Text of H. R. 4798. CONTENTS Page 1 Alexander C. Neave, Esq., the New York Patent Law Association___ Stephen Cerstvik, Esq., patent committee, Aircraft Industries Asso- Edmund H. Parry, Jr., Esq., American Patent Law Association_ Additional and supporting documents— Prepared statement of the New York Patent Law Association___ Prepared statement of Stephen Cerstvik, Esq., supra....... Prepared statement of Edmund H. Parry, Jr., Esq., supra Excerpts from decision of Judge Lenroot, U. S. Court of Customs and Patent Appeals, in In Re Shortell (142 F. 2d 292, 205)___ John C. Stedman, Esq., Antitrust Division, Department of Justice__ Statement by Edmund H. Parry, Jr., American Patent Law Association__ Article, Why Challenge the Court's View of Invention?, by W. Houston Kenyon, Jr., appearing in June 1949 issue of American Bar Association Article, The Impact of Recent Supreme Cases on the Question of Patentable Letters from- C. E. Beach, Binghamton, N. Y A. Trevor Jones, Esq., Chicago, Ill. TEST FOR DETERMINING INVENTION WEDNESDAY, JUNE 15, 1949 HOUSE OF REPRESENTATIVES, SUBCOMMITTEE No. 4 OF THE COMMITTEE ON THE JUDICIARY, Washington, D. C. The subcommittee met, pursuant to notice, in room 327, House Office Building, the Hon. Joseph R. Bryson (chairman of the subcommittee) presiding. Mr. WILLIS. The subcommittee will come to order. Gentlemen, we have for consideration this morning H. R. 4798, a bill to declare the national policy regarding the test for determining invention. The bill will be inserted in the record at this point. (H. R. 4798 is as follows:) [H. R. 4798, 81st Cong., 1st sess.] A BILL To declare the national policy rega ding the test for determining invention Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That section 4886 of the Revised Statutes (U. S. C., title 35, sec. 31) is hereby amended to read as follows: "Any person or persons who has or have invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has or have invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tuber-propagated plant, not known or used by others in this country, before his or their invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his or their invention or discovery thereof or more than one year prior to his or their application, and not in public use or on sale in this country for more than one year prior to his or their application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law and other due processing had, obtain a patent therefor. 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 improvement thereof, may have been accomplished." Mr. WILLIS. I believe the first witness we have scheduled this morning is Mr. Neave of the New York Patent Law Association. STATEMENT OF ALEXANDER C. NEAVE, ON BEHALF OF THE NEW YORK PATENT LAW ASSOCIATION Mr. NEAVE. Yes, sir. My name is Alexander C. Neave and I am an attorney practicing in New York at 20 Exchange Place. I am appearing here as the chairman of the committee on patent law and practice of the New York Patent Law Association. This bill is exactly the same as a bill that was submitted to the last Congress 1 Mr. WILLIS. Mr. Neave, I beg your pardon, did you have a statement prepared? Mr. NEAVE. Yes; I have already given it to the committee. Mr. WILLIS. I see. The statement will be incorporated in the rec ord at this point. (The statement is as follows:) THE NEW YORK PATENT LAW ASSOCIATION COMMENTS ON BRYSON BILL H. R. 4798 This bill to declare the national policy regarding the test for determining invention, is identical with H. R. 5248 of the Eightieth Congress, concerning which hearings were held on May 5, 1948, at which time Mr. Giles Rich, representing this association, both testified and submitted a written report. His testimony is printed on pages 46-49 of the report of the hearings before this subcommittee (serial No. 21) and the report is printed on pages 88-90. This bill proposes to amend section 4886 of the Revised Statutes (35 U. S. C. 31) in two respects: 1. Adding wording to the present section so that it refers specifically to inventions made by more than one person. Although the present wording is in the singular, it has long been established that where an invention is made by two or more persons, a patent may be issued to them jointly. The amendment is unobjectionable. 2. The last sentence of the bill is new and reads as follows [italics ours]: "Patentability of inyentions 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 improvement thereof, may have been accomplished." The sentence is apparently based upon a proposal made by the National Patent Planning Commission (report, 1943, sec. V, par. A, H. Doc. No. 239, 78th Cong., 1st sess., pp. 5-6) in its consideration of a declaration of national policy concerning the uniform standard of invention. The Commission stated: "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." [Italics supplied.] This association favors the enactment of legislation along the lines recommended by the National Patent Planning Commission because (a) Some confusion has resulted from the case of The Cuno Engineering Corp. v. Automatic Devices Corp. (314 U. S. 84), where the Supreme Court in 1941 stated that the device in question "must reveal the flash of creative genius not merely the skill of the calling." It has been suggested that a later case, decided in 1945 (Sinclair & Carroll Co. v. Interchemical Corp., 325 U. S. 327), indicates that the Supreme Court did not intend to lay down any new test for invention but that it merely restated in different words the old rule that invention must be something more than the work of a mechanic skilled in the art. This may be true, but the matter has been further confused by the concurring opinion of Justices Black and Douglas in a case decided in February 1949 (Graver Tank & Mfg. Co. v. The Linde Air Products Co., 336 U. S. 271) in which these Justices felt justified in holding that there was "patentable discovery when measured by the standards announced by this Court in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U. S. 84)." It appears that Justices Black and Douglas, at least, still subscribe to the flash of genius doctrine announced by Mr. Justice Douglas in the Cuno case. It is highly desirable to make an end to this confusion and to have a congressional expression that the test of invention is not whether the invention arose through a flash of creative genius. Patentability should be determined by the nature of the contribution to the advancement of the art and not by the nature of the mental process by which such contribution may have been accomplished. (b) There is no doubt that the recent decisions of the Supreme Court have made the lower courts feel that the standard of invention has changed and that to conform with the present views of the Supreme Court, they must assume a definitely rigorous attitude toward patentability. Judge Learned Hand, sitting in the second circuit court of appeals, has 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'" (Picard v. United Aircraft Corp., 128 F. 2d 632, 636). As stated in the current May 1949 issue of the Columbia Law Review in a "note" on the Supreme Court and the "Standard of Invention": "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." This association feels that the legislative branch of the Government should guide the courts back to a more useful, objective test of invention. (c) Such a bill would tend to enable the courts to apply a more uniform standard of invention, which the National Patent Planning Commission thought highly desirable. Accordingly we approve the bill in principle, as we did last year, and renew our recommendation that the language of this last sentence be changed to eliminate the terms "objectively" and "subjectively" and that the following sentence be substituted for the last sentence of the bill: "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.” Mr. NEAVE. The previous bill was H. R. 5248 and there were hearings on that bill before this committee at which time Mr. Giles Rich, who then was the chairman of the committee on patent law and practice of the New York Patent Law Association, appeared and testified. He filed a statement with this committee. Our position today is the same in regard to this bill as it was last year; we approve of it in principle, we have some suggestions, however, to make with respect to the language of the bill. First of all, let me say that the section that is intended to be amended is section 4886 of the revised statutes, which is the charter really of the patent laws. The first change that is proposed in that section is to add certain wording to the section to make it plural, that is, to make it apply to more than one person. It always has been interpreted as applying to more than one inventor and there certainly cannot be any objection to that amendment. The second change that is proposed is the addition of the last sentence to the bill which is new, and that last sentence reads 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 improvement thereof, may have been accomplished. Mr. WILLIS. At this point just let me ask you a question so I can follow you from here on. You say that the first part of the bill, up to the beginning of the last sentence, is a rewording of the old law so as to make it plural? Mr. NEAVE. Exactly. |