nent inventor of recent centuries. When some one applied the term "genius" to him, he said:

Genius is 2 percent inspiration and 98 percent perspiration.

In other words, Edison contributed his great accomplishments on the basis that invention is the providing of something new and useful and an advancement of the prior art. The unmutilated statute was the only incentive he needed.

I noticed that Mr. Stedman referred in his statement, and we are not in disagreement as to the necessity for legislation to meet this situation, to a case decided many years ago in which this expression was used: "flash of thought."

Now, there must be a very great difference between a "flash of thought" and a "flash of genius." Every inventor necessarily has flashes of thought as does everyone else.

Perhaps most patents today involve the improvement or combination of prior discoveries. Mr. Cooper referred in his testimony to Howe's invention that gave the world the sewing machine. Now, Howe didn't invent the needle. A few nights ago I heard a radio talk and it was stated in it that the needle originated somewhere in the haze of antiquity. But after all the centuries which had intervened Howe did discover an improvement that gave the needle a vastly extended utility greatly needed by the world. Still I wonder if his contribution was really a flash of genius?

Mr. BOGGS. I remember Mr. Cooper talking about that. Was he the one who spoke of being able to get a patent because the inventor put the eye of the needle down from the top?

Mr. LANHAM. I am sure he was.

Mr. FEDERICO. I do not recall what the patent claimed but that was one of the elements.

Mr. BOGGS. As he brought out, it was the hole.

Mr. LANHAM. Yes, near the point of the needle.

Mr. HACKLEY. Transposition of the position of it, I think you will find on examining the patent.

Mr. BOGGS. Transposition of the position of the eye?

Mr. HACKLEY. Because it achieved a new result.

Mr. LANHAM. The sewing machine was made practical only by reason of the invention of Mr. Howe. Still I wonder if his contribution was really a flash of genius?

Many important discoveries are made somewhat by accident, but it is worthy of note that such accidents happen to those working industriously on the problem at hand.

I read a few years ago a book by a distinguished scientist on the way many inventions were discovered. I recall very specifically the invention which made pool balls possible. It had been entirely too expensive to have 15 ivory balls. The man who had been working on that and who had tried many different methods finally in his research cut his finger and he looked up to get some collodion to put on this cut. The collodion bottle had turned over, the stopper had come out and there was some collodion spilled on the shelf. He noted that it had congealed and it occurred to him that that was perhaps what he needed to congeal his material into a pool ball. So he used the collodion and consequently he discovered the pool ball.

I do not know whether that was a flash of genius, but it certainly gave us the pool ball which is in such great use today.

It seems clear, therefore, in view of the existing confusion altering the time-honored principles and practices by judicial law, that legislative action is imperative if we are to continue the system which has made American preeminently outstanding.

Witnesses have suggested various verbiage to correct this situation. I do not pose as an expert, but I shall even make a suggestion in this regard myself with the hope that the committee in its study of the several recommendations will be able to find language that is appropriate and adequate.

Before doing so, however, I wish to comment on the statement of one of the witnesses, Mr. Parry, to the effect that the language in the last sentence of the pending bill would require the Patent Office to analyze the commercial success of an invention in determining its patentability. I do not think this is either a proper or an intended construction. There is nothing about commercial success in the amendment and nothing that I think can be construed to that effect. I think we are all agreed that the real issue is, Has the invention advanced science and useful art as the Constitution prescribes, and is it new and useful as the statute requires, and not how did the invention happen to be made? If it is new and useful and advances the prior art, the function of the Patent Office is plain.

It is quite conceivable that an invention may meet these requirements even if there should be no commercial manufacturing of the invention. The Patent Office is not engaged in the marketing of inventions. What concern is it of the Patent Office as to whether the invention will become profitable commercially? The Constitution and the statutes determine the functions of the Patent Office.

I think that as this bill is drawn or even with the amendments proposed by various witnesses, it would be a step in the right direction, but perhaps the committee can devise a provision still better and give an affirmative guide by providing a definition of invention for use by both the Patent Office and the courts so that when an inventor gets a patent he will have some proper opportunity of enforcing it through the judicial process, which is the only way open to him.

For your consideration in arriving at a proper determination of a legislative provision concerning the test of invention in keeping with the Constitution and statutes, I should like to suggest for your study another wording as a substitute for the amendment appearing in the last sentence of H. R. 4798. And I think it meets the requirements necessary for the solution of this problem.

Patentable invention shall be presumed to be present if the invention or discovery for which application for patent is made, or upon which a patent is granted, is directed to patentable subject matter, is new and useful, and represents an advance in the art or science to which it appertains or most nearly appertains which would not be obvious to one skilled in such art or science at the time of conception thereof and irrespective of the manner in which or the circumstances under which such invention or discovery was conceived.

It seems to me that language of this character would give proper direction to the effect desired; that is, if the subject matter of an invention is patentable in the statutory sense, relating to an art, machine, manufacture, or composition of matter, is new and useful and repre

sents an advancement of the given art in such a way as not to be obvious to one skilled in that art at the time the invention was made, it should be patented and the patent should be respected in judicial proceedings and not be subjected to any judicial fancy concerning the circumstances under which the invention was made.

Our patent system has been the very basis of most of our progressive development. It should be protected and the incentive it offers scrupulously preserved. The present confusion, due to judicial law which several witnesses have cited, clearly calls for legislative enactment which will protect inventors and patent owners in their statutory and constitutional rights and assure the continuance of discoveries important for our progress.

Mr. BRYSON. Any questions? Any questions by either Mr. Hackley or Mr. Stedman?

You all, in general, are in accord.

Mr. LANHAM. Oh, yes; I think even the bill as written would be a long step forward in the protection of inventors and patent owners, and when you protect them you are protecting the public at large who are the beneficiaries of the discoveries. We do not want to stifle in any way the incentive of these people who are giving us these wonderful things.

Mr. WILLIS. If the patentable subject matter is new and useful and represents an advance in the art or science, but if it would be obvious to one skilled in the art, then it would not be patentable?

Mr. LANHAM. I think that is correct.

If it is obvious to one skilled in the art at the time of its conception. For instance, Howe's invention, the use that he made of the needle for the sewing machine, was not obvious to any one when the needle originated. Evidently it would not have been obvious to anyone skilled in the art, insofar as the use of the needle was concerned.

I think you will find historically in the cases that have been decided that it is a requirement that the invention would not have been obvious at the time of its inception to one skilled in the art. I think that is merely following the history of the cases and of course some of these patent lawyers can advise you more definitely on that inasmuch as I am not a patent lawyer.

Mr. WILLIS. Your decision would not be far from the Supreme Court. If it is not obvious to one skilled in the art, therefore, you are allowing for expertness in the art.

Mr. LANHAM. The cases, as I understand them, say it would not be patentable if it were obvious to one skilled in the art at the time of its conception. Perhaps Mr. Hackley could give some clarification as to whether I am correct in that. I think it must not be obvious to one skilled in the art at the time of its conception.

Mr. WILLIS. Would not the "flash of genius" statement by the Supreme Court be another way of saying that the patent subject matter was not obvious to one skilled in the art?

Mr. LANHAM. I think not. I think you will find that in the cases which we have had that that is not so.

Mr. WILLIS. In other words, you are allowing for expertness, you are allowing for the 2 percent of inspiration referred to by Edison? Mr. LANHAM. Yes. But I do not think that inspiration is necessarily the result of a flash of genius. Inspiration is that which came to the man who invented the pool ball. He saw this congealed col

lodion that would enable him to hold these pool balls together. That was a discovery, but I do not think you would call it a flash of genius. However, it had not been obvious to anyone that had endeavored to make pool balls.

Mr. WILLIS. Still, here on the subject we are talking about we have to call experts to inform us, to guide us, let us know what the subject is all about. What I fear is that if we say that from here on patentability shall be purely objective, whether it is creative genius or not, that we are throwing overboard an element that should be available to the court. The court should have an availability test behind the patent. The fact that a man is a genius, and genius is sometimes referred to as being crackpot in a way, still, we must not, in my judgment, deprive the court of all tests in determining whether a device is novel and patentable.

I am just fearful that we had better suffer the ills under this law than to fly to others unknown to us.

Mr. LANHAM. As a matter of fact, I do not think that this would place any greater burden upon an inventor than is placed on him by the present statute. What is a patentable invention, after all, if it is not the discovery of something that is new, something useful, that would be helpful to the public, and that is an advancement to the prior art? I think that our present statute is a good statute, but it has been clouded by consideration from the standpoint of the courts as to the circumstances under which an invention was conceived or how it was brought about.

The result is the important thing, that here is something new and useful and nobody has done it and it is an advancement of the prior art; that is what these inventors seek. They want to find something that is new, something useful, some improvement of something existent or some combination that will give a new and beneficial article to the public.

Mr. TACKETT. The old ice-cream-freezer case brought forth your third point, that even though the fellow had invented the ice-cream freezer, it was something every one knew could be done. You could put a can of milk and the other ingredients necessary for ice cream into a bucket of ice and that was determined not to be an invention. That is why I think it is necessary that you do have that clause in there "would obviously not be known to persons skilled in that work." Mr. WILLIS. I agree with that but I do not see much difference. Mr. BERNHARDT. Suppose you put the word "merely" before the word "obvious"?

Mr. WILLIS. Then you would be repeating the Supreme Court. Mr. BERNHARDT. Except that it does eliminate the question of the mental processes.

Mr. LANHAM. The Supreme Court decision is not based upon the fact that this would be obvious to one skilled in the art. The Supreme Court in the Cuno case goes to what was in the man's mind, how did he happen to discover this? That is no proper test of invention.

The question is, what did this man do, is it new, is it useful and is it an improvement over the prior art? I imagine very few of these discoverers would lay any claims to genius.

Mr. WILLIS. I agree with you that there is room for improvement but I do not know that this is it.

Mr. LANHAM. Of the verbiage presented, I thought perhaps this more nearly met the requirements.

Mr. BERNHARDT. Mr. Chairman, I have an article here which was written by William H. Davis on this subject. He was formerly the Director of Economic Stabilization and also the Chairman of the National War Labor Board and is, I believe, one of the most eminent members of the American patent bar. The subject of the article is the Impact of Recent Supreme Court Cases on the Question of Patentable Invention, and it appeared in the Illinois Law Review of Northwestern University in March 1949.

Mr. TACKETT. Did he not also participate in the investigation that was made?

Mr. HACKLEY. He was chairman, of what I refer to as the Wallace committee.

Mr. BERNHARDT. He recites at some length the attitudes of the courts, principally the Supreme Court, on the validity of patents. He mentions the Cuno case and he also mentions the "flash of genius" rule in the Cuno case has been effectively met by the later case which Mr. Stedman cited in his memorandum, and the Sinclair and Carroll Company v. Interchemical Corporation. He also states, and it is a short paragraph and is interesting for the committee to know about, so I will read it, as follows:

While there are no statistics available, it has seemed to the writer that since the two decisions of the Supreme Court upholding patentability in 1941 and 1943, particularly the Goodyear case in 1943, the attitude of the lower courts has begun to change and to veer from hostility in some instances to a more friendly approach to patents. There are signs that the pendulum is swinging back from an extreme to a more normal approach. The pendulum has swung before from hostility to partiality for patents and it may well do so again.

Mr. LANHAM. But as long as the confusion exists, certainly as recommended by the many witnesses who have appeared, it seems that it should be corrected legislatively with a statute that would obviate any further confusion in that regard.

Mr. TACKETT. Try to keep that pendulum from swinging?

Mr. LANHAM. Keep it from swinging not only against the inventor but against the public, because the incentive of these inventors must be encouraged; their discoveries have made America outstanding. Mr. BRYSON. Does that conclude our witnesses, Mr. Bernhardt? Mr. BERNHARDT. We have Mr. Parry here from the American Patent Association. He addressed the committee at the previous meeting and I do not know whether he has anything further to add

or not.

Mr. PARRY. I would like to comment on the Lanham proposal. I think it is well thought out and well worded. I sincerely believe it would not have any influence on changing the attitude of the court. In regard to the Cuno case, I believe that that decision is based upon the proposition that the invention did not arise to the dignity of invention merely because it was within the skill of the man in the art. I feel that under the proposed test the court would have reached that same result.

Now I feel that the real problem is in the mind of the courts, what is the skill of the man in the art and there is room for a wide latitude of view on it, particularly where as is ordinarily the case, judges do not have a scientific or engineering background and, therefore, it seems to me that you have a problem where it is almost