PATENTS AND HUNTING LICENSES-SOME
ICONOCLASTIC COMMENTS AND AN
IRREVERENT SOLUTION
Allan J. Topol*
To anyone dealing with patents the similarity between a patent and
a hunting license should be apparent. The mere grant of a hunting license
does not guarantee any rewards to the hunter. Instead, the hunter applies
to the sovereign for a hunting license in order that he may attempt to
shoot game in the woods or field. Contrary to the popular view, the mere
grant of a patent does not confer a monopoly upon the patentee. Instead,
the patentee applies to the sovereign for a patent in order that he may
attempt to sustain a monopoly in the courts. Moreover, the hunter cannot with any assurance predict how much, if any, game he is likely to
shoot. This depends upon a multitude of factors quite apart from the
hunter's skill, such as the weather, the quantity of game in the area and
the number of other hunters stalking it. The recipient of a United States
patent faces a similar fate. He likewise cannot predict with any assurance whether the courts will hold that his patent is valid, thereby conferring a monopoly, or invalid and thereby worthless. Indeed, he might even
face a Sherman Act charge.1
This lack of predictability which faces the hunter is the essence of the
sport. Supermarkets and not the woods are the proper destination of those
who want to be certain of precisely two ducks in a given day. On the
other hand, the current lack of predictability as to patent validity is
plainly deplorable. Countless business decisions of considerable magnitude, such as expansion in a given market or entry into a new market,
turn upon patent validity. The patentee may have a choice of excluding
unpatented competitors by means of infringement suits, of licensing his
patents, or of simply operating as if he had no patents. Conversely, the
unlicensed competitor must decide whether to begin production of a product on which another has a patent without taking a license, to obtain
a patent license if one is available, or to forego entering a line of business.
Parties who would prefer to settle their patent disputes rather than litigate cannot intelligently set the terms of their settlement agreement
unless they can determine the probable outcome of the litigation.
Each of these decisions, and many others, turn upon whether a patent
issued by the United States Patent Office, often after a protracted proceeding, will be declared valid by a United States District Court or a
* Member of the District of Columbia Bar.
1. Cf. Walker Process Equip., Inc. v. Food Mach. and Chem. Corp., 382 U.S. 172 (1965).
PATENTS AND HUNTING LICENSES
Court of Appeals. With some misgivings one might be able to disregard
the paradox of a system in which "the patent office giveth" and a court
"taketh away" if he could at least predict whether the courts were going
to declare a patent invalid and if validity rather than invalidity was the
rule. In many instances, however, not only is predictability impossible
but even an educated guess is little more than wishful thinking. In addition to the highly ambiguous standards of the Patent Code, a patentee
must confront the unarticulated aversion to giving one man the right
to exclude others and the basic antitrust policy against monopoly. Anyone who reads recent patent opinions needs no statistical training to
realize that the odds in favor of invalidity far exceed those in favor of
2
validity.
Certainty, uniformity, and definiteness are not, of course, the only
goals of a legal system. Yet for any legal system which purports to permit businessmen to settle disputes not to come reasonably close to achieving these objectives is incomprehensible, particularly if these objectives
are attainable. In the absence of predictability, a party to a patent controversy has the alternatives of not exercising rights he legally has, of
causing others to forego rights they have because they lack the economic
resources to litigate, or of engaging in a protracted litigation, with an
uncertain outcome, and constantly mounting damages as well as attorneys
fees.
The patent laws have arrived at this unfortunate condition after a
long and elusive search for certainty. Both Congress and the Supreme
Court have repeatedly emphasized the need to achieve uniformity and
predictability. The efforts of both have thus far been unavailing and the
Congress is now being urged to try again. These efforts have failed because the difficulties inherent in federal courts determining patentability
have not been faced. Once these difficulties are fully realized, the necessity for a radical change in the system becomes apparent. Judicial review
of patentability by the federal courts should occur only before and not
after issuance of patents. Such a change is no royal avenue which will
eliminate all difficulties; it may even create some new ones. Its possibilities, however, are worth exploring.
I.
THE LONG AND ELUSIVE SEARCH FOR PREDICTABILITY
A.
Uncertaintyin the CourtsPriorto 1952
The Constitution grants Congress the authority "[t] o promote the Progress of Science and Useful Arts, by securing for limited times to .. .
Inventors the exclusive Right to their respective ...Discoveries." From
2. Specific statistics for various periods will be given later in this article.
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 17
1793 until 1952 the only test for patentability expressly approved by
Congress was that the discovery should be "new and useful."13 To be
sure, the decision as to whether a purported innovation was new and
useful was not always easy. Yet, at least in an age in which the technology was relatively simple, it was possible to evolve criteria for novelty
and usefulness which had considerable certainty.
In 1850, in the classic case of Hotchkiss v. Greenwood,4 the Supreme
Court-not content that novelty and usefulness were sufficient achievements to warrant a Government-granted monopoly-concluded that
something more should be required before a patent was issued by the
patent office and sustained by the courts. The degree of ingenuity and
skill possessed by an inventor had to exceed that of a skilled mechanic.'
Purporting to rely upon Hochkiss and describing this extra ingredient as
"invention," the courts in the period from 1850 to 1952 erected a highly
amorphous body of law in the hundreds of cases involving patentability.
In some cases the test of invention closely followed the Hotchkiss
formulation of skilled mechanic versus inventor." In other cases, perhaps
when the court could not fully understand the technology involved, invention turned upon the long-felt need for and the commercial success of
the device for which a patent monopoly was sought. 7 And in still other
cases, invention required a "flash of creative genius."' The district courts
and courts of appeals faced with patentability issues were apparently
free to choose among any of these tests of invention.
Moreover, choosing the test was, of course, only half the decision-making process. There was still considerably more latitude in the application
of the test to the facts of the case. Here the courts were guided by their
philosophies toward monopolies and their predilections toward the Patent
Office. The Supreme Court, for example, applied these tests of patentability with an increasing severity.9 This prompted Justice Jackson to
3. The Act of February 21, 1793, 1 Stat. 318, provided that any person who "invented
any new and useful art, machine, manufacture or composition of matter, or any new and
useful improvement thereon not known or used before the application . . ." and who met
the formal requirements as to filing and disclosure could obtain a patent.
4. 52 U.S. (11 How.) 248 (1850).
5. The Court in Hotchkiss said,
For unless more ingenuity and skill ... than were possessed by an ordinary mechan-
ic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of a skilled mechanic and not an inventor. Id. at 267.
6. See e.g., Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U.S. 69 (1933).
7. See, e.g., Paramount Publix Corp. v. American Tri-Ergan Corp., 294 U.S. 464 (1934).
8. See, e.g., Cuno Engineering Corp. v. Automatic Devices Corp. 314 U.S. 84 (1941).
9. See e.g., Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147
(1950), in which the Court criticized the lower courts for not scrutinizing the claims in the
light of the "rather severe" test that for a combination of old elements to be patentable, the
old elements must perform additional or different functions in combination than they perform out of it.
1968]
PATENTS AND HUNTING LICENSES
observe in a dissenting opinion that "the only patent that is valid is one
which this Court has not been able to get its hands on."1 It was this
uncertainty in the law as well as a desire to liberalize the Supreme
Court's latest standards of patentability which led the patent bar to
Congress in 1952.
B.
CongressionalAction to Achieve
Uniformity and Predictability
With considerable constitutional leeway with regard to how this extra
ingredient, "invention," should be articulated, Congress approached the
problem in a manner befitting its grand tradition. Committee hearings
were scheduled, witnesses paraded before these distinguished panels,1 1
debate took place, and reports were issued. 2 The Congressional decision, to be sure, was a momentous one. At stake was the competitive
advantage bestowed by government granted monopolies as well as the
recovery of past research and development investments.
What emerged from this exercise in the legislative process was Section
103 of the Patent Code providing that:
A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.' 3
The language of this section is so broad and ambiguous that whatever
hopes one had that Congress would provide some certainty to the confused law were shattered. To be sure, both the Senate and House
committee reports recognize that "invention" has been expressed and
applied in a large variety of ways in decisions of the courts and in
writings.' These reports also state that Section 103 "is added to the
statute for uniformity and definiteness," and "this section should have
a stabilizing effect and minimize great departures which have appeared
in some cases."" Similarly, the Reviser's note states that this para10. Jurgensen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949).
11. See Hearings on H.R. 3760 Before the Subcomm. No. 3 of the House Comm. on the
Judiciary, 82d Cong., 1st Sess. (1951).
12. See H.R. Rep. No. 1923, 82d Cong., 2d Sess. (1952); S. Rep. No. 1979, 82d Cong.,
2d Sess. (1952).
13. 35 U.S.C. § 103 (1964).
14. H.R. Rep. No. 1923, 82d Cong., 2d Sess. 7 (1952); S. Rep. No. 1979, 82d Cong.,
2d Sess. 6 (1952).
15. H.R. Rep. No. 1923, 82d Cong., 2d Sess. 7 (1952); S. Rep. No. 1979, 82d Cong.,
2d Sess. 6 (1952).
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 17
graph was added with the view that an explicit statement in the statute
would have a stabilizing effect. 6
The plain fact, however, is that aside from indicating an intention to
abolish the "flash of genius" test, the legislative history does not go
beyond the vague language of Section 103 and establish how a court
should determine obviousness. In fact, the legislative history does not
even conclusively establish whether Congress meant to codify the most
recent Supreme Court pronouncements on patentability rather than the
earlier more lenient Hotchkiss view."
C. Section 103 in the Courts 1952-1965
So vague is the language of Section 103 and its legislative history that
in the period from 1952 to 1965 some circuits construed Section 103 as
establishing a more lenient standard than that which Supreme Court decisions in the 1940's pronounced,'8 and other circuits concluded that these
Supreme Court decisions had merely been codified by Congress.'0 Thus,
20
for example, in Savoy Leather Mfg. Co. v. Standard Brief Case Co.,
the Second Circuit stated that Section 103 signified a legislative intent
to reaffirm the Iotchkiss test. While in contrast, the Ninth Circuit in
Kwikset Locks, Inc. v. Ilillgren,2' reversed a district court's holding of
validity on the ground that the district court had not applied the strict
standard enunciated by the Supreme Court in Great Atlantic & Pacific
22
Tea Co. v. Supermarket Equip. Co.
Not only were single patents sustained in one circuit and declared
invalid in other circuits, but different judges within the same circuit
often took different views.' Even if a litigant could pick his circuit and
16. Revisors Note Accompanying 35 U.S.C. § 103 (1964).
17. Both the Revisors Note and the Committee Reports, supra note 12, refer to judicial
precedents since 1850 without stating whether the more severe Supreme Court tests or
the earlier, more lenient tests were codified.
18. See, e.g., the Second Circuit opinion in Lyon v. Bausch & Lomb Optical Co., 224
F.2d 530 (2d Cir.), cert. denied, 350 U.S. 911 (1955); L-O-F Glass Fibers Co. v. Watson,
228 F.2d 40 (D.C. Cir. 1955).
19. See e.g.,' Wasserman v. Burgess & Blacher Co., 217 F.2d 402 (1st Cir. 1954) ; Bobertz
v. General Motors Corp., 228 F.2d 94 (6th Cir. 1955), cert. denied, 352 U.S. 824 (1956).
20. 261 F.2d 136, 138 (2d Cir. 1958).
21. 210 F.2d 483 (9th Cir.), cert. denied, 347 U.S. 989 (1954), cert. denied, 348 U.S. 855
(1954).
22. 340 U.S. 147 (1950). See discussion supra note 9.
23. For an example of different circuits reaching different decisions on the validity of
the same patent, conpare John Deere Co. v. Graham, 333 F.2d 529 (8th Cir. 1964), af'd,
383 U.S. 1 (1966) with Jeoffroy Mfg., Inc. v. Graham, 219 F.2d 511 (5th Cir.), cerlt denied,
350 U.S. 826 (1955) and Graham v. Cockshutt Farm Equipment Inc., 256 F.2d 358 (5th
Cir. 1958). For an example of different panels on the same circuit applying different tests,
compare John Deere Co. v. Graham, 333 F.2d 529 (8th Cir. 1964), aff'd 383 U.S. 1 (1966)
with Calmar Inc. v. Cook Chem. Co. and Colgate Palmolive Co. v. Cook Chem. Co., 336
F.2d 110 (8th Cir. 1964), rev'd, 383 U.S. 1 (1966).
PATENTS AND HUNTING LICENSES
1968]
panel, he had no idea of the factors which might be decisive when either
the more lenient or severe test was applied. Thus, for example, the
Second Circuit in Reiner v. I. Leon Co., 24 stated that the relevant criteria
were how long the need existed, how many tried to find the way, how long
the surrounding and accessory arts disclosed the means and how immediately the invention was recognized as an answer. In contrast, the
Ninth Circuit in Oriental Foods, Inc. v. Chun King Sales, Inc., 5 held a
patent invalid noting that it was a trifling device and lacked a flash of
genius.
In addition to these uncertainties among courts of appeals, there was
also a marked difference in the standards applied by the patent office
and the most lenient court of appeals. This difference resulted in an average of 57.4 percent of all patents which reached courts of appeals being
declared invalid between 1953 and 1963.26 In the Ninth Circuit the
average was 77.5 percent.2 7 By 1964 it was clear that Congress had
failed to establish uniformity and stability in the law. Congress had even
made the law more indefinite, confused and uncertain. It was hard to
imagine how there could have been any less predictability in an already
vague area of the law. Yet, the Supreme Court waited until 1965 to
shed any light on the issue.
D. The Supreme Court's ContributionToward Certainty
Finally, in February 1965, the Supreme Court, cognizant of the need
to achieve the "uniformity and definiteness which Congress called for in
the 1952 Act," handed down its first patent opinions in fifteen years in
the cases of Graham v. John Deere,28 Calmar, Inc. v. Cook Chemical
Co. 20 Colgate-PalmoliveCo. v. Cook Chemical Co." and United States
v. Adams."' The Court held invalid two of the three patents involved in
these four cases; patent validity was sustained only in Adams.
The Court recognized the need to determine, first, what effect the 1952
enactment of Section 103 had, i.e., whether it was intended to provide
a more lenient standard of patentability than that embodied in Supreme
Court opinions immediately prior to 1952, and second, what definite tests
24. 285 F.2d 501, 504 (2d Cir. 1960), cert. denied, 366 U.S. 929 (1961).
25. 244 F.2d 909, 913-14 (9th cir. 1957).
26.
pedia
27.
28.
29.
30.
31.
R. Dearborn & R. Boal, Adjudications by Circuits and Arts Involved, The Encycloof Patent Practice and Invention Management 23 (1964).
Id.
383 U.S. 1 (1966).
Id.
Id.; cases in notes 27-29 were decided in the same opinion.
383 U.S. 39 (1966).
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 17
of patentability were now required3 2 In response to this first question
the Court noted that Congress intended by the second sentence of Section 103 to abolish the flash-of-genius test.3 With regard to the first
sentence, the Court concluded that congress intended to codify the
precedents embracing the principle announced in Hotchkiss and that
while Section 103 placed emphasis upon an inquiry into obviousness, the
general level of innovation necessary to sustain validity remained the
same. " The explicitly enunciated premise to the Court's formulation
was that the standard of invention required by the Supreme Court since
Hotchkiss had remained the same. 5
The Court, of course, completely begged the question. By suggesting
that there was a single line of consistant judicial precedents beginning
with Hotchkiss which Congress merely codified, the Court avoided the
real question of which of the many different precedents since lotchkiss
had in fact been codified. However, the Court's failure to answer this
first question was not particularly crucial. The more important question
was the second one, i.e., what definitive test of patentability would the
Court now articulate to reduce the enormous uncertainty and add some
predictability to the law. The test enunciated by the Court was:
Under § 103 the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined. Such secondary considerations as commercial success,
long felt but unsolved needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented. As indicia of obviousness or nonobviousness, these
inquiries may have relevancy.3 6
Under the Court's test a judge must first understand the pertinent prior
art and ascertain the level of ordinary skill in that art. Then the judge
must comprehend the differences between the patent involved and that
prior art. Finally, he must determine whether those differences were
obvious. Where a complex scientific or technical patent is involved, each
of these determinations is a scientific or technical determination. To be
sure, the Supreme Court noted that nonscientific objective criteria such
as commercial success and long-felt but unsolved need may have some
relevancy as "secondary considerations." But application of the Court's
test in the three patents before it did not clarify when and to what extent
32. 383 U.S. 1, 3 (1966).
33.
34.
35.
36.
Id. at
Id. at
Id. at
Id. at
15.
3-4, 17.
19.
17-18.
1968]
PATENTS AND HUNTING LICENSES
these nonscientific objective criteria are decisive. This ambiguity is
crucial because the scientific criteria may point to one result and the
nonscientific to the opposite result.
Thus, in John Deere the Court held invalid a patent on spring clamps
which permit plow shanks to be pushed upward when they hit obstructions such as rocks in the soil. After the obstruction is passed, the shank
springs back into normal position. In holding this patent invalid the
Court explained the prior art as to plows nd concluded that given the
fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, a person having ordinary skill
in the art would immediately see that the thing to do was what Graham
did, i.e., invert the shank and the hinge plate.3 7 Thus, mechanical judgment rather than the nonscientific criteria was the basis for the Court's
decision.
In the Cook Chemical cases the Court once again analyzed the prior
art and the purported invention and held that a patent relating to a
plastic finger sprayer used as a built-in dispenser for bottles of household
insecticides was invalid. Writing as one skilled in the art, the Court concluded that the Patent Examiner was incorrect in concluding that a
previously issued patent involved a bottle cap which contacted the
bottle neck while the patentee's did not."' The patentee had argued that
his invention satisfied all the objective criteria, referred to by the Court
as secondary considerations. For example, the patentee had asserted
that it solved a long-felt need and had wide commercial success. The
Court noted the advantage of basing patent-validity decisions on these
nonscientific criteria because they are more susceptible to judicial treatment than the highly technical facts often present in patent litigation.
The Court recognized Justice Frankfurter's observation that the judiciary is "most illfitted to discharge the technical duties cast upon it by
patent legislation." 9 However, notwithstanding these advantages, the
Court concluded that these factors "do not, in the circumstances of this
case, tip the scales of patentability."' The Court apparently felt that it
understood the art and the invention well enough to know what was
obvious and what was not.
Similarly, in United States v. Adams,4 involving a nonrechargeable
electric battery, the Court exchanged its judicial robes for the lab coat
of a chemist, concluding that a person reasonably skilled in the art would
37.
38.
39.
40.
41.
Id. at 25.
Id. at 34-35.
Id. at 35-36.
Id. at 36.
383 U.S. 39 (1966).
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 17
not, as Adams did, ignore the long accepted learning that batteries which
continued to operate on an open circuit and which heated in normal use
were not practical and that water-activated batteries were successful only
42
when combined with electrolytes detrimental to the use of magnesium.
In Adams the Court also referred to nonscientific criteria as supporting
its conclusion of patent validity. For example, the Court noted that
when Adams perfected'his invention, several noted experts had expressed
disbelief in it. The Court felt that strict observance of the test enunciated in these cases would result in the "uniformity and definiteness which
Congress called for in the 1952 Act."" However, for reasons which will
be discussed below, the test enunciated by the Court has not and will
not lead to the much needed certainty, uniformity and predictability.
E. Certaintyin the Wake of John Deere
It is, of course, impossible to measure precisely the lack of predictability as to patent validity after John Deere and the effect of the Supreme Court pronouncement on business decisions. There is simply no
way to estimate how many patentees decided not to invest large amounts
in the manufacture of a patented product because of uncertainty as to
whether the validity of their patent would be sustained, or how many
patentees decided not to run the financial risk of attempting to enforce
a valid patent fearful that it might be declared invalid. Conversely, there
is no way to gauge how many alleged infringers either were prevented
from entering a new market because of the existence of a patent whose
validity was uncertain, or took licenses under patents which would have
been declared invalid had they been litigated but were not because of
the lack of predictability.
Some conclusions do, however, follow from a review of the decisions
by the courts of appeals under Section 103 in the period subsequent
to the Supreme Court decision in John Deere. The first is that validity is
still the exception rather than the rule. Of the first seventy-one cases
decided by courts of appeals on the Section 103 issue since the Supreme
Court decisions only seventeen (24%) have sustained the validity of the
patent. 44 There is certainly something radically wrong with a system
in which the applicant for a patent must bear the expense of a long and
42. Id. at 51-52.
43. 383 U.S. 1,18 (1966).
44. This figure was obtained by reviewing court of appeals opinions printed in Patent
Trademark and Copywright Weekly Reports (U.S.P.Q.). To make certain that the courts
of appeals had the benefit of the Supreme Court opinion, court of appeals opinions dated
only a short time after the Supreme Court opinions were only considered if they cited or
referred to the Supreme Court opinions.
PATENTS AND WUNTING LICENSES
complex Patent Office proceeding knowing that even if he succeeds in
the Patent Office he will not only face another long proceeding in the
courts if he tries to enforce this patent, but three times out of four he
will lose the court proceeding.
The enormously large percentage of patents declared invalid by the
courts is due in part to the application of a more lenient standard of invention by the Patent Office than by the courts at least prior to John
Deere. The Supreme Court in that case stated that it had observed a
"notorious difference" between the standards applied by the Patent Office
and by the courts with the Patent Examiners exercising free rein in their
use of the concept of invention rather than following the statutory standard of nonobviousness.4 5 The Commissioner was admonished to adhere
strictly to the 1952 Act as interpreted by the Supreme Court. Because
patents issued subsequent to John Deere have not yet been adjudicated
by the courts, it is not yet possible to determine whether the Patent Office
has followed the Supreme Court's directive. Even if compliance by the
Patent Office is obtained, however, the fact that there is simply no test of
patentability which will permit certainty and predictability to be attained-as will be subsequently demonstrated-will still lead to a large
percentage of patents being declared invalid by the courts.
Another conclusion which follows from an examination of the court
of appeals decisions subsequent to John Deere is that it is still difficult,
if not impossible, to predict in which cases the validity of a patent will
be sustained. In the first place, the courts in these cases are engaging
in the kind of scientific analysis which the Supreme Court required.
Judges untrained in a scientific or technical area are asked to decide what
is obvious to someone trained in that field. Even the most intelligent
judge will have difficulty in making such a decision; the parties to the
controversy will find the task of predicting the outcome practically
impossible. In the second place there is no agreement between courts as
to how much consideration should be given to the non-scientific objective criteria such as commercial success. Some courts have referred to
46
these criteria as supporting their conclusion on the issue of obviousness,
others have said that their conclusion as to obviousness cannot be affected by these considerations,4 7 and still others have ignored these con45. 383 U.S. 1, 18.
46. See, e.g., Zero Mfg. Co. Inc. v. Mississippi Milk Ass'n, 358 F.2d 853, 858 (5th Cir.
1966) ; Kell-Dot Indus., Inc. v. Graves, 361 F.2& 25, 28 (8th Cir.), cert. denied, 385 U.S.
842 (1966).
47. See, e.g., Brunswick Corp. v. Columbia Indus., Inc., 362 F.2d 172, 175 (9th Cir. 1966);
Formal Fashions, Inc. v. Braimen Bows, Inc, 369 F.2d 536 (2d Cir. 1966).
THE AMERICAN UNIVE.9SITY LAW REVIEW
[Vol. 1
siderations in their opinions.4 For example, the Sixth Circuit in U.S.
Plywood Corp. v. General Plywood Corp.,4 9 sustained the validity of a
patent, noting that the process invented was of great commercial value
and that the problems solved had existed for years in the industry and
had resisted the efforts of others skilled in the art. In contrast, the
Ninth Circuit in Brunswick Corp. v. Columbia Industries, IncY0 stated
that the law appears to be clear that factors such as commercial success,
copying and market demand cannot make patentable a patent which
is invalid for lack of invention.
F. Another Attempt by Congress?
Apparently dissatisfied with the 1952 enactment and the courts' interpretation of it, Congress has remained quite active in the patent area.
Since 1957, the Subcommittee on Patents, Trademarks and Copyrights
of the Senate Judiciary Committee has undertaken a comprehensive
study of the patent system, and published numerous reports based upon
these studies.51 More recently, President Johnson, acting upon the Report of the President's Commission on the Patent System, sent letters
to both Houses of Congress transmitting proposed legislation designated
as the Patent Reform Act of 1967.52 In his message the President took
cognizance of the unpredictability as to patentability noting that inventors and businessmen are faced with uncertain and conflicting standards
in obtaining and enforcing a patent.' The President also stated that
action should be taken to reduce the likelihood of issuing patents which
are later declared invalid by the courts.54 Such action would eliminate
needless expense to the public, the business community and the inventor.
Upon receipt of the President's message, the Patent Reform Act of
48. See, e.g., Skirow v. Roberts Colonial House, Inc., 361 F.2d 388 (7th Cir. 1966);
Up-right, Inc. v. Safeway Prod., Inc., 369 F.2d 580 (5th Cir. 1966).
49. 370 F.2d 500, 505 (6th Cir. 1966), cert. denied, 389 U.S. 820 (1967).
50. 362 F.2d 172, 175 (9th Cir. 1966).
51. See, e.g., studies 1-30 which the Subcommittee on Patents, Trademarks and Copyrights of the Senate Judiciary Committee published in the period from 1957 to 1963. These
studies cover such diverse topics as compulsory licensing, the economic and social basis
of the patent system, and expediting patent office procedure. See the Subcommittee on
Patents, Trademarks, and Copyrights, Compulsory Licensing of Patents-A Legislative
History, Study No. 12, 85th Cong. 2d Sess. (1958); The Subcommittee on Patents, Trademarks, and Copyrights, The Patent System: Its Economic and Social Basis, Study No. 26,
85th Cong. 2d Sess. (1958); The Subcommittee on Patents, Trademarks, and Copyrights,
Expediting Patent Office Procedure, Study No. 23, 85th Cong. 2d Sess. (1958).
52. Letter from the President to the President of the Senate and the Speaker of the
House transmitted the proposed Patent Reform Act of 1967, Feb. 21, 1967. The letter is
reprinted at 3 Weekly Compilation of Presidential Documents 294.
53. Id.
54. Id.
1968]
PATENTS AND HUNTING LICENSES
1967 was promptly introduced in both Houses of Congress." Hearings
have been held by the appropriate subcommittees in each House, and
these hearings once again reflected the need to achieve some certainty
and predictability in the law. 6
Before turning to an examination of some of the provisions of this
proposed legislation intended to achieve previously unattainable goals,
it is necessary to set forth some general principles, the recognition of
which is imperative before certainty and predictability can be attained.
II.
GENERAL PRINCIPLES RELEVENT TO THE SEARCH FOR CERTAINTY
The experience of the last one hundred years teaches that certainty
and predictability are unattainable as long as the federal courts are passing upon the validity of patents in litigation after issuance. There is
simply no test of patentability which will permit these objectives to be
attained while preserving the policies of the present system.
A.
The Inadequacy of the Scientific Approach
The scientific test, adopted as the primary test by the Supreme Court
in John Deere, places enormous reliance upon highly uncertain determinations of what are basically technical issues involving knowledge of
mechanics, chemistry or electronics, depending upon the patent involved,
by judges who are generally untrained in these technical areas. Such a
test cannot produce certainty or predictability. It is beyond question that
the latest developments in a complex technical field cannot be fully understood by persons untrained in that field, regardless of their diligence
and native intelligence." Understanding is a prerequisite to rational decision-making, without which there can be no certainty and predictability.
The enormous difficulties in the scientific test are not readily apparent
from the three cases decided by the Supreme Court in 1965 since none
of the three patents litigated in those cases involved complex technical
issues. Plow shanks, sprayers, and simple batteries can be understood by
someone who is not a specialist in those areas. However, the federal
55. S. 1042, 90th Cong., 1st Sess. (1967) ; H.R. 5924, 90th Cong., 1st Sess. (1967).
56. Hearings on H.R. 5924 Before the Subcommittee No. 3 of the House Comm. on the
Judiciary, 90th Cong., 1st Sess. (1967); Hearings on S. 1052 Before the Subcommittee on
Patents, Trademarks, and Copyrights of the Senate Comm. on the Judiciary, 90th Cong.,
1st Sess. (1967).
57. In some cases a jury may even have to make this determination. See, e.g., ReynoldsSouthwestern Corp. v. Dresser Indus., 372 F.2d 592 (5th Cir. 1967).
58. Even within a large business organization working in a field, only a small group of
individuals will possess the knowledge and comprehension of a sophisticated technology
relevant to that field. For an interesting discussion of this point see J. Galbraith, The New
Industrial State 60-71(1967).
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[Vol. 17
judge attempting to apply the scientific test in a case involving the validity of a patent on 2 Substituted Benzimidazoles" or the Synchronous
Heterodyne Method for Frequency Modulation Reception 0 faces a
practically impossible problem unless he has extensive training in those
0
areas. '
To be sure the Supreme Court did note that there would be difficulties
in applying the non-obviousness test because what is obvious is not a
question upon which there is likely to be uniformity of thought. The Court
concluded that such difficulties are comparable to those encountered
daily by the courts in negligence and scienter decisions and should be
amenable to a case by case development."2 There is a crucial distinction,
however, between negligence and patent cases. Negligence and scienter
decisions are based upon criteria which judges can fully understand. In
contrast, our rapidly developing technology has led to research developments in many areas far beyond the comprehension of someone not
working in that field. When controversies involving patents in such areas
arise, the parties must guess as to the conclusion likely to be reached
by a judge who must resort to a judicial hunch based upon his partial
understanding and predilections toward monopolies, science, corporate
research or whatever elements may be involved. The lack of predictability
is apparent, and the task of the businessmen and lawyers hopeless.'3
Of course, the judge can employ scientific experts to aid in his decision.
However, this approach is better in theory than in practice, because it
is often impossible to find disinterested persons who possess a sufficiently
detailed knowledge of a small and highly complex part of a major field.
Such experts are usually on the payroll of one or more companies interested in exploiting the field. More importantly, the judge must still
evaluate expert testimony, some of which he cannot full r understand,
and decide between the conflicting views. In addition, the scientific test
leads to complex litigation involving extensive discovery and long trials
often including detailed testimony by a score of scientific experts. 4
Protracted judicial proceedings mean still less certainty for businessmen
59. See In re Wagner and Folkers, 371 F.2d 877 (C.C.P.A. 1967).
60. See Armstrong v. Motorola, Inc., 374 F.2d 764 (7th Cir.), cert. denied, 389 U.S. 830
(1967).
61. The President's Commission on the Patent System, To Promote The Progress of
Useful Arts in An Age of Exploring Technology, A Report 26 (1966).
62. 383 U.S. 1, 18 (1966).
63. Consider the statement of Mr. Justice Harlan in another context that lawyers and
businessmen are left "at large as to what is to be expected of them in future cases of this
kind." FTC v. Proctor & Gamble Company, 386 U.S. 568, 583 (1966) (concurring opinion).
64. See the discussion of the complexity of the proceedings in protracted patent and
antitrust cases in Procedure in Anti-Trust and Other Protracted Cases (The Prettyman
Report) 13 F.R.D. 62 (1953).
PATENTS AND HUNTING LICENSES
as well as more crowded dockets for the courts. In addition, the potential
liability for infringement varies and legal costs soar. Furthermore, business decisions which may depend upon the outcome of the litigationfor example, licensing others or taking a license from another-simply
cannot be made in an intelligent manner.
It is true that judges in other situations are forced to make determinations which are quite difficult and quite technical. They must, for example, evaluate medical evidence in personal injury cases and economic
considerations in antitrust cases. However, the fact -that uncertainty
and unpredictability prevail when judges are forced to make such determinations is irrefutable. Consider, for example, whether a corporate
merger substantially lessens competition under Section 7 of the Clayton
Act. In these situations, uncertainty and unpredictability may have to
be tolerated either because there is no practical way of achieving certainty
or because the law would have to be changed so radically to achieve this
certainty that the policies involved could no longer be effectuated.
Patent validity is certainly not the only situation in which science
has been invoked in the solution of legal problems. Decision-makerslegislative, judicial or administrative-have become skilled in framing
some of their more difficult problems as scientific questions, thereby
hoping to plug the problem into a scientific machine and crank out an
answer as certain as E=MC. On many occasions this invocation of
science is perfectly appropriate. The problem involved is truly scientific,
and only scientists can provide a meaningful answer. For example, to
determine whether a piece of apple pie contained arsenic is purely
scientific. In many other situations, however, a legal problem is posed
as scientific for which science has no answers and which could just as
well be answered by the legal decision-makers on the basis of their own
knowledge. For example, in many patent cases scientists will simply be
unable to state what was and was not obvious to one of ordinary skill
in the art, even if the scientist can understand the meaning of ordinary
skill. Similarly, psychiatrists are often unable to testify to the sanity of
a criminal defendant when confronted with the question posed in legal
terms.
Resorting to science, however, offers the decision-maker an out. The
court's ultimate decision can be attributed to those scientific experts
who reacted to a problem insoluble from their point of view, in whatever
way their professional training or economic self-preservation dictated.
Not surprisingly, a different group of experts might reach different conclusions. The decision-maker must decide between these conflicting views
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which he may not fully understand. The court may honestly, though
mistakenly, believe that "the answer" to the problem has in fact emerged
and that he understands why a given answer is correct.
Of course, every mistaken resort to science cannot be attributed to
the court's conscious desire to avoid a problem. In other situations the
judge, lacking any training in the scientific area involved, may honestly
believe that utilizing science will lead to a more precise manner than
any other method. But in this respect, he unfortunately has been the
victim of the misconception that science either has all the answers, or
can get them immediately if sufficient money is invested.
The decision-maker, at the outset, must face the questions of whether
resort to science in the solution of a given problem is the best way to
solve the problem and, if so, how much weight should be given to the
scientific considerations. The court may find that converting the legal
problem into a scientific one involves the introduction of a second level
of uncertainty with no advantages to offset this greater uncertainty. This
is the position of the courts in patent litigation. The problem is how to
avoid the quagmire caused by this conversion.
B.
The Inadequacy of the Alternative Objective Approach
The other approach to patentability which the courts have employed
in varying degrees is the objective or nonscientific approach. This test
relies upon criteria such as the commercial success of, the professional
approval of, and the long-felt need for the claimed invention. At the
time of the Supreme Court decision in John Deere, Judge Learned Hand
and others had already pointed the way toward the development of some
of these objective nonscientific criteria."0
There is nothing in the statute or its legislative history to preclude
the Supreme Court from adopting these objective criteria as the primary,
rather than the secondary, test of patentability instead of the scientific
test. Both the language of Section 103 and its legislative history are
sufficiently vague that this approach would not have been inconsistent
with either. Were this test adopted, the Court would be announcing that
the decisions of the federal courts should be based on factors they could
understand, unless Congress made it clear that the scientific approach
should prevail. Under this test, the district courts and courts of appeals
could fully understand and weigh the objective criteria in the manner
that they understand and weigh similar criteria in other cases. Conse65. See, e.g., Reiner v. I. Leon Co., 285 F.2d 501 (2d Cir. 1960), cert. denied, 366 U.S.
929 (1961), Subtests of Non-obviousness: A Nontechnical Approach to Patent Validity,
112 U. Pa. L. Rev. 1169 (1964).
1968]
PATENTS AND HUNTING LICENSES
quently, a court's decision on patentability based upon whether there
has been commercial success or a long-felt need would be more predictable than under the scientific test. Not only would there be this certainty,
but the utilization of the objective criteria would reduce the time needed
both for case preparation and actual trial. As indicated above, a reduction in these time intervals also would mean greater certainty for
businessmen.
On the other hand, utilization of these objective criteria would lead to
a result which is inconsistent with or unrelated to the policies behind
the Patent Code. Commercial success, for example, may be solely the
result of successful marketing efforts rather than the discovery of anything which is new or advances technology. Conversely, many discoveries
which represent striking innovations may achieve no commercial success
because of the inventor's lack of capital or inability to market his product
successfully. In other cases, commercial success may not be realized
until the claimed invention has been further developed. Should not these
inventors be equally rewarded with a patent?
Similarly, the long-felt-need criterion is equally defective. By its terms,
the inventor who blazes a new trail for something not previously conceived is penalized. In contrast, the scientists in one of many research
laboratories working on the same problem who add a slight innovation
to a highly developed technology would be rewarded. It is for these
reasons that the Supreme Court reduced the objective criteria to secondary importance. To achieve certainty and uniformity at the cost of
inconsistency with the policies of the law makes little sense.
C. A Possible Solution
Against this background of a patent system in which predictability
and certainty are unattainable as long as the federal courts pass upon
the validity of patents in litigation after issuance, possible solutions
should be considered. Assuming that patents should be granted for inventions and that the uncertainty and lack of predictability in the present
system is undesirable, then possible modifications in the present system
should be explored-even those solutions which call for radical change. 0
One such possible modification is that all judicial review of patentability be entrusted to a specialized tribunal with the federal district
66. This article assumes that the patent system is worth preserving as an incentive for
technological development. It may be argued that the same technological developments
will be made whether or not legal monopolies are conferred. The mere headstart which a
company that develops a new product obtains over its competitors may be a sufficient incentive to support the present level of research and development. If this is the case, then the
restrictions upon competition inherent in the patent system cannot be justified.
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[Vol. 1
courts and courts of appeals no longer permitted to pass on patent
validity." This solution would insure that individuals with scientific
training would pass upon patentability. It would also eliminate the difficulty raised by conflicting standards applied by different tribunals.6 8
This solution, however, is hardly acceptable. Certainly, such a specialized tribunal would be captured by the Patent Office and patent bar,
from which its members inevitably would be chosen. The tribunal would
lack a detachment from the activity under scrutiny which has been
recognized as the very essence of the judicial function." It is unrealistic
to expect that this tribunal would not reflect the views of the Patent
Office and patent bar favoring a more lenient standard of patentability
rather than the more stringent standards applied by an independent
judiciary. If anyone doubts that the application of the statutory standards of patentability by the Patent Office differs significantly from
those of the federal courts, then a careful re-reading of the Supreme
Court's opinion in John Deere is recommended." Also, such a tribunal
would insulate the patent law from changes occurring in the law generally. It is no answer to suggest -that the Supreme Court could police
such a tribunal. The Court by the paucity of cases decided since 1952,
notwithstanding clear splits among the circuits, has made it clear that
there are other cases which the Court considers more important than
patent cases.7 1 In addition, the judges on such a tribunal, even if trained
in some area of science or engineering, would not possess a detailed
mastery of all the disciplines involved in litigated patents. An organic
chemist may know little, if anything, about the latest developments in
electronics. In short, even the present system, with its uncertainty and
67. The creation of a special court of patent appeals having exclusive jurisdiction in patent
cases has been repeatedly proposed in Congress. See, e.g., H.R. 7187, 76 Cong., 1st Sess.
(1939) ; S. 2687, 76th Cong., 1st Sess. (1939) ; S. 928, 77th Cong., 1st Sess. (1941) ; S. 3744,
84th Cong., 2d Sess. (1956).
68. Under the authority of The Joint Resolution To Create A Temporary National,
Economic Committee, 52 Stat. 705 (1938), the Temporary National Economic Committee
studied the concentration of economic power in the United States. In its final report, published in 1941, the Temporary National Economic Committee approved the establishment
of a single court of patent appeals. The recommendation, which was unanimous, read:
Single Court of Patent Appeals.-In order to improve the existing mechanism for the
issuance of patents and the determination of disputes relating thereto, we recommend
the creation of a single Oourt of Patent Appeals with jurisdiction coextensive with the
United States and its territories. Such a court would replace 11 different and independent jurisdictions and should do much to assure uniform treatment of patents and to
reduce the time and cost of patent litigation.
Temporary National Economic Comm., Investigation of Concentrations of Economic Power,
Final Report and Recommendations, S. Doc. No. 35, 77th Cong. 1st Sess. (1941).
69. Rifkind, A Special Court for Patent Litigation? The Danger of a Specialized Judiciary,
37 A.B.A.J. 425 (1951).
70. Graham v. John Deere Co., 383 U.S. 1, 18 (1966).
71. See, p. 428 supra, the discussion "Section 103 in the Courts 1952-1965."
1968]
PATENTS AND HUNTING LICENSES
lack of predictability, is preferable to an abdication by the federal district
courts and courts of appeals.
Another alternative is that the federal district courts or courts of
appeals be authorized to review the decisions of the Patent Office before
the issuance of a patent in litigation allowing all adverse parties to present
their views. After issuance, these courts should be precluded from inquiring into patentability, except in rare cases.
This should be accomplished by converting the Patent Office proceeding from an ex parte proceeding into an adversary proceeding on
the issue of patentability. Patent applications should be made public
and any interested party could be free prior to the issuance of a patent
to contend that an invention does not satisfy the statutory standards
of patentability. In the event that such an adversary challenge is denied
by the Patent Office, direct judicial review to an appropriate court of
appeals should be permitted before the patent issues. Similarly, if the
challenge is sustained, or if the Patent Office denies a patent without an
adversary challenge, the patent applicant may apply to the courts for
judicial review. In addition, the Commissioner of Patents should be
permitted to appeal adverse decisions to an appropriate court of appeals.
With this broad, pre-issuance judicial review, the necessity for postissuance judicial review would be considerably diminished. Accordingly,
only in rare cases, such as fraud in the Patent Office should federal
district courts and courts of appeals be permitted to declare patents
invalid after issuance.72
This is only the broad, general outline for a radical change and many
details would have to be filled in. For example, time limitations would
have to be imposed to prevent-the applicant from being unduly harassed
by pre-issuance litigation while still permitting interested parties to make
challenges. However, the basic points are quite clear. These are: make
Patent Office proceedings adversary in nature; permit maximum judicial
review before issuance; eliminate judicial declarations of invalidity after
issuance except in rare cases such as fraud in the Patent Office.
Such a modification would retain the basic objective of the present
system of judicial review which is to police the Patent Office. This
policing power is necessary because the processes for reviewing applications in the Patent Office, as well as the standards of patentability applied in the Patent Office, are such that many patents are issued which
72. With regard to fraud in the Patent Office, see Walker Process Equip., Inc. v. Food
Mach. & Chem. Corp., 382 U.S. 172 (1965); American Cyanamid Co. v. FTC, 363 F.2d
575 (6th Cir. 1966); Corning Glass Works v. Anchor Hocking Glass Corp., 253 F. Supp.
461 (D. Del. 1966), cert. denied, 389 U.S. 826 (1967).
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 17
should never have been issued, according to the courts of appeals. In
many cases, the Patent Office has not even considered the most pertinent
prior art. In short, judicial review of Patent Office decisions would not
be eliminated, it would simply occur before and not after the issuance
of a patent.
Such a modification would produce in the law predictability and certainty regarding issued patents. Once a patent issued, all persons would
know that its validity could not be attacked except in rare circumstances.
Parties could determine their business conduct knowing precisely what
their rights were. The decision of a patentee to enter a new commercial
market in which he has a patent or to invest time and capital in expanding
in such a present market could be intelligently made. The decision to
bring an infringement action or to license a patent could be made with
the knowledge of precisely what rights the patentee has relative to his
competitors. Similarly, an unlicensed competitor of a patentee would
know that a license was required to enter the field covered by the patent
unless, of course, he was prepared to pay damages for infringement and
run the risk of being put out of business by an injunction. Both parties
-the patentee and his unlicensed competitor-could settle their disputes
in a rational way, intelligently settling the terms of a license agreement
rather than blindly guessing as to the chances that the validity of the
patent will be sustained. In short, the advantages are much like those
of an action to quiet title-a clear adjudication of parties' rights.
This proposed modification is not without weaknesses. Undoubtedly,
the time interval between filing a patent application and issuance may
be considerable. Effective judicial administration could minimize this
time interval. Even under the present system, the average waiting period
from filing to final disposition is two and one-half years, and a substantial number of applications have waiting periods of five to ten years
73
or more.
In addition, the proposed modification undoubtedly would create
additional work for the federal courts because at least some patents
challenged before issuance would not have been challenged after issuance.
However, this appears to be a small price to pay for the benefits which
will accrue. One advantage of judicial review before issuance is that
judicial determinations of obviousness will be made at a time closer to
the date of invention, and subsequent technological developments which
may make an invention appear more obvious than it was will not influence, subconsciously or otherwise, this judicial determination. However,
73. 383 U.S. at 2.
1968]
PATENTS AND HUNTING LICENSES
judicial review before issuance, as outlined in this proposal, would not
alleviate the problem which the courts of appeals face in reviewing
patentability. Regardless of whether judicial review occurs before or
after issuance, these courts would still be struggling to understand scientific concepts not fully comprehensible to any but the expert in the field.
One is therefore entitled to ask whether the advantages which can be
attained by this proposed modification, in terms of greater predictability,
justify the limitations imposed on judicial review after issuance, particularly where the courts will be required to apply the same ambiguous
tests of patentability before issuance as they have been applying after
issuance. The answer ultimately depends upon the importance one attaches to the ability of industrial enterprises to predict their rights and
obligations where entry into a new market or expansion of present operations depends on this ability.
In our modern economy, enormous expenditures of time and capital
are required to enter new markets or even to expand in old markets. 4
Planning and predictability are therefore paramount considerations in
these decisions. Requiring business executives to make such decisions
while highly uncertain of their rights can only thwart future business
development. This is the antithesis of the result intended by the patent
laws.
75
As long as courts continue to declare patents invalid after issuance,
capital must be expended or settlements reached without any knowledge
of rights and remedies. In contrast, if courts exercised judicial review
before issuance, the advantages of judicial review would be retained, but
rights and remedies would crystallize at a time when such a determination is most clearly needed.
III.
THE PATENT REFORM ACT
When the Patent Reform Act 76 pending in Congress, is examined
against this proposed modification, it is inadequate because it would not
produce what has been lacking for decades-certainty. Sections 13617
and 15178 of the bill would permit third parties to submit evidence to
the Patent Office in opposition to the granting of a patent prior to its
issuance. Section 151 would require publication of an application after
74. J. Galbraith, The New Industrial State 22-24 (1967).
75. See The Subcommittee on Patents, Trademarks, and Copyrights, the Patent System
and the Modern Economy, Study No. 2, 84th Cong., 2d Sess. (1957).
76. S. 1042, 90th Cong., 1st Sess. (1967) ; H.R. 5924, 90th Cong., Ist Sess. (1967).
77. S. 1042, 90th Cong., Ist Sess. § 136 (1967); H.R. 5924, 90th Cong., 1st Sess. § 136
(1967).
78. Id. at § 151.
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[Vol. 17
it is found to be allowable, but before a patent is granted. Section 136
would then give third parties the right to argue, during a period from
three to six months, that a patent should not be issued because of prior
art or because the inventor named in the application did not invent the
subject matter sought to be patented.
However, the bill does not go far enough. An adversary proceeding is
not required. The bill merely states that if a third party prior to issuance makes a prima facie showing of nonpatentability and offers to
present evidence in such a showing, "the matter shall be determined in
such proceedings as the Commissioner may establish by regulation." 7
The Commissioner testified before the Subcommittee of the House Judiciary Comittee that the evidence submitted by third parties "will supplement the information now available to the examiner in deciding whether
to issue a patent."80 There is a considerable difference between a third
party supplying information to a patent examiner which the examiner
is free to consider and confronting the applicant with information and
requiring him to respond to this information in a formal public proceeding before either the examiner or a court. The latter clearly has some
advantages of an adversary proceeding which the former does not.
More importantly, however, the bill would not permit judicial review
of a third party's challenge if that challenge is denied. Section 151(e)
provides that a refusal of the Commissioner to reject any claim of an
application on the basis of a notification under this section shall not
be subject to direct judicial review.8
Similarly, the bill pays deference to the intervention of third parties
by providing in Section 257 that any person, including the head of a
government agency, may, within three years after the issuance of a
patent, petition the Patent Office for a determination that one or more
claims of a patent is invalid.82 However, judicial review would be expressly precluded if the petition is rejected.
The only change which the bill would make in judicial review prior
to issuance appears in Section 147.83 Under current law a patent applicant may appeal decisions of the Patent Office either to the United States
District Court for the District of Columbia 84 or to the Court of Customs
79. Id. at § 136 (d).
80. Statement By Commissioner Brenner. Hearings on H.R. 5924 Before the Subcomnm.
No. 3 of the House Comm. on the Judiciary,90th Cong., 1st Sess. at 5 (1967).
81. S. 1042, 90th Cong., 1st Sess. § 136(e) (1967); H.R. 5924, 90th Cong., 1st Sess. §
136(e) (1967).
82. Id. at § 257.
83. Id. at § 147.
84. 35 U.S.C. § 145.
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PATENTS AND HUNTING LICENSES
and Patent Appeals.8 5 Only the decisions of the former may be appealed
by either party to the United States Court of Appeals for the District of
Columbia Circuit. Section 147 would permit both the applicant for a
patent and the Commissioner to appeal decisions of the Court of Customs
and Patent Appeals to the Court of Appeals for the District of Columbia
Circuit. The purpose of this provision is to eliminate conflicts between
decisions of the United States Court of Appeals for the District of Columbia and the Court of Customs and Patent Appeals. 6 Section 147
would represent only slight extension of judicial review prior to issuance
-not nearly all that is needed.
Moreover, the bill would not limit the federal courts' review of patent
validity after issuance except where a patent or claim is held invalid in
a final order by a federal court, from which no appeal can or has been
taken. In such a case, the patent or claim would be cancelled. 8 The provision would cure the present anomaly of one circuit court's declaration
of invalidity presenting no bar to a subsequent suit on the same patent
in a different court of appeals. However, the bill contains no general
limitation on the power of federal courts to declare patents invalid after
issuance."" Admittedly, various provisions of the bill are intended to
effect a higher standard of invention as the basis for issuing a patent,
and it can be argued that such provisions would reduce the number of
patents declared invalid by the courts. Thus, for example, under Section
137, a patent applicant would have the burden of persuading the Patent
Office that a patent should issue. Section 148 would provide that when
a court reviews the decision of the Patent Office refusing a patent, it
would have to presume the correctness of the Patent Office decision.
Also Sections 12 and 15 would provide for continual study and appraisal
of the patent system.8 9
Quite apart from the desirability of each of these provisions, the fact
still remains that the federal courts would continue to declare large
numbers of patents invalid after issuance. These provisions may reduce
the percentage of invalidity from 60 percent to 50 percent, but the same
problems of uncertainty and lack of predictability as to when patents
85. 35 U.S.C. § 141.
86. Statement of Commissioner Brenner, supra note 80, at 6.
87. S. 1042, 90th Cong., 1st Sess. § 294 (1967); H.R. 5924, 90th Cong., 1st Sess. § 294
(1967).
88. Such a limitation is of course desirable if there is some other way in which the courts
can police the Patent Office and a high level of patentability is required for issuance.
89. Similarly, the "first to file" system proposed in the bill would undoubtedly remove
some of the uncertainties which arise in patent validity legislation. However, even if the
first to file system were adopted, this would by no means affect the basic uncertainity connected with a court's decision as to whether a patent is obvious over the prior act.
THE AMERICAN UNIVERSITY LAW REVIEW
will be declared invalid would remain. Patents would still be analogous
to hunting licenses, and businessmen could still not intelligently make
the crucial business decisions they face.
CONCLUSION
Now is the time to revise the Patent Code along the lines suggested in
this article. The Patent Reform Act, now before the Congress, provides
the opportunity for meaningful revision of the patent laws. However,
this debate should not be limited to the provisions of the bill. Instead,
even more basic changes of the type discussed above should be considered. The role of the federal courts in the determination of patent
validity should be carefully deliberated. Technological determinations
pose difficult problems for judges untrained in science. After all, the
Supreme Court only twenty-five years ago, decided that Marconi did not
invent the wireless, notwithstanding the universal view to the contrary."
The future economic development of the country is closely tied to
research and development, and these in turn are tied to a healthy patent
system. The experience of 1952 demonstrates that the patent system is
like an old automobile. After a point, minor repairs will not keep it
going regardless of the mechanic's skill in making these repairs. A major
overhaul is required.
90. Marconi Wireless Co. v. United States, 320 U.S. 1, 60 (1943).
senting). Id. at 64. (Rutledge, J. dissenting).
(Frankfurter, J. dis-