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." With kind regards. Yours sincerely, HOWARD L. FISCHER. NATIONAL PATENT COUNCIL, Re H. R. 4798, to declare the national policy regarding test for determining invention SUBCOMMITTEE NO. 4, Patents, Trade-Marks, Copyrights, Revision of the Law of the House House of Representatives, Washington, D. C. (Attention of Hon. Joseph R. Bryson, chairman.) GENTLEMEN: For purposes of clarification it is suggested that the last sentence of the subject bill be struck from the text and that there be substituted therefor the following: "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 made, 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 of 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." Careful studies of the expressed views of patent law associations, patent lawyers, manufacturers and others who have discussed the subject bill-including founders and associates of this council-seem to reveal a substantial unanimity of support of the intent of the bill, which appears to be: (1) To clarify for the guidance of the courts the intent of Congress with relation to the so-called flash of genius doctrine, in the determination of the presence or absence of invention, and (2) To clarify the intent of Congress, with relation to the determination of the presence or absence of invention, when conception or discovery occurs under conditions wherein the inventor has the benefit of access to guiding facts developed by experimentation to which others have contributed, either concurrently or otherwise. It seems to be rather generally agreed, wherever the voice of smaller manufacturers and related inventors and professional men can be heard, that to impose upon our courts, at a remote date therefrom, the necessity for minutely examining the mental processes that brought about an invention (to determine whether the invention is the result of long and perhaps sacrificial labor or a presumed visitation of a supernatural nature) is confusing to the courts, dilutes incentive to invent, promotes monopoly and therefore is not in the public interest. It seems also substantially agreed that the exposing of those who would labor for invention to the hazard of being denied the protection of a patent because of their presumed lack of capacity for producing the hard-sought creative result by the flash of genius process (impossible of definition or proof) discourages extraordinary creative effort and therefore is not in the public interest. The theory that, in order to qualify an invention for patent protection, it must have been conceived with little or no benefit of knowledge of the state of the art or of the results of research and engineering efforts to explore the art. is regarded as strongly destructive of incentive to put forth the effort, and make the investment, necessary for the conduct of group experiments and research. The incentive contemplated by our Constitution in the promotion of science and useful arts operates principally at two levels: (a) Experimentation and invention and (b) development, production, and distribution. If incentive fails at either of the two levels the ultimate purpose of the Constitution is defeated because then the invention does not reach and serve the public. The first level at which incentive operates is the inventive level. A part of the incentive that propels the inventor comes from his knowledge that, in seeking to bring the invention within the reach of the public, with profit to himself, incentive of others to assume the risks incurred in refining the invention (which requires money and specialized effort) and the risks inevitable in extending the distribution of the invention to the public (which also requires substantial investment and specialized effort) derives from the prospect of protection by patent from piracy by noncreative copyists. While in some of our major industries most of the inventions that provide improvements which contribute to the value of the product to the public still originate with inventors operating in "basements, bedrooms and garrets"-or from other small experimental activities conducted largely by the individual inventor-the trend is toward association of the inventor with experimental and research departments of smaller industries. In such association the inventor finds facilities and subordinate personnel that greatly enhance his capacity for profits to himself through service of the public by invention. He also finds usually, in the same organization, facilities for manufacture and distribution, or effective licensing, of his worthy inventions. To deny patentability of an invention because it arises out of such industrial group environment, obviously more productive in the public interest, or to deny patentability of significant invention because it arises (as it does with less frequency) within the operations and influence of a large research organization supported by large industry, is to stifle incentive at the developmental and distributive level, which level must be bridged before the benefits of the invention can reach the public. For this and other reasons perhaps equally familiar to your committee, it is respectfully represented to your committee that the adoption of the clarifying amendment herein recommended will better remove uncertainties detrimental to the public interest and will restore, as a creative factor in competition between inventors, and in competition between manufacturers and producers, confidence that patent protection will not be denied for the depressive reasons above discussed. Resultant enhancement of incentive to invent and produce will serve a major need of our Nation by making more productive its efforts to maintain security against external aggression-while such enhancement serves also to improve employment, living standards, and the general welfare. A copy of this communication is being sent today to all founders and associates of National Patent Council-both professional and industrial-with a request that changes, regarded as desirable, be communicated promptly to this office. If your committee so requests, copies, or digests, of resultant suggestions for such changes, if any, will be supplied to your committee. Respectfully, NATIONAL PATENT COUNCIL, BENDIX AVIATION CORP., Teterboro, N. J., June 17, 1949. Re H. R. 4798-Eighty-first Congress-Test for Determining Invention Hon. JOSEPH R. BRYSON, United States House of Representatives, House Office Building, Washington, D. C. DEAR MR. CONGRESSMAN: The citation of the case of In re Colvin to which I referred at the hearing on June 15 on H. R. 4798 is 76 F. (2d) 910, 22 C. C. P. A. (patents) 1186. On page 1189 of the C. C. P. A. reports Judge Hatfield, who delivered the opinion of the court, said as follows: "It may be conceded for the purpose of this decision that those skilled in the art were confronted with the problem of preventing the accumulation of water, ice, or snow in Pitot-static tubes used on aircraft; that appellant solved that problem by the utilization of an electrical heating coil in the velocity pressure chamber; and that his device is new, useful, and commercially successful. Nevertheless, such concessions do not necessarily warrant the allowance of the broad claims here on appeal." Then on page 1190 he further stated that: "We find nothing of record to indicate that the prevention of the formation and accumulation of water, ice, or snow in a Pitot tube by the use, broadly, of an electrical heating element, in view of the facts of record, involves invention * * Thus, even though the court conceded that those skilled in the art were confronted with the problem of preventing the accumulation of water, ice, or snow in Pitot-static tubes used on aircraft, that appellant solved that problem by the utilization of an electrical heating coil in the velocity pressure chamber, and that his device is new, useful, and commercially successful, nevertheless, they held that such concessions do not warrant the allowance of broad claims and that there is nothing in the record to indicate that the prevention of the formation and accumulation of water, ice, or snow in a Pitot tube by the use of an electrical heating element involved invention and, therefore, refused to allow claims to which the appellant was entitled since he was the first one to produce an electrically heated Pitot tube. Respectfully, STEPHEN CERSTVIK, National Chairman, Patent Committee, Aircraft Industries Association. X |