In other words, has the trend of the Supreme Court been wholesome to preserve our free enterprise system and not go too far in granting monopoly to the extent that the patent is a monopoly?

Mr. COOPER. My view is that it has gone altogether too far in knocking out monopoly because its mind, I think, has been centered on an antimonopolistic turn and that has unfortunately included patents because they could see with respect to certain patents before them that if they were sustained they would strengthen the large enterprises that were there involved. And, therefore, they thought it best to strike down the patents so as to that extent release the country from all monopoly.

So much so has that been the case that there is a phrase which I would like to put on the record here by Mr. Justice Jackson in his dissent in the Jungersen case. He said:

I doubt that the remedy for such Patent Office passion for granting patents is an equally strong passion in this Court for striking them down so that the only patent that is valid is one which this Court has not been able to get its hands on.

Of course, that was said more or less in the heat of passion because he thought that the invention therein involved was a good one as did two others, but nevertheless, that does, I think, reflect the attitude or the feeling of the patent bar in general toward the Supreme Court that any patent it can get its hands on it will emasculate. It did sustain one quite recently but it has granted a rehearing in that case. I do not know what the ultimate outcome of that will be.

Mr. CERSTVIK. But it only held some claims invalid. That is the Graver Tank & Manufacturing Company v. The Linde Air Products Company.

Mr. COOPER. That is right.

Mr. WILLIS. In other words, the result of the decisions of the Supreme Court has been to hold down the monopoly of patents to the extent that the monopoly is wholesome?

Mr. COOPER. That is right.

Mr. BRYSON. Getting around to the theory of the Patent Commissioner of 50 years ago when he resigned and said that it was not any use in continuing because everything had been patented.

Mr. CERSTVIK. That Jungersen case was held valid until it got to the Supreme Court and it decided with the minority of the lower courts rather than the majority.

Mr. BRYSON. Gentlemen, the clock is moving swiftly around. Mr. CERSTVIK. I am through, unless you have further questions, gentlemen.

Mr. BRYSON. Your prepared statement will be made a part of the record at this point.

(The statement is as follows:)

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

My name is Stephen Cerstvik. I am patent counsel for the eastern divisions of Bendix Aviation Corp. and am appearing here as national chairman of the patent committee of the Aircraft Industries Association of America, which committee is composed of representatives of the major aircraft and aircraft accessory manufacturers in the United States.

I am an attorney at law, and a member of the bars of the District of Columbia and the United States Supreme Court. I am also a member of the American Bar Association, the American Patent Law Association, and the New Jersey Patent Law Association, and I have specialized in the practice of patent law since 1929.

The present bill, H. R. 4798, is identical to H. R. 5248 introduced by Mr. Hartley during the second session of the Eightieth Congress about a year ago, and on which hearings were held on May 5, 7, and 12 of last year. Our committee testified at that time in favor of H. R. 5248, and its position has not changed. In other words, our committee is likewise in favor of the present bill, H. R. 4798, which is aimed at creating a more definite test for determining invention, both on the part of the Patent Office in the original instance of granting letters patent, and the courts in construing patents.

The present interpretation of the patent statutes by the courts as to what amounts to invention has caused widespread confusion. A review of the decision of the various courts, including the Supreme Court of the United States, will demonstrate the fact that the patent statutes have never defined invention or discovery which has led to many conflicting decisions and to the incorporation into the case law of the economic ideas and fancies of the judge or judges who happen to be sitting in any of the more recent cases.

In the case of Cuno Engineering Corp. v. Automatic Devices Corp. (314 U. S. 84), decided in 1941, the Supreme Court announced the so-called flash-of-genius doctrine, which was stated in the following words;

66* * * any device, however useful it may be, must reveal flash of creative genius, not merely skill of the calling; if it fails, it has not established its right to a private grant on the public domain.

"* * * Tested by that principle Mead's device was not patentable. We cannot conclude that his skill in making this contribution reached the level of inventive genius which the Constitution (art. I, sec. 8) authorizes Congress to reward."

A somewhat similar reference to a "flash of thought" is found in the Supreme Court's decision in the case of Densmore v. Scofield (102 U. S. C. 75), decided in 1880.

The most recent decision on this point which, while not directly involving the flash-of-genius doctrine, deals with the patentability of "discoveries," is the case of Funk Brothers Seed Co. v. Kalo Inoculant Co. (333 U. S. 127).

The Supreme Court has been consistently reversing, or abolishing, long-established doctrines and precedents in interpreting the patent statutes with the result that it is difficult, if not entirely impossible, for a patent attorney to arrive at any sound conclusion as to the patentability of an invention or the validity of a patent.

Our committee, therefore, feels it desirable that legislation be enacted to provide some definite criterion of invention so that the work of the Patent Office will tend to become standardized and consistency of decisions by the courts will be promoted.

There has also been a tendency for the courts to apply a different yardstick for measuring the test of invention when an invention is produced in the research laboratories of large corporations than when the invention is produced by an individual, particularly one who is sometimes referred to as an "attic" inventor. For example, in the case of Potts et al. v. Coe (60 U. S. P. Q. 226, 228), decided on January 18, 1944, the Court of Appeals for the District of Columbia has 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 improve

ments, the carrying forward of a new and more extended application of the art, are not invention."

At the present time, section 4886 of the Revised Statutes makes no attempt to define invention but leaves it for the courts to determine as an incident to the adjudication of patent property. This section of the statute merely itemizes the requirements which must be fulfilled in order to receive the grant of a patent. Although the courts have never endeavored to define invention in positive terms, there are certain considerations which might very properly be determinative of invention in fact. These considerations are found in H. R. 4798. It is for this reason that our committee is in favor of this bill, but in the interests of clarity, suggests that it be amended as follows:

Page 2, line 9, delete "discoveries," second occurrence, and substitute "those." Lines 12 and 13, delete "nature of the mental process by" and substitute "manner in."

The reasons for the proposed amendments are (1) to positively include inventions as well as discoveries due to research, and (2) to prevent any limited interpretation as to the type of act required for invention. In view of the decisions previously referred to, our committee feels that it is not only desirable but essential that the patentability of inventions and discoveries be positively defined by statute and, therefore, wholeheartedly endorses H. R. 4798 and urges that it be adopted with the suggested amendments which strengthen the bill in carrying out its intended purpose.

Mr. BRYSON. Gentlemen, we have now Mr. Parry.

STATEMENT OF EDMUND H. PARRY, JR., ON BEHALF OF THE AMERICAN PATENT LAW ASSOCIATION, WASHINGTON, D. C.

Mr. PARRY. My name is Edmund H. Parry, Jr., and I am a patent lawyer practicing in the National Press Building in Washington, D. C. I am appearing here as chairman of the laws and rules committee of the American Patent Law Association and speaking on behalf of the association.

On behalf of the association I must enter our objections to this bill as not setting up a satisfactory test of patentable invention. We do so reluctantly because we are in accord with the idea of having a law or legal definition of invention written into the statute if a satisfactory definition could be found.

Down through the years, so far as I know, no court has ever been able to give a concise definition of invention; that is, as to what is and what is not patentable. Although, throughout the years the courts have spoken of the fact that for an invention to be patentable it must be new, it must be useful, it must involve more than the skill of the ordinary man in the art.

Now I might anticipate a question by stating that the nature of our objection is such that amendments which have been proposed by some of the other witnesses would not meet our objection. In other words, we feel that there are fundamental defects in the proposed tests of patentability in this bill which are too serious to be overcome merely by changes in wording which essentially are merely clarifying rather than changes in substance.

I would like to make several preliminary observations relative to the purposes which would have to be satisfactorily accomplished by any legal test written into the statute. Section 4886, which this bill proposes to amend, is our basic law as to what is patentable.

It says that the invention may be in an art, machine, manufacture, or composition of matter. It is the basic rule which is governing upon the Patent Office and upon the courts. Therefore, if we have any amendment to this law to setting up a test of invention, it must be of

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universal application, applicable to the courts and the Patent Office, and that, of course, would be a desirable object, since one of the ultimate purposes which might be accomplished desirably would be to bring into uniformity the ideas of the Patent Office and the ideas of the courts as to what is patentable invention.

The history of patents in the courts, both in the Supreme Court and the lower courts in the last decade shows that there is a very divergent view as to patentability between the Patent Office and the courts. The Patent Office grants patents, and a very high percentage of them are held invalid by the courts.

We do not feel that this proposed definition or test of patentability proposed to be written into the statute by this bill would accomplish that object of bringing uniformity in the decisions of the Patent Office and the courts.

A second preliminary observation which I think is important to make is that in dealing with inventions and the question of patentability we have a different situation often existing when the invention is in the preliminary stage than when later it becomes involved in litigation in the courts. In many instances an invention is applied for promptly after it has been developed by the inventor before it has gone into any commercial usage whatever, much less enjoyed any commercial success.

Therefore, when a patent has been issued by the Patent Office and has come before the courts, it has obviously enjoyed some commercial utility.

Also, we have the adoption of the invention by industry to judge the value of the invention.

Now our first objection to the bill in setting up as a single test of patentability the nature of contribution to the advancement of the art is that that test might be a very difficult one of application in the Patent Office, at least in those cases which are of very substantial number where the invention has not gone into commercial usage or enjoyed any commercial success. In those situations the question of patentability, the question of whether it is novel, the question of whether it is useful, must be judged by the Patent Office examiner solely on the basis of prior art which he has before him.

Now we suggest that the examiner would have considerable difficulty in determining without other than the prior art before him whether an invention involved in an application before him was a contribution to the advancement of the art.

Our second major objection is that the language of the test, while on its face being apparently clear, really is not very definite. definite. It seems to imply that commercial utilization may be an important factor in determining patentability. It might, therefore, incline the courts and the Patent Office, both to put a premium on commercial utility and commercial success in determining whether an invention was entitled to a patent; whereas the first part of the statute, section 4886, all that it requires is that the invention be new and useful.

In other words, if, as we believe to be the case, both the Patent Office and particularly the courts tend to overemphasize commercial success as a measure of patent invention, we may have patents granted by the Patent Office and sustained by the courts as valid wherein the novelty is within the skill of the ordinary mechanic in the particular

field. That we consider would be undesirable. Therefore, as I say, while these possibilities might not necessarily follow, we think that they could very well follow and we have definitely felt that the Patent Office would have difficulty on the basis of that sole test as to what was patentable, at least on the basis of those cases where at that time the patent is pending in the Patent Office and there is no commercial success. In other words, the invention has been adopted.

We have further types of cases where inventions are somewhat of a departure from the prior art so that it is very difficult to judge how they advance the art. In other words, the prior art the examiner has, while he can recognize that this invention is different from those, in other words is definitely novel, it would be difficult for him to determine whether the invention is really an advancement or a contribution of the particular branch of the art to which it is directed.

Our third major objection to the bill is in the entire exclusion of the consideration of the nature of the mental process by which the invention may have been developed in determining what is patentable. In those instances, both in the Patent Office and in the courts where an invention has had commercial success, the elimination of such language would not perhaps be too serious.

But, on the other hand, we have in many instances, or classes of patentable inventions, where in the real effort of the inventor which resulted in production of the invention was in finding what is the cause of an existing problem in the art and where he exercised considerable ingenuity in finding out what that problem was.

Once he had discovered the cause of the problem he was able to arrive at a simple solution which looked at with the hindsight possible after the disclosure of the invention made in the Patent Office, or if it was in the court, looked like it might be within the skill of the ordinary mechanic.

Now those inventions throughout the years have been recognized as having patentability, both by the courts and the Patent Office.

We therefore think that this exclusion of consideration of the mental processes might exclude the granting of patents on inventions in that type of situation, at least in those instances where there had been no appreciable measure of commercial success and where under the first test of the bill it was a very close question as to whether it did or did not constitute a real contribution to the advancement of the art.

In the same connection we feel further that there may be other cases where it may be desirable, both for the Patent Office and the courts to consider how an invention was developed, not in every case certainly but there would be many where it would be desirable in measuring whether the invention was or was not above the skill of the ordinary mechanic in the field. In other words, how the invention was developed might furnish an important test and we therefore feel that the courts should be free to look to that and that the Patent Office should be free to look to that in cases where it would be appropriate. We therefore feel that the exclusion of what might be characterized as the subjective test under the proposed bill is undesirable as excluding.

Now as has been brought out by other witnesses here, this bill was undoubtedly inspired by the decisions of the Supreme Court and particularly that in the Cuno Engineering case. My own personal feeling