The Definition of Invention in Patent Law
| Date | 01 July 1944 |
| DOI | http://doi.org/10.1111/j.1468-2230.1944.tb00974.x |
| Published date | 01 July 1944 |
INVENTION
IN
PATENT LAW
I
I3
THE DEFINITION
OF
INVENTION IN
PATENT LAW
1
ATENT actions are usually long and costly.’ The law is recondite:
the facts are highly technical and often obscure. Copious expert
evidence is called to explain abstruse scientific matters to a non-
technical judge. The complexity is increased by the almost inevitable
attack on the validity
of
the patent for “lack
of
invention.”
The following discussion deals with the definition of invention and
contains a suggestion for reducing the degree of uncertainty in deciding
_this subtle and intractable issue which may be regarded as the arch-problem
of patent law.
I1
P
Both copyrights and patents are monopolies, based on “intellectual
property,” but otherwise they are dissiniilar.
The law of copyright, with majestic indifference to merit, gives protec-
tion alike to the most impassioned poetry and to the sheerest doggerel.
If
an author has produced something new, he
is
entitled to protection
irrespective of its intellectual or artistic value.
The law of patents does not adopt the same principle. An inventor
is entitled to a monopoly of sixteen years for “any manner of new mapu-
facture” within the meaning of the Statute of King James, and by
a
long
series of judicial interpretations it has become settled law that a man
cannot have a valid patent for something which is merely different from
existing knowledge. To the requirement of novelty (i.e. difference) there
is
superadded the elusive requirement of “subject-matter
”
or “inventive
ingenuity.” This is sometimes expressed by saying that a patentable
invention must be novel
de
juve
as well as
de
facto;
Frost,
Lettevs
Patent
for
Inventions,
1912,
I, p.
38;
see also p.
91
:
“For a patentee to succeed
in upholding his patent,
it
is necessary for him to show, not merely newness
in the sense of doing a thing which has not been done before, but he must
show newness in the shape of novelty by producing a thing which,
it
may
be presumed, requires some exercise of mind that could properly be
called invention.”
Thus there is a distinction between
(a)
mere improvements such as
could be made by the exercise
of
constructional ability or the expected
knowledge of the hypothetical person “skilled
in
the art ”-the techno-
logical equivalent
of
the “reasonable man”; and
(b)
changes which “rise
to the dignity of invention.” Such inventions are not obvious to the
person skilled in the art and can
be
regarded as worthy of protection
by monopoly.
In the
U.S.
case,
Johnson
v.
Pennsylvania,
72
O.G..
594,
we find:
“The line to be marked
is
that which separates mere constructive ability
from inventive capacity and as the lowest order of invention is something
more than mechanical skill, so the highest degree of mechanical skill is
sometting less than invention
. . .
the discreet judgment of a competent
constructor and not the higher faculty
of
creation which distinguishes
the inventor.”
See “Patent Injustice,”
by
K.
E.
Shelley,
K.C.,
Trans. Chart. Znsf.
of
Patent Agents,
61
(1g42-3),
p.
17.
2-3
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