limits of human capability, other agencies act on the basis of all relevant facts after hearing from all interested parties. The Patent Office does not. Moreover, it realistically cannot without a substantial overhauling of its procedural machinery along at least some of the lines contemplated by S. 1321.

In this regard, the following provisions, among others, of S. 1321 are basic and are long overdue:

1. Section 1 which requires the title to be interpreted in light of the "constitutional purpose".

2. Section 3(d) establishing a Public Counsel independent of the agency whose duty it is to "assure as an advocate through the adversary process that high quality patents which meet the statutory and constitutional criteria therefor issue from the Patent Office" and Section 24 which makes it possible for the Public Counsel todischarge his duty by the exercise of a subpoena power to obtain relevant facts, documents and testimony for use in any patent application proceeding.

3. Section 23 affording full subpoena power to the agency itself.

4. Section 122 abolishing excessive secrecy and making patent applications, as well as Patent Office adjudications, open to public scrutiny.

5. Sections 132 and 134 ensuring that a complete written record of proceedings is maintained and made publicly available.

6. Sections 135 and 137 permitting any member of the public to participate fully in the adjudicatory process, inter alia, by submitting evidence or argument at any stage of each proceeding.

7. Sections 115 and 131 requiring applicants and their attorneys to submit an identification of all available prior art and other facts relevant to the equities of the application, thereby enabling the examiner to spend less time in searching out this material and affording him more time in which to evaluate the application-and insuring integrity in the patent granting process.

Pursuant to Sections 191-193, moreover, only those patent applications would be subjected to detailed examination on the merits for which the applicant or member of the public had paid a special so-called "examination fee". Thus, by relieving examiners of the obligation to examine fully all patent applications, more time would be afforded for intensive examination of those on which the fee is paid.

III. FALSE PHILOSOPHY

The office of Patent Commissioner has long been a political plum awarded to patent lawyers in the service of business interests. Not surprisingly, the endeavor of the agency under these patent lawyer administrators has been to subsidize research and development by granting as many private patent monopolies as possible without regard to the constitutional and statutory prerequisites of validly patentable invention. The strategy of these Commissioners has been and is to join with the organized patent bar from which they came in importuning Congress to enact invalid legislation purporting to lower the constitutional patentability standard to the level to which the agency and the patent bar subscribe.

A classic example is found in the testimony of Wm. E. Schuyler, Jr. who was at the time of his 1969 nomination to the post of Commissioner and is now a Washington, D.C. patent lawyer representing a plurality of corporate clients. In his May 1969 confirmation hearings before this subcommittee, in response to an inquiry by Senator McClellan with respect to the mortality rate of patents in the courts, Mr. Schuyler expressed his belief, notwithstanding the Supreme Court's reiteration of the constitutional standard of invention in Graham v. John Deere Co., 383 U.S. 1 (1966), "that the Congress in 1952 intended to change the measure of the standard of invention which would be patentable when [it] enacted section 103 of the patent law. The Courts have not, in my view, followed that intention.... I think if the Congress made clear that, in considering the present legislation, its intent is as I viewed it before that the courts will have more guidance in this area" (Hearing Before Subcommittee on Nominations of the Committee on the Judiciary, May 2, 1969, pp. 14-15). Consistent with this attitude, under

the administration of Commissioner Schuyler the agency standard of patentability reached a new low.10

There are a plurality of ways in which the Patent Office-organized patent bar pressure group seeks to induce congressional subversion of constitutional patent policy. Typical-and of special significance is the continuing insistence upon legislative erosion of the constitutional patentability standardeffectively countered by S. 1321"-and the related demand for statutory departure from the constitutional requirement that patents be granted to "inventors" to permit issuance of patents to corporations. Sections 111 and 116 of S. 1321 unfortunately and perhaps unintentionally succumb to this demand.

A. The Constitutional Patentability Standard

The principle explicated by the Supreme Court in a consistent line of decisions beginning at least as early as 1885 12 that adjudication of patent validity requires reference to a constitutional standard remained unchallenged until it was reiterated in 1950 in Great A.&P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 154.

After A.&P. patent owners recognized that a successful challenge to the constitutional origin of the patentability standard reiterated by the Supreme Court was essential to the validity of their then-pending "corrective" legislation which ultimately matured as Section 103 of the Patent Act of 1952.13 Immediately upon its enactment, Section 103 was advanced as a proper exercise of congressional prerogative which repudiated A.&P. to exclusively define the standard for patentable invention at a level below that which the Court had held to be expressed in the Constitution."

20 It is instructive to note that Commissioner Schuyler has not only returned to the lucrative private practice of patent law but is also the founder and Chairman of the Board of Directors of "Intellectual Property Owners, Inc." (IPO), a "nonprofit corporation" financed by "membership dues" "deductible" as "business expenses". The "members" of course are corporations and patent lawyers. In short, IPO is a tax-exempt patent lobby. The quotation is from the copyrighted IPO 1973 publication, "The U.S. Patent System Needs Your HELP!" This publication describes four types of corporate membership with dues ranging from $10,000.00 to $500.00 annually. Individual dues are $100.00 annually.

Similarly, ex-Commissioner Edward J. Brenner is the founder and President of the Association for the Advancement of Invention and Innovation, another tax-exempt patent lobby.

This insistence has most recently taken the form of a protestation of lack of clarity in the $103 standard consequent from an alleged "conflict" between the Supreme Court's 1966 decision in Graham v. John Deere Co., 383 U.S. 1, and its 1969 opinion in Anderson's-Black Rock v. Pavement Salvage Co., 396 U.S. 57. The "conflict" actually does not exist on any fair reading of the two cases in context, the later decision in Anderson's-Black Rock being premised squarely and in terms upon §103 as explicated in Graham. To simulate "conflict" it has been necessary to change the whole thrust of Graham by focusing upon its passing reference to "secondary considerations surrounding the origin of the subject matter sought to be patented" which "may have relevancy" "as indicia of obviousness or nonobviousness" as the true test of $103 and then to see as inconsistent with that false test, the Court's refusal to find "relevancy" In the secondary considerations proved in Anderson's-Black Rock.

In short, the pretense of conflict is just that and the consequent lack of clarity in $103 is equally illusory. The problem of the organized patent bar is that $103 as it now exists does not comport with what the bar wants. Its requirement for a high standard of patentability is, if anything, too clear to be palatable.

12. This court, however, has repeatedly held that, under the Constitution and the Acts of Congress, a person, to be entitled to a patent, must have invented or discovered some new and useful art, machine, manufacture or composition of matter, or some new and useful improvement thereof, and that it is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful, but it must, under the Constitution and the Statute, amount to an invention or discovery." Hill v. Wooster, 132 U.S. 693, 700 (1890), quoting Thompson v. Boisselier, 114 U.S. 1, 11 (1885). See also Pennock v. Dialogue, 27 U.S. 327 (1829); Atlantic Works v. Brady, 107 U.S. 182, 200 (1883); McClain v. Ortmayer, 141 U.S. 419, 428 (1891); Cuno Engineering Corp. v. Automatic Devices Corp. 314 U.S. 84. 91 (1941); Graham v. John Deere Co., U.S. 1 (1966); Anderson's-Black Rock v. Pavement Salvage Co., 396 U.S. 57 (1969). And see Lear v. Adkins, 395 U.S. 653 (1969); and Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971).

Lack of invention was a defense recognized to strike at the root of the whole claim needing "no statute to ai or justify" it and "provable when it exists under any general denial", Reckendorfer v. Faber, 92 U.S. 347, 354 (1876), appropriately raised "sua sponte, if the objection was not taken by counsel", Slawson v. Grand Steel R.R. Co., 107 U.S. 649, 652 (1883).

See "Efforts to Establish a Statutory Standard of Invention", Study No. 7 of The Subcommittee on Patents, Trademarks and Copyrights of the Committee on the Judiciary. United States Senate, 85th Cong., 1st Sess.

4 See Rich. "The Vague Concept of 'Invention' As Replaced by Sec. 103 of the 1952 Patent Act", 46 J. Pat. Ofc. Soc'y 855 (1964). See also Aitken, "PatentsStandard of Invention-Constitutional or Statutory", 24 Geo. Wash. L. Rev. 722 (1956).

The majority of the lower courts, having regard to A.&P. and similar Supreme Court ulings, correctly held that $103 only codified existing law and hence did not purport to compromise the constitutional patentability standard. A comparatively few conflicting decisions fanned the flames of controversy.

This conflict came to a head when Graham, supra, reached the Supreme Court in 1965. Patent owner-petitioner Graham and various of his supporting amici uged that no patentability standard other than mere novelty is written into the Constitution, that §103 is the sole patentability standard, and that the Supreme Court was precluded from repudiating congressional intent as reflected by that statute.16

The Supreme Court in Graham, supra, rejected all of these arguments calculated to insulate the issue of validity from appellate scrutiny, reaffirmed A.&P. and emphasized once again that "[I]t must be remembered that the federal patent power stems from a specific constitutional provision" which is "both a grant of power and a limitation" that "Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose" and that the patent system "by constitutional command must 'promote the Progress of... useful Arts'. This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity 'requires reference to a standard written into the Constitution', A.&P. Tea Co. v. Supermarket Corp.", 383 U.S. at 5, 6. Further, the constitutionality of Section 103 was sustained only in view of the Court's finding that the statute "was not intended by Congress to change the general level of patentable invention" but "merely as a codification of judicial precedents... with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability". In sustaining $103, the Court said, "Approached in this light... the emphasis on nonobviousness is one of inquiry, not quality, and, as such, comports with the constitutional strictures", 383 U.S. at 17.17

19

Undaunted by the Supreme Court's refusal to depart from constitutional principle, the patent special interest groups intensified the campaign which they had waged since 1951 both in the courts and in the Congress.18 Seizing the very next opportunity, the American Patent Law Association in 1971 devoted 15 pages of a 28-page amicus brief in Blonder-Tongue to the contention that 35 U.S.C. 103 as construed in Graham and Adams is "the sole test of patentability", the Constitution notwithstanding. Concurrentlyand with total disregard for the apparent unconstitutionaliy of the proposed statute Congress was told by many "pro-patent" witnesses appearing at the May 11, 12 and 13, 1971 hearings on S. 643, S. 1253 and S. 1255, 92nd Cong., 1st Sess., that a "crisis" had overtaken the patent system requiring

15 See "The Standard of Patentability-Judicial Interpretation of Section 103 of the Patent Act", 63 Colum. L. Rev. 306 (1963). 10 "Since the passage of the 1952 Patent Act the conditions for patentability have been exclusively defined by statute and it is the function of the federal courts to ascertain whether such conditions have been satisfied". Brief of the New York Patent Law Association as Amicus Curiae in Graham v. John Deere Co., p. 10.

"In that [1952] Act Congress expressed the judgment that the progress of useful arts would be promoted by application of the standard of unobviousness, as stated in Section 103. as the test of patentability.... It is a judgment in no way inconsistent with the Constitutional grant of power to Congress. And in this connection it must be borne in mind always that the role of the judiciary in reviewing the legislative judgment is a narrow one in any case'" [citations omitted]. Brief of American Bar Association as Amicus Curiae in Graham v. John Deere Co., pp. 17-18. "Whether a discovery is patentable is under Section 103 not related to any standard of invention' as it was by prior case law, now patentability is determined solely by" Section 103. "The constitutional word 'discovery' authorizes Congress if it so elects to protect every original finding out' of any stature, whether or not previously known to others or obvious from what others have done". Brief Amicus Curiae in Support of Section 103 filed in Graham v. John Deere Co. by E. Ernest Goldstein, Professor of Law, University of Texas, p. 8.

17 These very same constitutional principles were reiterated by the Supreme Court in its 1969 opinion in Anderson's-Black Rock, supra, and adverted to in Lear, supra, 395 U.S. at 676, and Blonder-Tongue, supra. 402 U.S. at 333.

18 The campaign was successfully extended as well to secure the appointment of "pro-patent" judges to the Court of Claims and the Court of Customs and Patent Appeals as well as a Commissioner of Patents who expressed his rejection of Supreme Court law at his confirmation hearings. See pp. 9-10, supra.

10 United States v. Adams, 383 U.S. 39 (1966).

the immediate adoption of a modified version of Section 103 having as its confessed purpose to lower the standard of invention and to legislatively "overrule" A.&P. and its progeny.20

In truth, there is no place for trivial inventions in the constitutional scheme and the legislation by which the patent pressure groups seek an attempted denigration of the constitutional patentability standard is invalid on its face.

23

At the time the Constitution was adopted, there was a deep-felt need to protect private rights from state and congressional encroachments." Madison, at the Convention, admonished that "interference" with "the security of private rights and the steady dispensation of justice... were evils which had. more perhaps than anything else, produced this Convention"." Governeur Morris in the Convention stated that "Every man of observation had seen... excesses against personal liability, private property and personal safety". In a letter to Lafayette written in June 1787, Washington wrote that he had attended the Convention to determine "whether we are to have a Government... under which life, liberty, and property will be secured to us"." Madison, in "The Federalist," adverted to the "alarm for private rights which [is] echoed from one end of the continent to the other". In October 1787, Madison wrote to Jefferson that "A reform therefore which does not make some provision for private right must be materially defective"." Concern that the guarantees written into the Constitution were inadequate led to a struggle for more assured protection against federal encroachments which eventuated in the amendments comprising the Bill of Rights.

These various amendments are limitations upon the authority vested in the Congress by the Constitution itself-including the "limited authority" to authorize the grant of patents for invention." Included was the Fifth Amendment which mandates that "No person shall be... deprived liberty, or property, without due process of law".

of...

Elucidation of the constitutional standard for patentable invention accordingly entails a balancing of the objective of the patent clause with the paramount "liberty" and "property" concepts of the Fifth Amendment to which all patent laws are subservient.

In 1959 the Court restated the basic premise that "the right to hold specific private employment and to follow a chosen profession free from unreasonable governmental interference comes within the 'liberty' and 'property' concepts of the Fifth Amendment", Greene v. McElroy, 360 U.S. 474, 492, citing with approval the 1886 decision in Allgeyer v. Louisiana, 165 U.S. 578. In Allgeyer v. Louisiana, 165 U.S. 578, 589-590, the Court held: "... The liberty mentioned in that [14th] amendment means, not only the right of the citizen to be free from the mere physical restraint of his person, as by incarceration, but the term is deemed to embrace the right of the citizen to be free in the enjoyment of all his faculties; to be free to use them in all lawful ways; to live and work where he will; to earn his livelihood by any lawful calling; to pursue any livelihood or avocation,

See the "Patent Law Revision" Hearings, etc., Parts 1 and 2.

An informed Subcommittee for Patents, Trademarks and Copyrights of the Senate Committee on the Judiciary rejected the proposed amendment to Section 103 October 13, 1971.

on

The "crisis" campaign continues. It may confidently be expected that the same rejected amendment to Section 103 will be reintroduced in at least the forthcoming American Patent Law Association bill.

See generally, R. Berger. "Congress v. The Supreme Court", Harvard University Press, Cambridge, Mass. (1969), p. 16. et seq.

1 Farrand 134.

1 Farrand 512.

3 Farrand 34.

Federalist, No. 10 at 54.

5 Madison Writings 27.

It is axiomatic that the authority vested in Congress by the body of the Constitution is subservient to the Bill of Rights. Nimmer. "Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?". 17 U.S.C.A. L. Rev. 1180 (1970). points out that the copyright clause is subservient to the First Amendment and states:

If the constitutional grants of power to the Congress were not subject to the limitations imposed by the Bill of Rights. then such limitations would have no meaning at all to a government whose only powers are derived from such grants." (p. 1182, n. 4).

and for that purpose to enter into all contracts which may be proper, necessary, and essential to his carrying out to a successful conclusion the purposes above mentioned.

"It was said by Mr. Justice Bradley in Butchers' Union S.H.&L. S.L. Co. v. Crescent City L.S.L.&S.H. Co., 111 U.S. 746, 742, in the course of his concurring opinion in that case, that 'the right to follow any of the common occupations of life is an inalienable right.... And again, on page 765: 'But if it does not abridge the privileges and immunities of a citizen of the United States to prohibit him from pursuing his chosen calling, and giving to others the exclusive right of pursuing it, it certainly does deprive him. to a certain extent, of his liberty; for it takes from him the freedom of adopting and following the pursuit which he prefers; which, as already intimated, is a material part of the liberty of the citizen.' It is true that these remarks were made in regard to questions of monopoly, but they well describe the rights which are covered by the word 'liberty' as contained in the 14th Amendment."

Significantly, Mr. Justice Bradley's concurring opinion in Butchers' Union adverted to "The granting of patents for invention" as one instance of a legitimate monopoly because "This is done upon a fair consideration", 111 U.S. at 763. But long prior to Butchers' Union, "fair consideration" for a constitutionally valid patent had been defined in Hotchkiss v. Greenwood, 52 U.S. 248 (1851), as requiring the disclosure of an invention exceeding "the ordinary skill in the art"." The compelling reasons for this patentability standard were more fully explicated fourteen years before Allgeyer in Atlantic Works v. Brady, 107 U.S. 192, 199-200 (1883) (cited and quoted in 1950 in A.&P. Tea Co., supra), as follows:

"The process of development in manufactures creates a constant demand for new applicants, which the skill of ordinary head workmen and engineers is generally adequate to devise, and which, indeed, are the natural and proper outgrowth of such development. Each step forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant to a single party a monopoly of every slight advance made, except where the exercise of invention, somewhat above ordinary mechanical or engineering skill, is distinctly shown, is unjust in principle and injurious in its consequences.

"The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favors. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary pogress of manufactures...."

See also Reckendorfer v. Faber, 92 U.S. 347 (1876); Concrete Appliances Co. v. Gomery, 269 U.S. 177 (1925); Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477 (1935); Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350 (1939); and Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941), as well as Graham and Anderson's-Black Rock, supra.

When the paramount right of every citizen to "earn his livelihood by any lawful calling", and in that pursuit "to be free in the enjoyment of all of his faculties", is contrasted with the "limited authority" conferred by Article I, Sec. 8. Cl. 8 to grant private monopolies but only "to promote progress in science and the useful arts", it is apparent that there is no place in the constitutional scheme for trivial patents. Such patents not only run afoul of the Fifth Amendment, but also bring progress in the useful arts to a standstill and thus defeat the objective of the patent clause itself.

25 The "ordinary skill in the art" test was not new in 1851 but represented only a concise expression of the same patentability standard which had been applied from the inception of the patent system. As stated in Graham, supra:

"Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business, merely distinguished between new and useful innovations that were capable of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson..." 383 U.S. at 11. Section 2 of the 1973 Act provided:

"... And it is hereby enacted and declared, that simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery."