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The Patent Act of 1952 and the testimony of IJ Fellner

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The following involves the testimony of IJ Fellner. It is provided in support of later Examiner articles that analyze how the Patent Act of 1952 was enacted:

Statement of I. J. Fellner, Manager Patent Department, Dr. Salsbury's Laboratories, Charles City, Iowa:

Mr. Fellner objected to the removal of a phrase from section 101 of an earlier version of the bill (H.R. 9133).
The phrase reads:

"An invention in the nature of a discovery as embodied in a new and useful art, machine, manufacture or composition of matter, or new and useful improvements thereof may be patented." He goes on to state: "I feel that the deletion of this paragraph in the old version might give rise to certain implications, namely, that the invention in any event must be in the nature of some kind of mechanical structure, but that the discovery, for instance, of a new principle of nature which can be embodied in some useful art, machine, or composition of matter that such discovery might not be patentable."

Mr. Fellner then went on to discuss the Funk Brothers Supreme Court case, and expressed a desire that language be put in place so that such a decision would not occur again. Referring to the stricken language (pg. 118): "This language would make it clear that if the heart of the invention lies in the discovery of a principle or law of nature, such a discovery might be patentable if it can be embodied in a new and useful application."

He goes on to suggest reintroducing the old language " that it be made clear what we understand by invention, and have it specifically understood that where a discovery has been made which involves a natural principle and is useful and practically applicable, but such application of the newly discovered principle of nature does not in itself call for inventive ingenuity, that it be then likewise recognized that an invention has been made."

Although significant, Mr. Fellner's view of the bill with and without the additional verbiage is not
as important as what occurs in the following exchange:

(pg. 118)

Mr. Fellner "Now most of these inventions representing the discovery of new effects in known compounds would be absolutely nonpatentable, under the Funk brother decision."
Mr. Bryson. "Are they patentable today?"
Mr. Fellner. "They are patentable..." Mr. Fellner goes on to explain that while the patent office might accept such inventions, some courts might not recognize them as an invention worthy of a patent.
Mr. Willis. "Is that consistent with the statement just made that they are patentable today?"

Mr. Fellner futher elaborates (pg. 119) that the patent office might accept such inventions but courts might vary in their opinions on the matter. He again mentions the Funk Brothers decision. And then a little later:

Mr. Fellner...."In other words, the case where the heart of the invention just resides in the discovery, but the practical application thereof suggests itself and does not call for any inventive genius is not conclusively covered. In other words, if the essence of the invention is merely a discovery of a law of nature it would seem from the Supreme Court decision that it might be construed as not being an invention."

Mr. Willis ..."Well I thought you were satisfied with the present law, and that your only objection was that the new bill did not embody, that is, the language in H.R. 9133 was omitted, that was your quarrel with the pending bill?"

Mr. Fellner. "I do not want to broaden it: I just want to have it clarified. And I would like to say -"

Mr. Willis. " I think it should be clear."

Mr. Fellner." I certainly would like to see clarification on the point, where the invention resides in the discovery of a law of nature, or a principle of nature, where such a discovery can be practically employed, where it has some useful application and can be embodied in something like medicine, whether it is art or a treatment.

Such things, we think, should be patentable. However, I have grave doubts whether the new language even used in connection with the definition under under section 100 (a) would take care of that, because the definition alone might give rise to differing interpretations. The old section provides a clarifying statement, the old section in H.R. 9133, I mean.

Mr. Bryson. "There is no intention to change the law as it is presently written: the purpose is just to make it clearer."

Mr. Fellner. "I understand that, Mr. Chairman. I merely think that the original wording as set out in H.R. 9133 is very much clearer- I might say, modifies the bare definition in the pending bills by making unequivocal that which might now be merely inferrible."


Mr. Willis. " You would prefer, or rather advocate an an amendment to carry out what you have in mind?"
Mr. Fellner. "That is what I am actually trying to do."
Mr. Willis. " But I do not think that is what this particular bill is intended to accomplish."



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