Learn about Life in the 1920s


Capable attorney, courage, and good judgment needed if inventor's struggle is to win success. A noted patent lawyer tells in this article how costly blunders in patent applications may be avoided.

CONGRESS' penny-wise and pound-foolish dealings with the United States Patent Office, resulting in unnecessary and interminable delays (P.S.M., June '30, p. 20), have thrown a monkey wrench into the machinery of American progress. But the inventor must not allow himself to be discouraged. While wrestling with the Patent Office, he should not permit his exasperation at the delays to divert his attention from the necessity of getting a good patent if his invention is to be worth anything to him and to the world.

First of all, he must make sure that the valuable part of his invention is not given away for nothing in his patent. My experience has shown me that more money is lost by inventions given away in patents poorly drawn by incompetent attorneys than is lost through the inventions stolen and delays at the Patent Office.

Take the case of Ben Hicks, a Virginia negro who can neither read nor write but who undoubtedly is an inventive genius. Some years ago he built a machine for removing the stems and dirt from peanuts. He obtained a patent on the device, but it failed to show the shaking of a trough, which held the peanuts, in such a way as to make possible the cutting of the stems by saws. So far as I could learn this patent was absolutely worthless because the machine shown in the patent without the shaking of the trough would have been useless. Manufacturers, seeing the value of the device, began to make it without paying Hicks royalties, or profits.

A few years later, another man, named Benthall, filed a patent application on a peanut stemming machine and showed the shaking trough. He received his patent and then sued the manufacturers who had been building the machines. Of course, Benthall's patent was held to be void by the court because Ben Hicks's device of the shaking trough had been in public use. Thus Hicks, who should have earned a fortune from his invention, received nothing. His invention was not stolen in any ordinary sense of the word, but his patent attorney was incompetent.

THIS attorney probably was responsible for a mistake which is made by most inventors and many attorneys who assume that the specification of the patent—the description of the invention —should be as sketchy as possible. In reality, the specification is the heart and soul of the patent. It should completely describe every detail.

Not long ago, an inventor applied for a patent on a system of refrigeration for railroads whereby an entire train, in effect, was made into a single refrigerator. The Patent Office found that the only novel part was a new form of valve for connecting the various refrigerating units.

NOW, in this case a specification describing fully every detail of the mechanism secured for the inventor a valuable patent on a part of his invention which he regarded as unimportant or even obvious. Other inventors long ago had solved the part of the problem which he considered difficult, but they failed to see the other, apparently minor problem which he also solved. Before the law, the one small detail constituted the only new invention in this case.

But even if a patent has a good specification, it may give away the invention in the claims, which are the definitions of the invention.

A valuable invention in typewriters was given away in the claims by the attorney who handled the patent application. A man named Grundy, living in what now is part of New York City, had designed the first visible writing type-writer with what is called a vibrating ribbon; in other words, a ribbon which is normally out of sight or away from the printing line, but which rises to the printing line every time a key is struck so that the type will print in the usual way by means of the ribbon.

The attorney limited the claims of that patent to a typewriter which vibrated the ribbon by tilting the ribbon spools. Of course, no typewriter manufacturer wanted to tilt the spools, so the patent gave away, for nothing, the idea of the vibrating ribbon. If the patent had con-tained claims covering only the lifting of the ribbon to printing position, it probably would have brought in a royalty of a dol-lar a machine to a possible total of half a million or a million dollars before the pat-ent expired.

Other valuable inventions have been given away by poor business judgment. One of these was what is known as an accelerator for caus-ing rubber to vulcanize more rapidly and more effectively. Kratz, the inventor of this accelerator, thought it could be made only from expensive materials, and he or his employers decided not to patent it, although he read a paper describing it before the American Chemical Society and also sold experimental rubber tubes manufactured by means of its aid.

Later a chemist named Weiss discovered a method of manufacturing cheaply the same accelerator, and obtained patents both on the manufacturing method and on the use of the accelerator in vulcanizing rubber. Weiss's patent on vulcanization was held void, and the world received the benefit of Kratz's paper for nothing, although it has been estimated that the invention, on a royalty basis, would have brought in $3,000,000!

COURAGE is just as essential to the successful inventor as vision and imagination. The courageous inventor is not discouraged by the bad business judgment of those to whom he first tries to sell his invention. Some time ago the inventor of a new electric lamp for automobiles submitted his invention to one of the world's largest lamp manufacturing companies. This concern turned it down. But the inventor did not lose heart. He went to a leading automobile manufac-turer, who immediately saw the possibilities and made it the standard lamp on his cars.

This manufacturer naturally was not equipped to make the lamps himself. Armed with an order from the automobile maker, the inventor went to a second lamp company to have them manufactured, and sold it a small interest in his invention for $25,000. A third lamp manufacturer, learning of the success of the new lights on the cars, paid $40,000 for another small interest. By this time, the first lamp company repented of its decision and paid several hundred thousand dollars for the remaining rights!

THAT inventor is now a rich man because he refused to bow to the discouraging decision of the first business organization to which he took his invention. Other inventors have become wealthy by refusing to be put off by the first attorney they consulted.

One persistent inventor who originated what is called the motometer, a device

Four rules for a Successful Patent: An honest and capable attorney, good business judgment, an abiding faith in the invention, and, last, persistence in spite of discriminating Patent Office red tape.

indicating when the water in an automobile radiator is overheated, refused to be discouraged when several attorneys declined to take up his invention on a contingent fee, or profit-sharing basis. One attorney is said to have refused to handle it even on a fifty-fifty basis. But finally the inventor found an attorney willing to take it up, possibly on that basis, and the patent on the invention is believed to have netted several hundred thousand dollars in royalties.

That inventor was wiser than a chemist with a process for producing cheaply a rich but crude industrial alcohol, who was sent to me some years ago by a mutual acquaintance. I saw that his invention probably was very valuable, barring the chance of having been anticipated in some foreign publication, and barring the chance of an interference, or legal fight (P.S.M., July '30, p. 44), with a rival American inventor.

THEREFORE, I offered to handle the patent application for him and to try to sell the patent on a basis of twenty-five percent of the proceeds. He was unwilling to pay more than five percent, and could not get any other attorney to offer better terms than mine. That chemist is now a poor man. Probably his invention is of no value at present because in the meantime the same ground has been covered by other inventors. Today I would not take his invention on any contingent basis.

But courage, persistence, and a willingness to deal liberally with a competent attorney are not enough. The inventor also must possess discretion. He must look before he leaps into a business deal. He must not allow the prospect of big profits to lead him to entrust his invention to irresponsible parties.

Take, for example, the case of a young radio inventor for whom I prepared a patent application not long ago. The invention seemed most remarkable. With only two tubes he was able to receive California broadcasts in his home, although he lived in New York City between two of the elevated railroads whose ironwork necessarily interfered with the reception. To tell the truth, none of us, not even the inventor himself, knew why the apparatus worked as wonderfully as it did. But of one thing we were sure, it did work! To enable me to prepare the proper specification, I had him experiment with modified forms of the device. These experiments threw sufficient light on the underlying principles to enable me to draft satisfactory specification and claims.

Before obtaining the patent, he tried, as is usually advisable, to dispose of his invention. He fell in with some plausible fellows who appeared to represent an enterprising new radio supply company. To them he sold what is known as an option—that is, they paid him a sum of money for the exclusive privilege to buy the invention outright at some future date.

Some months later, he was dumfounded to read in the newspapers that the district attorney was investigating the dealings of the company and that the postal authorities had denied it the use of the mails. Meanwhile, the promoters had sold stock to the public on what the newspapers said was a fraudulent basis, and as long as the option was in force this amounted to selling stock in my client's invention. The option is still in force, the company is still under investigation, and the young inventor is unable to dispose of his work to anybody else.

Finally, to win fame or fortune an inventor must be sure that his invention fits into the machinery of progress in his own day. It is just as fatal to be too far in advance of one's period and environment as it is to be behind the times.

An inventor may be so far in the lead that his invention for a while sits idly on what might be called the shelves of the museum of scientific curiosities, while other inventors, perhaps less original and far-seeing, receive credit for the inventive progress of the world.

As everyone knows, George Stephenson, the English engineer (1781-1848), is generally regarded as the inventor of the locomotive. But he did not build the first locomotive which ran on iron or other rails. Earlier inventors had produced steam locomotives which pulled trains, but their engines were so heavy that the rails often broke under them. Stephenson invented the combination, still in use, which increased the draft in the locomotive chimney so that a light engine produced sufficient steam to draw a train carrying enough passengers to pay the cost of pulling the train by locomotive.

WHAT Stephenson did was to turn the steam exhaust from the engine cylinders into the smokestack so as to draw more air through the fire, which burned more rapidly and brightly as a result. Stephenson was called a great inventor because his locomotive drew a heavy train, as trains went in those days, without breaking the rails. The earlier locomotives would not break our modern rails. In other words, they were ahead of their time, and for that reason their inventors are considered unsuccessful and unfortunate.

Even men commonly rated as successful inventors sometimes are unfortunate enough to make an invention so far ahead of its day that it is classed as a laboratory curiosity. Thomas A. Edison was one of these unfortunate inventors when he discovered what is known as the " Edison effect," an invention that forms the basis of the radio detector and radio amplifying tubes of today.

Long before Marconi or anyone else had sent signals by radio, in fact as early as 1884, Edison discovered that he produced an electric current, which scientists then could not explain, when he turned on the usual current through the filament of an electric light bulb if there was, inside the bulb, a patch of tin foil.

The unexplained current went from the tin foil to the usual conductors carrying the usual current. This bulb with its patch of tin foil was really what we now call a two-element radio tube; in other words, a radio tube without the usual grid. And we now know that the current is caused by the electrons which leave the heated filament and strike the tin foil. But any patent on that two-element tube or lamp of Edison expired before the invention was found to be useful in radio work or, for that matter, in any other kind of work.

ANOTHER unfortunate inventor who was too far ahead of his time was the marine architect who, in 1857 or 1858, designed the Great Eastern, the first steamship over 500 feet long. He invented and put into that ship the system of internal bracing which makes possible the modern steamers of 500 or 1,000 feet length. But the Great Eastern was a financial failure, and it was almost twenty-five years before the next steamer was built which needed such bracing. By that time all patents the designer had obtained had expired, and later designers used his system without paying him a cent in royalties.

The fortunate inventor is the one who is clever enough to meet the needs of his own day and lucky enough to fall into the hands of a skillful attorney. A striking example of this kind was the case of the man who obtained a patent on a fireproof safe having hollow walls and water-filled tubes of easily fusible metal placed within the walls. In a fire the metal tubes melted and the water became steam, forming a veil or curtain around the inner safe to keep off the great heat.

This inventor brought a suit for infringement against a man who filled the hollow walls of his safe with alum, a chemical compound containing sulphate of aluminum and almost half its weight in water, and he won the suit because alum, on account of its great water content, gives off steam when heated to a high temperature. The court undoubtedly was right in holding that the alum-filled safe-wall infringed the water-filled metal-tube safe-wall, but only a skillful attorney would be able properly to handle such a suit.

One inventor, who had patented a method of welding cast iron, found that people who ought to be called infringers could easily get most of the benefit from his invention without infringing the claims because the patent entirely failed to mention one important feature of the process. He asked me to obtain a reissue of his patent with a changed specification and with broader claims. I had to tell him that such a proceeding was hazardous, but on further study I found that the weakness of the patent could be overcome and the hazard of a reissue avoided by applying for a patent on the welded joint produced by his method.

FORTUNATELY the joint had not been in public use for two years nor had it been described in a publication during the two previous years, either of which would have prevented us from getting a valid patent, so the patent on the joint would be perfectly good so far as the law was concerned. The patent was obtained, and the inventor probably has made a fortune out of it since.

Every inventor, then, should hang these four points as a motto on his laboratory wall:

First, go to a capable and honest attorney and insist on a full specification, and claims which define the vital points of your invention.

Second, remember that selling an invention is a business proposition. Consider only far-sighted prospective purchasers and be sure they are honest.

Third, don't lose heart when the first prospective buyer or the first attorney you consult does not understand the possibilities of your invention.

Fourth, don't let the red tape and delays at the Patent Office discourage you. These disgraceful conditions doubtless will be rectified if all persons interested continue a country-wide agitation for the much-needed reforms by writing to their Congressmen and to this magazine or by protesting in other ways that will make an impression upon Congress.