impossible to lay down a test which will be interpreted on the same level by different courts.

I think that the Supreme Court's attitude on patents has been that they have set a very high standard on the man's skill in the art and if you do that then you are going to reach the results of patentability and invalidity regardless of what test you have in either the case made law or under legislative enactment.

That is all I have, gentlemen.

Mr. BRYSON. Gentlemen, that closes hearings on this matter. (Whereupon, at 11:50 a. m., the subcommittee recessed subject to the call of the Chair.)

(The following was submitted later for the record:)

STATEMENT OF DRURY W. COOPER

I think that this bill will not accomplish a beneficial result. The change it proposes is contained in the addition of the last seven lines, which read as follows: "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 improveinent thereof, may have been accomplished."

This is in a sense in line with the innumerable efforts made by the courts for nearly 100 years past, to define "patentable invention." They cannot define it, and any effort to do so simply leads further into the bog of uncertainty.

Patentable invention is altogether a misnomer. The present statute says that anyone who has "invented or discovered any new and useful art, machine, manufacture, or composition of matter," etc., is entitled to a patent thereon. The difficulty with the law is that the courts have insisted upon attaching meanings to "invention" and "discovery" which are foreign to the words themselves. The words quoted are found in the Constitution (art. I, sec. 8):

"The Congress shall have power * * * to promote the progress of science and useful arts by securing for a limited time to authors and inventors the exclusive right to their respective writings and discoveries."

According to the leading dictionaries at the time the Constitution was adopted, "discovery" is the act of finding anything hidden or the act of revealing or disclosing any secret (Samuel Johnson Dictionary, London 1755; Scott Dictionary, London 1772). "Invention" is defined as a discovery, and "inventor" as a finder out of something new (Johnson's Dictionary, and Scott's Dictionary also).

Since the text of the proposed amendment to section 4886 does not lay down any clear rule to guide the reader as to what is to be regarded as the "nature of the contribution," it would not, in my judgment, do anything but provoke discussion. I propose that for the pending bill there be substituted a bill which shall amend a wholly different section of the patent statutes. That is, I would add to Revised Statutes section 4921 (35 U. S. C. 69) this clause:

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

The section in question is the one that prescribes the defenses that may be raised in patent suits, whether at law or in equity. By prohibiting the court from requiring anything excepting novelty and utility as the basis for a patent, the entire matter will be disposed of.

In support of my proposed amendment I invoke the discussion in a paper published by me in the American Bar Association Journal for April 1949, at pages 306-309, copies of which have alreday been furnished to members of this honorable committee. There will be found a complete analysis of the situation in which patents are at the present time, and I can do no more than reiterate those views in support of my proposed substitute for the pending bill.

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."

Thoroughout 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 appli cations 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 exam. iner 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 weighing 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 inventor's 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:

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 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 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.

REPORT OF SUBCOMMITTEE OF THE LEGISLATIVE COMMITTEE OF THE PATENT LAW ASSOCIATION OF CHICAGO ON BRYSON BILL, H. R. 4798

This bill is another attempt to define invention. It proposes to amend section 4886 R. S. by adding thereto "the yardstick" for measuring invention in accordance with the recommendation made by the National Patent Planning Commission in its first report in 1943.

In brief, the amendment provides that invention shall be determined objectively by the nature of the advance in the art and not subjectively by the nature of the mental processes by which the invention was achieved.

A similar bill, Hartley, H. R. 5248, was acted upon and disapproved by this committee last year. The reasons then given are considered sufficient for disapproving the present bill. They are as follows:

(1) The bill is lacking in definiteness and clarity. Such terms as "objective" and "subjective" are susceptible of varying interpretation which may be varied from time to time. They do not establish any definite standard.

(2) It is believed that if such a bill as the present one were enacted too much weight might be given to commercial success and other factors which are not in and of themselves determinative of invention. It is believed to be far preferable to let the statute remain as it now is and has been for many years, and to depend upon the considered judgment of the Court based upon all the facts and circumstances of each particular case.

Respectfully,

HARRY W. LINDSEY, Jr.,
ROY H. OLSON,
HAROLD OLSEN, Chairman.

The above report was approved by the legislative committee on June 23, 1949, and by the Board of Managers of the Patent Law Association of Chicago on July 7, 1949.

GLEN E. SMITH,

Vice President of the Patent Law Association of Chicago.

STATEMENT OF FRANK KEIPER, ROCHESTER, N. Y.

H. R. 4798 will be under consideration by the patent section of the Judiciary Committee on June 15.

I have heretofore given it as my opinion that any Federal court can declare the last sentence of this bill to be unconstitutional, and I believe that the Supreme Court is especially apt to do so.

It might help this bill if the following was added to the end of it: “The jurisdiction of the Supreme Court is limited accordingly."

It is possible for Congress to limit the appellate jurisdiction of the Supreme Court because article 2, section 2, so provides but I don't believe that Congress can limit the jurisdiction of the lower courts either in law or in equity.

In 1868 Congress passed a law changing an act which was passed in 1867. This law in 1868 took away from the Supreme Court its appellate jurisdiction in cases involving the Habeas Corpus Act. In XP McArdle, 7th Wallace 506, 19 LED 264. the Supreme Court admitted this power of Congress and dismissed the appeal.

The above amendment would leave all the other courts to their own discretion in passing on patent cases and leave them to their own discretion on deciding on what "inventors" means. It would make this bill a slap at the Supreme Court for exercising so much judicial legislation.

I am writing this letter because on May 5, 7, and 12, 1948, the Committee on Judiciary had a hearing on H. R. 5248 and at page 93 of this record is printed a brief presented by Drury Cooper, of New York. In the last two paragraphs of this brief on page 96 he suggests that the power of courts to declare patents invalid on grounds other than novelty and utility be taken away from the courts. I believe this power can be taken away from the Supreme Court but I do not believe that it can be taken away from the lower courts, and if the lower courts see fit to construe the meaning of the word "inventor" as the Supreme Court has done in the Cuno case the Supreme Court can say that it is their power to do so but the Supreme Court cannot reverse their decision if they rule otherwise.

The judicial legislation of the Supreme Court follows a prediction made by Jefferson and his followers made after Marshall made his decision in Marbury v. Madison in 1803. Jefferson predicted that this autocratic power exercised by the courts could be used in a very destructive way and could be expanded indefinitely and was therefore a power with which no court could be trusted.

In deference to the powers of Congress the Supreme Court has used this power sparingly, and up to 1935 has declared but 75 acts of Congress unconstitutional; since then it has used this power rather frequently. The policy of the Court in patent cases following its decision in the Cuno case (314 U. S. 84) threatens to wreck the patent system. Some of the facts in connection therewith are set forth in Mr. Cooper's paper above referred to and in the brief which I have just submitted.

About 35 years ago Theodore Roosevelt advocated not so much an amendment to the Constitution as a referendum on decisions, and it is a fair question whether the power of the Supreme Court to declare certain laws unconstitutional should not be subjected to such a referendum and whether its power to interpret the word "inventors" should not be subjected to such a referendum as well.

Over half the things exhibited at a New York recent exposition and now extensively manufactured and sold were unknown 40 or 50 years ago, and the manufacture of such patented articles has expanded employment and increased tremendously the prosperity of the country. All this should be credited to the patent system.

Therefore, I submit the above for your consideration.

[From the Columbia Law Review, May 1949]

THE SUPREME COURT AND THE "STANDARD OF INVENTION"

1

Recent devisions by the Supreme Court have presented anew a problem ever recurrent in patent law, the determination of what constitutes the requisite “invention" entitling the inventor to the 17-year monopoly conferred by the patent

1 Graver Tank & Mfg. Co. v. Linde Air Products Co., 69 Sup. Ct. 535 (1949); Jungersen v. Ostby & Barton Co., 69 Sup. Ct. 269 (1949); Mandel Bros. v. Wallace, 335 U. S. 291 (1948).

statute. These decisions seem to confirm the growing conviction that in the last few years there has emerged a new doctrinal trend wherein the Court has become increasingly more exacting in the quantum of creative effort necessary to sustain a patent the validity of which has been challenged by the defendant in an infringement suit. It is the purpose of this note to inquire into the existence of such a trend and the desirability thereof.

Contributing to the belief that new and more stringent standards are being applied has been the exceptionally high proportion of decisions which have invalidated patents for want of invention. A statistical break-down of the 33 cases since 1930 in which the question of invention was raised and specifically decided by the Court discloses that in only 5 was the validity of the patent upheld. In three of the five," including the most recent adjudication of patentability, great weight was accorded to concurrent findings of the two courts below." Two cases involved patents found to have satisfied a long-felt want.' In such a situation, although the advance made by the invention may seem simple or even obvious in retrospect, the fact that it solves a recognized problem which has baffled the contemporary art is accepted as proof that more was involved in its conception than a mere mechanical application of existent knowledge. Only one of the five cases presented neither of these factors. There a patent on a minor development in a crowded field was held valid but not infringed." The remaining 28 cases held that the patent in controversy was invalid for want of invention.1o

2 Rev. Stat. § 4886 (1875), 35 U. S. C. § 31 (1946): "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof [may] obtain a patent therefor."

Rev. Stat. § 4884 (1875), 35 U. S. C. § 40 (1946): "Every patent shall contain * * a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery * throughout the United States and the Territories thereof. * * *""

*

See Brown, Developments in the Patent law as Effected by Adjudications, 22 J. Pat. Off. Soc'y 587 (1940); Dodds and Crotty, The New Doctrinal Trend, 30 J. Pat. Off. Soc'y, 83 (1948); Evans, Disposition of Patent Cases by the Courts, 24 J. Pat. Off. Soc'y 19, 24 (1942) Grottschalk, Some Recent Patent Decisions and Current Trends, 25 J. Pat. Off. Soc'y 81, 88 (1943); Smith, Recent Developments in Patent Law, 44 Mich. L. Rev. 899, 903 (1946).

Graver Tank & Mfg. Co. v. Linde Air Products Co., 69 Sup. Ct. 535 (1949); Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U. S. 275 (1944); William Mfg. Co. v. United Shoe Machinery Corp., 316 U. S. 364 (1942); Bassick Mfg. Co. v. R. M. Hollingshead Co., 298 U. S. 415 (1936); Smith v. Snow, 294 U. S. 1 (1935), rev'd on other grounds, Smith v. Hall, 301 U. S. 216 (1937) (proof of anticipation). This list does not include simultaneously decided cases involving different parties but the same patent. In addition, there were two cases holding that there was no infringement in which the patent in question was assumed to be valid but not so decided. Smith v. Magic City Kennel Club, Inc., 282 U. S. 784 (1931); Saranac Automatic Machine Corp. v. Wirebounds Co., 282 U. S. 704 (1931).

Graver Tank & Mfg. Co. v. Linde Air Products Co., 69 Sup. Ct. 535 (1949); Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U. S. 275 (1944); Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U. S. 364 (1942); see Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U. S. 471, 473 (1944). It is interesting to note that these cases are the only ones in which a patent has been held valid since 1936.

In this situation the findings are examined to determine whether there has been obvious error in the proceedings below, and not to consider de novo the issue of patentability. See cases cited note 29 infra. Hence the scales are heavily weighted on the side of validity. Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U. S. 275 (1944); Smith v. Snow, 294 U. S. 1 (1935). See also Comments on "Standard of Invention" (Anonymous), 26 J. Pat. Off. Soc'y 619 (1944).

The best recent expression of this rationale is to be found in the opinion of Judge Learned Hand, adopted by the dissenting justices in Jungersen v. Ostby & Barton Co., 69 Sup. Ct. 269, 274 (1949) ("What better test of invention can one ask than the detection of that which others had all along strong incentive to discover, but had failed to see, though all the while it lay beneath their eyes?").

Bassick Mfg. Co. v. R. M. Hollingshead Co., 298 U. S. 415 (1936).

10 Jungersen v. Ostby & Barton Co., 69 Sup. Ct. 269 (1949); Mandel Bros v. Wallace, 335 U. S. 291 (1948); Funk Bros. Seed Co. v. Kalo Innoculant Co., 333 U. S. 127 (1948) General Electric Co. v. Jewel Incandescent Lamp Co., 326 U. S. 242 (1945); Sinclair & Carroll Co. v. Interchemical Corp., 325 U. S. 327 (1945); Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U. S. 320 (1945); Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U. S. 471 (1944); Marconi Wireless Telegraph Co. v. United States, 320 U. S. 1 (1943); Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941); Detrola Radio & Television Corp. v. Hazeltine Corp., 313 U. S. 259 (1941); Standard Brands, Inc. v. National Grain Yeast Corp., 308 U. S. 34 (1939); Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350 (1939); Honolulu Oil Corp. v. Halliburton, 306 U. S. 550 (1939) Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U. S. 545 (1938); Tertile Machine Works v. Louis Hirsh Textile Machines, Inc., 302 U. S. 490 (1938) Mantle Lamp Co. v. Aluminum Products Co., 301 U. S. 544 (1937); Essex Razor Blade Corp. v. Gillette Safety Razor Co., 299 U. S. 94 (1936); Stelos Co. v. Hosiery Motor-Mend Corp., 295 U. S. 237 (1935); Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U. 8. 477 (1935); Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U. S. 464 (1935): Keystone Driller Co. v. Northwest Engineering Corp., 294 U. S. 42 (1935); Electric Cable Joint Co. v. Brooklyn Edsion Co., 292 U. S. 69 (1934); DeForest Radio Co.