United States v. Dubilier Condenser Corp.
289 U.S. 178 (1933)

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U.S. Supreme Court

United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933)

United States v. Dubilier Condenser Corp.

Nos. 316, 317, and 318

Argued January 13, 16, 1933

Decided April 10, 1933

289 U.S. 178




1. One who is employed to invent is bound by contractual obligation to assign the patent for the invention to his employer. P. 289 U. S. 187.

Page 289 U. S. 179

2. Where the contract of employment does not contemplate invention, but an invention is made by the employee during the hour of his employment and with the aid of the employer's materials and appliances, the right of patent belongs to the employee, and the employer's interest in the invention is limited to a nonexclusive right to practice a "shop right." P. 289 U. S. 188.

3. These principles are settled as respects private employment, and they apply also as between the United States and its employees. P. 289 U. S. 189.

4. No servant of the United States has by statute been disqualified from applying for and receiving a patent for his invention, save officers and employees of the Patent Office during the period for which they hold their appointment. P. 289 U. S. 189.

5. Scientists employed by the United States in the Radio Section of the Electric Division of the Bureau of Standards, while assigned to research concerning use of radio in airplanes, made discoveries concerning the use of alternating current in broadcast receiving sets -- a subject not within their assignment and not being investigated by the Section -- and, having with the consent of their superior perfected their inventions in the Bureau laboratory, obtained patents. Held, upon the facts, that there was no employment to invent and no basis for implying a contract to assign to the United States, or a trust in its favor, save as to shop rights. P. 289 U. S. 193.

6. The proposition that anyone who is employed by the United States for scientific research should be forbidden to obtain a patent for what he invents is at variance with the policy heretofore evidenced by Congress. P. 289 U. S. 199.

7. If public policy demands such a prohibition, Congress, and not the courts, must declare it. Pp. 289 U. S. 197, 289 U. S. 208.

59 F.2d 387 affirmed.

Certiorari, 287 U.S. 588, to review the affirmance of decrees dismissing the bills in three suits brought by the United States to compel the exclusive licensee under certain patents to assign all its right, title, and interest in them to the United States, and for an accounting.

Page 289 U. S. 182

MR. JUSTICE ROBERTS delivered the opinion of the Court.

Three suits were brought in the District Court for Delaware against the respondent as exclusive license under three separate patents issued to Francis W. Dunmore and Percival D. Lowell. The bills recite that the inventions were made while the patentees were employed in the radio laboratories of the Bureau of Standards, and are therefore, in equity, the property of the United States. The prayers are for a declaration that the respondent is a trustee for the government, and, as such, required to assign to the United States all its right, title, and interest in the patents, for an accounting of all moneys received as licensee, and for general relief. The District Court consolidated the cases for trial, and, after a hearing, dismissed the bills. [Footnote 1] The Court of Appeals for the Third Circuit affirmed the decree. [Footnote 2]

The courts below concurred in findings which are not challenged and, in summary, are:

The Bureau of Standards is a subdivision of the Department of Commerce. [Footnote 3] Its functions consist in the custody of standards; the comparison of standards used in scientific investigations, engineering, manufacturing, commerce, and educational institutions with those adopted

Page 289 U. S. 183

or recognized by the government; the construction of standards, their multiples or subdivisions; the testing and calibration of standard measuring apparatus; the solution of problems which arise in connection with standards, and the physical properties of materials. In 1915, the Bureau was also charged by Congress with the duty of investigation and standardization of methods and instruments employed in radio communication, for which special appropriations were made. [Footnote 4] In recent years, it has been engaged in research and testing work of various kinds for the benefit of private industries, other departments of the government, and the general public. [Footnote 5]

The Bureau is composed of divisions, each charged with a specified field of activity, one of which is the electrical division. These are further subdivided into sections. One section of the electrical division is the radio section. In 1921 and 1922, the employees in the laboratory of this section numbered approximately twenty men, doing technical work and some draftsmen and mechanics. The twenty were engaged in testing radio apparatus and methods and in radio research work. They were subdivided into ten groups, each group having a chief. The work of each group was defined in outlines by the chief or alternate chief of the section.

Dunmore and Lowell were employed in the radio section and engaged in research and testing in the laboratory. In the outlines of laboratory work, the subject of "airplane radio" was assigned to the group of which Dunmore was chief and Lowell a member. The subject of "radio receiving sets" was assigned to a group of which J. L. Preston was chief, but to which neither Lowell nor Dunmore belonged.

Page 289 U. S. 184

In May, 1921, the Air Corps of the Army and the Bureau of Standards entered into an arrangement whereby the latter undertook the prosecution of forty-four research projects for the benefit of the Air Corps. To pay the cost of such work, the Corps transferred and allocated to the Bureau the sum of $267,500. Projects Nos. 37 to 42, inclusive, relating to the use of radio in connection with aircraft, were assigned to the radio

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