Patenting and promoting inventions

Front matter

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Root ■

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Contents

CHAPTER PAGE

Foreword 1

Author's Foreword 3

Foreword

The keynote of Mr. Avram's book is the insistence upon the work of the trained expert, whose cooperation with the inventor will produce results more surely and with less of waste than the ragged and fumbling procedure that is usually followed.

The work will undoubtedly be of great value to the inexperienced inventor, and to many an experienced inventor whose experience has not yet taught him the wisdom that the book has to offer. The snares and pitfalls that beset the inventor are so numerous as frequently to rob him of the fruits of his labors. Mr. Avram shows what must be done and what avoided if the inventor, having an idea of genuine worth, is to secure his patent and place it on the market to the best advantage.

But Mr. Avram goes further than this. He recognizes the fact that the success of the inventor concerns the public welfare, and the discussion rises in the concluding paragraphs to a creative proposal which seems to me of far-reaching significance. In these paragraphs the author has put forth the germinal idea of a project for the conservation of the labors of inventors generally.

6 FOEEWOED

Mr. Avram is an alumnus of the School of Applied Science of New York University, who has achieved eminence in his profession through unremitting labor, joined with a fine combination of constructive imagination and rigorous standards of excellence. These qualities have lent value to this volume, which I have had the privilege of seeing in the printer's proof and have read with the keenest interest

Elmek Ellsworth Brown.

New York University, January, 1918.

Chapter I. Why Inventors Fail

1. Fate of Patents. 2. Corporation Patents. 3. Proper Exploitation. 4. Creative Temperament. 5. Ignorance of Prior Art. 6. Investigation of Prior Art. 7. Preliminary Commercial Investigation. 8. Selection of Commercial Designer. 9. Inventor's Responsibility for Commercial Designer. 10. Simultaneous Inventions. 11. Preliminary Protection for an Invention. 12. Lack of Capital. 13. Errors of Judgment. 14. Unscrupulous Inventors. 15. Cooperation. 16, Unscrupulous Patent Attorneys. 17. Infringement Litigation. 18. Premature Patents.

Every week there are on the average one

thousand patents granted by the Patent Office at Washington. This number by no means comprises the total of applications submitted. Over twice this number of refusals for every manner of claim are a part of the weekly routine of the department. Each and every one of these applications, whether allowed or not, represents to its respective applicant a certain outlay of money, in many instances a considerable amount, and this before even the first steps of commercial development are attempted. The natural query is: What is the ultimate fate of all these patents?

The United States Patent Office has to date issued more than 1,200,000 patents, and it is quite safe to approximate that not more than ten per cent of this vast number have ever truly seen the light of day. A far smaller percentage have reached the market as commercial successes. Irrespective of the initial expense connected with this annual flood of patents, which, as can readily be seen, is enormous and for the greater part lost, we must consider the millions upon millions of dollars that have been and are still being wasted upon the development of these abortive projects.

We have constantly ringing in our ears the colorful tales of obscure men who have attained to prominence and great fortune through some happy stroke of invention, but the world hears little of the scores of fortunes that are lost, or of the useful lives that have been wasted upon badly conceived or maladministered inventions. The industrial tragedies are lost to view in the golden glow of brilliant achievement, while the actors go down to oblivion under that inexorable law of "the survival of the fittest." There are, of course, included in this great aggregate of inventions covered by patents a certain proportion which were never designed for the market, being improvements of existing methods evolved through practical experience by men connected with large concerns, and becoming the property of these individual firms or corporations by agreements entered into between employers and employees. Such patents are obtained to prevent competitors from using similar devices, and of course give the owners thereof legitimate advantage over other concerns manufacturing like products. Many large corporations maintain at great expense experimental departments solely for this purpose, and retained in these departments is a large portion of the finest inventive brains of the world. The Edison plants afford a splendid example of this character of organization. Many of the large concerns also maintain special departments consisting of men who are experts in patent law and authorities on the history and nature of all inventions pertaining to their employers' various activities. With the foregoing qualification, it is safe to stand on the premise that not more than one invention in a thousand is a commercial success.

This gigantic proportion of failure goes a long way in making up our great national waste, and could to a considerable degree be avoided if only the simple and approved methods of analysis and procedure were observed. It must not be thought that all failures are due to lack of ability or of genius on the part of the inventor, or to the absence of true merit in the inventions themselves. Such is far from the fact. Many an invention, doomed for all time to bear the hall mark of total failure, might have been a signal success had it fallen in proper hands, while others, with far less merit, have through the superlative genius displayed in their exploitation reaped a harvest of dollars for those in interest.

The causes which are to the largest extent responsible for this huge percentage of failure are many, and some of a character difficult of definition. The temperament that tends toward creative genius is seldom combined with sound business judgment or intuition, while the element of suspicion is frequently highly developed. This last characteristic has led to unending loss and disappointment.

Only recently a very pathetic case was brought to the attention of the writer, but unfortunately too late for any mending to be of avail. The man had learned his lesson, but had paid a frightful price. Equipped with the most meagre knowledge of mechanics, or the relation and inter-relation of mechanisms, and wholly unversed in the art of designing, he had attempted the solution of a most intricate mechanical problem, an important feature of which had baffled all who had ever attempted it. Convinced that he had hit upon a most novel conception, and fearful lest his idea be stolen by some unscrupulous person if he sought advice or criticism, he equipped a tiny workshop in his own apartment, and without the slightest attempt at investigation into the prior state of the art in which he essayed to launch upon the career of an inventor, he commenced his experiments. For four long years he struggled in secret, devoting his entire time to the task. In the meantime the few thousand dollars he had managed to save slowly dwindled away. After building and rebuilding, he did succeed in reducing his machine from a complicated affair to a simpler mechanism easy of design and construction. Imagine his consternation when, upon seeking patent protection for his invention, he discovered that he had only produced something essentially the same as that which had been created thirty years before, and had since been put into successful operation. Considerable of his time had been devoted to inventing features of the machine that were most simple of construction in any properly equipped machine shop, and required little exercise of the inventive faculties. Furthermore, there was none of these features which was not anticipated by prior patents which had expired.

The lesson contained in this story plainly illustrates a very vital and almost certain cause for failure, for apart from his ignorance of mechanics and design, had he sought expert and unprejudiced advice in the beginning, he surely would have seen the futility of attempting his invention.

The experience of this inventor is by no means a rare one. It is cited as typical of many. It is therefore most important to lay particular emphasis on the absolute and imperative need, in all cases, of a careful preliminary investigation into the exact state of the art, prior and present, pertinent to the problem in hand, before any time or money is expended on its development. A search of the files at the Patent Office is a matter of trifling expense as compared with the expense of development, and is fully explained in a later chapter. The result of this alone frequently puts a sudden check on unbridled enthusiasm, and sends many a would-be inventor back to pursuits far better adapted to his talents.

There is no avenue of human activity more crowded with men unconscious of the difficulties they must overcome to reach their goal than the tortuous road of the inventor. Ignorance, in fact, plays an astonishingly large part, not only in the conception, but in the promotion of new inventions. The inventor is often an idealistic dreamer, unable to grasp the true economic value of his problem, and with his eyes f ocussed on but one phase of a situation, which should be viewed from many angles. Quite as fatal to his success is a lack of knowledge of design, or of a thorough acquaintance with the history of devices kindred to that which he seeks to create.

This clearly shows the wisdom of a definite course of procedure in every case as regards preliminary investigation. After the entire state of the art has been minutely studied, there should immediately follow an exhaustive investigation of every possible ramification of the case in hand, not alone from the technical side, but as to its commercial possibilities as well. How these investigations are conducted on behalf of inventors and investors will be fully covered in a later chapter. Since it really seems that inventors are usually able to secure funds in one way or another for various expenses incidental to their undertakings, it also seems evident that they avoid such an investigation only because they fail to see the vital need of it. Of course, as has been stated, suspicion plays a large part in this connection. The fees appear large at times, and apparently the prudence of such a course of action seldom appeals to them, although to follow it would in countless cases save years of wasted effort.

The writer is fully aware of the great number of experienced inventors to whom the strictures contained in this volume do not apply, but unfortunately this group make up a very small minority.

The man who is called upon to finance an invention should demand exactly the same course of procedure before risking capital in any such venture. To amplify this statement let us review the methods most commonly pursued by inventors. It is much as follows :

Once they have their idea — usually, in their own minds, the basis of a wonderful and revolutionary invention — their first step in all probability is to engage a draftsman or designer to lay it out on paper. Frequently they attempt this work themselves. An experienced inventor will exercise extreme care in the selection of his designer, and with particular attention as to whether he may have practised along similar lines; others unfortunately feel secure in what the word ^^designer" implies, and will in many instances retain one of varied or uncertain experience. This latter type of inventor, satisfied that he has invented, leaves the development to his designer. This individual he takes for granted is well versed in the art of technics, and to

WHY INVENTOKS FAIL 15

him he looks to bring his ideas into being. Since most ideas can take many different forms mechanically, an invention will naturally take that form which is most characteristic of its designer. Finally the plans are completed and look very attractive indeed, regardless of the numerous dimensional errors they may contain, or of how badly the principle of the invention is worked out. Now, with his invention thus propounded on paper, the natural feeling is one of confidence, and as the child of his imagination is about to be born in the form of a working model, success and wealth seem almost within his grasp. So the model is commenced.

It is a proven fact that no draftsman or designer can avoid errors in the laying out of numerous plans, while there are many who in controlling their preparation are given to concealing unworkable features. Such blunders necessitate change after change, while time is being wasted and expense is growing, bringing the patience of the most tolerant and optimistic financial backer to the very breaking point. Meanwhile the inventor, ever eager to prove the value of his invention, must assume entire responsibility and blame for the faulty development. It may easily be two years before it slowly dawns on him that there must be something seriously wrong with his designer, and he decides, either on his own initiative or through pressure on the part of his moneyed advisors, to replace him by another, who in turn deems himself a greater genius. This newcomer considers the work of his predecessor full of impossibilities, and proceeds with the original idea on a radically different basis. And so the years roll by, until finally we have one idea represented, we shall say, by a dozen different models, by perhaps a dozen different men, not one of which stands forth with sufficient merit to warrant its commercial manufacture. Nevertheless, the inventor will not admit defeat. That well-known aphorism, ^^Hope springs eternal in the human breast,'' polished to brightness by the tongues of passing generations, is certainly exemplified in the temperament of the inventor. Patience and belief in self become the callous part of his built-up nature, and he will never let go as long as there is a struggle left in him. Fate has apparently ordained that every idea shall, somewhere, sometime, find someone possessed of sufficient receptive imagination to become its sponsor, who will lend financial countenance to its future possibilities. From out all this chaos a triumph may eventually emerge, but not before a large fortune has been squandered ; and in many such cases a few thousands would have sufficed.

More often comes dismal failure in exchange for years of labor, loss of faith in human kind, and much money. Could anything be more convincing in showing the wisdom of instituting a thorough scientific preliminary analysis at the inception of any new invention.

Let us now proceed to another phase of the question, and show the fallacy of attempting an invention without consulting at least one responsible person.

It should be ever borne in mind by inventors that, no matter what problem they may attempt to solve, it is decidedly more than likely that at least one or more inventors are working concurrently with them on the same idea. Where any invention, particularly if it is worth while, does not challenge the inventive skill of more than one individual, it is the rare exception, and far from the rule. It will be seen, therefore, that for this reason many complications may arise when patent protection is sought, and a great number of splendid inventions have been lost forever to those who evolved them, solely through ignorance of the laws governing the granting of patents. Such cases give rise to interferences, one of the most heart-breaking and expensive proceedings in patent practice. The matter of validity of patents and the approved course to follow in obtaining them will be explained later on in this book. It is necessary, however, at this point, in order to show how the fruits of a valuable invention may be lost to its rightful owner, to bring the following facts to the attention of the reader.

A patent to be valid must not be such that the monopoly, granted by it for the period of seventeen years, would preclude any member of the public from doing that which prior to the invention he or other members of the public have been in a position to do by reason of a common knowledge of the art, prior use, publication or disclosure of the invention. Publication or disclosure ^ however^ does not include information given to persons confidentially consulted or employed. The following incident, an actual occurrence known to the writer, will convey the significance of the foregoing.

A short time ago an inventor brought to the office of a most talented patent attorney a new talking machine which he had invented. He considered it superior *in every way to any other machine on the market, and whether or not he was correct in this respect, his invention had been most skillfully worked out, and was extremely valuable. An examination of the art failed to disclose that his invention was anticipated by any other patents, and therefore application was at once made to protect it properly by patent. Almost immediately after the patent was published an interference was declared. This is what had happened: The inventor had worked in absolute secrecy and had not disclosed his invention to a single person. He had not only worked out his ideas, but had actually reduced them to a machine which worked perfectly. This he had kept under lock and key for a considerable time before consulting his attorney. In this particular instance another inventor had hit upon the same idea, worked it out and applied for a patent, all of this transpiring subsequent to the time the first inventor had reduced his invention to practise. The first inventor, however, had not one slight bit of evidence, beyond his personal word, to prove the date of his conception or anything else in the way of dates in connection with his work. The second inventor had a carefully kept record of dates, all of which he wisely had attested by reliable witnesses. When testimony was taken, the first inventor found to his sorrow that one's word alone, in matters where selfish motives are involved, did not stand in point of law, and while he undoubtedly was entitled to his patent, he could not prove his case, and his invention was lost to him forever. All correspondence of every nature relating to an invention should be carefully preserved, and in exact sequence as to dates, as should all vouchers for material, labor, etc. Such evidence when systematically dated and filed cannot be gainsaid. The inventor should at the very outset select a reliable person to act as witness, sufficiently intelligent, and preferably familiar with machines or inventions of a similar nature, to whom every phase of the invention should be explained. Sketches and a description of the invention should be signed and dated by the inventor and by the witness. With such a witness available, the principal steps of development can be proven exactly as to dates, and the testimony of such a witness cannot be refuted.

Lack of capital is undoubtedly, in numerous cases, a vital reason for failure. Seldom is wealth found to be the willing handmaiden of inventive genius. While this element certainly plays a large part, it does not do so to the extent that is generally supposed.

Mark Twain once received a letter asking him to give his endorsement of a book written on the subject of patents and patentees. Clemens characteristically replied: Dear Sir: —

I have, as you say, been interested in inventors and patentees. If your book tells how to exterminate inventors, send me nine editions. Send them by express. Very truly yours,

Samuel Clemens.

Mr. Clemens sank $190,000 in backing a typesetting machine, which is to-day exhibited in the Sibley College for Engineering as "the costliest piece of mechanism for its size ever constructed/^ Present-day investigation methods would have saved our beloved Mark his fortune if they could have been put into operation at the outset of this invention.

Lack of judgment and knowledge on the part of the inventor and promoter as to how best to employ the finances at their command, even though it be a limited amount, are more often the cause of failure than the mere lack of funds.

A small group of men, a capitalist among them, were persuaded to finance the development of an automatic ticket-vending machine. The inventor, a very intelligent young man, had had no experience as an inventor prior to the time he attempted this machine. After a certain amount had been invested, the majority of the men interested depended for funds principally on the aforesaid capitalist, who was thus compelled to become the most heavily interested, though much engrossed with other affairs.

The plan of the machine was to deliver automatically one, two or five tickets, in return for the proper coin to cover each sale. It was very complicated and unreliable, and was costly to construct. Another weak feature of the proposition was that the machine was designed to cover a single and limited field of use, whereas it could have covered four different fields. Each of these weaknesses would have been disclosed, had an investigation been instituted at the very beginning, when the inventor sought capital for his idea. One very important thing would have been discovered, which would have led to an entirely different approach in the development. That was the fact that the patents applied for were valuable over any other patents covering a similar machine, such as are almost universally in use in motion picture theatres. Under such pattents it would have been possible from the start to construct a small machine suitable for many purposes, and one that could be manufactured and sold at a profit to any concern having need for a ticket selling and recording machine. The coin control device, which under any circumstances was too expensive and wholly unreliable, could have been eliminated. However, before all these points were brought to the attention of those interested, the money allotted for the venture, amounting to some $125,000, had been spent with practically no result. The men behind it had reached a point where they were naturally enough discouraged, if not disgusted, and were not inclined to give the proposition further financial aid. So that this enterprise by force of unguided circumstances is yet at a standstill and has been for over two years, although, if handled in the manner just outlined, these patents would have unquestionably proven valuable. This is a very typical illustration.

There is a certain class of inventors about whom it is very difficult to speak in terms of moderation. Many of them are the veriest rascals who defile the paths of progress and bring discredit upon worthy and sincere men who need and should have financial assistance. The writer refers to that not infrequent variety of inventor represented by men who are utterly devoid of scruple or consideration for their backers in the manner in which they handle the funds placed at their disposal. They are often on the lookout for yet another credulous person with a fortune, while engaged in wantonly squandering the funds which they have in hand. In many cases their stock in trade consists of elaborate plans and specifications, which they use as a bait, but which they know in their hearts will never get beyond that state. Proper investigation would soon put a stop to such activities, and the money thus wasted would find proper channels of employment. Fortunately, this class of individuals is in the minority; it is more frequently the lack of sound business judgment than of principle that makes for failure.

The fact that there are unscrupulous inventors of this character makes it the more imperative that capitalists and backers of inventors should insist upon a thorough preliminary investigation of any development proposition placed before them. As previously stated, such an investigation should cover a careful study of the prior art to determine the patentability; an examination by engineers and skilled mechanics into the designing and general construction with a view to profitable manufacture, and a thorough study of the possible market for the device. If such an investigation is conscientiously carried out, the type of inventor last referred to would find it difficult to obtain capital for carrying out his wonderful schemes.

In many instances the entrepreneurs of epochal inventions are able to indicate only the general course for their future development. For this reason all who are called upon to furnish capital for such purposes should look well to the question of just who is best fitted to cooperate with the inventor in perfecting his invention. In many cases no one but the inventor himself sees into the very heart of his discovery, and for this reason the greatest tact and care should be exercised not to get away from his original idea or principle and thus destroy it. There are cases of just this nature, where those who attempted the development have failed to grasp fully the ideas of the genius who has conceived them, and have spent more than a million dollars before they realized that in the inventor himself rested that peculiar vision and understanding which alone could make the invention a success, or at least must be grasped by the engineers to avoid failure. Such cases are not infrequent, and the following should illustrate the case in point.

Back in 1908 the old Field Museum in Chicago was badly in need of repairs, and it was decided to give the building a coating of gypsum stucco. The old method of applying stucco is primitive and expensive, and on this job a great invention was conceived. Carl E. Akeley invented the cement gun. This invention was destined to revolutionize certain methods of building construction. The gun is designed for "shooting^' a coating of cement, mortar, or the like on construction surfaces, as, for instance, on brick, concrete, steel, tile or woodwork. It is operated with compressed air, and the mortar is deposited in a uniform manner with so great a force that it not only adheres, but also expels by its impact all superfluous air and water, and in this way becomes of a density that makes it an excellent waterproofing medium.

Although the first principles of the invention have proven to be absolutely correct, the development of the cement gun saw many trying days for its inventor and backers, due to the fact that the men in charge of the development failed to grasp the problem, and not until the inventor was again called into the councils of those exploiting it did the gun really come into its own. Its future is now established, but more than a million dollars was lost, and the inventor is just beginning to reap the benefits of his genius.

One of the most vital causes of the failure of inventors can be laid at the door of incompetent or unscrupulous patent attorneys. A timely warning in this regard will be sounded in a later chapter, for it can be stated advisedly that under the existing methods of patent procedure the value of a patent depends as largely upon the skillful preparation of specifications and claims as upon the merit of the invention itself.

There are various dangers and possibilities for failure which threaten the inventor who takes out his patent prematurely. The application should be filed as soon as the scope of the invention is fully realized and not be-

WHY INVENTOES FAIL 27

fore. Of course, it must always be borne in mind that the inventor should have the advantage of anterior date of application, for, as has been stated, most problems worth solving arouse the ambition of more than one inventor.

The application once filed, the inventor should not seek to have the issue unduly hurried through the Patent Office, and quickly to obtain his patent. He should then be more concerned in perfecting his invention, otherwise he may find that his claims do not fully cover the invention, and that further pattents are necessary, which increases the expense and involves the question of foreign patent protection. Worse yet, he may find to his sorrow that he has obtained a narrow and practically worthless patent, which precludes the grant of one broad enough to cover his invention.

At this juncture the writer feels that it will be well to proceed to a general review of the laws governing the practice of patent law.

Chapter II. The Origin And Evolution Of And

A GENERAL REVIEW OF THE LAWS

GOVERNING THE GRANTING

OF PATENTS.

1. Origin of Patents. 2. Abuse of Special Privileges. 3. Henrj III and His ^ ^ Easterlings. ' ' 4. Henry IV and Queen Elizabeth Grants. 5. Patent Monopoly Case, Darcy vs. Allin, year 1602. 6. Belief by Statute of Monopolies, year 1623. 7. Present Patent Laws. 8. Rights of Inventor. 9. Patent Interpretation. 10. Bell Telephone Case. 11. Perfection no Requisite to Obtain Patent. 12. Edison's Incandescent Lamp Case. 13. Patentability. 14. Classes of Inventions and Respective Definitions. 15. Process and Machine Patents. 16. Manufacture and Construction Patents. 17. ''Composition of Matter'' Patents. 18. Design Patents. 19. Reissue Patents. 20. ''Disclaimer" Protection. 21. Assignment. 22. Patent as Personal Property. 23. Marking Patented Articles.

Before further discussing the question of patents, it will be found interesting to review briefly the origin of and the several causes leading up to the legislation from which the present-day practise in regard to the granting of patents has been evolved.

What is known as the "common law" entered into the matter only in the most incidental way, either in England or America, prior to such time when enactments of a legislative nature were applied to patents for invention. Property rights did not obtain at common law as far as discovery or invention were concerned. Beyond question, however, there did exist at common law the right by royal prerogative of the king to grant as suited his pleasure such protection to his subjects, at least for a prescribed time. Nevertheless, previous to any such enactment no right of property existed under the common law, and without the exercise of this arbitrary power, vested in the crown, the inventor or discoverer enjoyed no rights to the exclusion of others in the product of his genius. Once he disclosed its existence, or the means of reproducing it, it then became public property, and his rights thereto never exceeded those of all others who wished to exploit it. With such power at the king's command, subject entirely to his personal whims and purposes, it is quite obvious that the opportunity for abuse of this power was great. Abused it was, and it would seem that this prerogative was seldom exerted for the public weal.