conflict of decision with respect to the validity of the patent. In all these conflict cases, the Court held the patent invalid. The remaining five cases were brought up on discretionary grounds because of the importance of the question involved or of the effect of the patent on the industry involved. In two of these cases, the decision below sustaining the patent was upheld and in the other three it was reversed. One might infer from the relatively few cases taken up on discretionary grounds that the Supreme Court has less grounds of complaint with the lower court decisions on the question of patentable invention than with decisions on other aspects of the patent law. Certainly the record of cases taken up furnishes no ground for thinking that the Court feels the need of radically revising the law as to what is a patentable invention. It may come as a shock that out of 14 cases the Supreme Court has sustained the patents in only 2. At first blush, this would seem to be loading the dice heavily against the patentee and to justify the suggestion that the standards of invention have been raised to new high levels. But this record of performance is neither new nor unusual. The two cases sustaining patents are Williams Manufacturing Co. v. United Shoe Machinery Corp.,11 decided during the 1941 term, and Goodyear Tire and Rubber Co. v. Ray-O-Vac Co.,12 decided during the 1943 term. Prior to the Williams case, we have to go back to the 1934 term before we find an earlier decision 13 sustaining a patent where the question of patentable invention was in issue, a 7-year span. Curiously enough we have to go back another 7 years before we find another such case.' The record of the Supreme Court in the last decade therefore does not compare unfavorably with its record in the previous two decades when the members of the Court had the reputation at least of being more conservative than the present ones. In fact, in the period from 1895 to date, only 13 patents have been sustained in cases where the question of patentable invention was at issue. 14 The record of heavy mortality of patents in the Supreme Court is one of long standing. Periodically it leads the lower courts to think that perhaps a new trend has been established. That is the impression expressed in 1942 in the Picard 15 and United States Gypsum 16 cases previously referred to. A similar view was expressed by Judge Putman in 1894 as a result of a stream of Supreme Court decisions invalidating patents.17 But there is really no more basis for that view than there was in 1894 at least so far as mere statistics are concerned. The reason for the heavy mortality of patents in the Supreme Court is not difficult to explain. Strong patents are usually respected. In most instances, the stakes involved are so high that infringers or prospective infringers will not run the risk of a judicial contest unless the question of patentable invention is sufficiently doubtful to give a fair prospect of a successful defense. By and large, validity must be questioned by responsible patent lawyers before any question of patent validity can get into the courts at all. From the very nature of things, therefore, many of the patents litigated present borderline cases where the margin of novelty is small and the question whether the small change amounts to a patentable invention is a close one. It is not surprising, nor is it any cause for alarm, that the lower courts do invalidate a large proportion of the patents that come before them. If this is true of the run-of-the-mill case in the lower courts, it is all the more true of cases reaching the Supreme Court. It must be remembered that most of the cases involving the issue of patentable invention considered by the Supreme Court are conflict cases. This means that two courts of appeals on different records have reached opposite conclusions as to the validity of the same patent. Not infrequently the difference in decision can be explained by differences in the records, often resulting from a more thoroughgoing defense in the second case. If both records or the more unfavorable record comes before the Supreme Court, one would expect the Court in most cases to follow the court holding the patent invalid. In any event, the fact that two courts of appeals have disagreed on the question of patentability establishes that the issue is a close, even a doubtful, one. Under such circumstances, a heavy 11 316 U. S. 364 (1941). 12 321 U. S. 275 (1943). 13 Smith v. Snow, 294 U. S. 1 (1934). 14 Richmond Screw Anchor Co. v. United States, 275 U. S. 331 (1927). 15 Picard v. United Aircraft Corp., 128 F. (2d) 632 (C. C. A. 2d 1942). 18 United States Gypsum Co. v. Consolidated Expanded Metals Co., 130 F. (2d) 888 (C. C. A. 6th 1942). 17 Gamewell Fire Alarm Telegraph Co. v. Municipal Signal Co., 61 Fed. 948, 952-953 (C. C. A. 2d 1894). patent mortality rate is the normal expectancy, and the record of the Supreme Court in the last decade can hardly be said to be indicative of a new trend. It merely follows the old. If we are to find a "pronounced new doctrinal trend," we must find it in the nature of the decisions rather than from any statistics as to the number of patents validated or invalidated. When we turn to the decisions themselves, we find the Court reiterating the same tests of patentable invention which have been applied by the Court for practically a century. In some recent decisions, the classic tests may possibly have been applied with greater severity or perhaps, shall we say, with more sophistication than in the past, but that is the nearest to a trend that can be observed. And even that cannot be maintained with any confidence. As a matter of decision, taking the facts to be as stated in the opinions, it is difficult to contend, with perhaps one exception,18 that any of the recent decisions is wrong based on past standards or that any earlier bench of the Court would have reached a different result. All of the patent statutes, beginning with the first in 1793,19 have authorized in substantially similar language the grant of a patent to any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter. The early textbook writers, particularly Curtis, looking for an objective measure of patentability, adopted as their primary test the conditions set forth in the statute, namely, that the matter to be patented must be new and useful. The question of the skill required or the amount of invention involved in producing the thing patented was taken into consideration by these writers only indirectly in determining the question of novelty. If the thing patented possessed real utility, that was taken as disposing of the matter of invention. Under such circumstances, "a sufficiency of invention may be presumed," said Curtis. This approach to the statute and the pragmatic tests to which it gave rise was given considerable though not universal approval by the courts. For example in the dissenting opinion in Hotchkiss v. Greenwood," Justice Woodbury noted that the charge in question was for the jury not to consider the patented doorknob patentable "if an ordinary mechanic could have made or devised it; whereas in my view the true test of its being patentable was, if the invention was new, and better and cheaper than what preceded it." " The earlier authorities in support are reviewed in his opinion. The majority opinion committed the court to a third requirement of patentability, namely beyond mere novelty and utility, the thing patented must involve invention in its production. And what constitutes invention or lack of it was defined in these words: "* * * unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor." That, in essence, states the test of patentable invention which has been applied ever since. The requirement of the presence of invention as an essential of patentability became firmly fixed in the law. The subject was again reviewed in Thompson v. Boisselier," and the intervening authorities discussed, and so far as appears the law as thus established was not questioned until recently in the Cuno case.24 There petitioner attacked the decision of Hotchkiss v. Greenwood as without basis in the statute and contended that the only conditions of patentability prescribed in the statutes are novelty and utility. Petitioner's brief stated, "While the word 'invention' connotes origi 19 22 25 18 The exception is Funk Brothers Seed Co. v. Kalo Inoculant, 333 U. S. 127 (1947), if the majority's premise in that case is taken to be that the discovery of a new quality in existing products cannot be taken into account at all on the question of patentable invention, even where the patented thing has undeniably the quality of novelty. Such a premise as that could, as Justice Frankfurter acutely observed in his separate opinion, "fairly be employed to challenge almost every patent." Fortunately the Court seems to have resisted Justice Douglas' desire to extend this doctrine by failing to base their decision in the subsequent case of Mandel Brothers v. Wallace, 335 U. S. 291 (1948) on the Funk case, as Justice Douglas alone did. 19 1 Stat. 318 (1793). 20 52 U. S. 247 (1850). 21 Id. at 268. 22 Id. at 267. 23 114 U. S. 1, 11-15 (1885). Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941). 25 52 U. S. 247 (1850). nality it does not involve any idea that a little, or much, genius is required. * * * The degree of ingenuity, we submit, is not the test. Rather, the test is, Is the invention new?" The Supreme Court reaffirmed the rule of the Hotchkiss case, stating the rule first in language comparable to that used in that case and, after citing additional authorities, proceeded to again restate the rule possibly in such a way as to refute the statement above quoted from petitioner's brief as follows, "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." 26 The majority concluded its opinion with the statement that considerations of public interest "prevent any relaxation of the rule of the Hotchkiss case." 27 Set in this background, there does not appear to be a reasonable basis for the belief that any new rule or standard was intended to be established. There was only a reaffirmation of the classic test of invention first established in the Hotchkiss case.28 30 29 The novelty of the expression "flash of genius," however, at first led the courts to believe that more was intended. As time went on and as the background of the case was more fully explored, the courts came to recognize that such was not the case.2 The expression "flash of creative genius" is nevertheless an unhappy one since it seems to suggest that the mental processes of the patentee have something to do with the case. That possible inference has been dispelled by the later case of Sinclair & Carroll Co. v. Interchemical Corp.1 where the Court said that "it is not concerned with the quality of the inventor's mind, but with the quality of his product." It would not be feasible within the bounds of space permissible for an article of this sort to undertake to analyze the facts in the recent decisions and to compare these decisions with such of the earlier decisions as presented the most nearly comparable circumstances, and it probably would not be of much help. It is the belief of the writer that the impact on the lower courts of the Supreme Court decisions has not resulted from any particular decision or from their quality taken separately or as a whole but rather from the cumulative effect of a succession of unfavorable decisions. That effect would be felt, it is believed, whether the decisions were sound or not. The continued mortality of patents in the Supreme Court undoubtedly had a substantial impact on the decisions of the lower courts. For instance, published statistics indicate that during the period 1929-34 the courts of appeal on the average sustained and held infringed approximately 31 percent of the patents brought before them," while in the period from 1936 to 1941 only approximately 16 percent on the average were held valid and infringed.33 This is a sharp drop, greatly more than could reasonably be explained by any difference in methods of compilation or in deciding questions of infringement. It must be partly, if not largely, due to the more critical application of the tests of invention, in other words, a higher standard of invention. 34 While there are no statistics available, it as 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. It must be admitted, however, that the situation so far as patent enforcement in the courts is concerned had reached a dangerous extreme. Patent lawyers all over this country were giving serious consideration to the desirability of advis 26 Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 91 (1941). 27 Id. at 92. 28 Hotchkiss v. Greenwood, 52 U. S. 247 (1850). The decision in Jungersen v. Ostby & Barton Co., U. S. -, 69 S. Ct. 269 (1949) is another instance of the application of that test to particular facts. The sharp division of opinion on the Court evidences the great difficulty inherent in a subjective evaluation of facts at this critical point of the patent lawhow to differentiate the creative work of the inventor from the merely imitative performance of the skilled mechanic. 29 Trabon Engineering Corp. v. Dirkes, 136 F. (2d) 24. 27 (C. C. A. 6th 1943); Brown & Sharpe Manufacturing Co. v. Kar Engineering Co., 154 F. (2d), 24, 27 (C. C. A. 1st 1946), 30 See comment of Justice Frankfurter, dissenting in Marconi Wireless Co. v. United States, 320 U. S. 1, 62 (1943). 31 325 U. S. 327, 331 (1945). 32 Fredriuo, Preliminary Survey of Adjudicated Patents, 1929-1934 (1936) 18 Journal of the Patent Office Society 685, 693. 33 Evans, Disposition of Patent Cases by the Courts (1942) 24 Journal of the Patent Office Society 19, 21. 34 Goodyear Tire and Rubber Co. v. Ray-O-Vac Co., 321 U. S. 275 (1944); Williams Manufacturing Co. v. United States Machinery Corp., 316 U. S. 364 (1942) inf their clients to rely on secrecy, where that is possible, rather than on the increasingly uncertain protection afforded by the patent laws as practically applied by the courts. And some lawyers were actually giving this advice to their clients. Since the principal object of the patent laws is to encourage disclosure of inventions in return for the grant of a limited monopoly, the adverse trend of the lower court decisions if continued might seriously have impaired the effectiveness of the patent system in its function of promoting the progress of the useful arts and sciences. It might well have resulted in important sections of our industrial economy becoming enmeshed in veils of secrecy. It is to be hoped that that danger has been permanently averted. BINGHAMTON, N. Y., June 30, 1949. Re H. R. 4798, to declare the national policy regarding test for determining invention. SUBCOMMITTEE No. 4-PATENTS, TRADE-MARKS, COPYRIGHTS, House of Representatives, Washington, D. C. (Attention of Hon. Joseph R. Bryson, chairman.) GENTLEMEN: Permit me to request that you record me in favor of adoption by your committee of the sugestion that the last sentence of the above bill be rewritten, as follows: "Patentable invention shall be presumed to be present, irrespective of the nature of the mental processes by which, or the circumstances under which, the invention or discovery or the improvement thereof was conceived or mode, if the invention or discovery, or improvement thereof, for which application for patent is pending or upon which a patent is granted, is directed to new and useful subject matter and represents, in the art or science to which it appertains or most nearly appertains, an advance that would not be obvious, at the time of conception or discovery thereof, to one skilled in such art or science." First-hand acquaintance with courses which have been adopted with reference to development of certain inventions has convinced me that existing uncertainties and apprehension, as to trend of impairment of opportunities for benefit from inventions, is causing retrenchments and, in some instances, is resulting in abandonment of efforts to bring certain products to a useful stage of development; although the articles involved are of a character such that, if successfully developed, their manufacture should provide large-scale employment, besides being calculated to appreciably decrease costs of necessities of life to ultimate purchasers. In other words, these projects give promise of decreasing over-all living expenses. Individuals who would otherwise be disposed to invest their available funds in such projects are now deterred from doing so through a feeling that if they are successful they are likely to be deprived of worth-while remuneration for such effort and funds as they would be called upon to risk if they undertake to bring such projects to successful culminations, although procedure with these projects would inevitably incur opportunities for loss of entire investments. In viey of this, I respectfully urge that the above-indicated change be made in H. R. 4798, and that this bill be enacted as so revised. Respectfully, C. E. BEACH, Consulting Engineer. CHICAGO, ILL., June 29, 1949. House of Representatives, Washington, D. C. SUBCOMMITTEE No. 4-PATENTS, TRADE-MARKS, COPYRIGHTS, (Attention of Hon. Joseph R. Bryson, chairman.) GENTLEMEN: In accordance with the request of Mr. John W. Anderson I am enclosing copy of my letter to him. Yours very truly, A. TREVOR JONES. JUNE 29, 194 Re H. R. 4798. Mr. JOHN W. ANDERSON, National Patent Council, Gary, Ind. DEAR MR. ANDERSON: Commenting upon your letter of June 28 enclosing cop your letter to the subcommittee considering the bill to declare the national po regarding the test for determining invention: It seems to me that the sente suggested is satisfactory with one exception, and that is, in my opinion, the wo "would not be obvious" should be changed to "was not obvious." Recognizing that some metaphysics must always be employed in determini what was or was not obvious to one skilled in the art, the speculative eleme should be reduced as much as possible to make any definitive test of any usef.... ness. The words "would not be" invite speculation to the point of bringing after acquired knowledge which was not in the possession of the "one skilled in the art at the time. The words "was not" more definitely relate to the time .. the disclosure. I am sending a copy of this to Subcommittee No. 4 as you suggest. A. TREVOR JONES. PITTSBURGH, PA., June 29, 1949. Re H. R. 4798, to declare the national policy regarding test for determini invention. SUBCOMMITTEE No. 4-PATENTS, TRADE-MARKS, COPYRIGHTS, REVISION OF THE LAW OF THE HOUSE JUDICIARY COMMITTEE, House of Representatives, Washington, D. C. (Attention of Hon. J. R. Bryson, chairman.) GENTLEMEN: This letter is to express approval of at least the objectives c the above-entitled bill, as it may be of assistance in changing the attitude o some of the courts with respect to patents. An aggravated instance of this i found in the decision of one of the district court judges rendered some month ago. The following is a direct quotation from the decision. "Undeniably, the plaintiff's hanger was novel, presented a genuine improve ment to the drape-hanging trade, and had remarkable public acceptance. Under the state of the law as it formerly existed, these elements would probably combine to produce patentable invention. Under the present state of the law, however. the plaintiff's device cannot be accorded this distinguished status and must be regarded merely as a mechanical improvement of a skilled tradesman in his line of work, and lacking that 'flash of genius' necessary to constitute invention." This quotation shows that our courts are undertaking to rewrite the patent laws in a manner not warranted by any change in the patent statutes during the last 100 years. If "the plaintiff's hanger was novel, presented a genuine improvement to the drape-hanging trade, and had remarkable acceptance" as stated by the judge, the patentee had a valid invention within the intent of the Constitution and the patent laws, and the court should not have held the patent invalid. I could cite other aggravated instances of this nature. ARCHWORTH MARTIN. Re: H. R. 4798 HUDSON, BOUGHTON, WILLIAMS, DAVID & HOFFMANN, The HOUSE JUDICIARY COMMITTEE, House of Representatives, Washington, D. C. (Attention Hon. Joseph R. Bryson.) DEAR SIR: I regard it as highly desirable, and important to industry, that legislation of the character recommended by National Patent Council in its letter to you dated June 28, 1949, be approved and passed. Such legislation should go far toward clearing up the confusion which has resulted from the "flash of genius" doctrine, and would leave the lower courts free to follow the |