is that when that decision is read in its entirety it will be found that the court applied the same test in that case of what is patentable invention as it did in any other and that the use of the language "flash of genius" was merely an unfortunate choice of language which gave rise to considerable misinterpretation.

Now I would like to call attention to the decision of Judge Lenroot of the United States Court of Customs and Patent Appeals in the case of In re Shortell (142 F. 2d 292), which we have attached as an appendix to this statement. As you gentlemen know, the Court of Customs and Patent Appeals is the appellate tribunal from which cases arising in the Patent Office are appealed. It is the final court of last resort, so to speak, in determining patentability of inventions which start in the Patent Office. Where an applicant is refused a patent by the Patent Office he may take his appeal to the United States Court of Customs and Patent Appeals.

In this decision which I have included as an excerpt or appendix to my statement, Judge Lenroot points out that much controversy has arisen concerning the interpretation of certain language in the case of Cuno Engineering Corp. v. Automatic Devices Corp. before the Supreme Court. He points out, however, that all of the cases cited by the court in its decision preceding the Cuno case were decided upon whether the thing patented involved more than the skill of the art involved.

Incidentally, we find that same language in the Cuno decision. Judge Lenroot goes on to say:

In view of this fact, we are of the opinion that the use of the term "flash of creative genius," above quoted, was intended to mean nothing more than that the things patented must involve more than the skill of the art to which it relates.

It is encouraging to note further that in this decision which I may say is controlling on the Patent Office, Judge Lenroot calls attention to the statement made by Judge Hand in the case of Picard v. United Aircraft Corp. wherein Judge Hand states that the Supreme Court has tended to raise the standard of originality necessary for a patent and that Judge Hand felt that it was necessary for his court, the second circuit court of appeals, to recognize "a pronounced new doctrinal trend." Judge Lenroot takes the opposite view by stating that in his opinion any attempt to raise the standard of invention by court decision involves judicial legislation which is beyond the function of

a court.

He goes on to say:

In our opinion it is not within the province of the court to establish new standards by which invention is to be determined. It seems clear to us that the creation of new standards for the determination of what constitutes invention would be judicial legislation and not judicial interpretation.

It follows, from the foregoing, that until Congress shall otherwise legislate, or the Supreme Court shall otherwise specifically hold, this court will continue to hold that if a process or thing constitutes patentable subject matter, is new and useful, and the process performed or thing produced would not be obvious to one skilled in the art, invention should be presumed and a patent may properly issue therefor.

Now, gentlemen, as of the present time that decision is controlling upon the Patent Office so that I think we can see that we do not need a test of patentability here as proposed by this bill so much for the Patent Office as for the courts.

I say, nevertheless, that it is necessary that if a test is to be developed it must be one which will apply both in the Patent Office and the courts and will apply to all those situations where an invention is in its preliminary stage when it is before the Patent Office or when it is in its commercial stage and it will apply similarly where it comes before the courts after the patent is granted and where obviously the commercial stage has been reached.

In concluding, I would again repeat that we are in accord with the idea of a legal test to be written into the statute if one can be found. In our laws and rules committee we have given conscientious considerations as to whether the present bill could be amended either in minor part or radically, or whether a new substitute test could be defined.

I regret to say that we have been unable to reach any satisfactory conclusion in the matter.

Thank you.

Mr. BRYSON. Any questions, gentlemen?

Mr. WILLIS. I would like to have you comment on the doctrine that an invention to be patentable must involve more than the skill of the man in the art.

Mr. PARRY. Section 4886 in the first portion to which you have referred earlier says any new invention, if it is useful is patentable. Mr. WILLIS. Therefore, if it is obvious, it is not new? If it is obvious to one skilled in the particular art

Mr. PARRY. Not necessarily so, but from the beginning of the patent law it has been recognized by the courts and the Patent Office that everything that is new is not necessarily patentable. In other words, down through the years, that first part of the statute has been construed as requiring that the newness must be accompanied not only by utility but must show invention and logically so and did not involve any judicial legislation because it says "any person who has or have invented." In other words, we start off with the premise that there must be an invention and we consider that many things may be done by a man skilled in the art which may be new, but which would not involve invention.

I think the phrase has been used and I quote it somewhat cautiously "arise to the dignity of invention," in an effort to differentiate between what any person skilled in the art or any housewife perhaps might do if she were faced with some problem or situation and wanted some way to do it and where she reached a very simple and easy solution.

Mr. WILLIS. You say in your statement, page 2, that many inventions at the time application for patent thereon are pending before the Patent Office have not come into commercial usage at all. That I take it to be true. Now on the other hand after the patent is granted and the article or device has come into use, the courts have the benefit of that hindsight which the Patent Office did not have?

Mr. PARRY. That is exactly the basis of our first objection; yes.

Mr. WILLIS. Perhaps if the Patent Office had had the benefit of the past experience in the commercial world of the device it would not have granted the patent and you would not want to do away with the power of the court to use the benefit of the experience in the commercial world that the patent has had.

Mr. PARRY. We might equally have the other situation, namely, that not having the benefit of the commercial development and having merely the limited prior art before him, the Patent Office examiner

might not fully appreciate the significance of the invention and therefore, might hold it unpatentable whereas if it came before a court and with the data on commercial success before it, court would be in

clined to sustain the patent if the Patent Office issued it.

Mr. WILLIS. Perhaps that accounts for the difference in approach of the Patent Office and the courts; that is, the past experience which the Patent Office-we might call it the interim period-does not have the benefit of.

It would appear that the Patent Office has been very fair to the patent applicants; is that not correct?

Mr. PARRY. Yes; I think so and I think that that points up one of the real dilemmas that we are faced with in drafting any bill, at least one which would set up as a test the nature of the contribution to the art because we have different facts available to a court in many instances after a patent is granted than we have available to the Patent Office examiner during pendency of a patent application.

Mr. WILLIS. If we attach too much commercial usage to the application, the Patent Office may have to hold back an issuance of a patent for years before it can study the effect of that patent?

Mr. PARRY. That is correct. We feel that whereas it has been suggested that this bill may liberalize the holding of the patentability of a patent, still we can conceive that it is very possible that it might narrow or cut down the grants of patents.

Mr. WILLIS. That is my point, that at least the patent applicant will have the benefit of the situation of the law where it now exists whereas, if you proceed, you may put an impossible test on the Patent Office which would restrict the issuance of patents rather than liberalize the policy.

Mr. PARRY. That is our sincere feeling.

Mr. BRYSON. Your statement will be inserted in the record. (The statement is as follows:)

STATEMENT OF EDMUND H. PARRY, JR., ON BEHALF OF THE AMERICAN PATENT

LAW ASSOCIATION

The American Patent Law Association opposes H. R. 4798 upon the grounds that it fails to establish a satisfactory test for determining patentable invention and that the test it does establish is likely to be misinterpreted and misapplied both by the Patent Office and the courts.

We are not opposed to establishment of a legal test of invention, if one can be written, because of the apparently hostile attitude of the Supreme Court toward patents which led Justice Jackson in a dissenting opinion to criticize his fellow jurists for holding a patent invalid in the recent case of Jungersen v. Ostby & Barton Co. (80 U. S. P. Q. 36):

"But 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."

Throughout the years no court has been able to evolve a concise definition of invention. We sincerely believe, and reluctantly so for reasons just mentioned, that the present bill is not the answer.

The sole test of patentability under the bill is "the nature of the contribution to the advancement of the art." On first impression its language might appear to establish a definite test calculated to bring uniformity into the decisions of the various tribunals dealing with inventions but further consideration leads us to believe that such desirable objective would not be achieved.

Our initial concern is that the Patent Office would have great difficulty in interpreting and applying the proposed test. Many inventions at the time ap plications for patent thereon are pending before the Patent Office have not come into commercial usage at all, much less enjoyed any degree of commercial

success. On the question of novelty, such inventions must therefore be viewed solely on the basis of the prior art. How in such situations is the Patent Office examiner able to fairly judge whether an invention is a "contribution to the advancement of the art" which warrants grant of patent?

Moreover, in situations where inventions have made a definite impression and advanced the art there is a serious possibility that both the Patent Office and the courts may be inclined to give undue weight to commercial success and lower the standard of required novelty over the prior art with the result that many inventions might be held patentable which involved no more than the skill of the ordinary mechanic.

We further question the unqualified mandate of the bill against any consideration of "the nature of the mental process" by which the invention may have been accomplished.

In the case of inventions where the question of advancement of the art is a close one there would appear to be justification for tribunals to look to further factors in determining patentability. In weighting whether an invention did or did not involve more than the skill of a mechanic we believe that tribunals should be free to examine, in conjunction with other facts, how the inventor developed the invention, including the nature of his mental processes.

In the category of inventions just referred to we mention, by way of example, those where the inventors' main skill was expended in ascertaining the underlying cause of an existing problem in an art and a simple solution to the problem suggested itself once the cause was discovered. Courts for years have recognized the patentability of inventions under such circumstances, yet under the same circumstances the present bill would appear to preclude a holding of patentability if, as previously mentioned, the question of advancement of the art was a close one.

The bar against a subjective test of patentability in the bill was obviously inspired by the "flash of genius" language employed by the Supreme Court in Cuno Engineering Corporation v. Automatic Devices (314 U. S. 84). Such decision when read in its entirety makes clear that the Court evaluated the patent there involved on the basis of long established legal principles.

An illuminating commentary on the decision substantiating this view will be found in the excerpts from the able opinion of Judge Lenroot of the United States Court of Customs and Patent Appeals in the case of In re Shortell (142 F. 2d 292), which we have attached as an appendix to this statement.

Judge Lenroot also wisely suggests that the standard of invention should not be fixed by courts as beyond their judicial function. We fully subscribe to that view. We are doubtful, however, for reasons herein pointed out, that the legal test of invention offered by the present bill will afford a practical control on courts and at the same time accomplish the basic objective of a proper determination of patentability.

EXCERPTS FROM DECISION OF JUDGE LENROOT, UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS, IN IN RE SHORTELL (142 F. 2D 292, 295)

Much controversy has arisen concerning the interpretation of certain language in the case of Cuno Engineering Corp. v. Automatic Devices Corp. (314 U. S. 84, 62 S. Ct. 37, 41, 86 L. Ed. 58), wherein, following the citation of a number of cases, the court said:

66* * * That is to say the new device, however useful it may be, must reveal the flash of creative genius not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain."

It is interesting to note that all of the cases cited by the court preceding the above quotation were decided upon the familiar basis of whether the thing patented involved more than the skill of the art involved. In view of this fact, we are of the opinion that the use of the term "flash of creative genius," above quoted, was intended to mean nothing more than that of the thing patented must involve more than the skill of the art to which it relates.

In the case of Picard v. United Aircraft Corp. (2 Cir., 128 F. 2d 632, 636, 53 U. S. P. Q. 563), the court said:

"We cannot, moreover ignore the fact that the Supreme Court, whose word is final, has for a decade or more shown an increasing disposition to raise the standard of originality necessary for a patent. In this we recognize 'a pronounced new doctrinal trend' which it is our duty, cautiously to be sure, to follow, not to resist.'"

While recognizing, of course, that it is the duty of this court to follow the law as declared by the Supreme Court, we do not conceive it to be our duty to change our basis of decision merely because some courts assume that there is a "new doctrinal trend" with regard to the standards required for invention. In our opinion it is not within the province of the courts to establish new standards by which invention is to be determined. It seems clear to us that the creation of new standards for the determination of what constitutes invention would be judicial legislation and not judicial interpretation.

It follows, from the foregoing, that until Congress shall otherwise legislate, or the Supreme Court shall otherwise specifically hold, this court will continue to hold that if a process or thing constitutes patentable subject matter, is new and useful, and the process performed or thing produced would not be obvious to one skilled in the art, invention should be presumed and a patent may properly issue therefor.

Mr. BERNHARDT. We have one other statement, Mr. Chairman, from Mr. Stedman of the Antitrust Division of the Department of Justice.

Mr. BRYSON. I do not believe we could conclude this morning if we did proceed.

We are glad to have had you all here and we are sorry that we cannot conclude this morning. We will resume the hearing in this matter one week from today, gentlemen.

(Thereupon, at 12:05 p. m., the subcommittee recessed to reconvene at 10 a. m., June 22, 1949.)