“Obviously, invention is being discouraged and the progress of science and useful arts is being arrested." Is it obvious that the number of patents issued can be an index of inventive activity? The number of patents issued in a given year is no doubt a measure of work accomplished by the Patent Office in that year, but in times of accumulating backlog and short-handed staff the rate of issue, it would seem, bears little or no relation to what inventors are pouring into the Office in the form of patent applications.

A better guide to inventive activity, it is submitted, is to be found in the number of applications which annually reach the Patent Office. Measured by that test, we live today in a time of unprecedented inventive output. The past 4 years have been marked by a flood of applications pouring in upon the Patent Office which exceeds that of any similar period in its long history.

NUMBER OF PATENT APPLICATIONS SLOWED DURING WAR YEARS

Let us look at the record. During the five fiscal years ending on June 30 from 1936 to 1939, inclusive, the number of applications filed in the Patent Office averaged approximately 64,000 per year, with a slow upward trend reaching a peak a little short of 67,000 in 1938 and 1939.

The fiscal year ending June 30, 1940, marked the beginning of a 4-year decline in the rate of inflow of new applications which reached its bottom in the fiscal year ending in 1943 when only 43.870 applications were filed. It is scarcely credible that the progress of science and useful arts was arrested in this country during the years from 1939 to 1943. As all of us who had to do with such matters well remember, those were the years in which industry passed through a phase of intensive mobilization for war production. They were also years of vigorous and widespread development of the inventions needed to win a global war. A considerable part of this work was done without thought of patent protection, and to that extent it sensibly diminished the number of new applications reaching the Patent Office.

But, beginning with the fiscal year ending June 30, 1944, when thoughts of reconversion were stirring, the number of new patent applications began once again to increase. As VE- and VJ-days passed, this tide rose to the greatest flood which the Patent Office has ever experienced, and it still continues today. In each of the three fiscal years ending in 1946, 1947, and 1948, the number of new applications was well above 70,000, and there is every reason to expect that before June 30, 1949, over 70,000 will have been filed in the year ending on that date.

Since the tide of new applications began to gain as far back as 1944, and reached an all-time high in 1946, one may well ask why only 20,262 patents issued in 1947. The answer is to be found in the curtailed wartime staff of the Patent Office, the need for breaking in large numbers of new junior examiners after the war ended, and pressures which have continued since the war to operate the Office economically. The result today is a gigantic backlog of applications awaiting action. From 1935 to 1943 this backlog stood, on the last day of each year, in the general area from 35,000 to 45.000 applications. Then it began to soar in 1944 to 52.669; in 1945 to 86,957: in 1946 to 128.423; in 1947 to about 142,000. Currently it stands at about 149,000. The rate of growth has been checked, but the Patent Office still staggers under a fantastic burden of work. One manifestation is the growing length of the pendency of applications—of the 349 patents which issued on Tuesday, December 23, 1947, a little over 51 percent had been pending for more than 3 years. Long pendency (measured in this way) stands today close to the highest figures known in the present century.

"PROGRESS OF SCIENCE” IS FLOURISHING

Evidently, then, the "mistake" which the Supreme Court first made in 1850, and has been making steadily ever since, has not had the effects (which Mr. Cooper ascribes to it) of discouraging invention or arresting the progress of science and useful arts. On the contrary, if current congestion in the Patent Office means anything at all, it means that in these postwar years the progress of science and useful arts has been phenomenally vigorous and healthy. The argument which Mr. Cooper makes, that "quite likely ** wherever possible, inventors are keeping their discoveries secret," is not one for which support can be found in the current records of the Patent Office.

Nor is it readily apparent how Congress would have the power to enact Mr. Cooper's proposed remedial statute. Its purpose and effect, according to its sponsor, would be to deprive the courts of the power to inquire whether a patented device exhibits more ingenuity than that of a man skilled in the art. But the Constitution provides for the grant of patents only to inventors. Congress may therefore provide for their issuance only to persons whom the courts find to be within that favored class. The Hotchkiss case decided that a man is not an inventor unless his patented device, when compared with what was known as the date of first conception, exhibits more ingenuity than was possessed by ordinary men skilled in that art on that date. As late as 1941 the Court deliberately adhered to that constitutional interpretation, and expressly reaffirmed the Hotchkiss case.

How then can Congress, by legislation, direct the Court to construe the Constitution otherwise? Surely it would be an anomaly in our scheme of law if Congress could, by statute, compel a construction of the Constitution which would give to it a power which the courts have held it does not possess namely, the power to grant patents to persons not theretofore classed as inventors. Yet, this is the remedy which Mr. Cooper would have us adopt. To say that it would be a vain thing is but a partial answer; it would make confusion worse confounded.

What then are the causes of Mr. Cooper's alarm, and what can be done about them?

He is disturbed, as patent lawyers have been for generations, at the large proportion of patents which fall when put to the test of litigation.

Mr. Cooper does not tell us why this is so, but he suggests in effect that a finding by the Patent Office that a particular device is patentable should be treated by the courts as a binding administrative determination, presumptively correct if supported by any evidence and to be overturned only if unsupported by evidence or wholly capricious.

PATENT OFFICE CANNOT DECIDE VALIDITY OF PATENTS

However desirable it would be to have the decision of the Patent Office final upon the point of validity, the experience of almost a century in this country, and of very nearly the same length of time in the courts of Great Britain and Canada, has shown that unhappily we cannot accord such weight to the decision of a patent examiner. Patents are obtained ex parte. An examiner makes the best search he can in the time available to him for examining each of the many cases for which he is responsible. It is greatly to the credit of the Patent Office, and to the chiefs of its 69 patent-examining divisions, that in so large a proportion of the cases coming before them they do a surprisingly good job. But no action upon a patent application is any better than the search which lies behind it. As the arts today multiply and expand, searching becomes ever more difficult and slow. Searching, by and large, is the responsibility of the junior examiner, of whom hundreds have newly come to work in the Patent Office since the war. The junior is faced with a classification system in which existing United States patents are arranged by subject matter in some 43,000 subclasses. As his experience grows, he makes up his own further unofficial subclasses in the areas of his responsibility. But only United States patents are included in the general classification system-technical journals and foreign patents, though equally applicable on the issue of patentability, are not classified for him. He must in some way keep abreast of the expanding literature and the large numbers of incoming copies of foreign patents, often poorly indexed or not indexed at all, to keep his own private classes up to date. On top of this, he is necessarily driven by the volume of work pressing upon him, and has a reputation to make with his superiors for efficiency and despatch of business.

Under these circumstances it is hardly to be wondered that a certain number of applications go to issue notwithstanding the existence, undiscovered by the examiner, of some prior patent or publication which seriously impugns novelty. These, by and large, are the patents which become the subject of Mr. Cooper's "terrific slaughter" in the courts. An excellent example is the patent held invalid in Cuno Corp. v. Automatic Devices Corp. (314 U. S. 84 (1941)). In that case each of the principal prior patents relied on by the Supreme Court in holding the Mead patent invalid was a patent which the examiner had failed to find when Mead's application was being examined.

8 Cuno Corp. v. Automatic Devices Corp. (314 U. S. 84 (1941).

MOST PATENTS ARE NEVER LITIGATED

In the years immediately preceding the recent war, about 40,000 patents issued annually, and it is not unlikely that this rate will be reached and exceeded in the years soon to come. Yet, only a few hundreds of patents reach the courts annually. The great majority are never litigated, and of these by far the largest part probably consists of those for ideas, originally good, which died aborning. Another group, not so large, go into widespread use, are generally respected, earn royalties for their owners and never get into court during their allotted span of 17 years. Between these lie the relatively few patents whose inventions are used, or asserted to be used, and as to which validity or infringement is so closely in question that only litigation can settle the issue. The attitude of the courts toward patents is important chiefly as it affects this lastmentioned and actually very small number of patents, which sometimes are shrouded in doubt and controversy from the day they issue.

If it be thought that the attitude of the courts toward these patents is tough (as indeed it is), the remedy is not to be found in a statute purporting to change the rules of decision. The rule now is, and has been since Hotchkiss v. Greenwood in 1850, that an idea, to be an invention, must possess more ingenuity than was contemporaneously available to the "man skilled in the art." This hypothetical "man" constitutes the working standard of reference. The task of ascertaining his skill, as background for deciding a patent case, is exactly the same as ascertaining the care which a reasonably prudent man would have Exercised on a highway. But the "man skilled in the art" does not, like the reasonably prudent man on the highway, remain about the same from year to year. The "man skilled in the art" is forever growing more skilled and better informed. He is far better equipped today than he was in the days of our fathers. Today he is an average contemporary engineer or chemist, 1949 model, with all the information, resources, and background currently available to an educated man in his field. Ten years hence he will be substantially better informed and have substantially greater resources than he has today.

Judge Frank put his finger upon the phenomenon of a moving standard of reference when he wrote:

* It may be said that there is a correlation between Supreme Court patent decisions and the fundamental sources of technological advances; that, at the bottom, it is not the courts' attitude that has been modified but the nature of scientific study."

Judge Evans put it more bluntly:

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"For the skill of the mechanic probably in most fields in 1940 was higher than it was in 1900, which in turn was higher than it was in 1860. Better education, greater familiarity with machines, wider experience with equipment, and participation in producton of more complicated machinery have raised the aptitude of him whom we call the mechanic. And it must be always kept in mind that patentable novelty or invention calls for something more than the skill of the mechanic."

Once we recognize that the courts have not changed their measure, but that there has been a steady advance of the standard or datum to which their measure refers, we shall see more clearly why the so-called "tightening up," of which some say the courts are guilty, is no more than a commendable effort to keep invention abreast (i. e., one step ahead) of advancing common knowledge, and thereby to prevent retrograde movement.

COURTS SHOULD HAVE POWER TO JUDGE "INGENUITY"

To deprive the courts by statute (assuming it were constitutionally possible) of their power to judge the quantum of ingenuity involved in a patent would deprive them of the ability to keep invention ahead of common knowledge in an age of startling advance, would flood the country with patent monopolies based on mechanical skill or less, and would debase the patent system into an unseemly scramble to anticipate probable lines of competitive development.

If patents today are in the "hopeless position" to which Mr. Cooper refers, the remedy lies rather in bettering the examination techniques of the Patent

Picard v. United Aircraft Corp. (128 F. (2d) 632, 640-641 (CCA 2d, 1942, concurring opinion)).

10 Chicago Steel Foundry Co. v. Burnside Steel Foundry Co. (132 F. (2d) 812, 815 (CCA 7th, 1943)).

Office. A corps of examiners, sufficiently numerous to give careful and unhurried attention to each incoming application, and sufficiently skilled to make thorough searches in every case, will go far to narrow the scope, or prevent the issue, of those patents which may otherwise go to the judicial graveyard. A backlog of 149,000 applications pending and not yet acted upon approaches the dimensions of a national scandal. A weekly issue of patents of which more than half have been pending for over 3 years is contrary to the public interest.

Credit is due to the present Commissioner of Patents, Lawrence C. Kingsland, and to his immediate predecessor, Casper W. Ooms, for devoted and largely thankless public service in trying to cope with the mounting backlog of work, and in recruiting able young men for the examining staff. But the Commissioner of Patents must make do with the money Congress gives him. In point of cost, the Patent Office today is one of the smaller agencies in Washington, operating on a smaller annual appropriation than several bureaus whose relation to the national life is considerably more limited. Economy-minded Congressmen, fired by a laudable ambition to reduce the cost of Government, are prone to slash deeper than they think. The Patent Office regularly gets less money than it asks. No other force save the force of public opinion can secure for this arm of Government all it needs to serve the public interest well.

Return to the pre-1836 system of granting patents without examination is unthinkable in our day and age. If examination were abandoned, the position of patents would indeed soon be hopeless. But it does not lie beyond the power of Congress, nor the resources of the Federal taxpayer, to provide machinery which will bring patents into a much higher judicial esteem. What is needed is to get away from the thinking which so often limits Patent Office appropriations to estimated Patent Office fee receipts, and to frame those appropriations in the light of the public interest in granting patents for true inventions and denying patents for those ideas which are noninventive by existing judicial standards. If perfection cannot be wholly achieved in this respect, we can at least take steps in the right direction. Most important among these steps is a Patent Office appropriation policy which will provide a material increase in the number of examining positions, job security for employees, pay sufficient to prevent undue turn-over, modest but adequate office and filing space, civil-service ratings comparable to the responsibilities involved, opportunities for promotionall under adequate management and supervision. This remedy, clearly within the congressional power, would go far to attack the trouble at its root, rather than merely to gloss over and conceal one of its disagreeable symptoms.

The remedy for Mr. Cooper's "terrific slaughter" of patents does not lie in curtailment of judicial power to slaughter, but in such improvements in examination facilities as will control the issue of those few patents which cause most of the trouble.

[Reprinted from the Illinois Law Review of Northwestern University, Vol. 44, No. 1, March-April 1949]

THE IMPACT OF RECENT SUPREME COURT CASES ON THE QUESTION OF
PATENTABLE INVENTION

(By William H. Davis*)

In the last decade, the Supreme Court has considered nearly twice as many cases involving patent questions as during the entire preceding period of about four decades since 1896, when the effect of the act of 1891 changing the Court's appellate jurisdiction really began to be felt.' This increase was to a considerable extent a matter of choice on the Court's part since approximately twothirds of these cases were brought up on the discretionary ground that they involved some question of importance and only the remaining one-third involved conflict of decisions, a practically mandatory ground for review.

*Former Director of Economic Stabilization and Chairman of the National War Labor Board, now returned to the active practice of law in New York City. Chairman of the Department of Commerce Patent Survey Committee and of the Patent Advisory Panel of the Atomic Energy Commission.

126 Stat. 826 (1891), 28 USCA § 212 (1927). The Act did not transfer pending cases to the newly created Circuit Court of Appeals and as a result the court continued to handle direct appeal cases in substantially the same volume as before until toward the end of 1895.

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This increase in the number of patent cases considered by the Court manifests that tribunal's concern with the workings of the patent system, and presumably its belief that there was need for more active supervision on its part. In more than two-thirds of these cases, however, the question of patentable invention was not reached or involved. The bulk of the cases related to other matters, such as the use of patents in violation of the antitrust law or in a manner contrary to public policy; questions of the sufficiency of the specification or claim; the interpretation of patents; improper enlargement of the scope of protection during application for the patent or its reissue; questions of procedure, including venue and jurisdictional questions; and miscellaneous eases relating to the validity or effect of license and assignment provisions." None of these cases throws any direct light on the question of patentable invention and the standards by which its presence or absence is to be gaged. It must be acknowledged, however, that the opinions in these cases, particularly in the antitrust and misuse cases, give the impression of some antipathy or at least of a critical approach toward the patent system. Emphasis is repeatedly placed on the monopoly aspects of patents and very little recognition, if any, is given to the incentive which the grant of the limited monopoly contributes to the progress of our industrial economy. Patents are viewed as grants which "are to be strictly construed."

It is difficult to evaluate how much the impression of antipathy which these decisions appear to create has affected the attitude of the lower courts toward all patent subjects, including the subject of patentable invention. That it has had some effect is probably undeniable. But that goes beyond the scope of this article, which is limited to a discussion of the recent Supreme Court decisions on the question of patentable invention itself.

There has been judicial comment to the effect that the decisions of the Court on the question of patentable invention "have shown an increasing disposition to raise the standard of originality necessary for a patent" and require "a high standard" of invention, a change characterized as "a pronounced new doctrinal trend." There is little support for such a conclusion either as a matter of statistics or from the content of the decisions on the question of patentable invention.

In the last decade the Supreme Court has had occasion to pass on the question of patentable invention in 14 cases.' Of these, nine cases came up because of

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Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488 (1941); B. B. Chemical Co. v. Ellis, 314 U. S. 495 (1941); United States v. Univis Lens Co., 316 U. S. 241 (1941); United States v. Masonite Corp., 316 U. S. 265 (1941); Sola Electric Co. v. Jefferson Electric Co., 317 U. S. 173 (1942); Altvater v. Freeman, 319 U. S. 359 (1942); Mercoid Corp. v. MidContinent Co., 320 U. S. 661 (1943); Mercoid Corp. v. Minneapolis-Honeywell Reg. Co., 320 U. S. 680 (1943): Hartford-Empire Co. v. United States, 323 U. S. 319 (1946): International Salt Co. v. United States, 332 U. S. 392 (1947); United States v. Line Material Co., 333 U. S. 287 (1948); United States v. United States Gypsum Co., 333 U. S. 364 (1948).

3 United Carbon Co. v. Binney Co., 317 U. S. 228 (1942); Special Equipment Co. v. Coe, 324 U. S. 370 (1944): Halliburton Oil Well Cementing Co. v. Walker, 329 U. S. 1 (1946). Shriber-Schroth Co. v. Cleveland Trust Co., 311 U. S. 211 (1940); Exhibit Supply Co. v. Ace Patents Corp., 315 U. S. 126 (1941).

United States Industrial Chemicals Inc. v. Carbide and Carbon Chemicals Corp., 315 U. S. 668 (1941); Muncie Gear Works, Inc. v. Outboard Marine and Manufacturing Co., 315 U. S. 750 (1941): Milcor Steel Co. v. George A. Fuller Co., 316 U. S. 143 (1941): Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U. S. 806 (1944).

Stonite Co. v. Melvin Lloyd Co., 315 U. S. 561 (1941); Coffman v. Breeze Corp., 323 U. S. 316 (1944); Coffman v. Federal Laboratories, Inc., 323 U. S. 325 (1944); Hoover Co. v. Coe, 325 U. S. 79 (1944); McCullough v. Kammerer Corp., 331 U. S. 96 (1946). Scott Paper Co. v. Marcalus Co., 326 U. S. 249 (1945); Katzinger Co. v. Chicago Manufacturing Co., 329 U. S. 394 (1946); Transparent-Wrap Machine Corp. v. Stokes and Smith Co., 329 U. S. 637 (1946).

United States v. Line Material Co., 333 U. S. 287 (1948). By contrast see Justice Burton's dissenting opinion in the same case where he speaks of the "infinite" and "crucial" importance of inventions and the court's duty to protect the patent policy of this nation "against intrusions upon it", 333 U. S. at 331-332.

Picard v. United Aircraft Corp., 128 F. (2d) 632, 636 (C. C. A. 2d 1942); United States Gypsum Co. v. Consolidated Expanded Metals Co.. 130 F. (2d) 888, 892 (C. C. A. 6th 1942).

10 Honolulu Oil Corp. v. Halliburton, 306 U. S. 550 (1938); Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350 (1938); Standard Brands Inc. v. National Grain Yeast Corp., 308 U. S. 34 (1939); Detrola Radio and Television Co. v. Hazeltime Corp., 313 U. S. 259 (1940); Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941): Williams Manufacturing Co v. United Shoe Machinery Corp., 316 U. S. 364 (1941); Marconi Wireless Co. v. United States, 320 U. S. 1 (1942); Goodyear Tire and Rubber Co., Inc. v. Ray-O-Vac Co., 321 U. S. 275 (1943) Universal Oil Co. v. Globe Co., 332 U. S. 471 (1943); Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U. S. 320 (1944); Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U. S. 327 (1944); General Electric Co. v. Jewel Incandescent Lamp Co., 326 U. S. 242 (1945); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Mandel Brothers Inc. v. Wallace, 335 U. S. 291 (1948).