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Now the statute on patents is perfectly clear. It says, anybody who has created something new and useful shall have a patent for 17 years upon it. But when you try to define the invention as something that is beyond the ordinary skill, you put a burden on the inventor and the patentee that he is not supposed to bear by virtue of the statute.

Now the courts have for so long a time added this something to the statute that I propose that instead of trying to amend section 4886 to define an invention, in the way that it is attempted to be defined here, I propose to amend section 4921 of the revised statute, which is 35 United States Code 69, and that is the statute that sets up what shall be the defenses to a patent if one is sued.

The only thing that is necessary to clear up this entire section in my judgment is to add to that section 4921, the words:

No patent shall be declared to be invalid for lack of patentable invention. provided that which is claimed is new and useful.

Now that will settle the whole thing, the courts cannot declare a patent invalid because the standard of the improvement is not up to the court's notion of what it should be but the sole criterion will be: Is it new and is it useful? That is all there is to it; it seems to me.

So, I would propose and I would urge with all seriousness that the present effort to amend or to pass the statute, the bill, H. R. 4798, be dropped and that the attention be paid to the defense statute by amending that so as to provide that no patent shall be declared invalid for lack of patentable invention providing that which is claimed is new and useful, because that leaves the patents just where they ought to be.

If it is new and useful, a man ought to have a patent on it. That is the point of my coming down here today. As I say, I represent no one excepting myself, but I have written an article that was published in the American Bar Association Journal in April 1949, and I have provided you gentlemen with copies of that issue. That is a very short statement on my proposed amendment to section 4921.

If the members of the committee have any questions to ask of me, I will be glad to answer if I am able.

Mr. BRYSON. Thank you for coming, Mr. Cooper. I was intrigued a little by the term "new and useful." Are both those qualifications essential to a patent?

Mr. COOPER. Yes.

Mr. BRYSON. I remember talking to some patent attorney informally and he said that he had great difficulty in advising his client who applied to him for advice and counsel in the getting of a patent. He said that it was true that they had something new but it would not be of any practical use; just some gadget that had never been thought of before but it had no conceivable use.

You ought not to be granted a patent just because something is

new.

Mr. COOPER. That is right; it has to have some utility because of the theory that lies behind all patents; that is to say, they must promote science and useful art. They must give the world something that can be made.

Mr. BRYSON. Now it may be both new and useful, but of no commercial value at all.

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Mr. COOPER. That may be so and frequently the most striking inventions are of that character and only come into use later on and that is because of the peculiarity of the mind of some of the best inventors. They see a way to do a thing but it is not a commercially feasible way and somebody else has to find a commercially feasible way to do that.

In that case, the man who has an original patent has a good patent because it has some utility but not a commercial application and the man who makes it commercially useful also has done something new to it and therefore he has a patent.

Mr. BRYSON. That is also true of books or music. A song may not be worth anything today, but in the passage of time it becomes popular.

Mr. COOPER. A great many songs have become popular of late that were not popular at the time they were composed.

Mr. WILLIS. I was going to ask you a question along the same line. Will you repeat for the record the exact words of the Constitution? Mr. COOPER (reading):

The Congress shall have power

then come a lot of other powers

to promote the progress of science and useful art by securing for a limited time to authors and inventors the exclusive right to their respective writings and discoveries.

Of course the word "writings" goes with "authors" and the word "discoveries" goes with "inventors."

Mr. WILLIS. Now, according to your ideas, the fact that a man is profound and might have esoteric and recondite proclivities, should not throw him on the other side of the fence, you have a right to take that into consideration that he is a genius?

Mr. COOPER. Yes.

Mr. WILLIS. There is no reason why because he is a genius that you should entirely eliminate that and prefer a crackpot, is there? Mr. COOPER. No.

Mr. WILLIS. On the other hand, I am not saying that that should be the exclusive test.

Mr. COOPER. No.

Mr. WILLIS. But that can be taken into consideration according to the Supreme Court, plus the fact that it is a part of his calling. Mr. COOPER. Yes.

Mr. WILLIS. Or the calling of his trade.

Mr. COOPER. Yes, sir. It may be new and useful in a very large sense. Some of the greatest inventions, by the way, are very simple. For example, the great Bell telephone patent that is still used just as it always has been-the only invention actually made by Bell was in turning an adjusting screw one half a turn. All of the component parts of that had preceded him but the difference was altogether a different theory; that is to say, those who had adjusted the screw too high had a make-and-break circuit whereas for conversation you have to have an undulating current and by adjusting the adjusting screw about a half turn below its most forward position you got the undulating current that proved to be the voice carrier.

The actual accomplishment, the actual thing that he did was of the simplest character that anybody could have done if he had the idea of how to do it.

Now another extraordinarily simple invention was the thing that made the sewing machine a success. I do not know whether you gentlemen have read in the old books the song about the woman who had to sew the shirt by hand and by candlelight and all that and it made a very great appeal to people. A lot of inventors were trying to invent a sewing machine but Howe came along and he put the eye at the point of the needle instead of at the rear end, and that is what made the sewing machine a success for the reason that with the eye at the point of the needle a much less throw is required to carry the thread through the fabric and back than if it were at the rear end of the needle and had to go way down. That is actually what made the sewing machine a commercial success.

So that, you see, there was not a mechanic in the United States who was competent enough to put a point at the rear of the needle that could not have put it at the front of the needle. The actual physical thing that was done was of the most trifling character but it was the idea of putting the eye at the point of the needle instead of at the rear of it and you would overcome all the difficulties in your machine.

Mr. BRYSON. Any questions, Mr. Goodwin?

Mr. GOODWIN. No.

Mr. BRYSON. Mr. Willis?

Mr. WILLIS. No.

Mr. BRYSON. Thank you, sir.

Gentlemen, we have Mr. Cerstvik of the Aircraft Industries Association here.

STATEMENT OF STEPHEN CERSTVIK, NATIONAL CHAIRMAN, PATENT COMMITTEE, AIRCRAFT INDUSTRIES ASSOCIATION OF AMERICA

Mr. BRYSON. Will you give the reporter your name and title and the capacity in which you appear?

Mr. CERSTVIK. My name is Stephen Cerstvik and I am patent counsel for the eastern division of Bendix Aviation Corp.; but I am appearing here as national chairman of the patent committee of the Aircraft Industries Association. I am a patent attorney and an attorney at law, a member of several patent law associations and bar associations.

Mr. BRYSON. Where are your home offices located?

Mr. CERSTVIK. My office is at Teterboro, N. Y.

I have filed a written statement and like the others, I am not going to adhere to it because of other thoughts that have come to me since listening to the other witnesses. But I will say that we are in agreement with what Mr. Neave has said on behalf of the New York Patent Law Association, and somewhat in agreement with what Mr. Cooper said, although not entirely because of some difficulties that might arise in granting patents on something that is merely new and useful, provided that novelty and utility are really something that the man has done and not mere changes over what has been done previously. And I think that that is where the danger lies.

The statute regarding the granting of patents is perfectly clear, as Mr. Willis pointed out, and also as Mr. Cooper pointed out, but the difficulty comes in that when you read that, take the present bill, it says, "any person or persons who has or have invented or discovered any new and useful art, machine, manufacture," and so forth, reading the first page of the bill. It is that word "invented" that has bothered everybody and on which the courts have relied to either sustain or invalidate a patent.

I had an ex parte case before the Court of Customs and Patent Appeals and with the exception of one judge who dissented, the other four held that while they agreed that the device was new and useful, it was not shown in any prior art before, was never used before, it did not involve invention.

So that according to the court's interpretation of the statute it must be not only new and useful, but must involve invention. They never defined invention in any of their decisions except in some 10 or a dozen negative rules as to what is not invention. There is no decision on the books that will tell you what is invention.

So, it is that word "invented" that is very convenient for a court to use when it wants to hold a patent invalid. It just says it is not invention and that is all, no matter how new and useful it may be.

I think there should be some legislation which will give at least a clue as to what should be patented. I think the present bill will accomplish that if you determine it by what contribution has been made to the art by the device to be patented or which has been patented, rather than by not only the process in which it was accomplished but in any manner in which it has been accomplished.

So, while we agree with the amendments suggested by the New York Patent Law Association, we suggest a further amendment by changing the last part of the last sentence of the bill. The entire sentence now reads as follows:

Patentability of inventions and discoveries, including discoveries due to research and improvement thereof, shall be determined objectively by the nature of the contribution to the advancement of the art, and not subjectively by the nature of the mental process by which the invention or discovery, or the improvement thereof, may have been accomplished.

Mr. WILLIS. You are deleting the words "of the contribution"?
Mr. CERSTVIK. No; I am reading it as it is.

Mr. BRYSON. That is, your suggestion is pretty much in agreement with the suggestion of Mr. Neave?

Mr. CERSTVIK. The New York Patent Law Association suggests deleting the words "objectively and subjectively" also, the word "mental" modifying "process." We agree with that because we think that with the word "mental" in there, the amendment to this bill which amends the statute was taken into consideration the Cuno Engineering case to get away from that mental process of having to be a mental genius before you can make an invention.

So we are in agreement with that but we think that instead of saving "by the nature of the mental process by which the invention of discovery, or the improvement thereof, may have been accomplished," we suggest that the words "nature of the mental process" be deleted and the words "manner in" substituted so that it will read

Mr. WILLIS. Read the entire sentence as you propose it.

Mr. CERSTVIK. We suggest another amendment and that is in deleting the word "discoveries" following the word "including" where it first appears in the last sentence of the bill. In other words, we propose that it be amended to read as follows:

Patentability of inventions and discoveries, including discoveries due to research and improvement thereof, shall be determined objectively by the nature of the contribution to the advancement of the art, and not subjectively by the manner in which the invention or discovery or improvement thereof may have been accomplished.

In other words, it should not matter how it was done so long as the man did produce something that is new and useful.

Mr. BRYSON. You would not confine inventions to men of recognized reasoning ability. In other words, some of the greatest inventions have come from the minds of illiterate people?

Mr. CERSTVIK. That is right.

Mr. BRYSON. They just came upon the invention by accident?
Mr. CERSTVIK. That is right.

There is also a tendency to apply a different yardstick for measuring the test of invention when an invention is produced by experiment in a research laboratory of a corporation as contrasted to when that invention is made by the so-called attic inventor. Some of the cases favor the attic inventor and say, "What these big research corporations do that have a research department, that is not invention, that is a natural result of their experimentation."

The case on that is Potts et al v. Coe (60 U. S. P. Q. 226, 228), decided on January 18, 1944, by the Court of Appeals for the District of Columbia, which was an appeal from rejection from the Patent Office of claims the man was making and was a complicated machine. The invention was made in a research laboratory. The court in that case said:

In determining whether an invention has been made, the character of the article or process, its novelty, and its advance over the prior art are merely evidentiary; the ultimate question is the character of the contribution made by the inventor. There is no invention without inventive genius. The objective advance does not identify or evaluate the individual achievement. The individual achievement is becoming more and more difficult to identify and evaluate as organized research becomes our greatest source of invention. And so the trend of recent decisions has been to emphasize more and more the character of the individual achievement rather than the qualities of the product in determining patentability. We have held that a step forward which, considered in connection with the highly developed condition of the art, might reasonably be expected from the research of highly trained specialists, is not invention. Thus neither the result of great industry in experimental research nor successful product of gradual process of experimentation over a period is invention. Routineering, even by the most highly trained specialists, step by step improvements, the carrying forward of a new and more extended application of the art, are not invention.

"Routineering" is a new word.

Mr. BRYSON. What is that?
Mr. CERSTVIK (reading):

Routineering, even by the most highly trained specialists, step-by-step improvement, the carrying forward of a new and more extended application of the art, are not invention.

So, the two amendments that we suggest are primarily for the purpose of including inventions as well as discoveries due to research, and

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