Patents, trademarks and copyrights

Front matter

Class T a a 3L

CQEaftlGHT DEPOSIT.

Patents^ Trademarks and Copyrights

Preface

The reception accorded the first edition of this modest attempt to explain, in an elementary manner the fundamentals of patent practice, met with such success that we have been encouraged to somewhat extent its scope and to publish a second edition.

We have not attempted to write a law book and those who wish to study the law, are referred to Walker, Robinson, Hopkins or other standard text books on this subject.

It is the purpose of this book to present a broad and general explanation of those points in patent practice which the patent attorney is most often called upon to explain. It is thought that such an explanation will be of real service to the inventor and business man and, to a certain degree, to the lawyer in general practice.

The treatment of the subject is, however, both brief and general and it should be borne in mind that the answer to a specific question in this field can only be determined after a full and complete consideration by a competent patent attorney, of all the facts surrounding the question.

Frank L. A. Graham.

Ford W. Harris,

Los Angeles, Cal., October, 1921.

Contents

Page

ABANDONMENT

of application 78

Chapter I. PATENTS IN GENERAL

The United States Government has recognized inventions as an important factor in the industrial development of the nation and for the purpose of promoting the progress of science and the useful arts Congress has by appropriate laws, provided for the granting of patents of invention.

To the individual, patents open a new field for personal endeavor and advancement, whether the patent is used as a nucleus for a business or whether the inventor, by license or sale, derives an income therefrom.

To the business man, patents mean protection and insurance to his business; protection, as the owner of a patent can prevent competition by others; and insurance, as his ownership of a patent relating to his business prevents this patent from falling into the hands of his competitors who might then prevent him from using the invention covered by the patent.

To the public, patents mean new industries and developments. Under the protection of patents, new business enterprises spring up and invention and progress are fostered. The public shares largely in the fruits of a successful invention, as it must be better or cheaper to supplant what went before, and the public is the great gainer by the introduction of better or cheaper things.

Purpose of grant. — It is the purpose of the Patent Laws to grant to the inventor the exclusive right to make, use, and sell his invention for a limited time, provided the inventor will make a full disclosure of the invention accessible to the public. This disclosure of the invention is made by the inventor in his application for a patent and remains confidential between the inventor and the Patent Office until the patent is finally issued. The patent is a public record of the advancement made in the art by the invention, and, at the same time, it is notice to the public of the exclusive rights of the inventor in his inventions.

Nature of rights granted.— The exclusive rights or monopolies granted by a patent comprise the right to exclude others from making, selling or using the invention claimed in the patent during the life thereof. These rights are not collective but separate and distinct, as for instance, devices embodying the invention covered by a patent cannot be made abroad and used or sold in this country, neither can the invention be made in this country for sale or use abroad without the patentee's consent. In the United States the monopoly granted by the patent is absolute during the life of the patent and cannot be lost by the failure of the patentee to work or develop the invention. In some foreign countries the patentee must pay taxes at periodic intervals, and in most foreign countries some effort must be made to put the invention into public use or to "work" it. Failure to pay taxes or to work the patent in such countries causes the patent to lapse. No such rule applies, however, in the United States.

A patent is not a license. — A patent is not a license to make anything. It is merely a right to exclude others from making, using or selling the thing claimed in the patent during the life of that patent. As stated by Mr. Chief Justice Taney, "The franchise which the patent grants consists altogether in the right to exclude everyone from making, using or vending the thing patented, without the permission of the patentee." A patentee may have a right to stop others from making, using or selling his claimed invention without having the right himself to make, use or sell the invention disclosed in his patent. This situation frequently arises where an earlier patent has been granted which covers broadly various means for producing the same result. This can only occur where the earlier patentee is a pioneer in the field to which his invention relates. It must be understood that in the case of such a broad patent the claims of the patent may be so worded that the patent not only covers the specified form of the invention disclosed in the patent, but also covers various forms and modifications not directly shown*

Broad patent no bar to later narrow patents.— The fact that a broad patent has been granted, however, does not mean that a later narrower patent cannot be granted for an improvement over the forms of the invention disclosed in the broad patent, as the Patent Statute expressly states that patents may be granted for any new or useful invention or any improvement thereon.

If the later applicant can convince the Patent Office that he has invented an improvement on the invention disclosed in the earlier patent, the Patent Office will grant him a patent on his improvement having claims expressing the difference between what the later applicant discloses in his application and what is disclosed in the earlier broad patent. The Patent Office in examining an application does not concern itself with the question of infringement, but merely with the question of whether the invention shown in the application is new and useful. It is the regular practice of the Patent Office to grant improvement patents where there are existing prior broad patents which contain claims which are infringed by the devices shown in the later improvement patents.

Result of grant of narrow patent.—

The results of granting the earlier patent containing broad claims and then granting a later patent covering improvements over the invention disclosed in the earlier patent is as follows.

When the first or earlier patent has claims that cover the invention disclosed in the second or later patent, the second patentee cannot make such improvement without infringing the first or earlier patent.

When the second or later patent has claims that cover the specific form of invention disclosed therein, which must be somewhat different from the form shown in the broad patent, to result in a patent, the first patentee cannot make such mprovement without infringing the second patent, or in other words, the first patentee cannot make the specific form of the invention claimed in the later patent.

Ownership of patent no evidence of right to make. — It is therefore evident that the fact that a patent has been issued is no reason for assuming that the patentee thereunder can make, use or sell the invention shown and described in such patent. It may be that he has merely an improvement patent, and that the invention shown and described therein infringes one or more prior patents.

The fact that the Patent Office issues narrow patents showing inventions which infringe earher patents makes the determination of the legal effect of any patent a task for an expert and only a person thoroughly skilled in the art of interpreting patents should undertake to construe one. Patent Attorneys are often called on for opinions in this connection and can furnish such opinions only after an examination of the patent, the circumstances surrounding its grant, and the state of the art at the time it was granted.

Large sums of money have been lost by investors due to accepting patents at their face value or neglecting to consult an expert regarding their validity and scope.

Disclosure and claims. — The failure of

most people to understand the legal significance of a patent arises from the fact that the distinction between the disclosure and the claims is not understood, or if this distinction is understood, that the general theory of claims is not understood. We will try to make both of these points plain.

Patent is a contract. — The Courts have adopted the view that a patent is a contract and have so construed a patent. As stated in National Hollow Brake Beam Co. vs. International Brake Beam Co., 106 F. 693, "A patent is a contract, and its construction is governed by the same canons of interpretation that control the construction of other grants and agreements."

A patent is a written contract between the inventor and the public, the Patent Office acting as the representative of the public. It is a record of a bargain. The inventor has disclosed a secret and is given a limited monopoly in return. He has given something and has received something. What he has given, that is, his secret, is set forth in his patent, being shown with great particularity in the drawing, if the invention is subject to illustration, and fully described in the specification. The drawing and specification disclose the inventor's secret to the public. In disclosing and describing his secret, the Inventor must, of necessity, include many things that are old and which really constitute no part of his real invention, that is, his invention may relate only to a part of a machine and to fully describe the operation of the invention it may be necessary to show the entire machine. Having shown the entire machine he is, therefore, required by statute to particularly point out and distinctly claim his invention. This he does by means of his claims. The claims define the part he has invented and define his monopoly or what he receives just as the disclosure of his invention defines what he gives.

Specification does not define patentee's rights. — The fundamental mistake made by many people is to read the specification and inspect the drawing of a patent and assume that all that is described or shown is the exclusive property of the patentee. This is not correct as only a very small part of the matter shown in the drawings and described in the specification may be new or covered by the claims. It is in the claims, and in the claims only, that we must look for a definition of the patentee's monopoly.

If the patentee has disclosed something new which he does not claim, he dedicates it to the public. It is, therefore, quite essential that the patentee understand the general theory of claims and this subject will be more fully explained later.

Two kinds of patents. — There are two kinds of patents of invention, namely utility patents and design patents. Utility patents are granted for new and useful inventions and design patents are granted for new and ornamental designs.

Utility patents. — Utility patents are granted for four general classes of invention, namely, an Art, a Machine, a Manufacture or a Composition of Matter.

Sec. 4886 of the Revised Statutes states, in part, "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof * * * may obtain a patent therefor."

Kinds of utility patents. — The term "Art" as used in patent law covers only a limited meaning of the word "process" and may be defined as an operation performed by rule to accomplish a result. It is what is commonly called a method, or process, of doing something. While a principle of nature cannot ordinarily be patented, it is often possible to patent the method or process by which this principle is put into use. Care should be taken to discriminate between a method of operation or function of a machine and a true process which can usually be carried on by more than one type of means or machine.

A Machine is a combination of connected elements movable with relation to each other, which when set in motion coact to produce a predetermined result.

A Manufacture is an all inclusive term including every artificial thing resulting from human endeavor not a machine or a composition of matter.

A Composition of Matter is a combination of various substances which, taken together, form a substance having certain new and useful properties. Patents on compositions of matter protect the formulae by which the compositions are produced.

The Patent Office usually refuses to grant in the same patent claims on a machine and a process carried out by this machine so that two applications are usually necessary to protect both.

Design patents. — Design patents are provided for in Sec. 4929 of the Revised Statutes which states, in part, "Any person who has invented any new, original and ornamental design for an article of manufacture * * * may * * * obtain a patent therefor."

Design patents, or patents for ornamental designs, are granted for terms of three and one-half (3^), seven (7) and fourteen (14) years. Design patents are granted for the purpose of covering the ornamental appearance of articles and relate to the form or surface decoration of such articles. Design patents, in cases where the invention is really not an ornamental design, are comparatively easy to obtain and such patents are often applied for after an applicant has tried to obtain a utility patent and has failed. In such cases the protection obtained is almost negligible, but it allows the patentee to mark the article "patented" and therefore really serves a purpose.

Field for design patents. — .Design patents, in their proper field, are just as legitimate as utility patents, but their field is limited to cases in which the appearance of the thing is its chief value. In such cases, design patents are quite valuable. Further, the statutes as to infringement of design patents are more drastic than the statutes relating solely to utility patents, there being a fixed initial liability of two hundred and fifty dollars for such infringement. So also it is not necessary that an Infringer sell the infringing design, the mere offering of it for sale being an infringing act.

Who may apply for patent. — The statutes provide that "any person," who has invented any new and useful invention or improvement thereon, may apply for a patent.

As stated in Wende vs. Horine, 191 F. 620, "Sections 4886, 4888, 4892, 4895 R. S. require an application by the inventor — and this regardless of whether the inventor has parted with title to the invention or not, and notwithstanding he may even have taken steps to have the patent issue to his assignee when granted." The applicant need not be a citizen, nor need he be of legal age. Insane persons may apply through a guardian and an executor or administrator may apply for a patent on the invention of a deceased person.

An invention, being a mental conception, can only be produced by a natural person. A corporation, for example, cannot produce an invention. In the United States and in Canada and many other foreign countries the application must be made in the name of and signed by the inventor, although he may at the same time assign it to any person or corporation. In England, and some other countries a corporation may apply for a patent, the theory in those countries being that the patent is granted as a reward for disclosing the invention and not for making it. The actual inventor, or the joint inventors, must sign the application in the United States and execute the oath, which accompanies the application when the same is filed in the Patent Office.

Joint inventors. — Two or more persons may be joint Inventors. Mere financial assistance to an Inventor does not make the one rendering such aid a joint Inventor with the true inventor. To create a joint invention all the parties thereto must participate in its conception. There are no definite lines established by law as to the extent a joint inventor must have participated in the actual conception of an invention, but all persons who have had some part in the conception of the invention are joint inventors, and must join in making the application for patent.

The rule as to what constitutes joint invention has been before the Courts on several occasions and has been adopted as stated in Warden vs. Fisher 11 Fed. 505, that it is not necessary that the idea of an invention should occur simultaneously to each of the joint inventors, but it is sufficient that one conceives and the other makes a suggestion essential to its success, and where there is joint invention, it is immaterial in what order the suggestions or conceptions are made so that the inventors work together to the common end of completing a single invention.

Assigned interests. — Financial assistance to the inventor is usually rewarded by the inventor making an assignment of an interest in the patent to the party giving such assistance, which assignment should be recorded in the United States Patent Office, preferable when the application is filed, as all legal titles to United States Letters Patent are dependent upon the records of the Patent Office and all transfers affecting the title are recordable there.

Mechanical assistant not a joint inventor. — When an inventor requires the assistance of a skilled mechanic in order to give physical expression to his idea, and instructs the mechanic as to the result which he desires to accomplish through mechanical means, and the mechanic contributes merely the usual skill of his calling, the mechanic does not participate in the invention, and is therefore not a joint inventor with the one who conceived the idea of the invention.

On the other hand, if the mechanic makes a valuable improvement over the original plan suggested by the inventor, sometimes it is a difficult question to decide whether the mechanic has a right to a patent on the improvement or not. In the case of Agawam Co. vs. Jordan, 7 Wall. 583, it is stated as follows: "Where a person has discovered an improved principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of their experiments, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general regarded as the property of the party who discovered the original principle, and may be embodied in his patent as a part of his invention. Where the employer has conceived the plan of the invention and is engaged in experiments to perfect it, no suggestions from an employee, not amounting to a new method or arrangement, which in itself is a complete invention, are sufficient to deprive the employer of the exclusive property in the perfected improvement."

Chapter II. PATENTABILITY

The requirements of patentability.^

To be patentable, a thing must be new, useful, and an invention. If any of these attributes are lacking, the alleged invention is not properly patentable, and, if patented, the patent is invalid. While in most cases the question of novelty, that is, the statutory requirement of newness, is the most important, the other two requirements are equally important from a legal standpoint.

Invention. — -While it may be said that to be patentable a thing must be an invention, it is not so easy to define invention nor decide whether a certain alleged invention is really an invention or merely the result of mechanical skill. The early decisions of the Courts, upon which we now rely, were written in the early days of the RepubHc before we had attained our present state of industrial perfection. These decisions were written by eminent lawyers who had been elevated to the Bench, and, not having had a mechanical education, many things that were commonplace to the technically skilled seemed to them quite wonderful. It is not surprising, therefore, that in the early cases we find expressed the idea that invention arose from a sort of inspiration. It must be something, as stated by Judge Blatchford in Tatham vs. Le Roy, 2 Blatch 474, "over and beyond the skill of the mechanic and embodying the inventive element of the mind." It is recognized by the courts that it is not easy to distinguish between invention and mechanical skill. See New York Belting & Packing Co. vs. Magowan, 27 F. 362.

It may be said that there is no positive rule by which the question of invention may be tested and that absence of invention is usually based upon something showing that the alleged invention is merely the result of mechanical skill. The courts, in deciding questions of this kind, have adopted certain negative rules which have been applied in later cases in a process of exclusion for determining whether or not invention is present. This question is largely a matter of personal opinion, and the dividing line between invention and mechanical skill being so hazy, it is desirable to consider some of these negative rules to illustrate this point.

Mechanical skill. — The first and most general rule is that it does not constitute invention to exercise the ordinary skill of a mechanic. A carpenter may produce a flight of stairs that differs in appearance, dimensions, and construction from any that have ever been made before, and which may be quite useful; but, if the carpenter, in producing the stairs, produces nothing substantially different from stairs that any other carpenter might produce under the same conditions, it may be said that the carpenter has exercised ordinary mechanical skill and not invention.

So, also, in the case of more complex engineering problems; in the production of large engineering works and machines, there often result structures or machines that are both new and useful but which do not rise to the dignity of invention. It may, indeed, be said that good engineering is the very opposite of invention, for the engineer applies recognised engineering principles, and recognised and accepted elements, to produce his results; as long as this is done along the lines that any engineer would follow in attacking the same problem, it is not invention; or, in other words, the result is a good job of construction, and not an invention. It is in this phase of the subject, however, that the personal opinion of the person deciding the question plays so large a part, as what may seem merely good engineering, and quite obvious, to an engineer, may seem to embrace the highest type of invention to a judge. One very eminent engineer has said that there is no such thing as invention as opposed to mechanical skill, that Invention is a high order of mechanical skill and mechanical skill is a low order of invention. This is not, however, the view of the courts, who stick closely to the theory that invention and mechanical skill are qualitatively different and not mere differences of degree in the same thing.

State of the art. — The fact that an invention appears obvious after its completion, does not negative invention. It must be shown that it was obvious before the invention was disclosed. We are lead, therefore, in such cases to investigate the "state of the art," or the condition of human knowledge regarding the particular subject at the time the invention was produced. It is the step in advance over the prior art that the inventor is entitled to monopolize, and the magnitude and importance of this step has a very important bearing on the question of whether the result was invention or mere mechanical skill. It is quite conclusive proof of invention, even where the invention seems very obvious, to show that the need for the invention existed for a long period and has never been filled, particularly where there have been repeated attempts to supply such a need without success.

Mere changes in old things. — It is not

invention to enlarge parts of old things, or to use old things for new but analogous purposes. For example, it is not invention to use a chemical commonly used to remove hair from hides to remove hair from the human face; nor is it invention to dupHcate or multiply old parts; nor to substitute for one old part in an old combination, a mechanical equivalent thereof. In most cases, a mere substitution of materials is not invention. The latter rule, however, does not apply when the substitution of the material produces a new improved and unexpected result.

A case on the border line is the case of the tungsten lamp. Here, a known element was substituted for the old carbon filament, it was known that higher efficiencies could be obtained by using higher temperatures and that tungsten stood very high temperatures, yet the patent on the tungsten filament was sustained in the United States, although not sustained in some other countries. Really, the question of substitution of material is one phase of the question of mechanical equivalents.

Mechanical equivalent. — ^It was said in Carter Machine Co. vs. Hanes, 70 F. 865, that "as a general definition, a mechanical equivalent that may be properly substituted for an omitted element, device, or agency in a patented machine, is one that performs the same function by applying the same force to the same object, through the same mode and means of application." See also Burr vs. Durkee, 1 Wall. 531. While this decision has to do, as indeed most of the decisions on this point have to do, with the question of infringement, the same rule applies as to the definition of the term "mechanical equivelant" when we are considering anticipation and patentability. The term is, however, often loosely used. Mr. Justice Grier said in Burr vs. Durkee, 1 Wall. 531: "The phrases 'substantial identity,' 'equivalent,' 'mode of operations,' etc., are often used in such a vague and equivocal manner that they mystify and lead many to absurd conclusions, who will not distinguish how things differ."

It may be said in general that one thing is not the mechanical equivalent of another unless it operates "in the same manner" or "in the same way" to produce the same result.

Aggregation. — It is not invention to associate things which do not co-operate in some measure, one with the other. Such associations of non-co-operating elements are called aggregations.

An excellent example of such an aggregation is described in the case of Grinnell Washing Machine Co. vs. Johnson, 247 U. S. 426; 62 Law Ed. 1 197, in which a patent for a washing machine mechanism was held to be invalid as an aggregation. The patent covered a washing machine mechanism which was adapted to drive both a washing mechanism inside a tub and a wringer on top of that tub. Although the wringer was operated in one direction when the washing machine element was idle, and in the other direction when the washing machine element was in operation, the court held the claims invalid as aggregations on the broad ground that there was no co-operation between the wringer and the washing machine element; each operated, when associated, just as they did alone, and neither in any way modified the operation of the other.

This late Supreme Court decision affirms the old doctrine set forth in Hailes vs. Van Wormer, 20 Wall. 353, and Reckendorfer vs. Faber, 92 U. S. 347, and many later cases. The lower courts have of late years shown a somewhat more liberal tendency towards patents which perhaps are aggregational, and have in some cases upheld patents which, if not aggregations, were very close to it. Such, for example, was the case of Burdett-Rountree Mfg. Co. vs. Standard Plunger Elevator Co., 196 Fed. 43, and particularly Krell Auto Grand Piano Company of America vs. Story & Clark, 207 Fed. 946. In the two cases, just cited, and particularly in the first one, the court upheld a patent which, while open to the objection of aggregation, nevertheless contained elements that co-operated if the operator was considered an essential part of the combination. For example, in the Burdett-Rountree case, the operator received a signal and actuated a mechanism which produced a new and useful result. If the signal, or the operator, or the mechanism, was omitted, no result was obtained. It Is, however, hazardous to depend on the courts taking so liberal a view, especially as the question has apparently not been settled by the Supreme Court or, if settled, is squarely against the Burdett-Rountree case and, in a measure, against the Krell case.

In contradistinction to aggregation, we have the rule that a combination of old elements is invention. A combination being defined by Justice Curtis in the case of Forbush vs. Cook, 2 Fisher 669, as "to make a valid claim for a combination, it is not necessary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributed to produce some one practical result, which result, when attained, is a product of the simultaneous or successive action of all the elementary parts, viewed as one entire whole, a valid claim for thus combining those elementary parts may be made."

The above rules are but a few illustrations of the tests which have been applied by the courts a sufficient number of times to have become established rules in determining the presence or absence of invention.