TEST FOR DETERMINING INVENTION WEDNESDAY, JUNE 22, 1949 HOUSE OF REPRESENTATIVES, SUBCOMMITTEE No. 4 OF THE COMMITTEE ON THE JUDICIARY, Washington, D. C. The subcommittee met, at the expiration of the recess, in room 327, House Office Building, the Honorable Joseph R. Bryson (chairman of the subcommittee) presiding. Mr. BRYSON. The subcommittee will come to order. Who is the first witness this morning? Mr. BERNHARDT. Mr. Stedman of the Department of Justice. STATEMENT OF JOHN C. STEDMAN, CHIEF, LEGISLATION AND Mr. STEDMAN. My name is John C. Stedman, chief of the Legislation and Clearance Section, Antitrust Division, Department of Justice. Mr. Chairman, I have a prepared statement which I left with you last week, and the only change is that the date should be June 22 instead of June 16. I will be glad to do whatever you wish. If you prefer, I will just go ahead and read it. Mr. BRYSON. All right, sir; you may do that and then elaborate on it at such points as you deem desirable. Mr. STEDMAN. Any questions that come up in the course of it, I will be glad to answer if I can. Mr. BRYSON. Yes. Mr. STEDMAN. I would like to present the views of the Department of Justice, concerning H. R. 4798. The bill would add an objective test of invention to existing law. It is identical with H. R. 3694, Seventy-ninth Congress, and H. R. 5248, Eightieth Congress. Public hearings were conducted on H. R. 5248 by your subcommittee in May of last year. In appearing before this subcommittee in the Eightieth Congress in connection with H. R. 5248, the Department of Justice took the position that a thorough study of this subject-namely, of establishing by statute criteria of invention and standards for testing the validity of patents-is a desirable one to be undertaken by the Congress. We are still of that opinion. We added, however, that the form such a statute should take could only be determined after studies and investigations had been made and the conclusions to be drawn from them became clear. 99541-50--5 29 Since H. R. 4798 has been introduced in language identical with that of H. R. 5248, Eightieth Congress, it is appropriate that we direct our comments this time to the specific provisions of that bill. H. R. 4798 would amend R. S. 4886 (35 U. S. C., sec. 31) in two respects: (1) It expressly authorizes patents on joint inventions by providing that any person or persons may obtain a patent; (2) it attempts to establish an objective test of invention by adding to the present statute, which contains no express definition of invention, the following sentence: Patentability of inventions and discoveries, including discoveries due to research, and improvements 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. An express provision for the grant of patents to joint inventors seems unnecessary, since both the Patent Office and the courts have consistently recognized the propriety of joint inventors applying for patents (Rule 45, Rules of Practice in the United States Patent Office, March 1949). We turn next to the amendment which would seek to establish in specific terms a test of invention. Several witnesses, in the hearings on H. R. 5248, discussed the standards of invention as set forth in the Supreme Court decisions, especially as a result of certain suggestions in Cuno Corp. v. Automatic Devices Corp. (314 U. S. 85, 91), that an invention, in order to be patentable, must involve something akin to "the flash of creative genius." There are indications that the Cuno case was doing nothing more than the courts have done in many cases in the past, namely, attempting to fasten upon some language which would describe the nature of the inventive processes insofar as tests of patentability are concerned. As we pointed out in our testimony last year, the Court was, in substance, merely repeating what it had said more than 60 years ago when it spoke of a "flash of thought" as a vital ingredient of invention (Densmore v. Scofield, 102 U. S. 375, 378). Sinclair & Carroll v. Interchemical Corp. (325 U. S. 322, 331), decided after the Cuno case, indicates that traditional tests of invention still apply. Speaking for a unanimous Court (Justices Black and Douglas concurring), Justice Jackson said: * * * A long line of cases has held it to be an essential requirement for the validity of a patent that the subject matter display "invention," "more ingenuity than the work of a mechanic skilled in the art." * * * This test is often difficult to apply; but its purpose is clear. Under this test, some substantial innovation is necessary, an innovation for which society is truly indebted to the efforts of the patentee. The primary purpose of our patent system is not reward of the individual but the advancement of the arts and sciences. Its inducement is directed to disclosure of advances in knowledge which will be beneficial to society; it is not a certificate of merit but an incentive to disclosure. Here is the significant statement as far as the Cuno case is concerned: Consequently, it is not concerned with the quality of the inventor's mind, but with the quality of his product. In short, the Cuno case does not attempt to set up a mystical and indeterminable test of invention; nor have subsequent cases inter preted it as attempting to do so. Most of the November 1943 issue of the Journal of the Patent Office Society is devoted to this subject. See also Richards, Standards of Invention in the Patent Office as Affected by Recent Decisions, volume 27, Journal of the Patent Office Society, page 24. It would appear that the court, in the Cuno case, was seeking to express the concept of the unusual, the unexpected, the innovation that has traditionally determined whether a particular contribution is an invention in the patentable sense or merely the act of one skilled in the art. It may be noted that, since the Cuno case was decided in November 1941, the Supreme Court has passed upon the validity of 16 patents. It held three of them valid, in whole or in part. Of the 13 held invalid, 6 were held invalid for want of invention. You might well say there are seven. There are a couple of cases that one could argue they decided were invalid on other grounds. Mr. BRYSON. Twilight cases? Mr. STEDMAN. That is right. But at most there were seven which were held invalid for want of invention. In other words, the patentee had a batting average of 333 percent in these cases where invention was the issue. This record is not out of line with the Supreme Court experience in earlier years. The percentage would be 30 percent if you take seven instead of six. An objective standard of invention whereby mechanical and errorproof determination could be made would, of course, be desirable, if one could be formulated consistent with the constitutional objective. The difficulties of formulating such a test, however, are considerable. We do not believe H. R. 4798 successfully meets the problem. Rather, it represents an attempt to achieve certainty by prescribing, as the sole test of invention, only one of the factors that goes into that test. It thus fails to grasp the true significance of the patent system and the part which the test of invention plays in that system. The proposed test is subject to a twofold objection. In the first place, the provision that patentability shall be determined objectively "by the nature of the contribution to the advancement of the art" gives us a test that is little more definite than that furnished by the word "invention" itself. Secondly, by making this the sole test of invention-assuming the courts eventually give it some meaning by judicial decisions-it ignores other factors that must be considered if the constitutional purpose of the patent system is to be carried out. The tests of invention appropriate to the administration of the patent system can be determined only in the light of the basic purposes of that system. The grant of a patent carries with it extensive rights and consequently should be made sparingly and not prodigally. The courts have always recognized this. Over 60 years ago, Justice Bradley in Atlantic Works v. Brady, decided in 1882 (107 U. S. 192), pointed out (p. 200): 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 favor. 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 progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. The language is a little harsh, but that is what a Supreme Court Judge said back in 1882, 67 years ago. Adherence to traditional concepts requires that patents be granted in such cases as, for example, where the Patent Office (and the courts) are reasonably satisfied that, but for the inventor's efforts, the particular contribution for which a patent is sought would not have been made available to the public for such a long time to come that the public, through its Government, is warranted, in the public interest, in giving to him the rights afforded by a patent. On this basis, determination of invention depends upon many facts. The test is a relative, not an absolute, one. It necessarily depends upon the state of the art at the time the particular improvement is made and the degree of ingenuity, intelligence, and imagination to be found in those working in the particular art. What is invention today might not be invention a few years from now. What is invention in one type of activity might not be invention in another. The courts, in their search for an appropriate standard of invention, have on different occasions expressed many different rules, many of them objective in nature, to express the relation of the contribution to the state of the art, a relationship upon which the ultimate decision of invention in the patent sense must rest (Richey, Some Objective Tests, 27 Jour., Pat. Off. Society, 187; Stringham, Outlines of Patent Law, pp. 222-253; Knoblock, Patentable Invention, 6 Notre Dame L. Rev. 225; Plaisted, What Is Invention, 14 Jour., Pat. Off. Society 328). The courts may look to the crowded or uncrowded nature of the arts, commercial success, or failure of the art to achieve a long-sought objective. They may invoke certain negative tests, such as the doctrine that mere aggregation, substitution of material, or application of an old device, product, or process to a new use do not constitute invention. The "objective" tests proposed by H. R. 4798-that is, that invention is to be determined "by the nature of the contribution to the advancement of the art"-might be interpreted in either of two ways. If it merely means that the Patent Office and the courts must examine the applicant's contribution to determine whether it is something unique and unexpected, the test is little different from that presently applied. If it means that the Patent Office and the courts shall look only to the nature of the contribution in the sense of whether the applicant's improvement is a useful one, without regard to whether it would be obvious to one skilled in the art, it represents a doctrine which is unsound because it is inconsistent with the basic objectives of the patent system. The test of invention is not whether the contribution is usefulutility is a sine qua non of patentability in any event-but whether it represents something which would not likely have become available to the public, at least for a long time, but for efforts inspired by the patent system and its rewards. For example, no one would doubt the utility of putting a previously known windshield or horn on an automobile; yet doing so would conceivably represent an obviously noninventive act once the automobile itself as well as the windshield or horn had both previously come into being. The cases are settled that such a contribution, however useful, should not entitle the one who makes it to a patent merely because he happened to think of it a few days ahead of the others. Yet H. R. 4798 might be improvidently interpreted as to permit the issuance or enforcement of a patent in such a case. We close by saying that the subject of statutory definition of invention, as a part of a study of the broader aspects of the operation of the patent system, is one that we believe commends itself to the Congress as worthy of full legislative investigation. We agree that greater certainty in laying down tests for invention, consistent with the constitutional purposes, would be desirable. In our opinion, however, H. R. 4798 does not accomplish this end and, accordingly, we cannot recommend its enactment. Mr. BRYSON. Thank you, Mr. Stedman. Are there any questions? Mr. WILLIS. I would like to ask one or two questions. Mr. BRYSON. Proceed. Mr. WILLIS. I think you are the fourth witness to testify on this matter. So far, we have had an equal division, two proponents and two opponents to this measure. The two proponents to the measure do not agree to the language of this bill; in other words, they say what you say that something should be done, but they do not agree on how we should go about it. Mr. STEDMAN. Yes. Mr. WILLIS. That is about the view of the Department that you represent, that something should be done, but you are not telling us how it should be done? Mr. STEDMAN. I think that the question of how it should be done is a very difficult one. I will say frankly that I do not know whether something could be done. I believe that the problem at this point is not one of trying to lay down a statutory test so much as it is really a matter of looking to the purpose of the patent system itself, what it is designed to do, and from the standpoint of what it is doing to accomplish the desired objective. I think the problem of invention ties in with that because it really presents the problem of what you have to offer a man in order to get him to make an invention. I think there is an inherent difficulty in trying to define the term "invention" simply because, as I pointed out, it is a problem of relationships, of what this man has contributed to what already exists, in the particular calling. It is a little bit like trying to lay down a definition of what constitutes a reasonable man. I think we would all be hard put to define a reasonable man, except to say that he is a reasonable man, a man that acts as you would expect him to act. I think it is the same problem as you get into here, trying to define invention beyond the basic criterion of invention; namely, that invention consists of an art or an act which goes beyond and is something more than the mere exercise of mechanical skill. That is the basic test. |