Mr. WILLIS. Other than that it is similar?

Mr. NEAVE. Except for those few changes, adding persons instead of person to the last part.

Now the proposal of the last sentence apparently stems from a recommendation that was made in 1943 by the National Patent Planning Commission when they made their report to the President. They considered at that time a number of things relating to the patent laws. One of them was a suggestion about making a declaration of national policy concerning invention, a uniform standard of invention.

In their report they stated, and I am quoting from pages 5 and 6 of their report of 1943, which is House Document No. 239 of the Seventy-eighth Congress, first session, as follows:

It is inconsistent with sound national policy to continue to grant patents with existing uncertainty as to their validity, and unfair to the inventors of this country and to manufacturers and investors who have proceeded on the basis of a protective security in the form of a patent issued to them by the Federal Government. The Commission feels that not one but several steps should be taken to remedy the present situation. A promising improvement would be for Congress, by legislative enactment, to lay down a reasonable, understandable test by which inventions shall be judged both from the standpoint of the grant of the patent and the validity of the patent thereafter.

The Commission therefore recommends the enactment of a declaration of policy that patentability shall be determined objectively by the nature of the contribution to the advancement of the art, and not subjectively by the nature of the process by which the invention may have been accomplished.

You will observe the closeness of the language of that last sentence to the last sentence of the bill. I will come to our suggestion later, which is to bring the language even closer to the language suggested by the National Patent Planning Commission.

Essentially what this last sentence attempts to do in my opinion is to allay the confusion in the minds of members of the bar because they have to deal with the courts under a doctrine which was announced by the Supreme Court several years ago, 1941 to be exact, in the Cuno case, where Mr. Justice Douglas said that the device in question

must reveal the flash of creative genius not merely the skill of the calling.

It was thought after that decision that the Court was laying down a new test for invention, a subjective test for invention. The inventor had to have a flash of genius before the invention could be truly an invention.

It has been suggested that some later decisions of the Supreme Court have indicated that that Court did not mean to lay down any new tests; that the same old tests were supposed to apply; that they were merely thinking of the old rule that the invention must be something more, something beyond that which a man skilled in the art could do, could accomplish. Perhaps that is true, perhaps the Supreme Court has since gone back on its supposed test but the confusion still remains; it still remains in the lower courts and it still remains apparently in the Supreme Court because very recently, in February of this year, in the case of Graver Tank & Mfg. Co. v. The Linde Air Products Co., two of the Justices, Mr. Justice Douglas and Mr. Justice Black wrote a concurring opinion.

Mr. Black wrote the opinion holding the patent valid. That in itself was quite an event because I believe that is the only time that those Justices have sustained the validity of a patent.

But, in the opinion Mr. Justice Black said that he felt justified in holding that there was—

patentable discovery when measured by the standards announced by this Court in Cuno Engineering Corporation v. Automatic Devices Corporation (314 U. S. 84).

What he was saying there, it seems to me, is measured in terms of a flash of genius.

Therefore, this association feels that something ought to be done to really scotch this doctrine if it exists. Many people are not sure that it exists, but apparently it still is in the minds of some of the Justices. Secondly, we feel that this doctrine has had its effect upon the lower courts in making them feel that the Supreme Court is particularly down on patents. There is quite an interesting note in the current Columbia Law Review, the May 1949 Law Review, and I have a photostat of it here if the committee would like to have me submit it. The "note" is on the Supreme Court and the "Standard of Invention" and the author, whoever it is, said:

Nor is it helpful to use such phrases as "flash of creative genius" in describing the requisites of patentability. At most these expressions indicate a "get tough" policy toward the issuance of patents.

We feel that since there is this conclusion caused by the announcement of the doctrine, whether it still exists as a doctrine or whether it is an indication of the "get tough" policy, we think the confusion should be removed by legislation by Congress. We feel also that such a bill as this will tend to bring a more uniform application of a standard of invention.

Now at the last hearing a year ago, we made some suggestions as to changes in that last sentence. Essentially the changes are to bring the language closer to the language suggested by the National Patent Planning Commission but eliminating the words "objectively" and "subjectively" which may cause some confusion.

Our suggestion is set forth at the very end of my written statement so that the last sentence of the bill would be eliminated and the following sentence would be substituted:

Patentability shall be determined by the nature of the contribution to the advancement of the art, not by the nature of the process by which such contribution may have been accomplished.

I think that is all I have to say unless there are some questions. Mr. WILLIS. Coming back to the decision of the Supreme Court in the Cuno case, are you not attaching too much importance to the words "flash of creative genius"; that is, the sentence reads that that must be part of it, part of the thought, but the skill of the calling is still a part of the process. 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 so that the skill of the calling is not excluded by the language. You still have both processes involved under that decision.

Mr. NEAVE. I entirely agree that that should be so, Mr. Willis. The thing that we are wrestling with is the effect of the decision on the courts, on the lower court, and on the views expressed by various writers. Now the effect seems to have been to confuse people into putting more emphasis on the subjective processes of the mind of the inventor than we believe should be placed.

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Mr. WILLIS. The Supreme Court did not exclude it?

Mr. NEAVE. I think you are right in that.

There are other tests and I think they still recognize other tests. One of the personal difficulties I have with opinions of the Supreme Court in recent years is that they seem to have gradually discarded or knocked on the head the various rules of thumb of invention that we patent lawyers have been going by in knocking out patents that have come before them.

We think that in various cases there have been various rules of thumb. The Supreme Court has knocked the rules of thumb on the head, and I personally feel that they have not substituted any other rules of thumb by which we can go so that we are a little shaky on the rules of thumb. We do not think that the flash of creative genius is a good substitute.

Mr. BRYSON. Mr. Goodwin?

Mr. GOODWIN. I understand that you have no difficulty with the methods now used in the issue of patents. The question arises in connection with interpretation of the legality after the patent has been issued, or will this help in the issue of patents, administration of the Patent Office, I mean?

Mr. NEAVE. Mr. Federico can advise you on that much better than I can.

I do not think the Patent Office has indulged in consideration of any flash of genius on the part of the inventor. It has, of course, tried to evaluate whether the advance made by the inventor is one which is a sufficient advance over the prior art to constitute invention. At best, the term invention and what is an invention is an extremely difficult one, and the Patent Office has had to consider whether a thing is of sufficient advance in the art and of sufficient dignity to amount to invention.

Mr. GOODWIN. That is all.

Mr. WILLIS. It seems to me that the first part of the bill, up to the last sentence, which you say is a repetition of the law except to describe persons in the plural, is very broad when it says:

Any person or persons who has or have invented or discovered any new and useful art may, upon payment of the fees required by law and other due proceeding had, obtain a patent therefor.

Now, that seems to me to be as broad as any words can convey. Would not the new language restrict that definition rather than broaden it by saying that you must exclude the process with regard to the subjective condition of the inventor's mental process?

Mr. NEAVE. Well, I am looking with respect to that criticism of yours particularly of the language which we have suggested in substitution, and I do not think that is necessarily so. What we are

attempting to do and what I think in principal should be done here is to place the emphasis on the accomplishment, what was actually accomplished, rather than the emphasis upon the mental process of the inventor.

Now, if the language is not appropriate as it stands or as we have suggested it to indicate that emphasis, then it should be changed, but that is in principal what we think should be accomplished.

Mr. WILLIS. Well, the law as it now stands on the books does not lay any particular stress on mental processes.

Mr. NEAVE. Except that it says he shall be an inventor. The thing that has been bothering us in this interpretation placed by the Supreme Court in the Cuno case. Your point, I think, was that the Cuno case does not necessarily exclude the objective consideration and I agree with that.

The difficulty, however, is in the way the Cuno case doctrine was seized upon and the confusion that has resulted in the peoples' mind. What we propose, what we think should be done, is that the strength of that doctrine should be taken away if it exists.

Mr. WILLIS. The language of the Supreme Court contemplates that two things shall prevail, creative genius and skill of the calling. Under the bill you would eliminate entirely creative genius and rely exclusively on skill of the calling, or you would lay more stress on skill of the calling that on creative genius?

Mr. NEAVE. That is correct.

Mr. WILLIS. I think you eliminate it.

Mr. NEAVE. Well, it may be we do eliminate it and that is really what would be proposed by the bill. We do not eliminate the idea that invention must be found, all we say is that invention shall be judged or tested by the objective result of what has been done and not by what went on in the man's mind when he created this new thing. Mr. GOODWIN. Is there a suggestion that the courts make a little hard work of defining invention? My memory may be hazy and probably is, but my understanding of the definition of invention is "to come upon. So that, is it not true that an inventor is a man who comes upon a new idea, something new? What difference does it make what the processes are by which he does it?

Mr. NEAVE. We agree with you that that mental process is not material and it is the accomplishment that is of importance. I think that Mr. Cooper, who is going to testify a little later on, will particularly agree with your approach because I think his suggestion is that the laws should be amended so that the requirement of invention be eliminated completely. But I am not going to talk to that.

Mr. WILLIS. The added sentence, "patentability of inventions and discoveries, including discoveries due to research, and improvements thereof," referring to those last three words "and improvements thereof," is that added language?

Mr. NEAVE. The whole sentence is added and did not exist before. The word "improvements" is found in line numbered 7 in the beginning.

Mr. WILLIS. I see.

Mr. BRYSON. Any further questions, gentlemen?

Thank you, Mr. Neave.

Mr. BRYSON. Our next witness is Mr. Drury W. Cooper.

STATEMENT OF DRURY W. COOPER, ATTORNEY

Mr. COOPER. My name is Drury W. Cooper, I am a practicing lawyer in New York and have given a good deal of attention to patents for a good many years. I am a member of several bar associations but I come here simply on my own without representing anybody excepting myself in the suggestions that I have to make.

I think that a good deal of point has been given to my suggestion by the discussion with Mr. Neave about the addition to section 4886, or

United States Code, title 35, section 31, because that in my mind simply continues the confusion about what is or is not a patentable invention. Now the language of section 4886 as it stands is perfectly clear. It says whatever is new and useful shall be given a patent. Now this idea of something esoteric, something that is beyond the skill of the calling and all that is something that has been written into the act by the decisions of the Supreme Court beginning back 100 years

or so ago.

Well, it did not amount to a great deal because the courts considered the thing very fairly in mose instances until 10 or 12 years ago when the Supreme Court, in an effort I think to destroy all odious monopolies and particularly patents which were thought to be particularly odious because many of them were owned by large corporations, began to inveigh against the best of the inventions that came before it by calling for a skill, an inventive talent, that was far beyond any ordinary skill.

Now, that is not the purpose of patents at all in my judgment. The primary purpose of a patent is to make something new to be manufactured. That was the purpose of the old English statute from which ours was in a sense derived; that is, anybody who brought a new and useful invention into the Kingdom of Great Britain so as to give employment to additional people could have a monopoly on it without being subject to the odium of the monopolies that had been granted by King Henry the VIII and Queen Elizabeth and so on. That new and useful invention so brought into the Kingdom of Great Britain, might have a monopoly. Curiously enough the monopoly has been fixed and England has always fixed it for the term of 14 years.

It may interest the committee to know how that term of 14 years came about. It seems that the ordinary employment of a young man who was going to enter upon one of the trade required that he serve an apprenticeship of 7 years and after a great deal of discussion they doubled that term for the purpose of fixing the term of a patent in Great Britain.

Well, when it came to our constitution, the framers said that Congress shall have the 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.

Now there has never been any difficulty about the word "author." One who compiles a dictionary is an author. One who simply makes a directory is an author in the sense of that statute. Nothing else is required of him excepting novelty in the sense that he has not copied from someone else. But, about invention and discovery a great deal has been said. The dictionaries at the time our Constitution was adopted, as well as the dictionaries at the present time, mean by discovery "the act of finding anything that is hidden." A discoverer is one who finds anything not known before. An invention is a discovery and an inventor is one who finds out something new.

All those definitions which I have read are from the Samuel Johnson Dictionary in London in 1755. Scott, the other leading dictionary of the time, his publication was in 1772, makes like definitions so that there is nothing about either invention or discovery excepting just what we would naturally say, an inventor is one who finds out something. A discoverer is one who discovers something, and that is all there is to it.