.S., 379 U.S. 241 (1964), upholding the Civil Rights Act of 1964.
47 Wickard V. Filburn, 317 U.S. 111 (1942).

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suant to the patent clause of the Constitution (Article I, S8 C1.8) under which the other statutes were proposed.18 The question then arises whether the legislation could also have sustained a constitutional challenge had it been enacted pursuant to the patent power.

The basic issue therefore is whether the patent power is as extensive as the interstate commerce power; if it is then there is no problem in finding the statute constitutional. The patent power is the only one of the Article I congressional powers with a limitation written into the Constitution; this power is limited to the promotion of the progress of useful arts." It is not sufficient then that Congress has acted reasonably, but in addition Congress' must have sought to promote the progress of useful arts when exercising this power.

51

The only means to challenge the statute would be for a corporation to argue that Congress had exceeded its limitation by creating a situation in which advances in useful arts would be completely stifled by a lack of incentive for corporate research expenditures. This argument would seem to imply that the preexisting corporate employee assignment agreements has advanced the useful arts. However, there appears to be some evidence to the contrary."

Although, the power to grant some type of protection to the invention itself belongs exclusively to the federal government, there is no reason why the states could

48 Congress shall have power . . . to promote the progress of science and useful arts by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.

49 Grahm v. John Deere Co. of Kansas City, Mo., 383 U.S. 1 (1966). 50 McCullock v. Maryland, 4 Wheat. 316 (1819).

51 Little recent litigation exists on the actual extent of Congress' power. What has been written is basically judicial gloss referenced in other types of actions arising under the patent laws. But see The Trademark Cases, 100 U.S. 82 (1879), in which the Supreme Court invalidated a congressional attempt to enact trademark legislation under the patent power.

52 See Sections IV, B, 1&2 for discussion of the effects of these contracts upon employee incentive.

53 Sears Roebuck v. Stiffel, 376 U.S. 225 (1964). The only power left to the states under local unfair competition laws was that area in which one party was "palming off” or passing its product off to the public as another's.

November, 1974, Vol. 56, No. 11

721

not protect employee inventor rights. In the absence of any federal regulatory scheme to the contrary, states could enact legislation similar to any of the proposed congressional statutes discussed in Section III. Even a law similar to Representative Brown's bill making illegal any contract of assignment as a condition of employment would be a constitutional exercise of the state police power.

54

In light of the fact that Congress would most likely enact a bill similar to the middle position taken by the Hart-Owens bill, state legislatures should consider statutes to supplement this type of legislation. Since it is implicit within the Hart-Owens bill that employers and employees bargain for more than two percent of the invention's profits, state legislation could create arbitration boards similar to the Moss bill to guarantee greater than two percent compensation if it were warranted. No federal preemption problems seem apparent, since Congress seems to have intended that the two percent figure be only a minimum, implicity leaving higher compensation to either bargaining or state legislation.55

State legislation would, however, produce no panacea to the problems of employee compensation. With its lack of uniformity and potential conflict of law issues, state laws would create only a limited answer to the questions of employed inventor compensation.

B. Constitutional Judicial Remedy

Some of the status and contractual holdings on employee patent rights, discussed in Sections I and II supra, are what may be termed "federal common law"; i.e., the Supreme Court and the inferior federal courts have created a body of law which does not necessarily

54 The concept of substantive due process in which a state could not restrict freedom of contract has virtually been abandoned by the Supreme Court; there now exists a presumption in favor of the propriety of state legislation passed under the police power.

55 A means to ensure that no preemption problems occur would be to include within the Hart-Owens bill a statment to the effect that the states may pass legislation in harmony with the statute.