Chemical Literature, Volume 12, Number 3, Fall 1960 Page: 4
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Dean F. Gamble, Secretary
How Can The Chemist Help The Patent Lawyer
Thornton F. Holder, Presiding
1. INTRODUCTORY REMARKS. Thornton F. Holder, Diamond Alkali Co.,
300 Union Commerce Building, Cleveland 14, Ohio
With a mounting volume of industrial research in the United States producing
a tremendous surge of new technology, the efficient use of our patent
statutes to obtain both proprietorship and negative protection is becoming a
real problem. Just as the technical people who produce these results are a
scarce commodity, the patent attorney to take the results to the Patent
Office is becoming equally so. This Symposium examines the problem of
how the patent attorney and the chemist can work efficiently as a team to
their mutual advantage and to the advantage of those who pay for research.
2. PATENT BACKGROUND AND CHEMICAL PROPRIETORSHIP. Ellsworth
H. Mosher, Stevens, Davis, Miller & Mosher, Munsey Building,
Washington 4, D. C.
The patent statute is based upon the statute of monopolies of James I,
we have inherited our legal background from our British parent. Because
of the importance of patents to the development of the nation, an
exception was made which continued the patent monopoly in a limited
fashion for inventions.
The patent is a contract between the inventor and the government,
whereby the inventor discloses his invention and the government grants the
right to exclude others from practice of the invention for a limited time -
in our case, 17 years. This was recognized as early as 1790 by President
Washington and his associates and was referred to in his first annual address
The training of a patent lawyer encompasses hardly less than 6 years,
usually more. While the profession is rewarding, the long course of training
tends to make it a rather limited opportunity for the ordinary student.
Thus, ways and means are sought to use the nation's supply of patent lawyers
more efficiently. We are examining the possibilities of asking the
chemist to assist the patent lawyer in various ways compatible with the
chemist's profession. Obviously, cooperation between the lawyer and the
chemist are essential to success in such a venture.
3. THE CORPORATE CHEMIST HELPS THE PATENT LAWYER. Bruce L.
Fayerweather, Patent Department, Dow Chemical Co., Midland, Mich.
It has been established by long practice that a corporate patent department
which inherently contemplates close association between chemists and
chemically-trained patent lawyers is an efficient tool to assist the corporation
in securing proprietorship of inventions arising from its research and
in protecting it in the practice of results of this research. To secure adequate
patent coverage it is essential that clear, specific, understandable
data flow from the chemist at the bench to the patent lawyer charged with
obtaining patent coverage. Equally important is the feedback from the
lawyer to the chemist especially where, from the patent lawyers standpoint,
significant gaps or holes in the data are found which might make it difficult
to obtain appropriate patent coverage.
One expedient to improve the output of such individuals has been to employ
a liaison chemist, whose job is to study laboratory notebooks, consult with
the chemist, point out additional data that are essential, prepare a preliminary
report, and then consult with the patent lawyer - turning over the
organized data to him. This individual, especially after a period of training
becomes sufficiently skilled to prepare a preliminary draft of a patent
application which the Patent Department attorney can amend, correct, enlarge
and complete. Thus, the time of the attorney is used more efficiently.
In addition, the patent liaison man is an essential trainee for the patent
4. THE CHEMIST ASSISTS IN LICENSING ACTIVITY. Ernest V. Haines,
Contract and Licensing, Esso Research and Engineering Co., P. 0. Box ,
243, Elizabeth, N. J.
An important use of patents. employed by many corporations is the granting
of rights to others to practice the inventions of the patents or, obtaining
rights from others for one's own company or client. Perhaps the function
of the chemist in this area is not as vital as in the preparation and possible
prosecution of patent applications, but it is important, especially where
complex chemical technology is involved. Most patent lawyers engaged in
protecting chemical clients are chemically educated and oriented. Attorneys
engaged in licensing activities often require specific assistance of chemical
experts. Here the chemist can assist by guiding the attorney as to the validity
of technology, the possible breadth of patents to be licensed, and in
interpretation of prior art which may affect the breadth of patents, and thus
the magnitude of the license fee.
Many license contracts come up for interpretation long after their execution
since they are usually examined at such a ~ime by strangers to the
original negotiations. The chemist can be even more useful here in assisting
in interpretation, especially as to the breadth of contract coverage. Of
equal importance with other points mentioned, the chemist can materially
assist the patent lawyer in determining whether a license is required under
a given patent.
5. THE PHARMACEUTICAL CHEMIST AND THE PATENT LAWYER.
Lawrence D. Dibble, Adams, Forward and McLean, 425 Thirteenth St.,
N.W., Washington 4, D. C.
In a sense patent practice in the area of pharmaceutical chemistry is a
specialty within a specialty. To be sure, current requirements of' the Patent
Office to prove the validity of a chemical invention are highly organized
and somewhat formal. However, to prove to the Office the existence of a
pharmaceutical invention even more stringent rules can be applied.
For example, a potential pharmaceutical is hardly a candidate unless it
can be shown to some degree that the proposed composition of matter,
method, process or improvement actually does do what the inventor or his
DIVISION OF CHEMICAL LITERATURE
AMERICAN CHEMICAL SOCIETY
Abstracts of Papers Presented at
New York, N.Y., September 11-16, 1960
Karl F. Heumann, Chairman
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American Chemical Society. Division of Chemical Literature. Chemical Literature, Volume 12, Number 3, Fall 1960, periodical, Autumn 1960; Philadelphia, Pennsylvania. (digital.library.unt.edu/ark:/67531/metadc5736/m1/4/: accessed September 24, 2017), University of North Texas Libraries, Digital Library, digital.library.unt.edu; .