Definition of Invention in Patent Law*

DOIhttp://doi.org/10.1111/j.1468-2230.1944.tb00987.x
Publication Date01 Nov 1944
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 at 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.
In 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.
I

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