DEFINITION OF INVENTION IN PArENT LAW 221

DEFINITION OF INVENTION IN PATENT LAW*

HAVE read with great interest the article on the “Definition of Invention in Patent Law,” by Mr. H. E. Potts, which appeared in the MODERN LAW REVIEW of July 1944. Mr. Potts’ clear exposition of the

difficulty of differentiating between “inventions” and “ mere improve- ments” is most helpful to the patent lawyer, and ultimately I agree with his suggestion that royalties only and not a monopoly should be awarded to patentees in cases where the contribution to the art made by the inventor involves only a limited degree of ingenuity. I cannot, however, follow entirely the reasoning by which Mr. Potts arrives a t this solution of the problem.

Briefly, Mr. Potts seems to say this: The task of drawing the line between a real patentable invention and a mere unpatentable improvement, in other words between ‘‘ day” and “night,” is too difficult for the Judge; consequently the Judge, when he finds himself in the “penumbra between light and darkness,” should give a limited relief in the form of royalties but no monopoly. In fact, however, Mr. Potts puts on the Judge the task of drawing two lines, namely, first the line between an unpatentnble improvement and an invention which deserves a royalty only, and second the line between a minor invention deserving a royalty only and a real invention deserving a monopoly; in other words, the Judge under Mr. Potts’ scheme has to draw first the line between night and dawn; and second, the line between dawn and daylight. Mr. Potts stresses the fact that discontinuity is exceptional in nature ; however, when the scientist is faced with a continuous line or process he, too, finds it necessary to define units in terms of which he measures it. The lawyer is bound to do the same; see the quotation from Mr. Justice Holmes given by Mr. Potts. Black-out regulations must draw a more or less arbitrary line between day and night, and the patent law must draw a more or less arbitrary line between an unpatentable improvement and a patentable invention.

I n my view, the solution of the problem suggested by Mr. Potts can be better reached by a different reasoning, viz., there are three categories of contribution to technical progress, namely : (I) Mere improvements ; these deserve no special reward. (2) Inventions involving a limited degree of ingenuity; these deserve a royalty only. (3) Inventions involving a substantial ingenuity ; these deserve a monopoly. Consequently it is desirable to introduce into the Patent Act a clause to the effect that for inventions involving a limited degree of ingenuity the patentee should be entitled to a royalty only. The decision on this point should preferably be put into the hands of the Comptroller of the Patent Office, or it might be left to the Judge in infringement proceedings. The reason why the patentee should receive a royalty only is, however, not the fact that it is too difficult for the Patent Office or the Court to draw borderlines, but the fact that a royalty only, and not a monopoly, is the adequate reward for the invention covered by the patent.

Referring to your footnote to Mr. Potts’ article, I certainly agree that making partial awards in borderline cases is very much in line with the trends of modem practical jurisprudence as evidenced in the Hire Purchase

* We have received this comment from Mr. Peter Meinhardt on the article on this subject which appeared in our last issue.-THE EDITOR.

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222 MODERN LAW REVIEW Nov., 1944

Act, the Family Provisions Act and the Frustration Act. The relevant provisions in these modern Acts are, however, not based on a theory of “judicial defeatism” which assumes that it is too difficult for the Judge to draw borderlines. On the contrary, these Acts greatly extend the discretionary powers of the Judge and entrust him with the solution of problems which older statutes attempted to solve in the body of the Act. The modern Acts, however, also expect the Judge first to make up his mind whether the facts fit into the legal category visualised by the Act. For example, under the Frustration Act the Judge must first examine whether there is a frustrated contract and whether a party has, by reason of any thing done by the other party, obtained a valuable benefit ; having drawn the borderline and ascertained that the plaintiff is on the right side of it, the Judge is then free to fix at his discretion the extent of the sum recover- able by the plaintiff. In the same way, according to my suggestion, and in fact also according to Mr. Potts’ proposal, the Court has first to ascertain that there is a patent covering an invention which is more than a mere improvement but does not involve sufficient ingenuity to deserve a mono- poly; having drawn the borderline and ascertained the category, the Judge is then free to fix at his discretion the extent of the royalty. Just in the same way as the Frustration Act does not relieve the Court of the difficult task of deciding whether or not there is a frustrated contract, Mr. Potts’ and my suggestions do not relieve the Court of deciding whether or not there is an invention deserving a monopoly; in many cases this is the crucial question for the patentee, while the amount of the royalty which may be due to him is of secondary importance.

A true example of partial relief in a borderline case can be found in Section 3 2 ~ of the Patent Act which provides that the Court in its discretion may give partial relief to the patentee if some claims of the patent are invalid but othcrs are valid. However, as the law stands a t present, the patent is considered invalid and the patentee can obtain no relief if each claim of the patent contains matter which is partially new and partially old. I should like to suggest that in the case of a claim containing old as well as new elements the Judge, a t his discretion, should be in a position to make a partial award in favour of the patentee in respect of the new elements contained in the claim. Such a clause would remedy the hardship now suffered by a patentee who is deprived of all protection even for a very useful invention if he has “opened his mouth too wide” by including partially old matter in the claim.

STATUTES The Finance Act, 1944

This Act is of particular interest since there is implicit in it the statutory recognition of the fact that, with taxation at its present high level, the State is in effect a partner with industry. In the realm of applied science this country has lagged well behind the U S A . and Germany, though it is, perhaps, unsurpassed in discoveries in the field of natural science. To encourage industry to undertake the research necessary to enable this country to compete on equal terms with the rest of the worlfl, special provision is made in Part VI of the Act for an allowance in the computations of business profits of expenditure on ‘‘ Scientific Research.”