Canadian Federal Court of Appeal

Sometimes decisions are made by the courts that make you angry. And other times they just make you sad. This is a case that falls into both categories: Hershkovitz v. Tyco Safety Products Canada Ltd. 2010 FCA 190 Date: July 19, 2010

Patent 2,169,670, relates to an electronic circuit known as a telephone line coupler. A telephone line coupler is used to connect electronic equipment, such as a telephone or alarm system to a telephone line, while providing electrical isolation. The electrical isolation is necessary to protect equipment from power surges and unwanted signals. The electrical isolation is achieved by using optical-electronic components called “opto-couplers”. There’s no need to examine this patent further other than to observe that the patentee, by way of a “disclaimer” introduced into the scope of coverage of the claims the requirement that the following additional features must be present:

“(1) a receive opto-coupler (2) connected (3) in series (4) with the transmit opto-coupler [means] (5) on the line side (6) to draw a minimum of current (7) to place a light-emitting diode (8) of the receive opto-coupler (9) in an operational range.

These features were fully identified in the disclosure as originally filed.

It is perhaps important to note that the Trial Judge then added the observation:

“The Court notes that these newly added elements are considered by the inventor himself as being (1) inventive elements and (2) resulting in new combinations…”

an observation apparently adopted not only by the Trial Court in making its ruling but by the Court of Appeal as well. The implication is that these words pointed the scope of patent coverage in a new direction.

Focusing on the decision in the Court of Appeal, which perpetuates the errors made in the court below, the appeal judgment addressed the first issue as being: Was the disclaimer invalid because it added new inventive elements to the invention?

The Appeal Court found no error in the Trial Court’s decision that the appellant’s disclaimer broadened the scope of the patent by adding new inventive elements to it. On this basis, the disclaimer was held to be invalid. Worse, the Appeal Court endorsed the methodology of the Trial Court, namely of proceeding by construing the claims in the patent both before and as modified by the disclaimer, and then comparing the two in order to conclude that the claim had been broadened.

Before addressing why this is an erroneous approach, it should be observed that the Appeal Court decision makes the following observations on the nature and fundamental principles of patent law:

“At its essence, the patent system is a bargain between the public and inventors”
“An inventor can obtain a patent for any “new and useful art, process, machine, manufacture or composition of matter”….. The patent gives its holder, the patentee, a time-limited exclusive right to make, construct, use and sell the invention: section 42 of the Act. There is a quid pro quo.
“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.
“To be novel the invention must not have been previously made known to the public.
“…an inventor can only claim that which he invented. If an inventor claims more than was invented, the subject-matter of the patent will be too broad. This makes the bargain unfair – the inventor ends up with the exclusive right to exploit subject-matters not invented and not disclosed to the public. Simply put, patents cannot be overbroad.

“. . . a patentee may later discover that part of the invention falls short on one of the three criteria for patentability.

“Sometimes the patentee can address the deficiency upon discovering that part of the invention falls short on one of the three criteria for patentability. Where the deficiency is as a result of a mistake, accident or inadvertence, the patentee may renounce that part of the invention that falls short. …. Renunciation is accomplished by filing with the Patent Office a document called a “disclaimer”: section 48 of the Act. Section 48 provides as follows:

48. Patentee may disclaim anything included in patent by mistake

(1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

(a) made a specification [i.e. the claims and disclosure found in the patentee’s patent application] too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.

“The filing of a disclaimer narrows the scope of the patent. The narrowing of the scope of the patent happens automatically upon filing the disclaimer: the Patent Office does not have to assess and approve the disclaimer. As long as the disclaimer is in the prescribed form, the Patent Office registers it.

“When the patentee files a disclaimer, the scope of the patent exclusivity enjoyed by the inventor is reduced.
“Disclaimers that broaden the scope of a patent are invalid.
“In the view of the Federal Court [trial division], this was an invalid broadening of the scope of the patent through disclaimer.

“[34] In this Court, the appellants cast their challenge to the Federal Court’s ruling on this point very narrowly. They challenged the Federal Court’s finding that the disclaimer introduced, as a new inventive element, a connection between the receive opto-coupler and the transmit opto-coupler. However, even if the Federal Court were wrong on that, its finding that the disclaimer improperly introduced a number of other new inventive elements would remain. For example, in this Court, the appellants did not challenge the finding that “a minimum of current to place a light emitting diode of said receive opto-coupler in an operational range” broadened the scope of the patent. They failed to challenge any of the other elements that the Federal Court described in the above passage, which, in its view, broadened the scope of the patent. Whether or not the appellants’ narrow submission is correct, it does not matter in the end result: the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.

“[35] Because of the rather narrow focus of the appellants’ arguments concerning the above passage, it is not necessary for this Court to examine each of the nine inventive elements identified by the Federal Court and assess whether they are indeed inventive elements. In some cases, this might be necessary. There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”
[End of quotations from Court decision]

This ruling is a disaster. It not only does great damage to the provisions in the Act that permit a patentee to file a disclaimer, but it does so on the basis of a logical reasoning which is seriously deficient.

Adding new limitations to a claim does not broaden the scope of a patent monopoly. The claim has a scope before the new limitations are added, and after the new limitations are added that scope has been reduced because anything not including the new limitations is now excluded. A properly formulated disclaimer can never broaden the scope of coverage of a patent.

A key feature of a disclaimer is that it is available in cases where a specification [i.e. the claims and disclosure found in the patentee’s patent application] has been made too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor. (Reference to “more than that… the person… was the inventor” is old-fashioned language meaning that the subject claims covered pre-existing prior art. Hence such person was not the “inventor”.)

By permitting disclaimers, a patent claim that violates the Golden Rule of patent law (by extending to cover the prior art) can be repaired by truncating its scope.

There are two ways by which the scope of a patent claim can be limited. One is to declare that claim coverage specific to a prior art configuration that has been discovered after the scope of the claims has been settled through examination are not to be covered by the claim - coverage of such specific prior art is disclaimed. The other way by which the scope of a patent claim can be limited is to stipulate that coverage is to extend only to embodiments of the invention having a specific feature that is not present in the prior art. Properly, the specific feature must also be identified in the patent specification as being available to serve as part of the invention to be covered by the patent. Examples would be appropriate.

Example 1

Claim: I claim a pencil having an eraser attached to the end of the pencil.

Prior art: a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil

Disclaimer: I disclaim the case of a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil.

Example 2

Claim and prior art as above.

Disclaimer: I disclaim the cases of all pencils not having a brass sleeve fitted at the end of the pencil to hold the eraser in place.

In the first case, the disclaimer is specific to an example of prior art. In the second case the disclaimer adopts a limitation taken from the disclosure in the original patent filing and makes this a requirement for something to fall within the scope of the claim in order to infringe. The first example, whether appropriate or not, is not permissible under the patent rules. The rules stipulate that a disclaimer, other than the entire cancellation of a claim, must be formulated according to the following statement:

“The patentee disclaims the entirety of claim with the exception of the following:
http://laws.justice.gc.ca/eng/SOR-96-423/page-5.html#anchorsc:1

Following this procedure, the original claim may then be set out in its entirety with further limitations being added to it. This is the well-known procedure in patent law of narrowing the scope of a patent claim.

How could the Court invalidate the disclaimer on the basis that: “the disclaimer improperly introduced a number of other new inventive elements….” and “the Federal Court (trial division) has found that the disclaimer, by broadening the original claims in the patent, is invalid”? Not only did the Court on Appeal refuse to depart from the decision of the Trial Division but they also endorsed this by adding:

“the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.”

The Court then went on to make the novel and strange observations that:

“There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”

This new distinction seems to be related to the earlier statement taken from the Supreme Court of Canada decision in Free World Trust v. Electro Sante Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66 that:

“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.”

This parsing of claims into essential and nonessential elements is derived from the British House of Lords Catnic decision, Catnic Components Ltd v Hill & Smith Ltd (1982) R.P.C. 183 and the subsequent UK Court of Appeal Improver decision, Improver Corporation v Remington Consumer Product Limited [1990] F.S.R. 181. This adoption of the concept of essential and nonessential elements was made without reference to the subsequent British House of Lords decision in Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 (2004-10-21)

http://en.wikipedia.org/wiki/Kirin-Amgen_v_Hoechst_Marion_Roussel
http://www.claytonutz.com/publications/newsletters/life_sciences_insights/20050715/oh_my_lord-the_house_of_lords_clarifies_uk_patent_law.page

which clarifies the intent of the Catnic decision and nullifies the parsing of claims into essential and nonessential elements as the proper method for claim interpretation. That distinction was in reality a residue from the pre-Catnic law principle that the Doctrine of Equivalents cannot operate at the point of invention.

Not only does the present Court of Appeal decision maintain the distinction between essential and nonessential elements in a patent claim, but it also introduces the concept that claims may add inventive elements as well as essential elements, vis: “There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.” The reality is that adding limitations to a claim cannot broaden its scope. This analysis is hopelessly wrong.

A further effort might be invested in determining whether there were good policy reasons for reaching the same decision on other grounds such as the inventor’s understanding at the time of the patent grant, but for now, we have to decide whether to be either angry or sad at the direction that a decision such as this will point the law in the future.

David J. French
Ottawa, Canada

While the world waits for the US Supreme Court decision in the Bilski case, the Canadian Patent Office is going forward with establishing its policies as to when patents can be granted for software inventions in Canada. They have done so by publishing a draft revision to the Patent Office manual that addresses this issue.

The Canadian Patent Office publishes the Manual of Patent Office Practice - MOPOP - to serve as a guide for both examiners and the public regarding patenting in Canada. On June 16 CIPO began its consultation on a draft revision to Chapter 16 of the MOPOP which addresses the subject of “Computer-Implemented Inventions”.  CIPO invites comments in response up until August 19, 2010. Thereafter, the response will be evaluated in the development of a final policy to be adopted regarding computer-implemented inventions. Note: Comments submitted will be posted on CIPO’s website for public viewing.

This draft chapter is 41 pages long and is available at this link:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00758.html

The issue addressed goes to the very heart of the patent system: What sort of things should be patentable. Policy wise, patents should probably be granted for things that need to be encouraged to come into existence and would be less likely to arise without the incentive of a patent right to motivate human initiative. In the past, stemming from the Statute of Monopolies in 1624, patents were intended to introduce “new manners of manufacture” into the land. In the last hundred years, the premise for the granting of patents has shifted from establishing new enterprises to encouraging the disclosure of inventive concepts. But we can still ask, inventive concepts regarding what types of things?

The Canadian statute, borrowing from the US Patent Act of 1836, recites that patents are to be granted for “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This is the definition of an “invention” under the Act. This statutory language was last addressed by Parliament in 1936. There’s no doubt that the issue raised by Chapter 16 of the MOPOP was far from the minds of any Member of Parliament at the time. 

The issue is: to what extent can computer-implemented inventions be said to qualify under the definition of “invention” and therefore be qualified for the granting of a patent in Canada.

As long as hardware is involved, there is virtually no doubt that a patent can be granted if the other requirements for patentability, namely novelty and unobviousness, are met. The more difficult issue arises when the novelty resides in the manner of organizing or treating information, or surrogates for information, in the form of electric signals. This is the strength of computers. The information that they sort and analyze is valuable because it represents an analog to the real world. The mere fact that a computer process is used to carry out some other tangible activity, such as adjusting the color of paint in a paint production line, should not disqualify the overall process from being patented. The difficulty arises when the invention, the purported invention as presented by the patent applicant, resides in the processing of the information itself. An example may prove helpful.

One of the most powerful innovations in communication and computer technology was the conception of the checksum digit as part of computer words. Originally, when computers used eight bit words based on a string of eight binary values of zero or one, one digit was reserved to be used to indicate the “parity” of the other seven digits. Thus if a computer word consisted of: 11101010, the parity of the last seven digits is established by adding the digits and checking whether the result is an even or odd number:  1 + 1 + 0 + 1 + 0 + 1 +0 =  4.  As 4 is an even number, by convention its parity is considered to be 1.  Accordingly, the first or checksum digit is given the value: 1.

There are actually numerous mathematical algorithms that can be implemented to carry out this type of function: http://en.wikipedia.org/wiki/Check_digit

They all serve to catch errors arising from the corruption of information that is being transmitted. Within a computer, this transmission is occurring millions of times a second and it’s important to catch errors when they occur. This checksum parity check doesn’t catch all errors;  two errors in one word may cancel out.  But when a single error has occurred, and the checksum digit doesn’t match, a computer circuit can be programmed to ask for the retransmission of the corrupted data until apparently valid information is received.

While this example has been given in respect of the transmission of an electronic message in binary form, it would be equally applicable to the semaphore signalling systems of earlier times. At regular intervals, a flag signal could be raised that reflects on the nature of the earlier signals. Thus the concept which constitutes a valuable advance in signalling can be divorced from the mechanical way in which it is implemented.

Should such a process be entitled to the grant of a patent?
There are two approaches.  One approach is to determine whether the new concept can be fitted within the words of the statute.  On its face, almost anything could qualify as a new and useful “art”.  But the meanings of words in the statute are constrained by the traditions of judicial interpretation.  Another approach is to go to a higher level and ask the policy question: “Is this a case where patents should be granted to encourage innovation to occur that would be less likely to arise without the incentive of a patent right to motivate human initiative?”  Some would quickly answer: “of course”, relying on the presumption that anyone who discloses a new and useful gift to humanity deserves a reward.  On the other hand, a sophisticated review of the modern economy may show that there is sufficient incentive already for people to conceive of more efficient ways to communicate, analyze and manipulate information.

Allowing that innovations that include a mechanical component are accepted as being patentable, creative patent agents can, and have in the past, conceived of very cunning ways of defining an inventive concept so that it appears to apply to something tangible. Even the semaphore system operates on the basis of flags. 

A further policy question therefore arises as to whether patents should be granted for essentially software innovations when they are presented in combination with hardware; or should a restriction be applied based on where the essential inventive feature resides.  If the inventive feature resides in the conceptual manipulation of information, should this be grounds for rejecting a patent application, even if the prospective monopoly is presented in terms of a mechanical hardware environment?

The draft revision to MOPOP guidance on this issue takes the position in section 16.08.04 that a computer program per se is considered to be an abstract scheme or set of rules that is not of itself patentable. This policy would appear to bar patenting of the higher principle arising out of the checksum concept. But it would still leave open the prospect of granting patents for such an invention when incorporated into an arrangement involving tangible components.

This presentation of a draft document to define how the Patent Office expects patent applicants to behave is a compendious analysis of the issue. It is a valuable contribution to understanding how a patent office should manage applications that address computer-implemented inventions. While everyone is awaiting the long-delayed US Supreme Court Bilski decision, this document prepared by the examiners and staff at the Canadian Intellectual Property Office, is well worth reading.

Defenders of the existing first-to-invent system argue that it spares inventors the burden of rushing to the patent office to make a record of their inventions. If you are the first inventor under the existing US system, then you’re entitled to delay for up to one year from the date of your conception of your invention with complete security. You may do so only so long as you are working on reducing your invention to practice, by either building an apparatus that incorporates the invention or by filing a patent application. But if an inventor is diligent in this respect, there is no rush to the patent office.

The patent law blog Patently’O run by Prof. Dennis Crouch addressed this issue once again on December 10, 2009:

http://www.patentlyo.com/patent/2009/12/the-matrix-for-first-inventor-to-file-an-experimental-investigation-into-proposed-changes-in-us-patent-law.html

This posting makes reference to a paper of December 4th by Brad Pedersen and Justin Woo of Patterson, Thuente, Skaar & Christensen, P.A. in Minneapolis entitled “The ‘Matrix’ for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law”:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1518660

Amongst numerous comments made on the Patently’O blog in response to this posting, a strong defense of the existing first-to-invent system was put forward by Ron Katznelson, whose views are representative of many of the 160,000 small business and startup companies represented by the The Small Business Coalition. These comments were based on the practical experience of small businesses and startups who count on patent rights to get themselves under way but cannot afford to comply with the early filing requirement of a first-to-file system.

Here are Ron’s comments on this issue:

“Consider an actual profile of a five-year R&D and invention effort of the Mova® system developed by my friend Steve Perlman. It is described in Steve’s Columbia University presentation available at http://j.mp/Mova-development. Slide 35 shows that no less than fifty important inventive ideas had been conceived, evaluated and tested over periods spanning months or years in the course of this system’s development (labeled by “invention” squares).

The majority of these inventions proved to be useless. During that time, only about six patent applications had been filed (labeled by “path to success” arrows). In most cases, there was no way of filing prompt and enabling applications. As Steve explains in his presentation, the prospects of such a development effort under FTF would have been dire. Because the cost, effort and time lost to have acted on every one of these inventions would have been prohibitive, this R&D team would have had to frequently face a painful dilemma as to which of these inventions should be written up and filed in a patent application.

Unfortunately, many such premature guesses would have proved wrong, so, under FTF, costly applications would be filed for some useless inventions and patent protection would be lost for other valuable inventions. Investors will not assume such risks, which is why such inventions seldom occur under FTF scenarios.”

Posted by: Ron Katznelson President of Bi-Level Technologies, Encinitas, California, Dec 16, 2009 at 08:25 AM as a comment to the Patently’O Blog of December 10, 2009.
In commenting on the Pattersen and Woo paper (above) Prof Dennis Crouch had observed in his Patently’O Blog of December 10, 2009:
“The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. While touted as a way to harmonize the US system with “first-to-file” (FTF) systems used in other countries, an experimental investigation of a matrix of two hundred typical fact patterns for two competing inventors was analyzed under all three systems (FTI, FITF and FTF) to test this assumption. Based on the matrix analysis, it appears that if FITF is adopted there likely will be changes in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system; and, it is unclear whether FITF really gets the US any closer to patent harmonization.”

Fair enough comment. But where is all this anxiety regarding a switch to a first-inventor-to-file system coming from? If you review the comments of Ron Katznelson above and the recent submissions of The Small Business Coalition on Patent Legislation in a letter sent to the U.S. SBA ( http://bit.ly/SB-Coalition-Letter-to-SBA ) , the great concern appears to be the consequences of pressuring small businesses in America, and particularly new business startups, to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood.
First some clarifying observations.

Compare “first-to-file” and “first-inventor-to-file”

We hear both the expression “first-to-file” and “first-inventor-to-file”. From the many commentaries on the above blog posting it was apparent that some reviewers did think that there is distinction. Do not confuse these as two distinct systems. Unless I’m missing something, I believe that the distinction between “first inventor to file” and “first to file” is moot. It’s been a long time since any major country in the world has granted patents to anyone other than a true inventor. The only reason that the patent office and other proponents of patent law reform are using the expression “first inventor to file” is to make it clear that strangers who hear about an idea are not entitled to receive a patent.

Patents under any new system that will come into effect in the United States will only be granted based on applications for inventions originating from inventors. Either the inventors themselves will file the applications, or companies who have received a transfer of patent rights from the inventors may be entitled to file the applications. But if you’re not an inventor or cannot claim rights derived from an inventor, then you will not be able to generate a valid patent. (Let’s not get distracted by supposed fraudulent filings.)
For simplification hereafter “first-to-file” will be used on the understanding that this means “first-inventor-to-file”.

US Senate Bill S515

Since it is possible to have more than one version of a first-to-file system, the commentary hereafter is directed to the patent requirements of U.S. Senate bill S515. The text of this bill was reported out of the US Senate Judiciary Committee to the Senate on April 2, 2009:

http://www.govtrack.us/congress/billtext.xpd?bill=s111-515

A written report Report No. 111-18 with commentary was issued by the Senate Judiciary Committee in respect of this bill on May 12, 2009:

http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=111_cong_reports&docid=f:sr018.pdf

Why Oppose a Change to “First-to-File”?

The Small Business Coalition on Patent Legislation, Ron Katznelson quoted above, and the presenter of the above referenced slideshow, Steve Perlman, are opposed to the switch of the US patent system from first-to-invent to first-to-file as a patenting criterion. They are opposed, amongst other reasons, because business startups will be expected under the proposed law to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood. This pressure will arise because, in the case of competing filings, the first party to file will prevail. It will also arise because under the new, proposed novelty standards, an application must be filed before someone else discloses the idea publically.
Ironically, in terms of competing filings this issue of first-to-invent vs first-to-file relates only to collisions between similar applications at the patent office seeking to claim the same invention. The incidence of such collisions apparently is down to, on the order of, a hundred or so per year out of 300,000 or 400,000 applications (collisions may not be recognized for several years). Still, the issue is bigger than that.

Indeed, the Small Business Coalition believes that inventorship contests – Interferences - are irrelevant in this debate due to their minute number. They are concerned that harm will arise due to the “race to the patent office” whether or not a collision occurs with a competing application. This is because applicants would have to decide on a basis of incomplete information which new ideas to file on, triaging among a number of potential applications. They contend that “the harmful effects of FTF … will be in losing patent protection on inventions for which applications will not, or could not, reach the USPTO.” They are also concerned that “harm will be inflicted when inventors race to the patent office with the wrong application, for the wrong invention, and for the wrong reasons, exhausting precious resources in the process.”

Commentators thinking that a switch from first-to-invent to first-to-file will create a “race to the patent office” are significantly correct. The issue relates to whether the law should be changed to encourage inventors and businesses that aspire to file patent applications to file early and file often.

Existing Incentive to File Early

There is in fact an incentive to file early under the existing laws. If an Interference is going to occur, under the present US law considerable procedural advantages accrue to the party who files first.

Additionally, apart from competing filings, there is a strong incentive to file early in order to avoid the effect of damaging prior art. Under the present American system any prior art that has been in place for more than one year before the actual American filing date is fatal. Delaying your US filing will expose you to this risk since you do not know if a prior publication has already occurred and may become more than one year old by the time you file.

Futher Incentive to File Early Under S515

Actually, there is an additional feature of the new proposed law that will increase the incentive for the early filing of US patent applications. The proposed law will abolish the ability to “swear back” of the invention disclosures originating from others which are published in the year prior to the US filing date.

Under the existing patent regulations, 37 CFR 1.131 provides that, if the examiner cites a public disclosure which qualifies as a bar under the present novelty standards and this disclosure has occurred within the one year grace period associated with the filing, then an applicant can remove this reference from consideration by filing a declaration that they made their own invention at a date earlier than the date of publication of the cited reference. The same treatment also arises where the Examiner cites an earlier filed application made by another that discloses the same invention. (In cases where the same invention has been claimed, an Interference may be declared.) This declaration should contain support confirming due diligence on the part of the applicant in reducing the invention to practice, or effecting a patent filing as constructive reduction to practice, from a date prior to that of the cited reference up to the date of the actual US filing.

Rule 37 CFR 1.131 exists because it would be unseemly for the patent office to grant a patent in cases where an applicant is unable to swear back of such a reference. If the applicant can’t swear back of the reference, then the applicant would not qualify as a first inventor. Someone else must have thought of the idea in order to publish it first.

Swearing back under rule 1.131 does not close the book on the validity of any patent that may issue in such circumstances. The originator of the prior publication may actually be the first inventor, or may even have engaged in activities that would constitute statutory bar, e.g. effecting a public use or an offer for sale in the United States more than one year prior to an applicant’s filing date. But these issues are not resolved before the patent office. They are left for subsequent litigation, if this should occur. In this sense examination at the US Patent Office is not complete.

Under the new first-to-file system, the ability to swear-back of a prefiling publication occurring in the grace period year would be removed. Applicants would be encouraged by the provisions of the law to file applications at an early date. To preserve their rights, they should file their applications early so as to predate any publications by others. In this sense, there would be pressure on inventors to make an early filing of the US patent office.

Proposed Alternative to Early Filing – a new legislative concept

Under the proposed law of S515, a further feature would give applicants the option, as an alternative to filing, of simply publicly disclosing their inventions, cf Sections 102(b)(1) and Section 102(b)(2)(B). Making a public disclosure to disqualify third-party publications as prior art must occur under the proposed law before the third-party makes the invention available to the public.

This feature is similar in part to swearing-back. A distinction, however, is that swearing-back under the present law can be effected after-the-fact. This after-the-fact feature under the existing system is advantageous because, when the swearing-back affidavit is prepared the invention will be fully understood. It will be completely described in the pending application to the standards of 35 USC 112, and the nature of the competing disclosure will be known. Under the alternative, somewhat equivalent sections of S515, the public disclosure will have to occur in the dark, without the advantage of knowing the nature of the final invention or the reference that is to be overcome.

This option of publicly disclosing an invention in order to remove subsequent published art from consideration is not further defined in S515. As written, such a public disclosure could occur anywhere in the world, in any manner that would qualify as a “public disclosure”. Accordingly, the proposed legislation may contemplate accepting obscure public disclosures, even in cases where such disclosures are contrived. Rather than make a disclosure in a prominent manner, an inventor may wish to make a public disclosure known only to a few people in order to obtain an effective US filing date. At the same time, they may be able to avoid the possibility that competitors may learn about an inventor’s plans at an early date by limiting the extent of this disclosure. Is this the intention of the legislation?

Public disclosures may also occur unintentionally, as in the case of a public use of an invention. But such disclosures, whether intentional or not, will probably have to meet the standard of being “enabling” in order to protect a subsequent actual patent filing from being defeated by the prior public disclosure of a third-party.

In the case of the public use of an invention, the character of the disclosure will be established by the invention itself. But even if parties were to intentionally publish written descriptions of the invention, then this latter procedure will be still subject to the frailties of the ability of an author or draftsman to capture and described the essential nature of an invention. In particular, this drafting exercise would necessarily occur at an early date, possibly before an invention is fully understood.

Accordingly this “public disclosure” option for sheltering an application from subsequent prior art will not be equivalent to a declaration under rule 37 CFR 1.131. The swearing-back declarations are always produced after the fact, once an application has been filed and the understanding of the invention is presumably complete. But the proposed “public disclosure” option does go part way towards providing a procedure somewhat similar to that available under present rules 37 CFR 1.131.

Multiple Filings

While the new patent system does encourage people to file early, it also allows an applicant to file often. You are allowed to file once and then make multiple supplemental filings upgrading the story of your invention over the following year. Such extensions must meet novelty requirements at the time that they are filed. At the end of the year, the “priority” year, you are obliged to file a final invention disclosure and thereafter the story is frozen. You can claim what you have described, but if you forget to describe something then you cannot claim what you have omitted to include in the frozen final specification. You have to start a fresh application for the new matter, if it’s still possible to patent the new matter. But the final application can consolidate the information in all of the prior filings into a single, final presentation.

As a bonus, if applicants pursue the route of making a replacement filing at the end of the priority year, then they will be able to extend the term of patent protection by a further year.

This system is available equally in Europe as it will be available in the United States. These provisions are, in fact, a feature of the present US law. While this procedure is available in the United States today under the existing law, it is an option. The alternative still exists today of relying on entitlement as a first inventor and waiting up to one year before addressing the exercise of reducing the invention to a written disclosure.

But opponents of the new system will argue that being encouraged to file even multiple, partial, “sloppy”, patent disclosures during a priority year is more onerous than the luxury of being able to avoid making a patent filing for up to one year after an invention is initially conceived. Against this criticism must be balanced the advantages of adopting an absolute world novelty standard as between strangers for a new US patent law.

So far this article has addressed the steps an applicant must take in order to prevent the public disclosure of an invention or the filing of a competing application by another from prejudicing their right to obtain a US patent. First-to-file deals with the issue of competing applications and the timing for when an applicant must act. However, the pending patent legislation in S515 will also change the types of public disclosures which have to be beat (by filing or publicly disclosing an invention) in order for an applicant to preserve their patent rights. This issue is properly identified by the title “Novelty Standards”.

Novelty Standard – Present US Law

A largely unappreciated issue is not the risk of collision of applications at the patent office as creating a race to file early, but a change in principles as to what constitutes a “novel” invention that can be patented in the United States. Presently the bars to patenting in the US are that the invention must never have been:

1) described in a printed publication issued anywhere in the world
2) in public use within the United States, or
3) on sale within the United States

more than twelve months before the filing of the application in the United States.

Public use or offers for sale occurring outside of the United States do not count. Disclosures occurring anywhere that do not qualify as a printed publication (now interpreted to include electronic publications), or as public use or offers for sale do not count as well.

The full present US patentability requirements may be found here:

http://frwebgate.access.gpo.gov/cgi-bin/usc.cgi?ACTION=RETRIEVE&FILE=$$xa$$busc35.wais&start=219166&SIZE=11270&TYPE=TEXT

By way of contrast, the new law proposes that anything made “available to the public” anywhere in the world in any manner will give rise to a patent bar.

These novelty criteria are at in addition to the stipulation that, if someone else files for and claims the same invention then you must establish that as between yourself and the other party, that you are the first inventor. And if someone else publishes a description of the same invention within the one year grace period preceding an applicant’s filing date, then the applicant must establish that the applicant conceived his invention before the publication of such disclosure.

Combined Effect of Existing Law

The total effect of the existing law is, if you are a first inventor, then you have one year to delay your own filing from the date that you or anyone else first releases the invention to the public in a manner that destroys the invention’s novelty. If such a public disclosure by someone else does occur in the year preceding your own filing, then you must satisfy the patent office that you made your invention before the release of such public disclosure. Otherwise you could not possibly be the first inventor.

The point is that under the present system, if you are first to invent, then you don’t have to file anything at the Patent Office as long as your eventual filing occurs within less than one year of any of the above three types of disclosures. (There are other issues relating to “diligence” in reduction to practice when you are competing with someone else’s filing).

So long as you file your application within one year from your date of conception, you cannot lose your right to obtain a US patent. This is the major advantage of the existing first-to-invent system. This benefit exists irrespective of the type of public disclosure or activity that would otherwise invalidate a patent application.

Patent Novelty Requirements - New Novelty Standard

The proposed first-to-file system is modeled in part on the patent laws presently applying in Europe. The primary objection of critics is that they oppose the concept of a “race to the patent office”. There are two reasons for such a race to arise under a pure, European style, first-to-file, absolute world novelty system. One reason is the necessity for an applicant to file an application before another inventor files an application for the same invention (a rare occurrence). Another reason is to file before there is a public disclosure that destroys the secrecy of an idea. Under the European style, first-to-file, absolute world novelty system, a concept must be a secret at the time of filing in order to obtain a patent.

In conjunction with switching to a first-to-file system, the legislation before Congress will also change the novelty requirements.

According to the legislation before Congress the novelty requirements for obtaining a patent will be changed so that if someone else makes the invention “available to the public” anywhere in the world, then it will then be too late to file for a patent in the United States, cf section 102(a)(1)B. This is called “absolute world novelty”. You can be defeated not simply by someone else filing first, but also by someone else making the invention “available to the public” anywhere in the world in any manner. The old novelty bars of described in a printed publication, or in public use or on sale in the United States are still present, but they are no longer limited to the United States. With the exception of “on sale”, these new novelty requirements appear to be subsumed in the expression: “available to the public”,

The person who makes the invention “available to the public” may be the second inventor, but their publication will spoil your right to get a patent unless you meet the new filing or disclosure requirements under the new legislation. (There are further aspects of these disclosure requirements concerning enablement requirements that need to be addressed separately).

Public Disclosures from Differing Sources - “Self-originating” grace period

The US patent law reform package adopts absolute world novelty with certain special additional provisions. Those provisions treat public disclosures in two categories. Public disclosures can originate from two sources: the actual party who is applying for a patent and from a third-party acting independently of the patent applicant. Addressing the second case, such a third-party may choose not to file for a patent. In fact, this could happen on more occasions than the incidence of having two parties file for the same invention. People make public disclosures of their own ideas all the time without thinking of patents. They automatically, immediately, lose their right to obtain a patent in Europe. Perfect examples are professors at universities who give public addresses on their research. But the proposed US patent law treats this situation differently.

Under the proposed US law the patent applicant himself may make a public disclosure and not be prejudiced by that disclosure so long as they do not delay more than one year in filing a US patent application. There are other dangers to delaying a filing, but at least this type of disclosure is excepted.

Because of the existing one-year US grace period, under the existing law your own disclosures made within that year will not count against you. Combined with the first-to-invent test for patent entitlement, Americans interpret this as a license to delay their patent filings for at least up to one year from their date of invention, and possibly further if no public disclosures have occurred. And if they are indeed a first inventor (which you cannot know for sure) then you will be safe.

This modified “self-originating” grace period under the new law is part of a compromise intended to make a first-to-file, absolute world novelty system more palatable to the American public. This self-originating grace period is similar in one respect to the existing grace period: it protects the applicant from negative consequences when they disclose their own invention publicly before they file, either by way of, for example, an announcement or through public testing. This provides flexibility for a person who makes an invention and either intentionally or accidentally discloses it publicly before they file for a US patent.

Americans taking advantage of the self-originating grace period under the proposed new law will simultaneously lose their right to obtain a patent in Europe. Europe does not provide such a grace period. The moment that an inventor discloses his invention so as to make it “available to the public”, he will destroy the secrecy of his own idea. This terminates the ability of an inventor or anyone else to obtain a valid patent on that idea under the European system.

Nevertheless, the incorporation of the sheltering feature of an applicant-originating grace period into the new US patent law reform proposals goes part way towards softening the impact of a switch to the new system.

Public Disclosures from Third Parties – Key feature of Absolute Novelty

But the new system does not protect applicants against independent disclosures by third parties. If someone else, acting independently of a subsequent patent applicant, discloses an idea publicly, either by way of an announcement, a published paper, or simply through use of an invention in a public manner, then the rights of an inventor who subsequently files to obtain a patent will be terminated. Such inventor under the US proposed law will be subject to the novelty requirement of “absolute world novelty” at the time of filing his application. If someone else has broken the secrecy of the idea, it will be too late to file to obtain a patent in the US under the proposed regime. To this extent, US inventors will be under pressure to file early.

Balancing Considerations

A primary complimentary feature of an absolute world novelty patentability requirement is that anyone who wishes to destroy the right of another to obtain a patent on an inventive concept merely has to disclose that inventive concept in such a manner as to make it “available to the public”. The disclosure must probably be sufficient to enable others to adopt and exploit the invention. But it will not be necessary under such a system to file a patent application if an inventor’s concern is merely to ensure that others do not obtain a patent.

To this extent the proposed patent law will import into the scheme of the nation’s patent regime this advantageous feature of adopting an “absolute novelty” standard for patent entitlement.

Conclusion: Switching to a First-Inventor-to-File System

The opening question posed was to query the source of the existing anxiety regarding a switch to a first-inventor-to-file system. The link quoted at the beginning argues that many ideas end-up as dead ends. It argues that it would be wasteful to expect inventors to file multiple provisional applications for such dead-end concepts.

Business startups will be expected under the proposed law to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood. Particularly small and start-up businesses will, due to their limited financial resources, lose-out on obtaining valuable patent protection on inventions for which applications will not, or could not, reach the USPTO in time to beat-out a public disclosure by a third party.

The counter to this argument is that most valuable new ideas that can support valuable patent rights should be recognizable at the time that they are conceived. Nobody wishes to see a patent system that forces persons to file patent applications for bad ideas. Inventors are expected to filter their numerous ideas and select the ones that justify an attempt to obtain a patent. Essentially, opponents to the new system argue that inventors should be allowed one year to ponder and conclude that an idea is worth the expense of initiating a patent filing.

Proponents of a first-to-file system will point out that an applicant can start by filing an initial application as a US provisional filing, and then file further supplemental applications over the following year, consolidating all of these applications into a final application at the end of the year. Provisional applications need not be complete; in fact, they can be highly informal. This procedure will not only preserve rights under the proposed US law, but also preserve an applicant’s rights to obtain patents in foreign absolute novelty countries around the world.

The other advantage of first-to-file, coupled with absolute novelty is that parties who previously filed applications “defensively” simply for the purpose of preventing others from obtaining a patent will be able to follow the simple expedient of publishing an idea. Then no-one else will be able to obtain a patent for the same idea. This is a major advantage of an absolute novelty system.

The truth of concerns of both sides in this debate will be left to the reader.

David J French
Ottawa, Canada
January 31, 2010
www.CanadaPatentBlog.com     

                                                                      Part I
 

This first section is part of a multi-part paper addressing the challenges presented by the American patent system.  The first part is historical.  The second part, to follow, addresses proposals pending before Congress in 2009 to improve the operation of the American patent law in the 21^st century. A further part will provide a comparative analysis of the experience of Europe and Canada with the principles of “absolute novelty”, more precisely “absolute world novelty”, adopted in those jurisdictions in 1978 and 1989 respectively.
 

                                                The Patent Crisis of the 1830s1
 

            In the 1830s, the United States was undergoing a patent crisis.  It is not the same patent crisis that it faces today, but something can be learned from what occurred in those most interesting years.
 

The Patent Act of 1790
 

            On April 10, 1790, President Washington signed the first patent statute into law.  The first patent statute did not create a Patent Office. It directed applicants to file a petition for a patent with the Secretary of State. Then the Secretary of State, the Secretary of War, and the Attorney General were to determine if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent.         
 

            The first officers given this duty were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. They called themselves collectively the “Commissioners for the Promotion of Useful Arts,” or the “Board of Arts,” although others called them the Patent Commission or Patent Board.
 

            The Patent Act of 1790 did not satisfy applicants, and it did not satisfy those who were appointed to administer it. Applicants did not like the strictness with which the Patent Board determined who should and who should not receive patents. There was no appeal from the discretion of the Patent Board. The members of the Patent Board had high positions in the Government and did not have sufficient time to spare to run the patent system.  Thomas Jefferson wrote a letter years later in 1813, stating that the investigations of patent applications had required more time than the members of the Patent Board could spare from their higher duties and that the applications had required a great deal of time to understand and treat with justice.
 

            In a 1792 letter to Dr. Hugh Williamson, the chairman of a congressional committee to revise the patent law, Jefferson wrote that it distressed him to render crude and uninformed opinions on valuable and important rights without being able to devote the full attention that the petitions deserved. He drafted a bill to reform the patent law on December 1, 1791, and discussed it with Dr. Williamson.  Mr. Jefferson’s bill would have eliminated all examination and made the Secretary of State the registrar of patents, with determinations of patent validity to be made by the courts.
 

           While Mr. Jefferson’s bill as written was not introduced into Congress, some of its provisions were incorporated into a bill that was passed as the Act of February 21, 1793. It is likely that the primary reason for the Act of 1793 was not the dissatisfaction of inventors but was the inability of the Patent Board to administer the Act of 1790 while carrying out their other duties.
 

The Patent Act of 1793
 

            The Act of 1793 continued in effect, with only relatively minor changes, through 1836.   Meanwhile, the industrial revolution in America was well begun under this act, with all of its shortcomings.
 

            The Act of 1793 went from the extreme of rigid examination to the opposite extreme of no examination at all. The Patent Board was abolished. The State Department was to register patents, and the courts were to determine whether the patents were valid after they had been granted.  The State Department could not refuse to issue a patent.  If a proper description and drawing were submitted, a model supplied, the proper allegations made in an affidavit, and the proper number of witnesses supplied, a patent would be issued.
 

            About May 12, 1802. Dr. William Thornton was appointed as a chief clerk eventually designated as a Superintendent to be in charge of the patent work. When a patent was demanded, he was in the habit of doing a cautious examination of all that had been done in the same field before the receipt of the application.  He recognized that these examinations were not required by law and were more duties of conscience than of office. He knew that the applicants did often not receive his resulting cautions with thanks, but he considered it proper to guard against deceptions.  Inventors may begin by deceiving themselves as to the originality of their inventions, and end by deceiving their fellow citizens. He could not refuse a patent for lack of novelty, but could point out that lack.
 

            There was no requirement that the applicant claim specific features of his device as the novel part of his invention. But Thornton still examined applications, comparing them with prior patents and with the large library of technology books kept for the purpose. When he found a good reference to anticipate an invention, he would write to the applicant, explaining the reference and pointing out how limited the patent on the invention would be if it were allowed to issue. Then, if the applicant still insisted on his patent, Dr. Thornton would write across the back of the issued patent the identity of the known references.  If Thornton convinced the applicant to withdraw his application, he could return the payment (if the money sent by the applicant had had not already been paid into the Treasury).
 

            On March 28, 1828, Dr. William Thornton, Superintendent of the Patent Office since 1802, died at his home in Washington, D.C. Upon Dr. Thornton’s death Dr. Thomas Jones was Superintendent of the Patent Office for two years, from 1828 to 1830, when he was succeeded by Dr. John D. Craig, who remained in office until 1835.
 

            The first annual report on the condition of the Patent Office was issued in December 1829 by its then new Superintendent, Dr. John D. Craig.  An examination of the record shows that Dr. Craig accomplished a lot during his tenure, but he was arrogant, subject to rages, disagreeable to patent applicants and their agents, and was a domineering tyrant toward the subordinate employees in the Patent Office.
 

            By 1834, Congress was investigating the operation of patent office.  In testimony given to a congressional committee Dr. Craig said that he did not take the trouble to read specifications. He believed interferences could occur only between applications that were filed or put in condition for allowance on the same day, which virtually never happened. Five years into his tenure, Dr. Craig had never submitted any applications to arbitration for interference. Craig believed that if an application was filed with all the proper papers and with the fees paid, a patent should issue, even if its contents were nonsense. The Act of 1793 intended that the courts should sort out such matters, not the Patent Office, and Dr. Craig had no intention of doing more work at the Patent Office than the law required.
 

            The results of the investigation of the patent office and Dr. Craig were presented on March 15, 1834 by Mr. Aaron Dayton to the Secretary of State.  Mr. Dayton found that Dr. Craig had indeed failed to declare interferences where it should have been done, that he had discontinued keeping the Caveat Book without which it would be impossible to carry out his duties properly, that he had unnecessarily and imprudently allowed correspondence of the office to be destroyed, that he had given applicants incorrect information from a misunderstanding of the law, and that he had been inattentive to duty in not reading specifications before issuing patents.  The Secretary of State notified John D. Craig that he was dismissed. This was said to be because of his expressed belief that the rule forbidding clerks to receive money for assisting applicants was tyrannical.
 

            Henry Ellsworth applied in January 1835 to be Commissioner under the Spanish treaty but instead was appointed Superintendent of the Patent Office.  He took the oath of office on May 11. One of his early reports suggested that some revision to the patent law should be made to eliminate the need for signatures from so many officials, including the President. He noted that 50 patents were then awaiting the signature of the President.
 

            John Ruggles was a lawyer who had been elected to the Maine legislature, rose to be Speaker of the Maine House of Representatives, and was later a Justice on the Maine Supreme Court. In 1835, he was appointed by the Maine legislature to be a U.S. Senator from Maine.
 

            Based upon his own interest in obtaining a patent, on December 31, 1835 Senator Ruggles made a speech to the Senate to propose that a Senate Patent Committee be set up. He said that he had recently had business to transact at the Patent Office, and while there he had inquired into the causes of delays in issuing patents. His inquiry had revealed to him a number of defects in the patent laws, which had not been amended for nearly half a century except for extension of rights to certain foreigners.
 

            Patents were issuing at the rate of 800 a year, with an increase to 1,000 a year expected within a year. Back when 50 patents a year were issued, it may have been appropriate to have each patent signed by the Secretary of State, the Attorney General, and the President of the United States, but by 1835 it took three months to get all of the necessary signatures to issue a patent.
 

            Because the Patent Office officials had no discretion to refuse a patent for an invention that was not new or useful, applicants had been known to copy inventions on display in the model room and to request and receive a patent.  This occurred despite knowledge of both the applicant and the Superintendent that the invention was not new. When the resulting patent was divided into license rights by states and counties, and the licenses for the fraudulent invention parceled out to ignorant buyers, who were shown documents signed by the President with the Great Seal of the United States, significant money could be made. Such fraudulent sales of licenses were estimated to amount to half a million dollars a year.
 

            The proposed committee was set up, and Mr. Ruggles was made its chairman.
 

            Mr. Ruggles made a formal inquiry to the Secretary of State for information on how the Patent Office should be reorganized. On January 29, 1836, Mr. Ellsworth as the then Superintendent of Patents wrote a long responsive letter to Secretary Forsyth, setting forth all of the defects and suggesting corrections. This letter was apparently derived from the suggestions that one Charles Michael Keller, a patent office machinist, had made to Ellsworth.  Keller, then 25, had been working at the Patent Office since 1822 where he even as a boy had replaced his father as a machinist when his father died. By 1835 he was the longest serving employee in the Patent Office.  Keller had been assigned the duty of advising applicants concerning requirement for novelty of their inventions, failing which their patents would be invalid and unenforceable even though granted. 
 

            The Act of 1793 had intended the Patent Office to issue any patent properly applied for, and to leave it to the courts to sort out who should have what rights. But matters had reached such a stage that, while 800 patents a year were being granted, there were currently more than 100 suits pending in court regarding the rights of patentees. Mr. Ellsworth predicted that such suits could only increase until some methods were provided to stop the frauds now openly practiced on the patent system.
 

            The issuance of patents to pirates was a common occurrence, and indeed the Patent Office furnished every facility to aid them. Copies of models of previous inventions were made in the model rooms and used to demand patents for similar inventions next door in the Superintendent’s Office. Even when an applicant was told that his invention was a direct copy of a previous invention, as had happened the previous week, he demanded and obtained his patent for the same invention. With the Great Seal and the signature of the President on his pirated patent, the pirate patentee could sell state, town and county rights all over the country to people who thought that the Great Seal and the signature of the President actually meant that the patent was valid. The present system provided a rich harvest for lawyers, but ruin for many an honest mechanic.
 

            Jefferson had suggested in 1813 that the head of the Patent Bureau be given discretion to prevent the issuance of a patent which interfered with an earlier patent or which was destitute of novelty. Mr. Ellsworth repeated the suggestion. He wanted scientific men to be induced to take positions in the Patent Office as Examiners of Patents, to have a suitable library to aid them in their examination of applications to detect interference with other patents or want of novelty. Mr. Ellsworth had recently found in a German book a complete anticipation of a recently issued U.S. patent. He wanted the Patent Office to have a good library to aid in examination of patents.
 

            In a comparison of the merits of the United States patent system with that of England, Mr. Ellsworth pointed out that in the last 60 days he had issued more than 200 patents, which was greater than the annual average in England for the last 10 years. England allowed patents for newly imported inventions, but Mr. Ellsworth considered that the reading spirit of the people of the United States was such that it was evidently better to confine patents here to new discoveries. The temptation to patent in this country was such that it might be well to compel each patentee to publish, if not his entire specification, at least his specific claim of novelty.
 

            Mr. Ellsworth recommended that a small portion of the surplus money obtained from patent applications be used to publish all specifications of patents, or at least the claims under the patents. If the material thus published were distributed to the different states, the public would be well capable of guarding against spurious patents.
 

            Working with this letter and their own ideas, Senator John Ruggles and Patent Office machinist Charles M. Keller labored together late into the night for many weeks to write a new patent law. Mr. Ruggles, as a former Justice of the Maine Supreme Court, taught Mr. Keller a new respect for jurisprudence that led later to a career in patent law. Mr. Keller, experienced for years since childhood in dealing with inventors visiting the Patent Office, must have taught Mr. Ruggles some of the intricacies of dealing with inventors and inventions.
 

            By late April 1836, the select committee had prepared its report on the Patent Office.  After reviewing the history of foreign patent laws and of the current U.S. patent statute, they discussed the frauds being committed because of the inability of the Patent Office to refuse applications without merit. They recommended examination of patent applications and the raising of the new organization above a mere clerkship.
 

            The select committee presented a draft statute to establish a Patent Office under the Department of State, to be headed by a Commissioner of Patents, to have an extensive library of scientific works and periodical publications, and, in addition to the necessary clerks, draftsman, machinist and messenger, to have an examiner of patents, the first anywhere in the world, to read patent applications, compare them with what was known in this country or contained in a printed publication anywhere prior to the applicant’s discovery, or in public use or on sale apart from cases with the applicant’s consent prior to the application, and to reject those applications in which the invention was not new.
 

            A statute as requested by the select committee was passed by Congress and signed into law on July 4, 1836. In the first part of the year 1836, under the old system 625 patents were granted, while in the last of the same year, under the new law, there were only 97, more than two- thirds of all the applications made being rejected for either want of novelty or usefulness.
 

 This statute, sixty years to the day after the original Declaration of American Independence, was a second such declaration. Some historians have said it was the most important thing to happen in the country between the War of 1812 and the Civil War. The first Declaration of Independence led to America’s political independence from England. This second Declaration led to America’s industrial independence from Europe. It gave America such an overwhelming advantage in national industrialization that European nations did not at first understand what had happened.
 

            American industrial progress was attributed to the native mechanical abilities of Americans. But as Abraham Lincoln was later to say, “the patent system added the fuel of interest to the fire of genius.” Now, much more than ever before, it was possible for an inventive genius to profit by making and promoting an invention, which of course induced men to do so. By the beginning of the twentieth century, most of the industrialized countries in the world had copied significant parts of a statute which was written by a lawyer with an interest in his own invention and by a boy genius who started working in the Patent Office because his father could not afford to give him a good formal education and had to teach him by example.
 

David J. French
Ottawa, Canada
www.CanadaPatentBlog.com