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The United States patent laws : Historically and practically considered
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Mechanical and Engineering Section. (Staled Meeting held November 25, z9o¢. )
The United States Patent Laws: Historically and Practically Considered.* Bxr CYRus N. ANDERSON, of the Philadelphia Bar.
Several years ago a writer in the Iron Industry Gazette, an E n g l i s h publication, said : " D i s p a r a g e m e n t of p a t e n t s is common and easy, b u t it should not be f o r g o t t e n by those who sneer at i n v e n t i o n s that, out of a total of e i g h t billions of capital invested in m a n u f a c t u r i n g in the U n i t e d States, patents form the basis for an i n v e s t m e n t of a b o u t six billions. Evidently, the U n i t e d S t a t e s s y s t e m of e n c o u r a g i n g invention t h a t has r e s u l t e d in the p a t e n t i n g of over 5oo,ooo inventions is a s y s t e m which is e x c e e d i n g l y wise a n d valuable. T h e only t h i n g t h a t has enabled m a n u f a c t u r e r s to make so w o n d e r f u l a progress in the U n i t e d States is its patent s y s t e m . " Up to the p r e s e n t time, t h e r e h a v e been g r a n t e d in the United States n e a r l y 800,000 p a t e n t s , and, while I h a v e no recent figures, t h e r e is no d o u b t b u t t h a t the proportion of capital i n v e s t e d in m a n u f a c t u r e s w i t h p a t e n t s as a basis is as great, if not greater, now t h a n it was w h e n the f o r e g o i n g s t a t e m e n t was made. A t a time w h e n t h e r i g h t of p r o p e r t y in patents, or r a t h e r in p a t e n t e d inventions, is so well recognized, it strikes one as a curious fact t h a t t h e r e ever was or should have been a time when a r i g h t to such p r o p e r t y was not recognized. Yet the fact is t h a t in c o m p a r a t i v e l y recent periods, considered in the l i g h t of the world's history, p r o p e r t y r i g h t s in connection w i t h i n v e n t i o n s were not recognized, and if a man was possessed of an i n v e n t i v e t u r n of m i n d and was an Read at t h e stated meeting of t h e Business and Professional Club for November, I9O4, a n d (by title) before the Mechanical and ]~ngineering Seetion of the Institute, N o v e m b e r 25, 19o4.
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_/tnderson :
U.F.I.,
i n v e n t i v e genius, and m a d e inventions or i m p r o v e m e n t s in m a c h i n e s or in m e c h a n i c a l devices or in the art of doing things, he had to s t a n d b y and see others e n j o y e q u a l l y wittl h i m the benefits of his intellectual t h o u g h t and effort. In t h e v e r y earliest history, t h e r i g h t of p r o p e r t y in t a n g i b l e things w a s recognized, b u t an exclusive right in intellectual property, such as i n v e n t i o n s and writings, was not r e g a r d e d as a n a t u r a l right, and the right to such p r o p e r t y was only e s t a b l i s h e d as a result of a d v a n c i n g and i m p r o v e d civilization. It s e e m s t h a t q u i t e early in E n g l a n d the practice g r e w u p u n d e r whieh t h e Crown, as a m a t t e r of grace and favor, b u t not of right, g r a n t e d to the i n v e n t o r of a n e w manufacture or a n e w art, the exclusive r i g h t for l i m i t e d periods to his i n v e n t i o n or i m p r o v e m e n t , and it is r e p o r t e d t h a t in t h e f o u r t e e n t h century, in t h e reign of E d w a r d III, s o m e wise s u b j e c t s of the realm, alchemists t h e y were, i n v e n t e d or discovered a philosopher's stone. A c o m m i s s i o n was a p p o i n t e d b y the King, consisting of two a l d e r m e n and t w o friars, who, after an investigation, which, of course, was v e r y earefully made, r e p o r t e d t h a t the philosopher's stone p o s s e s s e d merit, and u p o n this r e p o r t t h e K i n g g r a n t e d an exclusive r i g h t to the discoverers to m a n u f a c t u r e and sell "the philosopher's stone. W h e n the n a t u r e of intellectual p r o p e r t y is considered, it s e e m s s o m e w h a t a n o m a l o u s t h a t r i g h t s of p r o p e r t y therein should n o t have been recognized from the v e r y earliest times. Professor Shaler has said : " W h e n we come to w e i g h the rights of the several sorts of p r o p e r t y whieh can be held b y men, and in this j u d g m e n t take only the a b s o l u t e questions of justice, l e a v i n g o u t the limitations of expedience and prejudice, it will be seen clearly that intellectual property is after all, the only possession in the world. T h e man w h o brings o u t of n o t h i n g n e s s some child of his t h o u g h t s has rights therein w h i c h c a n n o t b e l o n g to a n y source of property." Mr. Fessenden, in his w o r k on patents, p u b l i s h e d in i82i, says : " In a moral as well as in a political point of view,
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the a u t h o r of a new and useful i n v e n t i o n has the best of all possible titles to a m o n o p o l y of the first fruits of his ingenuity. T h e i n v e n t i o n is the work of his h a n d s and the offspring of his intellect; and after he is allowed a t e m p o r a r y monopoly, becomes at the expiration of the p a t e n t a valuable d o n a t i o n to society." A t least as early as a b o u t the year 16oo the r i g h t of property in i n v e n t i o n was well u n d e r s t o o d arid h a d a wellestablished and defined s t a n d i n g in the c o m m o n law. As i n d i c a t i n g t h a t in the c o m m o n law of E n g l a n d at t h a t time the reason for g r a n t i n g exclusive privileges to inventors, and t h a t the r i g h t s of p r o p e r t y in i n v e n t i o n s were fairly understood, I will read you w h a t was said by the Court in the case of Darcy ,Js. A11in : " W h e r e a n y man, b y his own charge and industry, or by his own wit or invention, d o t h bring a n y new trade into the realm, or a n y e n g i n e t e n d i n g to the f u r t h e r a n c e of a trade t h a t w a s . n e v e r used before; and t h a t for the good of the realm : t h a t in such cases the K i n g m a y g r a n t to h i m a m o n o p o l y p a t e n t for some reasonable time, until the s u b j e c t s m a y learn the same, in consideration of the good t h a t he d o t h b r i n g b y his i n v e n t i o n to the c o m m o n w e a l t h ; otherwise not." Sir E d w a r d Coke said of p a t e n t privileges t h a t : " T h e reason w b e r e f o r such a privilege is good in law is because the i n v e n t o r b r i n g e t h to and for the c o m m o n w e a l t h a new m a n u f a c t u r e by his invention, costs a n d ' c h a r g e s , a n d therefore it is reason t h a t he should have a privilege for his reward (and t h e e n c o u r a g e m e n t of others in the like) for a convenient time." It does not appear t h a t there was a n y s t a t u t o r y law passed in E n g l a n d concerning the p a t e n t i n g of i n v e n t i o n s until the y e a r 1623, in the twenty-first y e a r of the reign of James I, at which time the s t a t u t e of monopolies was passed, which declared certain monopolies to be void, and prohibited the g r a n t of such monopolies in the future. One section of this s t a t u t e , however, related to p a t e n t s and read as follows: " P r o v i d e d also, and be it declared and e n a c t e d : T h a t any declaration before m e n t i o n e d shall not e x t e n d to a n y
54
Anderson :
[J. F. I.,
letters-patent a n d g r a n t s of privilege, for t h e t e r m of fourteen years or under, h e r e a f t e r to be made, of the sole worki n g or m a k i n g of a n y m a n n e r of new m a n u f a c t u r e s , w i t h i n this r e a l m , to the true and first i n v e n t o r and i n v e n t o r s of such m a n u f a c t u r e s , w h i c h others, at the time of m a k i n g such l e t t e r s - p a t e n t and grant, shall n o t use, so as also t h e y be not c o n t r a r y to the law, nor m i s c h i e v o u s to t h e state, by r a i s i n g prices of c o m m o d i t i e s at home, or h u r t of trade, or g e n e r a l l y i n c o n v e n i e n t : T h e said f o u r t e e n years to be a c c o u n t e d from the date of the first letters-patent or g r a n t of such privilege, h e r e a f t e r to be m a d e : b u t t h a t t h e s a m e shall be of such force as t h e y should be, if this act h a d never been m a d e and of none other." I q u o t e this section of the s t a t u t e in full because it is the first E n g l i s h s t a t u t e on the subject, and is the very f o u n d a t i o n of our own laws on the s u b j e c t of patents. T h e s e laws are the result of d e v e l o p m e n t and evolution. Mr. Robinson, the a u t h o r of one of our most elaborate treatises on the s u b j e c t of the p a t e n t laws, has said t h a t in this s t a t u t e , as i n t e r p r e t e d by t h e E n g l i s h courts, are f o u n d the sources of the p a t e n t laws of the U n i t e d States. T h e I5O years following the s t a t u t e j u s t referred to covered the Colonial period of the U n i t e d States. D u r i n g t h a t period of our existence t h e r e was, as is well kn~)wn to all, very little m a n u f a c t u r i n g w i t h i n the p r e s e n t borders of the U n i t e d States, and v e r y little i m p r o v e m e n t in the m a n u f a c t u r i n g arts was m a d e by the Colonists. T h e c o u n t r y was v e r y t h i n l y a n d sparsely s e t t l e d ; the Colonists, our forefathers, h a d duties to perform which were m u c h more pressing upon t h e m t h a n the m a k i n g of i n v e n t i o n s or imp r o v e m e n t s in the m e t h o d or art of d o i n g t h i n g s in the m a n u f a c t u r i n g world. T h e Colonists were m a k i n g a cont i n u a l fight for existence and c o n s t a n t effort to s u b d u e the m a n y obstacles i n c i d e n t to the d e v e l o p m e n t of a new country, and had no t i m e to e n g a g e in the f a s c i n a t i n g and freq u e n t l y profitable p u r s u i t of m a k i n g i m p r o v e m e n t s and i n v e n t i o n s in e x i s t i n g devices in the m a n u f a c t u r i n g arts. It is not s u r p r i s i n g t h a t u n d e r these conditions the Colonists m a d e few inventions. B u t there was still a n o t h e r
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obstacle in the w a y of i m p r o v e m e n t by the Colonists of the m a n u f a c t u r i n g agts. T h i s obstacle was the a t t i t u d e of E n g l a n d t o w a r d the Colonists upon this matter. It was England's idea t h a t the Colonists s h o u l d s u p p l y raw artiticles of commerce, such as the p r o d u c t s of the farm, and t h a t E n g l a n d should f u r n i s h to the Colonists all such manu f a c t u r e d articles as m i g h t be needed or d e m a n d e d by the Colonists. E n g l a n d ' s policy t o w a r d the Colonists was expressed by Sir W i l l i a m Pitt, w h e n he said: " I t is the destiny of A m e r i c a to feed G r e a t Britain, and the d e s t i n y of Great Britain to clothe America." Lord C h a t h a m said, " I would not allow the Colonists to make so m u c h as a hob nail for t h e m s e l v e s . " Laws were e n a c t e d by E n g l a n d p r o h i b i t i n g e v e r y species of m a n u f a c t u r e s in the Colonies. W h e n the Colonists began to m a k e iron and nails for their use, the H o u s e of Commons resolved t h a t " n o n e of the p l a n t a t i o n s should m a n u f a c t u r e iron nails of a n y kind o u t of a n y sows, pigs, whatsoever." A n d the H o u s e of Lords added, " N o forge going by water, or o t h e r works, should be erected in a n y of the p l a n t a t i o n s for the m a k i n g , w o r k i n g or c o n v e r t i n g of any sows, pigs, or cast iron into bar or rod iron." By an act of I75o the erection of buildings and mills for m a k i n g iron was prohibited. T h e r e were c o r r e s p o n d i n g restrictions imposed upon the Colonies with respect to all sorts of m a n u f a c t u r i n g arts. For instance, in 1684, Virginia passed an act e n c o u r a g i n g the m a n u f a c t u r e of the textile fabrics which was a n n u l l e d by P a r l i a m e n t . T h e condition of m a n u f a c t u r e s "in the Colonies has been well set forth by S e n a t o r T h o m a s C. Platt, of Connecticut, as follows : " M a n u f a c t u r e s were practically u n k n o w n ; there were no m a c h i n e s as we now u n d e r s t a n d the t e r m ; men knew how to p l o u g h and sow, hoe a n d chop, reap, m o w and cradle, break flax and hackle it, t h r e s h w i t h the flail, winnow w i t h the b l a n k e t or fan and to shell corn by hand. The women k n e w how to spin, card, weave and knit. Mechanical k n o w l e d g e was monopolized by the blacksmith, the carpenter, the m i l l w r i g h t a n d the village tinker. Pro-
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Anderson
."
[J. F. I.,
duction was a toilsome, w e a r y task, limited b y t h e c a p a c i t y for m u s c u l a r endurance." It is p r o b a b l e that the first p a t e n t g r a n t e d within t h e limits of the U n i t e d States was b y the general court of the Colony of M a s s a c h u s e t t s , u n d e r d a t e of M a y 6, 1646, to one J o s e p h Jenckes, of Lynn, for a scythe. In his petition or prayer, he p r a y e d for p r o t e c t i o n for " F o w e r t e e n yeeres, w i t h o u t d i s t u r b a n c e b y any o t h e r s e t t i n g u p t h e like inventions, so t h a t his s t u d y and cost m a y not b e in v a y n e or lost." Before p r o c e e d i n g to a discussion of the laws relating to p a t e n t s which have been e n a c t e d b y the U n i t e d States G o v e r n m e n t , I desire to call a t t e n t i o n briefly to s o m e of t h e o b j e c t i o n s w h i c h h a v e b e e n m a d e to patents. T h e objection has been m a d e t h a t there is no such t h i n g as intellectual property, and t h a t o w n e r s h i p of Such p r o p e r t y restricts c o m m o n rights. Also t h a t t h e g r a n t i n g of a p a t e n t is a creation of a monopoly. P a t e n t s h a v e been c o m p a r e d to letters of marque, which allowed the holder to p r e y u p o n h o n e s t industry. It h a s b e e n u r g e d t h a t p a t e n t s increase the price of commodities, and t h a t t h e y e n c o u r a g e labors a v i n g inventions and take o p p o r t u n i t i e s from t h e artisan. It is needless to s a y to an audience of t h e p r e s e n t day t h a t the last o b j e c t i o n is u t t e r l y w i t h o u t foundation. Exactly the reverse has b e e n proved a d e q u a t e l y . It has been u r g e d t h a t p a t e n t e d i n v e n t i o n s r e d u c e or sink m a n to automata, and t h a t the g r a n t i n g of a p a t e n t enables one m a n to say to a n o t h e r t h a t he shall not carry on his b u s i n e s s in the best way, and t h a t b y g r a n t i n g a p a t e n t the idea involved in the p a t e n t is tied up, and the course of t h o u g h t in that direction is stayed. A F r e n c h m a n has a d v a n c e d a p i c t u r e s q u e o b j e c t i o n t h a t p a t e n t s give u n d u e a d v a n t a g e to their possessor b y " m a k i n g a golden b r i d g e for h i m w h o enters the arena with arms m o r e subtle and m o r e finely t e m p e r e d than those of his adversaries." T h e f o u n d a t i o n of all t h e patent-law legislation in the U n i t e d States is t h e clause or p h r a s e in t h e Constitution w h i c h v e s t s in Congress p o w e r " t o p r o m o t e t h e progress of science and u s e f u l arts b y s e c u r i n g for limited times to
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authors and i n v e n t o r s the exclusive right to their r e s p e c t i v e writings or discoveries." T h e first p a t e n t law of the U n i t e d S t a t e s was e n a c t e d in the y e a r I79o, April the ioth. It followed in a general w a y the law then in existence in E n g l a n d a u t h o r i z i n g the g r a n t of p a t e n t s w i t h o u t an e x a m i n a t i o n of the prior art, as is n o w the case. T h e a u t h o r i t y to g r a n t p a t e n t s was conferred upon the S e c r e t a r y of State, the S e c r e t a r y of W a r and t h e A t t o r n e y - G e n e r a l of the U n i t e d States. It a p p e a r s t h a t Mr. Jefferson, w h o was at t h a t time Secretary of State, took g r e a t interest in the p a t e n t laws, and r e g a r d e d t h e m and the g r a n t i n g of a p a t e n t as of the very g r e a t e s t importance, and he is g e n e r a l l y referred to as the F a t h e r of the U n i t e d S t a t e s P a t e n t Laws. In the Official Gazette of the U n i t e d S t a t e s P a t e n t Office, p u b l i s h e d S e p t e m b e r 24, i877, an i n t e r e s t i n g description of the early practice u n d e r the A c t of I79o o c c u r s : " By A c t of April Io, i79 o, the first A m e r i c a n P a t e n t S y s t e m was founded. T h o m a s Jefferson inspired it, and m a y b e said to h a v e b e e n t h e F a t h e r of the A m e r i c a n P a t e n t Office. H e took g r e a t pride in it, it is said, and g a v e personal consideration to e v e r y application t h a t was m a d e for a p a t e n t during t h e y e a r s b e t w e e n I79o and I793, while the p o w e r of revision and rejection, g r a n t e d b y that A c t r e m a i n e d in force. It is related t h a t the g r a n t i n g of a p a t e n t was held to be in t h e s e early times q u i t e an e v e n t i n ' t h e h i s t o r y of the S t a t e D e p a r t m e n t , w h e r e the clerical part of the w o r k was then performed. It is a m a t t e r of tradition, h a n d e d d o w n to us from generation to generation, b y those w h o love to speak of Mr. Jefferson, his v i r t u e s and his ecentricities, that w h e n an application for p a t e n t was made u n d e r the first Act, he w o u l d summon Mr. Henry Knox, of M a s s a c h u s e t t s , w h o was Secretary of W a r , and Mr. E d m u n d R a n d o l p h , of Virginia, who was A t t o r n e y G e n e r a l - - t h e s e officers b e i n g d e s i g n a t e d by the Act, with the S e c r e t a r y of State, a tribunal to examine and g r a n t p a t e n t s - - a n d that t h e s e three d i s t i n g u i s h e d officials w o u l d e x a m i n e the applications critically, scrutinize each point of the specification and claims carefully and
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Anderson
."
[J. F. I.,
rigorously. T h e result of this e x a m i n a t i o n was t h a t d u r i n g the first year, a m a j o r i t y of the applications filed failed to pass the ordeal, and only three p a t e n t s were g r a n t e d . In those days every step in the i s s u a n c e of a p a t e n t was t a k e n w i t h g r e a t caution, Mr. Jefferson s e e k i n g always to impress upon the m i n d s of his officers a n d t h e public t h a t the g r a n t i n g of a p a t e n t was a m a t t e r of no o r d i n a r y importance." It is not to be u n d e r s t o o d t h a t the e x a m i n a t i o n referred to an i n v e s t i g a t i o n of the prior art. T h e only e x a m i n a t i o n required was of the petition, description, d r a w i n g , etc., of the application. T h e next p a t e n t act was a m e n d a t o r y in its n a t u r e , and was passed in I793. A m o n g o t h e r changes, it i m p o s e d the d u t y of i s s u i n g p a t e n t s upon the S e c r e t a r y of State, subj ect, however, to the approval of t h e A t t o r n e y General. F r o m I 7 9 3 down to I836, various u n i m p o r t a n t amendm e n t s to the p a t e n t laws were enacted. In the last mentioned year, however, the first c o m p r e h e n s i v e law 'was passed r e l a t i n g to the g r a n t of patents. T h i s law r e m a i n e d in force until I87o, a n d was in fact in s u b s t a n c e very m u c h the same as our p r e s e n t laws. By the e n a c t m e n t of 1836, a s u b - d e p a r t m e n t of the State D e p a r t m e n t was created, which was k n o w n as the P a t e n t Office. Provision was m a d e for the a p p o i n t m e n t of a Commissioner of P a t e n t s , a n d the C o m m i s s i o n e r of P a t e n t s was required to m a k e or to h a v e m a d e an e x a m i n a t i o n of the alleged new invention or discovery to d e t e r m i n e w h e t h e r or not the same had been i n v e n t e d or discovered by a n y other person in the U n i t e d S t a t e s prior to the alleged i n v e n t i o n t h e r e o f by the a p p l i c a n t and to d e t e r m i n e w h e t h e r or not, in view of the prior art, the applicant was e n t i t l e d to a patent. Prior to this A c t e x a m i n a t i o n s were not required, and if t h e applicant averred t h a t his alleged i n v e n t i o n was new and novel, the C o m m i s s i o n or the S e c r e t a r y of S t a t e was r e q u i r e d to g r a n t or i s s u e a p a t e n t upon his application, provided the discovery or i n v e n t i o n of the applicant was d e e m e d of sufficient i m p o r t a n c e .
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It will readily b e seen t h a t a p a t e n t g r a n t e d u n d e r such c i r c u m s t a n c e s was necessarily of v e r y small c o m m e r c i a l value, b e c a u s e it w o u l d not b e r e a s o n a b l e to expect men to invest their capital in a species of p r o p e r t y good title to which and the v a l u e of which were so uncertain. T h e A c t of i836 e s t a b l i s h e d p a t e n t p r o p e r t y upon a higher plane t h a n it had e v e r before occupied and it is believed t h a t the i m p o r t a n c e of this act to the people of the United States cannot b e o v e r e s t i m a t e d . Senator T h o m a s C. Platt, s p e a k i n g in I884, referring to this Act, said: " T o m y mind, the p a s s a g e of the A c t of ~836 creating the P a t e n t Office m a r k s the m o s t i m p o r t a n t epoch in the history of o u r d e v e l o p m e n t - - I think, the m o s t i m p o r t a n t event in the history of o u r G o v e r n m e n t from the Constitution until the Civil War. T h e e s t a b l i s h m e n t of the P a t e n t Office m a r k e d the c o m m e n c e m e n t of that m a r v e l o u s development of the resources of the c o u n t r y which is t h e admiration and w o n d e r of the world, a d e v e l o p m e n t which challenges all h i s t o r y for a parallel ; and it is not too m u c h to say that this u n e x a m p l e d progress has been not only dependent upon, b u t has been coincident with, the g r o w t h and d e v e l o p m e n t of the p a t e n t s y s t e m of this country. W o r d s fail in a t t e m p t i n g to p o r t r a y the a d v a n c e m e n t of this c o u n t r y for the last f i f t y years. W e have had fifty years of progress, fifty years of inventions applied to the everyday w a n t s of life, fifty years of p a t e n t e n c o u r a g e m e n t , and fifty years of a d e v e l o p m e n t in wealth, resources, grandeur, culture, p o w e r w h i c h is little short of miraculous. Population, production, business, wealth, comfort, culture, power, grandeur, these have all kept step with the expansion of the i n v e n t i v e genius of the c o u n t r y ; and this progess has b e e n m a d e possible only b y the inventions of its citizens. All h i s t o r y confirms us in the conclusion that it is the d e v e l o p m e n t b3} the mechanic arts of the industries of a c o u n t r y w h i c h b r i n g s to it g r e a t n e s s and p o w e r and glory. No p u r e l y agricultural, pastoral people ever achieved any high s t a n d i n g a m o n g the nations of the earth. It is only when the brain evolves and the c u n n i n g h a n d fashions
6o
Anderson
:
[J. F. I.,
labor-saving m a c h i n e s t h a t a n a t i o n b e g i n s to t h r o b w i t h new e n e r g y and life and e x p a n d s w i t h a new growth. It is only w h e n t h o u g h t w r i n g s from n a t u r e her u n t o l d secret treasures t h a t solid w e a l t h and s t r e n g t h are a c c u m u l a t e d by a people." U n d e r the p a t e n t laws now in force in the U n i t e d States a n y person who has i n v e n t e d or discovered a n y new and useful art, m a c h i n e , m a n u f a c t u r e or composition of m a t t e r , or a n y n e w a n d u s e f u l i m p r o v e m e n t thereof, n o t k n o w n or used by others in this c o u n t r y before his i n v e n t i o n or discovery thereof, and not p a t e n t e d or described in a n y p r i n t e d p u b l i c a t i o n in this or a n y f o r e i g n country, before his invention or discovery thereof, or more t h a n two years prior to his application, and not in public use or on sale in this c o u n t r y more t h a n two years prior to his application, unless t h e same is proved to h a v e been a b a n d o n e d , may, upon paym e n t of the fees r e q u i r e d b y law and o t h e r due p r o c e e d i n g s had, obtain a p a t e n t therefor. It m a y be r e m a r k e d here t h a t the word " d i s c o v e r e d " in this section of the s t a t u t e m e a n s " i n v e n t i o n . " It will be n o t e d t h a t foreigners have t h e same r i g h t s u n d e r this law as citizens of the U n i t e d States. T h e first requisite to the s e c u r i n g of a p a t e n t is t h e m a k i n g of an invention. J u s t w h a t i n v e n t i o n is or w h a t it takes to c o n s t i t u t e an act of i n v e n t i o n is a q u e s t i o n t h a t has been discussed by t h e courts and by text-book writers m a n y , m a n y times, a n d it is a q u e s t i o n w h i c h c a n n o t be a n s w e r e d by definition. I say this, n o t w i t h s t a n d i n g t h a t definitions of t h e term " i n v e n t i o n " will be f o u n d in m a n y text-books, and in m a n y decisions of the courts. Suffice it to say t h a t i n v e n t i o n c o m p r e h e n d s a new idea of m e a n s and it m u s t be s o m e t h i n g b e y o n d the scope of m e r e l y mechanical effort. H a v i n g m a d e an invention, the n e x t step in the process of securing a p a t e n t consists in the p r e p a r a t i o n of an application a n d the filing of the same in the P a t e n t Office. This application comprises a p e t i t i o n to the C o m m i s s i o n e r of P a t e n t s , r e q u e s t i n g the g r a n t of the p a t e n t for the invention disclosed in t h e application, an o a t h a n s w e r i n g to the
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r e q u i r e m e n t s of the s t a t u t e s , a specification descriptive of the invention, and such specification m u s t be concluded with a claim or claims specifically p o i n t i n g out the i m p r o v e m e n t or invention. If no application has been m a d e in a foreign country, the o a t h should set f o r t h t h a t t h e applicant is the original and first i n v e n t o r of the i n v e n t i o n disclosed in the application and described and claimed in the specification ; t h a t such i n v e n t i o n was n e v e r k n o w n or used before his invention or discovery thereof; t h a t such i n v e n t i o n h a d not been p a t e n t e d or described in a n y p r i n t e d publication in the U n i t e d States of A m e r i c a or a n y foreign c o u n t r y before his i n v e n t i o n or discovery thereof, or more t h a n two years prior to his appliCation ; t h a t t h e said i n v e n t i o n h a d not been in public use or on sale in the U n i t e d S t a t e s for more t h a n two years prior to his application, a n d t h a t no application for foreign patent h a d been filed by h i m or his legal r e p r e s e n t a t i v e s or assigns in a n y foreign c o u n t r y prior to his application in the U n i t e d States. If, however, applications for p a t e n t s in countries foreign to the U n i t e d S t a t e s h a v e been m a d e at the time of the filing of an application in the U n i t e d States, it is necessary for the a p p l i c a n t to n a m e the foreign c o u n t r y or countries in which such applications h a v e been made, giving t h e d a t e of t h e filing of the same. T h e claims are necessary to a complete specification. The specification m u s t , of course, be s i g n e d by the applicant, who in n e a r l y all cases is the inventor, and the application w h e n f o r w a r d e d to the P a t e n t Office m u s t be accompanied b y the first G o v e r n m e n t fee of $I5. W h e r e the application relates to an i n v e n t i o n w h i c h can be graphically depicted, it is necessary to prepare and file d r a w i n g s with and as a p a r t of the application. If a n y one of the parts above referred to are omitted, the application will not be accepted by the P a t e n t Office, and the same will not be filed u n t i l all of the parts have been received by the P a t e n t Office. A f t e r an application has been received by the P a t e n t Office, it goes to the A p p l i c a t i o n Division, where it is classified, and is t h e n fowarded to the division in the P a t e n t Office in w h i c h is to be f o u n d the class of m a c h i n e or art to
62
Anderson
."
[J. F. I.,
which the i n v e n t i o n belongs. A p p l i c a t i o n s received in t h e office are e x a m i n e d in r e g u l a r order, according to t h e i r filing dates. Before the claims of an application are allowed, careful e x a m i n a t i o n of the prior art is made, and only such claims are allowed as d i s t i n g u i s h from the e o n s t r u e t i o n s disclosed by the p a t e n t s and o t h e r p u b l i c a t i o n s discovered by t h e e x a m i n e r in his search of t h e art. As a rule these e x a m i n a t i o n s are carefully made, t h o u g h , as you will r e a d i l y u n d e r s t a n d , where several h u n d r e d exa m i n e r s and a s s i s t a n t s are employed, some of t h e m are more careful in their work t h a n others. T h e more care taken in the search and e x a m i n a t i o n of the records in the P a t e n t Office, the more likely is it t h a t the p a t e n t e d claims will be valid. It f r e q u e n t l y becomes necessary to a m e n d the claims, p e r h a p s m a n y times, before t h e y can be b r o u g h t into such shape t h a t t h e y d i s t i n g u i s h from the art. T h e r e is one t h i n g t h a t s h o u l d be u n d e r s t o o d by all applicants for patents, a n d t h a t is t h a t t h e claims of a p a t e n t are of the v e r y g r e a t e s t i m p o r t a n c e ; in fact, I should r e g a r d the claims as the m o s t i m p o r t a n t part of a patent. Unless the claims are well d r a w n and unless t h e y eover well the i n v e n t i o n f o r m i n g the s u b j e c t - m a t t e r of the patent, the p a t e n t loses m u c h of its value. T h e p h r a s e o l o g y of the claims should be accurate. It is as necessary t h a t the elements or parts e n t e r i n g into and f o r m i n g the c o m b i n a t i o n set forth in a claim s h o u l d be s t a t e d and p u t t o g e t h e r w i t h exactness and precision as it is t h a t the same e l e m e n t s be fitted t o g e t h e r w i t h exactness and precision in the m a c h i n e itself. As I have already said, the claims of a p a t e n t s h o u l d be d r a w n with very g r e a t care, and should be m a d e as accurate and as exact and as m u c h to the point as it is possible. I am sorry to say, however, t h a t in m a n y , m a n y instances claims are v a g u e l y and loosely drawn. T h i s in some instances is due to a lack of k n o w l e d g e of w h a t the invention really is; in others it is a lack of ability to express ideas clearly in w r i t i n g ; in others it is perhaps a lack of effort;
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and in others it is p e r h a p s due to a lack of proper time ; b u t w h a t e v e r t h e cause m a y be, failure to secure good claims is a m i s f o r t u n e so far as the p a t e n t e e is concerned. A writer in The Forum, r e f e r r i n g to the difficulty of claim writing, has s a i d : " It takes a very experienced h a n d to avoid defects w h i c h will nullify the p a t e n t e e ' s proper advantage. A n omission is f a t a l ; an a d d i t i o n is fatal ; and a v a g u e n e s s is fatal." Broadly considered, the claims of an application m a y be divided into generic and specific claims. If the i n v e n t i o n disclosed in an application will s u p p o r t a b r o a d or generic claim, such a claim s h o u l d by all m e a n s be included. But iff a d d i t i o n to such claim, specific claims also s h o u l d be included because it is very m u c h easier to a n t i c i p a t e a broad claim in the prior art t h a n it is to a n t i c i p a t e a specific claim, and it m a y happen, if the claims of the p a t e n t are ever s u b j e c t e d to litigation, t h a t t h e p a t e n t e e would be able to s u s t a i n the v a l i d i t y of the specific claim b u t would be unable to s u s t a i n the v a l i d i t y of the generic claim. In such case, t h e p a t e n t , by reason of the presence of the specific claim, w o u l d still be of value to the patentee, while, on the contrary, if it h a d i n c l u d e d only the generic or broad claim or claims, w h i c h h a d been a n t i c i p a t e d , the value of the p a t e n t would be e n t i r e l y destroyed. It is not a l w a y s so, but, g e n e r a l l y speaking, a broad claim includes a small n u m b e r of e l e m e n t s in combination, while a specific claim will include a g r e a t e r n u m b e r of e l e m e n t s in combination, a n d these e l e m e n t s m a y be still f u r t h e r affected and n a r r o w e d by q u a l i f y i n g limitations. It s o m e t i m e s h a p p e n s t h a t an inventor, who fully understands the details a n d principles of his invention, concludes that he is b e t t e r fitted to write his specification a n d claims, that is to say, is b e t t e r fitted to prepare his application for the P a t e n t Office t h a n some one who has h a d experience in the w r i t i n g of specifications and the d r a w i n g of claims, and therefore u n d e r t a k e s to do this work. It is v e r y u n u s u a l to find an i n v e n t o r who has h a d sufficient experience to prepare the specification and claims of an application properly, and t h e chances are a b o u t one h u n d r e d to one a g a i n s t his
64
Anderson.
J. F. I.,
succeeding in d r a w i n g claims which a d e q u a t e l y protect his invention. A f t e r the application has been placed in condition for allowance, it is allowed by the examiner, after w h i c h it goes to the Issue Division of the P a t e n t Office. Then, upon the p a y m e n t of the final fee of $20, t h e p a t e n t is printed, the g r a n t is p r e p a r e d a n d is s i g n e d by the Commissioner of P a t e n t s , and the p a t e n t is issued u n d e r the seal of the Patent Office. M a n y i n v e n t o r s suppose t h a t w h e n t h e y h a v e secured t h e i r p a t e n t s t h e i r t r o u b l e s are over, b u t the fact is t h a t if t h e i n v e n t i o n is of a n y considerable v a l u e or worth, the p a t e n t e e will be beset by a horde of infringers who will a t t e m p t to use the i n v e n t i o n and secure the benefit of the inventor's thought and ingenuity. T h e p a t e n t e e can p r o t e c t his r i g h t s only by b r i n g i n g and p r o s e c u t i n g a suit in the F e d e r a l Courts a n d s e c u r i n g an i n j u n c t i o n a g a i n s t infringers. It seems s t r a n g e t h a t a person who would not t h i n k of t r e s p a s s i n g upon the real p r o p e r t y of a n o t h e r person, or who would n o t t h i n k of i n t e r f e r i n g w i t h o r d i n a r y c h a t t e l p r o p e r t y b e l o n g i n g to a stranger, will n o t h e s i t a t e to trespass upon t h e p a t e n t e d p r o p e r t y of another, w h e n e v e r it appears to h i m t h a t such t r e s p a s s i n g w o u l d inure to his adv a n t a g e , considered from a business and financial standpoint. N o t w i t h s t a n d i n g the fact t h a t p a t e n t e d p r o p e r t y is cons t a n t l y b e i n g s u b j e c t e d to the a t t a c k s of infringers, such p r o p e r t y is very valuable, and, as has a l r e a d y been pointed out, c o n s t i t u t e s the basis of i n v e s t m e n t of m a n y millions of dollars in the U n i t e d States, a n d it has been asserted in a c o m p a r a t i v e l y recent a n n u a l report of one of the Commissioners of P a t e n t s " t h a t we m a i n l y owe to our p a t e n t s y s t e m such foothold as we have g a i n e d d u r i n g t h e past fifty years in foreign lands for our m a n u f a c t u r e d products." AN 8-FOOT STEEL CHIMNEY,230 feet in height, has just been completed and will be erected in Mexico. This will be the highest steel chimney in America.
United States Patent Laws.
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Mechanical and Engineering Section. (Staled Meeting held November 25, z9o¢. )
The United States Patent Laws: Historically and Practically Considered.* Bxr CYRus N. ANDERSON, of the Philadelphia Bar.
Several years ago a writer in the Iron Industry Gazette, an E n g l i s h publication, said : " D i s p a r a g e m e n t of p a t e n t s is common and easy, b u t it should not be f o r g o t t e n by those who sneer at i n v e n t i o n s that, out of a total of e i g h t billions of capital invested in m a n u f a c t u r i n g in the U n i t e d States, patents form the basis for an i n v e s t m e n t of a b o u t six billions. Evidently, the U n i t e d S t a t e s s y s t e m of e n c o u r a g i n g invention t h a t has r e s u l t e d in the p a t e n t i n g of over 5oo,ooo inventions is a s y s t e m which is e x c e e d i n g l y wise a n d valuable. T h e only t h i n g t h a t has enabled m a n u f a c t u r e r s to make so w o n d e r f u l a progress in the U n i t e d States is its patent s y s t e m . " Up to the p r e s e n t time, t h e r e h a v e been g r a n t e d in the United States n e a r l y 800,000 p a t e n t s , and, while I h a v e no recent figures, t h e r e is no d o u b t b u t t h a t the proportion of capital i n v e s t e d in m a n u f a c t u r e s w i t h p a t e n t s as a basis is as great, if not greater, now t h a n it was w h e n the f o r e g o i n g s t a t e m e n t was made. A t a time w h e n t h e r i g h t of p r o p e r t y in patents, or r a t h e r in p a t e n t e d inventions, is so well recognized, it strikes one as a curious fact t h a t t h e r e ever was or should have been a time when a r i g h t to such p r o p e r t y was not recognized. Yet the fact is t h a t in c o m p a r a t i v e l y recent periods, considered in the l i g h t of the world's history, p r o p e r t y r i g h t s in connection w i t h i n v e n t i o n s were not recognized, and if a man was possessed of an i n v e n t i v e t u r n of m i n d and was an Read at t h e stated meeting of t h e Business and Professional Club for November, I9O4, a n d (by title) before the Mechanical and ]~ngineering Seetion of the Institute, N o v e m b e r 25, 19o4.
52
_/tnderson :
U.F.I.,
i n v e n t i v e genius, and m a d e inventions or i m p r o v e m e n t s in m a c h i n e s or in m e c h a n i c a l devices or in the art of doing things, he had to s t a n d b y and see others e n j o y e q u a l l y wittl h i m the benefits of his intellectual t h o u g h t and effort. In t h e v e r y earliest history, t h e r i g h t of p r o p e r t y in t a n g i b l e things w a s recognized, b u t an exclusive right in intellectual property, such as i n v e n t i o n s and writings, was not r e g a r d e d as a n a t u r a l right, and the right to such p r o p e r t y was only e s t a b l i s h e d as a result of a d v a n c i n g and i m p r o v e d civilization. It s e e m s t h a t q u i t e early in E n g l a n d the practice g r e w u p u n d e r whieh t h e Crown, as a m a t t e r of grace and favor, b u t not of right, g r a n t e d to the i n v e n t o r of a n e w manufacture or a n e w art, the exclusive r i g h t for l i m i t e d periods to his i n v e n t i o n or i m p r o v e m e n t , and it is r e p o r t e d t h a t in t h e f o u r t e e n t h century, in t h e reign of E d w a r d III, s o m e wise s u b j e c t s of the realm, alchemists t h e y were, i n v e n t e d or discovered a philosopher's stone. A c o m m i s s i o n was a p p o i n t e d b y the King, consisting of two a l d e r m e n and t w o friars, who, after an investigation, which, of course, was v e r y earefully made, r e p o r t e d t h a t the philosopher's stone p o s s e s s e d merit, and u p o n this r e p o r t t h e K i n g g r a n t e d an exclusive r i g h t to the discoverers to m a n u f a c t u r e and sell "the philosopher's stone. W h e n the n a t u r e of intellectual p r o p e r t y is considered, it s e e m s s o m e w h a t a n o m a l o u s t h a t r i g h t s of p r o p e r t y therein should n o t have been recognized from the v e r y earliest times. Professor Shaler has said : " W h e n we come to w e i g h the rights of the several sorts of p r o p e r t y whieh can be held b y men, and in this j u d g m e n t take only the a b s o l u t e questions of justice, l e a v i n g o u t the limitations of expedience and prejudice, it will be seen clearly that intellectual property is after all, the only possession in the world. T h e man w h o brings o u t of n o t h i n g n e s s some child of his t h o u g h t s has rights therein w h i c h c a n n o t b e l o n g to a n y source of property." Mr. Fessenden, in his w o r k on patents, p u b l i s h e d in i82i, says : " In a moral as well as in a political point of view,
Jan., 19o5.]
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the a u t h o r of a new and useful i n v e n t i o n has the best of all possible titles to a m o n o p o l y of the first fruits of his ingenuity. T h e i n v e n t i o n is the work of his h a n d s and the offspring of his intellect; and after he is allowed a t e m p o r a r y monopoly, becomes at the expiration of the p a t e n t a valuable d o n a t i o n to society." A t least as early as a b o u t the year 16oo the r i g h t of property in i n v e n t i o n was well u n d e r s t o o d arid h a d a wellestablished and defined s t a n d i n g in the c o m m o n law. As i n d i c a t i n g t h a t in the c o m m o n law of E n g l a n d at t h a t time the reason for g r a n t i n g exclusive privileges to inventors, and t h a t the r i g h t s of p r o p e r t y in i n v e n t i o n s were fairly understood, I will read you w h a t was said by the Court in the case of Darcy ,Js. A11in : " W h e r e a n y man, b y his own charge and industry, or by his own wit or invention, d o t h bring a n y new trade into the realm, or a n y e n g i n e t e n d i n g to the f u r t h e r a n c e of a trade t h a t w a s . n e v e r used before; and t h a t for the good of the realm : t h a t in such cases the K i n g m a y g r a n t to h i m a m o n o p o l y p a t e n t for some reasonable time, until the s u b j e c t s m a y learn the same, in consideration of the good t h a t he d o t h b r i n g b y his i n v e n t i o n to the c o m m o n w e a l t h ; otherwise not." Sir E d w a r d Coke said of p a t e n t privileges t h a t : " T h e reason w b e r e f o r such a privilege is good in law is because the i n v e n t o r b r i n g e t h to and for the c o m m o n w e a l t h a new m a n u f a c t u r e by his invention, costs a n d ' c h a r g e s , a n d therefore it is reason t h a t he should have a privilege for his reward (and t h e e n c o u r a g e m e n t of others in the like) for a convenient time." It does not appear t h a t there was a n y s t a t u t o r y law passed in E n g l a n d concerning the p a t e n t i n g of i n v e n t i o n s until the y e a r 1623, in the twenty-first y e a r of the reign of James I, at which time the s t a t u t e of monopolies was passed, which declared certain monopolies to be void, and prohibited the g r a n t of such monopolies in the future. One section of this s t a t u t e , however, related to p a t e n t s and read as follows: " P r o v i d e d also, and be it declared and e n a c t e d : T h a t any declaration before m e n t i o n e d shall not e x t e n d to a n y
54
Anderson :
[J. F. I.,
letters-patent a n d g r a n t s of privilege, for t h e t e r m of fourteen years or under, h e r e a f t e r to be made, of the sole worki n g or m a k i n g of a n y m a n n e r of new m a n u f a c t u r e s , w i t h i n this r e a l m , to the true and first i n v e n t o r and i n v e n t o r s of such m a n u f a c t u r e s , w h i c h others, at the time of m a k i n g such l e t t e r s - p a t e n t and grant, shall n o t use, so as also t h e y be not c o n t r a r y to the law, nor m i s c h i e v o u s to t h e state, by r a i s i n g prices of c o m m o d i t i e s at home, or h u r t of trade, or g e n e r a l l y i n c o n v e n i e n t : T h e said f o u r t e e n years to be a c c o u n t e d from the date of the first letters-patent or g r a n t of such privilege, h e r e a f t e r to be m a d e : b u t t h a t t h e s a m e shall be of such force as t h e y should be, if this act h a d never been m a d e and of none other." I q u o t e this section of the s t a t u t e in full because it is the first E n g l i s h s t a t u t e on the subject, and is the very f o u n d a t i o n of our own laws on the s u b j e c t of patents. T h e s e laws are the result of d e v e l o p m e n t and evolution. Mr. Robinson, the a u t h o r of one of our most elaborate treatises on the s u b j e c t of the p a t e n t laws, has said t h a t in this s t a t u t e , as i n t e r p r e t e d by t h e E n g l i s h courts, are f o u n d the sources of the p a t e n t laws of the U n i t e d States. T h e I5O years following the s t a t u t e j u s t referred to covered the Colonial period of the U n i t e d States. D u r i n g t h a t period of our existence t h e r e was, as is well kn~)wn to all, very little m a n u f a c t u r i n g w i t h i n the p r e s e n t borders of the U n i t e d States, and v e r y little i m p r o v e m e n t in the m a n u f a c t u r i n g arts was m a d e by the Colonists. T h e c o u n t r y was v e r y t h i n l y a n d sparsely s e t t l e d ; the Colonists, our forefathers, h a d duties to perform which were m u c h more pressing upon t h e m t h a n the m a k i n g of i n v e n t i o n s or imp r o v e m e n t s in the m e t h o d or art of d o i n g t h i n g s in the m a n u f a c t u r i n g world. T h e Colonists were m a k i n g a cont i n u a l fight for existence and c o n s t a n t effort to s u b d u e the m a n y obstacles i n c i d e n t to the d e v e l o p m e n t of a new country, and had no t i m e to e n g a g e in the f a s c i n a t i n g and freq u e n t l y profitable p u r s u i t of m a k i n g i m p r o v e m e n t s and i n v e n t i o n s in e x i s t i n g devices in the m a n u f a c t u r i n g arts. It is not s u r p r i s i n g t h a t u n d e r these conditions the Colonists m a d e few inventions. B u t there was still a n o t h e r
Jan., 19o5.]
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55
obstacle in the w a y of i m p r o v e m e n t by the Colonists of the m a n u f a c t u r i n g agts. T h i s obstacle was the a t t i t u d e of E n g l a n d t o w a r d the Colonists upon this matter. It was England's idea t h a t the Colonists s h o u l d s u p p l y raw artiticles of commerce, such as the p r o d u c t s of the farm, and t h a t E n g l a n d should f u r n i s h to the Colonists all such manu f a c t u r e d articles as m i g h t be needed or d e m a n d e d by the Colonists. E n g l a n d ' s policy t o w a r d the Colonists was expressed by Sir W i l l i a m Pitt, w h e n he said: " I t is the destiny of A m e r i c a to feed G r e a t Britain, and the d e s t i n y of Great Britain to clothe America." Lord C h a t h a m said, " I would not allow the Colonists to make so m u c h as a hob nail for t h e m s e l v e s . " Laws were e n a c t e d by E n g l a n d p r o h i b i t i n g e v e r y species of m a n u f a c t u r e s in the Colonies. W h e n the Colonists began to m a k e iron and nails for their use, the H o u s e of Commons resolved t h a t " n o n e of the p l a n t a t i o n s should m a n u f a c t u r e iron nails of a n y kind o u t of a n y sows, pigs, whatsoever." A n d the H o u s e of Lords added, " N o forge going by water, or o t h e r works, should be erected in a n y of the p l a n t a t i o n s for the m a k i n g , w o r k i n g or c o n v e r t i n g of any sows, pigs, or cast iron into bar or rod iron." By an act of I75o the erection of buildings and mills for m a k i n g iron was prohibited. T h e r e were c o r r e s p o n d i n g restrictions imposed upon the Colonies with respect to all sorts of m a n u f a c t u r i n g arts. For instance, in 1684, Virginia passed an act e n c o u r a g i n g the m a n u f a c t u r e of the textile fabrics which was a n n u l l e d by P a r l i a m e n t . T h e condition of m a n u f a c t u r e s "in the Colonies has been well set forth by S e n a t o r T h o m a s C. Platt, of Connecticut, as follows : " M a n u f a c t u r e s were practically u n k n o w n ; there were no m a c h i n e s as we now u n d e r s t a n d the t e r m ; men knew how to p l o u g h and sow, hoe a n d chop, reap, m o w and cradle, break flax and hackle it, t h r e s h w i t h the flail, winnow w i t h the b l a n k e t or fan and to shell corn by hand. The women k n e w how to spin, card, weave and knit. Mechanical k n o w l e d g e was monopolized by the blacksmith, the carpenter, the m i l l w r i g h t a n d the village tinker. Pro-
56
Anderson
."
[J. F. I.,
duction was a toilsome, w e a r y task, limited b y t h e c a p a c i t y for m u s c u l a r endurance." It is p r o b a b l e that the first p a t e n t g r a n t e d within t h e limits of the U n i t e d States was b y the general court of the Colony of M a s s a c h u s e t t s , u n d e r d a t e of M a y 6, 1646, to one J o s e p h Jenckes, of Lynn, for a scythe. In his petition or prayer, he p r a y e d for p r o t e c t i o n for " F o w e r t e e n yeeres, w i t h o u t d i s t u r b a n c e b y any o t h e r s e t t i n g u p t h e like inventions, so t h a t his s t u d y and cost m a y not b e in v a y n e or lost." Before p r o c e e d i n g to a discussion of the laws relating to p a t e n t s which have been e n a c t e d b y the U n i t e d States G o v e r n m e n t , I desire to call a t t e n t i o n briefly to s o m e of t h e o b j e c t i o n s w h i c h h a v e b e e n m a d e to patents. T h e objection has been m a d e t h a t there is no such t h i n g as intellectual property, and t h a t o w n e r s h i p of Such p r o p e r t y restricts c o m m o n rights. Also t h a t t h e g r a n t i n g of a p a t e n t is a creation of a monopoly. P a t e n t s h a v e been c o m p a r e d to letters of marque, which allowed the holder to p r e y u p o n h o n e s t industry. It h a s b e e n u r g e d t h a t p a t e n t s increase the price of commodities, and t h a t t h e y e n c o u r a g e labors a v i n g inventions and take o p p o r t u n i t i e s from t h e artisan. It is needless to s a y to an audience of t h e p r e s e n t day t h a t the last o b j e c t i o n is u t t e r l y w i t h o u t foundation. Exactly the reverse has b e e n proved a d e q u a t e l y . It has been u r g e d t h a t p a t e n t e d i n v e n t i o n s r e d u c e or sink m a n to automata, and t h a t the g r a n t i n g of a p a t e n t enables one m a n to say to a n o t h e r t h a t he shall not carry on his b u s i n e s s in the best way, and t h a t b y g r a n t i n g a p a t e n t the idea involved in the p a t e n t is tied up, and the course of t h o u g h t in that direction is stayed. A F r e n c h m a n has a d v a n c e d a p i c t u r e s q u e o b j e c t i o n t h a t p a t e n t s give u n d u e a d v a n t a g e to their possessor b y " m a k i n g a golden b r i d g e for h i m w h o enters the arena with arms m o r e subtle and m o r e finely t e m p e r e d than those of his adversaries." T h e f o u n d a t i o n of all t h e patent-law legislation in the U n i t e d States is t h e clause or p h r a s e in t h e Constitution w h i c h v e s t s in Congress p o w e r " t o p r o m o t e t h e progress of science and u s e f u l arts b y s e c u r i n g for limited times to
Jan., I9o5.]
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authors and i n v e n t o r s the exclusive right to their r e s p e c t i v e writings or discoveries." T h e first p a t e n t law of the U n i t e d S t a t e s was e n a c t e d in the y e a r I79o, April the ioth. It followed in a general w a y the law then in existence in E n g l a n d a u t h o r i z i n g the g r a n t of p a t e n t s w i t h o u t an e x a m i n a t i o n of the prior art, as is n o w the case. T h e a u t h o r i t y to g r a n t p a t e n t s was conferred upon the S e c r e t a r y of State, the S e c r e t a r y of W a r and t h e A t t o r n e y - G e n e r a l of the U n i t e d States. It a p p e a r s t h a t Mr. Jefferson, w h o was at t h a t time Secretary of State, took g r e a t interest in the p a t e n t laws, and r e g a r d e d t h e m and the g r a n t i n g of a p a t e n t as of the very g r e a t e s t importance, and he is g e n e r a l l y referred to as the F a t h e r of the U n i t e d S t a t e s P a t e n t Laws. In the Official Gazette of the U n i t e d S t a t e s P a t e n t Office, p u b l i s h e d S e p t e m b e r 24, i877, an i n t e r e s t i n g description of the early practice u n d e r the A c t of I79o o c c u r s : " By A c t of April Io, i79 o, the first A m e r i c a n P a t e n t S y s t e m was founded. T h o m a s Jefferson inspired it, and m a y b e said to h a v e b e e n t h e F a t h e r of the A m e r i c a n P a t e n t Office. H e took g r e a t pride in it, it is said, and g a v e personal consideration to e v e r y application t h a t was m a d e for a p a t e n t during t h e y e a r s b e t w e e n I79o and I793, while the p o w e r of revision and rejection, g r a n t e d b y that A c t r e m a i n e d in force. It is related t h a t the g r a n t i n g of a p a t e n t was held to be in t h e s e early times q u i t e an e v e n t i n ' t h e h i s t o r y of the S t a t e D e p a r t m e n t , w h e r e the clerical part of the w o r k was then performed. It is a m a t t e r of tradition, h a n d e d d o w n to us from generation to generation, b y those w h o love to speak of Mr. Jefferson, his v i r t u e s and his ecentricities, that w h e n an application for p a t e n t was made u n d e r the first Act, he w o u l d summon Mr. Henry Knox, of M a s s a c h u s e t t s , w h o was Secretary of W a r , and Mr. E d m u n d R a n d o l p h , of Virginia, who was A t t o r n e y G e n e r a l - - t h e s e officers b e i n g d e s i g n a t e d by the Act, with the S e c r e t a r y of State, a tribunal to examine and g r a n t p a t e n t s - - a n d that t h e s e three d i s t i n g u i s h e d officials w o u l d e x a m i n e the applications critically, scrutinize each point of the specification and claims carefully and
58
Anderson
."
[J. F. I.,
rigorously. T h e result of this e x a m i n a t i o n was t h a t d u r i n g the first year, a m a j o r i t y of the applications filed failed to pass the ordeal, and only three p a t e n t s were g r a n t e d . In those days every step in the i s s u a n c e of a p a t e n t was t a k e n w i t h g r e a t caution, Mr. Jefferson s e e k i n g always to impress upon the m i n d s of his officers a n d t h e public t h a t the g r a n t i n g of a p a t e n t was a m a t t e r of no o r d i n a r y importance." It is not to be u n d e r s t o o d t h a t the e x a m i n a t i o n referred to an i n v e s t i g a t i o n of the prior art. T h e only e x a m i n a t i o n required was of the petition, description, d r a w i n g , etc., of the application. T h e next p a t e n t act was a m e n d a t o r y in its n a t u r e , and was passed in I793. A m o n g o t h e r changes, it i m p o s e d the d u t y of i s s u i n g p a t e n t s upon the S e c r e t a r y of State, subj ect, however, to the approval of t h e A t t o r n e y General. F r o m I 7 9 3 down to I836, various u n i m p o r t a n t amendm e n t s to the p a t e n t laws were enacted. In the last mentioned year, however, the first c o m p r e h e n s i v e law 'was passed r e l a t i n g to the g r a n t of patents. T h i s law r e m a i n e d in force until I87o, a n d was in fact in s u b s t a n c e very m u c h the same as our p r e s e n t laws. By the e n a c t m e n t of 1836, a s u b - d e p a r t m e n t of the State D e p a r t m e n t was created, which was k n o w n as the P a t e n t Office. Provision was m a d e for the a p p o i n t m e n t of a Commissioner of P a t e n t s , a n d the C o m m i s s i o n e r of P a t e n t s was required to m a k e or to h a v e m a d e an e x a m i n a t i o n of the alleged new invention or discovery to d e t e r m i n e w h e t h e r or not the same had been i n v e n t e d or discovered by a n y other person in the U n i t e d S t a t e s prior to the alleged i n v e n t i o n t h e r e o f by the a p p l i c a n t and to d e t e r m i n e w h e t h e r or not, in view of the prior art, the applicant was e n t i t l e d to a patent. Prior to this A c t e x a m i n a t i o n s were not required, and if t h e applicant averred t h a t his alleged i n v e n t i o n was new and novel, the C o m m i s s i o n or the S e c r e t a r y of S t a t e was r e q u i r e d to g r a n t or i s s u e a p a t e n t upon his application, provided the discovery or i n v e n t i o n of the applicant was d e e m e d of sufficient i m p o r t a n c e .
Jan., i9o5.]
United States Patent Laws.
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It will readily b e seen t h a t a p a t e n t g r a n t e d u n d e r such c i r c u m s t a n c e s was necessarily of v e r y small c o m m e r c i a l value, b e c a u s e it w o u l d not b e r e a s o n a b l e to expect men to invest their capital in a species of p r o p e r t y good title to which and the v a l u e of which were so uncertain. T h e A c t of i836 e s t a b l i s h e d p a t e n t p r o p e r t y upon a higher plane t h a n it had e v e r before occupied and it is believed t h a t the i m p o r t a n c e of this act to the people of the United States cannot b e o v e r e s t i m a t e d . Senator T h o m a s C. Platt, s p e a k i n g in I884, referring to this Act, said: " T o m y mind, the p a s s a g e of the A c t of ~836 creating the P a t e n t Office m a r k s the m o s t i m p o r t a n t epoch in the history of o u r d e v e l o p m e n t - - I think, the m o s t i m p o r t a n t event in the history of o u r G o v e r n m e n t from the Constitution until the Civil War. T h e e s t a b l i s h m e n t of the P a t e n t Office m a r k e d the c o m m e n c e m e n t of that m a r v e l o u s development of the resources of the c o u n t r y which is t h e admiration and w o n d e r of the world, a d e v e l o p m e n t which challenges all h i s t o r y for a parallel ; and it is not too m u c h to say that this u n e x a m p l e d progress has been not only dependent upon, b u t has been coincident with, the g r o w t h and d e v e l o p m e n t of the p a t e n t s y s t e m of this country. W o r d s fail in a t t e m p t i n g to p o r t r a y the a d v a n c e m e n t of this c o u n t r y for the last f i f t y years. W e have had fifty years of progress, fifty years of inventions applied to the everyday w a n t s of life, fifty years of p a t e n t e n c o u r a g e m e n t , and fifty years of a d e v e l o p m e n t in wealth, resources, grandeur, culture, p o w e r w h i c h is little short of miraculous. Population, production, business, wealth, comfort, culture, power, grandeur, these have all kept step with the expansion of the i n v e n t i v e genius of the c o u n t r y ; and this progess has b e e n m a d e possible only b y the inventions of its citizens. All h i s t o r y confirms us in the conclusion that it is the d e v e l o p m e n t b3} the mechanic arts of the industries of a c o u n t r y w h i c h b r i n g s to it g r e a t n e s s and p o w e r and glory. No p u r e l y agricultural, pastoral people ever achieved any high s t a n d i n g a m o n g the nations of the earth. It is only when the brain evolves and the c u n n i n g h a n d fashions
6o
Anderson
:
[J. F. I.,
labor-saving m a c h i n e s t h a t a n a t i o n b e g i n s to t h r o b w i t h new e n e r g y and life and e x p a n d s w i t h a new growth. It is only w h e n t h o u g h t w r i n g s from n a t u r e her u n t o l d secret treasures t h a t solid w e a l t h and s t r e n g t h are a c c u m u l a t e d by a people." U n d e r the p a t e n t laws now in force in the U n i t e d States a n y person who has i n v e n t e d or discovered a n y new and useful art, m a c h i n e , m a n u f a c t u r e or composition of m a t t e r , or a n y n e w a n d u s e f u l i m p r o v e m e n t thereof, n o t k n o w n or used by others in this c o u n t r y before his i n v e n t i o n or discovery thereof, and not p a t e n t e d or described in a n y p r i n t e d p u b l i c a t i o n in this or a n y f o r e i g n country, before his invention or discovery thereof, or more t h a n two years prior to his application, and not in public use or on sale in this c o u n t r y more t h a n two years prior to his application, unless t h e same is proved to h a v e been a b a n d o n e d , may, upon paym e n t of the fees r e q u i r e d b y law and o t h e r due p r o c e e d i n g s had, obtain a p a t e n t therefor. It m a y be r e m a r k e d here t h a t the word " d i s c o v e r e d " in this section of the s t a t u t e m e a n s " i n v e n t i o n . " It will be n o t e d t h a t foreigners have t h e same r i g h t s u n d e r this law as citizens of the U n i t e d States. T h e first requisite to the s e c u r i n g of a p a t e n t is t h e m a k i n g of an invention. J u s t w h a t i n v e n t i o n is or w h a t it takes to c o n s t i t u t e an act of i n v e n t i o n is a q u e s t i o n t h a t has been discussed by t h e courts and by text-book writers m a n y , m a n y times, a n d it is a q u e s t i o n w h i c h c a n n o t be a n s w e r e d by definition. I say this, n o t w i t h s t a n d i n g t h a t definitions of t h e term " i n v e n t i o n " will be f o u n d in m a n y text-books, and in m a n y decisions of the courts. Suffice it to say t h a t i n v e n t i o n c o m p r e h e n d s a new idea of m e a n s and it m u s t be s o m e t h i n g b e y o n d the scope of m e r e l y mechanical effort. H a v i n g m a d e an invention, the n e x t step in the process of securing a p a t e n t consists in the p r e p a r a t i o n of an application a n d the filing of the same in the P a t e n t Office. This application comprises a p e t i t i o n to the C o m m i s s i o n e r of P a t e n t s , r e q u e s t i n g the g r a n t of the p a t e n t for the invention disclosed in t h e application, an o a t h a n s w e r i n g to the
Jan., I9O5. ]
Ullited States Patent Laws.
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r e q u i r e m e n t s of the s t a t u t e s , a specification descriptive of the invention, and such specification m u s t be concluded with a claim or claims specifically p o i n t i n g out the i m p r o v e m e n t or invention. If no application has been m a d e in a foreign country, the o a t h should set f o r t h t h a t t h e applicant is the original and first i n v e n t o r of the i n v e n t i o n disclosed in the application and described and claimed in the specification ; t h a t such i n v e n t i o n was n e v e r k n o w n or used before his invention or discovery thereof; t h a t such i n v e n t i o n h a d not been p a t e n t e d or described in a n y p r i n t e d publication in the U n i t e d States of A m e r i c a or a n y foreign c o u n t r y before his i n v e n t i o n or discovery thereof, or more t h a n two years prior to his appliCation ; t h a t t h e said i n v e n t i o n h a d not been in public use or on sale in the U n i t e d S t a t e s for more t h a n two years prior to his application, a n d t h a t no application for foreign patent h a d been filed by h i m or his legal r e p r e s e n t a t i v e s or assigns in a n y foreign c o u n t r y prior to his application in the U n i t e d States. If, however, applications for p a t e n t s in countries foreign to the U n i t e d S t a t e s h a v e been m a d e at the time of the filing of an application in the U n i t e d States, it is necessary for the a p p l i c a n t to n a m e the foreign c o u n t r y or countries in which such applications h a v e been made, giving t h e d a t e of t h e filing of the same. T h e claims are necessary to a complete specification. The specification m u s t , of course, be s i g n e d by the applicant, who in n e a r l y all cases is the inventor, and the application w h e n f o r w a r d e d to the P a t e n t Office m u s t be accompanied b y the first G o v e r n m e n t fee of $I5. W h e r e the application relates to an i n v e n t i o n w h i c h can be graphically depicted, it is necessary to prepare and file d r a w i n g s with and as a p a r t of the application. If a n y one of the parts above referred to are omitted, the application will not be accepted by the P a t e n t Office, and the same will not be filed u n t i l all of the parts have been received by the P a t e n t Office. A f t e r an application has been received by the P a t e n t Office, it goes to the A p p l i c a t i o n Division, where it is classified, and is t h e n fowarded to the division in the P a t e n t Office in w h i c h is to be f o u n d the class of m a c h i n e or art to
62
Anderson
."
[J. F. I.,
which the i n v e n t i o n belongs. A p p l i c a t i o n s received in t h e office are e x a m i n e d in r e g u l a r order, according to t h e i r filing dates. Before the claims of an application are allowed, careful e x a m i n a t i o n of the prior art is made, and only such claims are allowed as d i s t i n g u i s h from the e o n s t r u e t i o n s disclosed by the p a t e n t s and o t h e r p u b l i c a t i o n s discovered by t h e e x a m i n e r in his search of t h e art. As a rule these e x a m i n a t i o n s are carefully made, t h o u g h , as you will r e a d i l y u n d e r s t a n d , where several h u n d r e d exa m i n e r s and a s s i s t a n t s are employed, some of t h e m are more careful in their work t h a n others. T h e more care taken in the search and e x a m i n a t i o n of the records in the P a t e n t Office, the more likely is it t h a t the p a t e n t e d claims will be valid. It f r e q u e n t l y becomes necessary to a m e n d the claims, p e r h a p s m a n y times, before t h e y can be b r o u g h t into such shape t h a t t h e y d i s t i n g u i s h from the art. T h e r e is one t h i n g t h a t s h o u l d be u n d e r s t o o d by all applicants for patents, a n d t h a t is t h a t t h e claims of a p a t e n t are of the v e r y g r e a t e s t i m p o r t a n c e ; in fact, I should r e g a r d the claims as the m o s t i m p o r t a n t part of a patent. Unless the claims are well d r a w n and unless t h e y eover well the i n v e n t i o n f o r m i n g the s u b j e c t - m a t t e r of the patent, the p a t e n t loses m u c h of its value. T h e p h r a s e o l o g y of the claims should be accurate. It is as necessary t h a t the elements or parts e n t e r i n g into and f o r m i n g the c o m b i n a t i o n set forth in a claim s h o u l d be s t a t e d and p u t t o g e t h e r w i t h exactness and precision as it is t h a t the same e l e m e n t s be fitted t o g e t h e r w i t h exactness and precision in the m a c h i n e itself. As I have already said, the claims of a p a t e n t s h o u l d be d r a w n with very g r e a t care, and should be m a d e as accurate and as exact and as m u c h to the point as it is possible. I am sorry to say, however, t h a t in m a n y , m a n y instances claims are v a g u e l y and loosely drawn. T h i s in some instances is due to a lack of k n o w l e d g e of w h a t the invention really is; in others it is a lack of ability to express ideas clearly in w r i t i n g ; in others it is perhaps a lack of effort;
Jan., I9o5.]
United States Patent Laws.
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and in others it is p e r h a p s due to a lack of proper time ; b u t w h a t e v e r t h e cause m a y be, failure to secure good claims is a m i s f o r t u n e so far as the p a t e n t e e is concerned. A writer in The Forum, r e f e r r i n g to the difficulty of claim writing, has s a i d : " It takes a very experienced h a n d to avoid defects w h i c h will nullify the p a t e n t e e ' s proper advantage. A n omission is f a t a l ; an a d d i t i o n is fatal ; and a v a g u e n e s s is fatal." Broadly considered, the claims of an application m a y be divided into generic and specific claims. If the i n v e n t i o n disclosed in an application will s u p p o r t a b r o a d or generic claim, such a claim s h o u l d by all m e a n s be included. But iff a d d i t i o n to such claim, specific claims also s h o u l d be included because it is very m u c h easier to a n t i c i p a t e a broad claim in the prior art t h a n it is to a n t i c i p a t e a specific claim, and it m a y happen, if the claims of the p a t e n t are ever s u b j e c t e d to litigation, t h a t t h e p a t e n t e e would be able to s u s t a i n the v a l i d i t y of the specific claim b u t would be unable to s u s t a i n the v a l i d i t y of the generic claim. In such case, t h e p a t e n t , by reason of the presence of the specific claim, w o u l d still be of value to the patentee, while, on the contrary, if it h a d i n c l u d e d only the generic or broad claim or claims, w h i c h h a d been a n t i c i p a t e d , the value of the p a t e n t would be e n t i r e l y destroyed. It is not a l w a y s so, but, g e n e r a l l y speaking, a broad claim includes a small n u m b e r of e l e m e n t s in combination, while a specific claim will include a g r e a t e r n u m b e r of e l e m e n t s in combination, a n d these e l e m e n t s m a y be still f u r t h e r affected and n a r r o w e d by q u a l i f y i n g limitations. It s o m e t i m e s h a p p e n s t h a t an inventor, who fully understands the details a n d principles of his invention, concludes that he is b e t t e r fitted to write his specification a n d claims, that is to say, is b e t t e r fitted to prepare his application for the P a t e n t Office t h a n some one who has h a d experience in the w r i t i n g of specifications and the d r a w i n g of claims, and therefore u n d e r t a k e s to do this work. It is v e r y u n u s u a l to find an i n v e n t o r who has h a d sufficient experience to prepare the specification and claims of an application properly, and t h e chances are a b o u t one h u n d r e d to one a g a i n s t his
64
Anderson.
J. F. I.,
succeeding in d r a w i n g claims which a d e q u a t e l y protect his invention. A f t e r the application has been placed in condition for allowance, it is allowed by the examiner, after w h i c h it goes to the Issue Division of the P a t e n t Office. Then, upon the p a y m e n t of the final fee of $20, t h e p a t e n t is printed, the g r a n t is p r e p a r e d a n d is s i g n e d by the Commissioner of P a t e n t s , and the p a t e n t is issued u n d e r the seal of the Patent Office. M a n y i n v e n t o r s suppose t h a t w h e n t h e y h a v e secured t h e i r p a t e n t s t h e i r t r o u b l e s are over, b u t the fact is t h a t if t h e i n v e n t i o n is of a n y considerable v a l u e or worth, the p a t e n t e e will be beset by a horde of infringers who will a t t e m p t to use the i n v e n t i o n and secure the benefit of the inventor's thought and ingenuity. T h e p a t e n t e e can p r o t e c t his r i g h t s only by b r i n g i n g and p r o s e c u t i n g a suit in the F e d e r a l Courts a n d s e c u r i n g an i n j u n c t i o n a g a i n s t infringers. It seems s t r a n g e t h a t a person who would not t h i n k of t r e s p a s s i n g upon the real p r o p e r t y of a n o t h e r person, or who would n o t t h i n k of i n t e r f e r i n g w i t h o r d i n a r y c h a t t e l p r o p e r t y b e l o n g i n g to a stranger, will n o t h e s i t a t e to trespass upon t h e p a t e n t e d p r o p e r t y of another, w h e n e v e r it appears to h i m t h a t such t r e s p a s s i n g w o u l d inure to his adv a n t a g e , considered from a business and financial standpoint. N o t w i t h s t a n d i n g the fact t h a t p a t e n t e d p r o p e r t y is cons t a n t l y b e i n g s u b j e c t e d to the a t t a c k s of infringers, such p r o p e r t y is very valuable, and, as has a l r e a d y been pointed out, c o n s t i t u t e s the basis of i n v e s t m e n t of m a n y millions of dollars in the U n i t e d States, a n d it has been asserted in a c o m p a r a t i v e l y recent a n n u a l report of one of the Commissioners of P a t e n t s " t h a t we m a i n l y owe to our p a t e n t s y s t e m such foothold as we have g a i n e d d u r i n g t h e past fifty years in foreign lands for our m a n u f a c t u r e d products." AN 8-FOOT STEEL CHIMNEY,230 feet in height, has just been completed and will be erected in Mexico. This will be the highest steel chimney in America.