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 �section, and $25,000 was
allocated to pay the cost of the work. Project No. 38 was styled
"visual indicator for radio signals," and suggested the
construction of a modification of what was known as an "Eckhart
recorder." Project No. 42 was styled "airship bomb control and
marine torpedo control." Both were problems of design merely.
In the summer of 1921, Dunmore, as chief of the group to which
"airplane radio" problems had been assigned, without further
instructions from his superiors, picked out for himself one of
these navy problems -- that of operating a relay for remote control
of bombs on airships and torpedoes in the sea -- "as one of
particular interest and having perhaps a rather easy solution, and
worked on it." In September, he solved it.
In the midst of aircraft investigations and numerous routine
problems of the section, Dunmore was wrestling in his own mind,
impelled thereto solely by his own scientific curiosity, with the
subject of substituting house lighting alternating current for
direct battery current in radio apparatus. He obtained a relay for
operating a telegraph instrument which was in no way related to the
remote control relay devised for aircraft use. The conception of
the application of alternating current concerned particularly
broadcast reception. This idea was conceived by Dunmore August 3,
1921, and he reduced the invention to practice December 16, 1921.
Early in 1922, he advise his superior of his invention and spent
additional
Page 289 U. S. 185
time in perfecting the details. February 27, 1922, he filed an
application for a patent.
In the fall of 1921, both Dunmore and Lowell were considering
the problem of applying alternating current to broadcast receiving
sets. This project was not involved in or suggested by the problems
with which the radio section was then dealing, and was not assigned
by any superior as a task to be solved by either of these
employees. It was independent of their work, and voluntarily
assumed.
While performing their regular tasks, they experimented at the
laboratory in devising apparatus for operating a radio receiving
set by alternating current with the hum incident thereto
eliminated. The invention was completed on December 10, 1921.
Before its completion, no instructions were received from, and no
conversations relative to the invention were held by, these
employees with the head of the radio section, or with any
superior.
They also conceived the idea of energizing a dynamic type of
loudspeaker from an alternating current house lighting circuit, and
reduced the invention to practice on January 25, 1922. March 21,
1922, they filed an application for a "power amplifier." The
conception embodied in this patent was devised by the patentees
without suggestion, instruction, or assignment from any
superior.
Dunmore and Lowell were permitted by their chief, after the
discoveries had been brought to his attention, to pursue their work
in the laboratory and to perfect the devices embodying their
inventions. No one advised them, prior to the filing of
applications for patents, that they would be expected to assign the
patents to the United States, or to grant the government exclusive
rights thereunder.
The respondent concedes that the United States may practice the
inventions without payment of royalty, but asserts that all others
are excluded, during the life of the
Page 289 U. S. 186
patents, from using them without the respondent's consent. The
petitioner insists that the circumstances require a declaration
either that the government has sole and exclusive property in the
inventions or that they have been dedicated to the public so that
anyone may use them.
First. By article 1, § 8, clause 8, of the
Constitution, Congress is given power to promote the progress of
science and the useful arts by securing for limited times to
inventors the exclusive rights to their respective discoveries.
R.S. § 4886, as amended (U.S.Code, Title 35, § 31), is the last of
a series of statutes which, since 1793, have implemented the
constitutional provision.
Though often so characterized, a patent is not, accurately
speaking, a monopoly, for it is not created by the executive
authority at the expense and to the prejudice of all the community
except the grantee of the patent.
Seymour v.
Osborne, 11 Wall. 516,
78 U. S. 533.
The term "monopoly" connotes the giving of an exclusive privilege
for buying, selling, working, or using a thing which the public
freely enjoyed prior to the grant. [
Footnote 6] Thus, a monopoly takes something from the
people. An inventor deprives the public of nothing which it enjoyed
before his discovery, but gives something of value to the community
by adding to the sum of human knowledge.
United States v.
American Bell Telephone Co., 167 U. S. 224,
167 U. S. 239;
Paper Bag Patent case, 210 U. S. 405,
210 U. S. 424;
Brooks v. Jenkins, 3 McLean, 432, 437;
Parker v.
Haworth, 4 McLean, 370, 372;
Allen v. Hunter, 6
McLean, 303, 305-306;
Attorney General v. Rumford Chemical
Works, 2 Bann. & Ard. 298, 302. He may keep his invention
secret and reap its fruits indefinitely. In consideration of its
disclosure and the consequent benefit to the community, the patent
is granted. An exclusive enjoyment is guaranteed him for
Page 289 U. S. 187
seventeen years, but, upon the expiration of that period, the
knowledge of the invention inures to the people, who are thus
enabled without restriction to practice it and profit by its use.
Kendall v.
Sinsor, 21 How. 322,
62 U. S. 327;
United States v. American Bell Telephone Co., supra, p.
167 U. S. 239.
To this end, the law requires such disclosure to be made in the
application for patent that others skilled in the art may
understand the invention and how to put it to use. [
Footnote 7]
A patent is property, and title to it can pass only by
assignment. If not yet issued, an agreement to assign when issued,
if valid as a contract, will be specifically enforced. The
respective rights and obligations of employer and employee,
touching an invention conceived by the latter, spring from the
contract of employment.
One employed to make an invention who succeeds, during his term
of service in accomplishing that task is bound to assign to his
employer any patent obtained. The reason is that he has only
produced that which he was employed to invent. His invention is the
precise subject of the contract of employment. A term of the
agreement necessarily is that what he is paid to produce belongs to
his paymaster.
Standard Parts Co. v. Peck, 264 U. S.
52. On the other hand, if the employment be general,
albeit it covers a field of labor and effort in the performance of
which the employee conceived the invention for which he obtained a
patent, the contract is not so broadly construed as to require an
assignment of the patent.
Hapgood v. Hewitt, 119 U.
S. 226;
Dalzell v. Dueber Watch case Mfg. Co.,
149 U. S. 315. In
the latter case, it was said [p.
149 U. S.
320]:
"But a manufacturing corporation which has employed a skilled
workman, for a stated compensation, to take charge of its works,
and to devote his time and services to devising and making
improvements in articles
Page 289 U. S. 188
there manufactured, is not entitled to a conveyance of patents
obtained for inventions made by him while so employed, in the
absence of express agreement to that effect."
The reluctance of courts to imply or infer an agreement by the
employee to assign his patent is due to a recognition of the
peculiar nature of the act of invention, which consists neither in
finding out the laws of nature nor in fruitful research as to the
operation of natural laws, but in discovering how those laws may be
utilized or applied for some beneficial purpose by a process, a
device, or a machine. It is the result of an inventive act, the
birth of an idea and its reduction to practice; the product of
original thought; a concept demonstrated to be true by practical
application or embodiment in tangible form.
Clark Thread Co. v.
Willimantic Linen Co., 140 U. S. 481,
140 U. S. 489;
Symington Co. v. National Malleable Castings Co.,
250 U. S. 383,
250 U. S. 386;
Pyrene Mfg. Co. v. Boyce, 292 F. 480, 481.
Though the mental concept is embodied or realized in a mechanism
or a physical or chemical aggregate, the embodiment is not the
invention, and is not the subject of a patent. This distinction
between the idea and its application in practice is the basis of
the rule that employment merely to design or to construct or to
devise methods of manufacture is not the same as employment to
invent. Recognition of the nature of the act of invention also
defines the limits of the so-called shop right, which, shortly
stated, is that, where a servant, during his hours of employment,
working with his master's materials and appliances, conceives and
perfects an invention for which he obtains a patent, he must accord
his master a nonexclusive right to practice the invention.
McClurg v.
Kigsland, 1 How. 202;
Solomons v. United
States, 137 U. S. 342;
Lane & Bodley Co. v. Locke, 150 U.
S. 193. This is an application of equitable principles.
Since the servant uses his master's time, facilities, and materials
to attain a
Page 289 U. S. 189
concrete result, the latter is in equity entitled to use that
which embodies his own property, and to duplicate it as often as he
may find occasion to employ similar appliances in his business. But
the employer in such a case has no equity to demand a conveyance of
the invention, which is the original conception of the employee
alone, in which the employer had no part. This remains the property
of him who conceived it, together with the right conferred by the
patent to exclude all others than the employer from the accruing
benefits. These principles are settled as respects private
employment.
Second. Does the character of the service call for
different rules as to the relative rights of the United States and
its employees?
The title of a patentee is subject to no superior right of the
government. The grant of letters patent is not, as in England, a
matter of grace or favor, so that conditions may be annexed at the
pleasure of the executive. To the laws passed by the Congress, and
to them alone, may we look for guidance as to the extent and the
limitations of the respective rights of the inventor and the
public.
Attorney General v. Rumford Chemical Works, supra,
at pp. 303-304. And this Court has held that the Constitution
evinces no public policy which requires the holder of a patent to
cede the use or benefit of the invention to the United States, even
though the discovery concerns matters which can properly be used
only by the government -- as, for example, munitions of war.
James v. Campbell, 104 U. S. 356,
104 U. S. 358;
Hollister v. Benedict Mfg. Co., 113 U. S.
59,
113 U. S.
67.
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 appointments. [
Footnote 8]
Page 289 U. S. 190
This being so, this Court has applied the rules enforced as
between private employers and their servants to the relation
between the government and its officers and employees.
United States v.
Burns, 12 Wall. 246, was a suit in the Court of
Claims by an army officer as assignee of a patent obtained by
another such officer for a military tent, to recover royalty under
a contract made by the Secretary of War for the use of the tents.
The court said, in affirming a judgment for the plaintiff [p.
79 U. S.
252]:
"If an officer in the military service, not specially employed
to make experiments with a view to suggest improvements, devises a
new and valuable improvement in arms, tents, or any other kind of
war material, he is entitled to the benefit of it, and to letters
patent for the improvement from the United States, equally with any
other citizen not engaged in such service, and the government
cannot, after the patent is issued, make use of the improvement,
any more than a private individual, without license of the inventor
or making compensation to him."
In
United States v. Palmer, 128 U.
S. 262, Palmer, a lieutenant in the Army, patented
certain improvements in infantry accoutrements. An army board
recommended their use, and the Secretary of War confirmed the
recommendation. The United States manufactured and purchased a
large number of the articles. Palmer brought suit in the Court of
Claims for a sum alleged to be a fair and reasonable royalty. From
a judgment for the plaintiff, the United States appealed. This
Court, in affirming, said [p.
128 U. S.
270]:
"It was at one time somewhat doubted whether the government
might not be entitled to the use and benefit of every patented
invention, by analogy to the English law, which reserves this right
to the crown. But that
Page 289 U. S. 191
notion no longer exists. It was ignored in the case of
Burns."
These principles were recognized in later cases involving the
relative rights of the government and its employees in instances
where the subject matter of the patent was useful to the public
generally. While these did not involve a claim to an assignment of
the patent, the court reiterated the views earlier announced.
In
Solomons v. United States, 137 U.
S. 342,
137 U. S. 346,
it was said:
"The government has no more power to appropriate a man's
property invested in a patent than it has to take his property
invested in real estate;
nor does the mere fact that an
inventor is, at the time of his invention, in the employ of the
government transfer to it any title to or interest in it. An
employee, performing all the duties assigned to him in his
department of service, may exercise his inventive faculties in any
direction he chooses with the assurance that whatever invention he
may thus conceive and perfect is his individual property.
There
is no difference between the government and any other employer in
this respect."
And, in
Gill v. United States, 160 U.
S. 426,
160 U. S.
435:
"There is no doubt whatever of the proposition laid down in
Solomons' case, that the mere fact that a person is in the
employ of the government does not preclude him from making
improvements in the machines with which he is connected, and
obtaining patents therefor, as his individual property, and that,
in such case, the government would have no more right to seize upon
and appropriate such property than any other proprietor would have.
. . ."
The distinction between an employment to make an invention and a
general employment in the course of
Page 289 U. S. 192
which the servant conceives an invention has been recognized by
the executive department of the government. A lieutenant in the
Navy patented an anchor while he was on duty in the Bureau of
Equipment and Recruiting, which was charged with the duty of
furnishing anchors for the Navy; he was not, while attached to the
Bureau, specially employed to make experiments with a view to
suggesting improvements to anchors or assigned the duty of making
or improving. The Attorney General advised that, as the invention
did not relate to a matter as to which the lieutenant was specially
directed to experiment with a view to suggesting improvements, he
was entitled to compensation from the government for the use of his
invention in addition to his salary or pay as a navy officer.
[
Footnote 9]
A similar ruling was made with respect to an ensign who obtained
a patent for improvements in "B.L.R. ordnance," and who offered to
sell the improvements, or the right to use them, to the government.
It was held that the Navy might properly make a contract with him
to this end. [
Footnote
10]
The United States is entitled, in the same way and to the same
extent as a private employer, to shop rights -- that is, the free
and nonexclusive use of a patent which results from efforts of its
employee in his working hours and with material belonging to the
government.
Solomons v. United States, supra, pp.
137 U. S.
346-347;
McAleer v. United States, 150 U.
S. 424;
Gill v. United States, supra.
The statutes, decisions, and administrative practice negate the
existence of a duty binding one in the service of the government
different from the obligation of one in private employment.
Page 289 U. S. 193
Third. When the United States filed its bills, it
recognized the law as heretofore declared; realized that it must
like any other employer, if it desired an assignment of the
respondent's rights, prove a contractual obligation on the part of
Lowell and Dunmore to assign the patents to the government. The
averments clearly disclose this. The bill in No. 316 is typical.
After reciting that the employees were laboratory apprentice and
associate physicist and laboratory assistant and associate
physicist, respectively, and that one of their duties was
"to carry on investigation research and experimentation in such
problems relating to radio and wireless as might be assigned to
them by their superiors,"
it is charged,
"in the course of his employment as aforesaid, there was
assigned to said Lowell by his superiors in said radio section, for
investigation and research, the problem of developing a radio
receiving set capable of operation by alternating current. . .
."
Thus, the government understood that respondent could be
deprived of rights under the patents only by proof that Dunmore and
Lowell were employed to devise the inventions. The findings of the
courts below show how far the proofs fell short of sustaining these
averments.
The government is consequently driven to the contention that,
though the employees were not specifically assigned the task of
making the inventions (as in
Standard Parts Co. v. Peck,
supra), still, as the discoveries were "within the general
field of their research and inventive work," the United States is
entitled to an assignment of the patents. The courts below
expressly found that Dunmore and Lowell did not agree to exercise
their inventive faculties in their work, and that invention was not
within its scope. In this connection, it is to be remembered that
the written evidence of their employment does not mention research,
much less invention; that never was there
Page 289 U. S. 194
a word said to either of them, prior to their discoveries,
concerning invention or patents or their duties or obligations
respecting these matters; that, as shown by the records of the
Patent Office, employees of the Bureau of Standards and other
departments had, while so employed, received numerous patents and
enjoyed the exclusive rights obtained as against all private
persons without let or hindrance from the government. [
Footnote 11] In no proper
Page 289 U. S. 195
sense may it be said that the contract of employment
contemplated invention; everything that Dunmore and Lowell knew
negatived the theory that they were employed to invent; they knew,
on the contrary, that the past and then present practice was that
the employees of the Bureau were allowed to take patents on their
inventions and have the benefits thereby conferred save as to use
by the
Page 289 U. S. 196
United States. The circumstances preclude the implication of any
agreement to assign their inventions or patents.
The record affords even less basis for inferring a contract on
the part of the inventors to refrain from patenting their
discoveries than for finding an agreement to assign them.
The bills aver that the inventions and patents are held in trust
for the United States, and that the court should so declare. It is
claimed that, as the work of the Bureau, including all that Dunmore
and Lowell did, was in the public interest, these public servants
had dedicated the offspring of their brains to the public, and so
held their patents in trust for the common weal, represented here
in a corporate capacity by the United States. The patentees, we are
told, should surrender the patents for cancellation, and the
respondent must also give up its rights under the patents.
The trust cannot be express. Every fact in the case negatives
the existence of one. Nor can it arise
ex maleficio. The
employees' conduct was not fraudulent in any respect. They promptly
disclosed their inventions. Their superiors encouraged them to
proceed in perfecting and applying the discoveries. Their notebooks
and reports disclosed the work they were doing, and there is not a
syllable to suggest their use of time or material was clandestine
or improper. No word was spoken regarding any claim of title by the
government until after applications for patents were filed. And, as
we have seen, no such trust has been spelled out of the relation of
master and servant, even in the cases where the employee has
perfected his invention by the use of his employer's time and
materials. The cases recognizing the doctrine of shop rights may be
said to fix a trust upon the employee in favor of his master as
respects the use of the invention
Page 289 U. S. 197
by the latter, but they do not affect the title to the patent
and the exclusive rights conferred by it against the public.
The government's position, in reality, is, and must be, that a
public policy, to be declared by a court, forbids one employed by
the United States for scientific research to obtain a patent for
what he invents, though neither the Constitution nor any statute so
declares.
Where shall the courts set the limits of the doctrine? For,
confessedly, it must be limited. The field of research is as broad
as that of science itself. If the petitioner is entitled to a
cancellation of the patents in this case, would it be so entitled
if the employees had done their work at home, in their own time and
with their own appliances and materials? What is to be said of an
invention evolved as the result of the solution of a problem in a
realm apart from that to which the employee is assigned by his
official superiors? We have seen that the Bureau has numerous
divisions. It is entirely possible that an employee in one division
may make an invention falling within the work of some other
division. Indeed, this case presents that exact situation, for the
inventions in question had to do with radio reception -- a matter
assigned to a group of which Dunmore and Lowell were not members.
Did the mere fact of their employment by the Bureau require these
employees to cede to the public every device they might
conceive?
Is the doctrine to be applied only where the employment is in a
bureau devoted to scientific investigation
pro bono
publico? Unless it is to be so circumscribed, the statements
of this Court in
United States v. Burns, supra, Solomons v.
United States, supra, and
Gill v. United States,
supra, must be held for naught.
Again, what are to be defined as bureaus devoted entirely to
scientific research? It is common knowledge that many in the
Department of Agriculture conduct researches
Page 289 U. S. 198
and investigations, that divisions of the War and Navy
Departments do the like, and doubtless there are many other bureaus
and sections in various departments of government where employees
are set the task of solving problems all of which involve more or
less of science. Shall the field of the scientist be distinguished
from the art of a skilled mechanic? Is it conceivable that one
working on a formula for a drug or an antiseptic in the Department
of Agriculture stands in a different class from a machinist in an
arsenal? Is the distinction to be that, where the government
department is, so to speak, a business department operating a
business activity of the government, the employee has the same
rights as one in private employment, whereas, if his work be for a
bureau interested more particularly in what may be termed
scientific research, he is upon notice that whatever he invents in
the field of activity of the bureau, broadly defined, belongs to
the public and is unpatentable? Illustrations of the difficulties
which would attend an attempt to define the policy for which the
government contends might be multiplied indefinitely.
The courts ought not to declare any such policy; its formulation
belongs solely to the Congress. Will permission to an employee to
enjoy patent rights as against all others than the government tend
to the improvement of the public service by attracting a higher
class of employees? Is there in fact greater benefit to the people
in a dedication to the public of inventions conceived by officers
of government than in their exploitation under patents by private
industry? Should certain classes of invention be treated in one
way, and other classes differently? These are not legal questions
which courts are competent to answer. They are practical questions,
and the decision as to what will accomplish the greatest good for
the inventor, the government, and the public rests
Page 289 U. S. 199
with the Congress. We should not read into the patent laws
limitations and conditions which the Legislature has not
expressed.
Fourth. Moreover, we are of opinion Congress has
approved a policy at variance with the petitioner's contentions.
This is demonstrated by examination of two statutes, with their
legislative history and the hearings and debates respecting
proposed legislation which failed of passage.
Since 1883, there has been in force an act [
Footnote 12] which provides:
"The Secretary of the Interior [now the Secretary of Commerce,
Act of February 14, 1903, c. 552, § 12, 32 Stat. 830] and the
Commissioner of Patents are authorized to grant any officer of the
government, except officers and employees of the Patent Office, a
patent for any invention of the classes mentioned in section forty
eight hundred and eighty six of the Revised Statutes, when such
invention is used or to be used in the public service, without the
payment of any fee:
Provided, That the applicant, in his
application, shall state that the invention described therein, if
patented, may be used by the government or any of its officers, or
employees in the prosecution of work for the government, or by any
other person in the United States, without the payment to him of
any royalty thereon, which stipulation shall be included in the
patent."
This law was evidently intended to encourage government
employees to obtain patents by relieving them of the payment of the
usual fees. The condition upon which the privilege was accorded is
stated at the grant of free use by the government, "its officers or
employees in the prosecution of work for the government,
or by
any
Page 289 U. S.
200
other person in the United States." For some time, the
effect of the italicized phrase was a matter of doubt.
In 1910, the Judge Advocate General of the Army rendered an
opinion to the effect that one taking a patent pursuant to the act
threw his invention "open to public and private use in the United
States." [
Footnote 13] It
was later realized that this view made such a patent a
contradiction in terms, for it secured no exclusive right to
anyone. In 1918, the Judge Advocate General gave a well reasoned
opinion [
Footnote 14]
holding that, if the statute were construed to involve a dedication
to the public, the so-called patent would, at most, amount to a
publication or prior reference. He concluded that the intent of the
act was that the free use of the invention extended only to the
government or those doing work for it. A similar construction was
adopted in an opinion of the Attorney General. [
Footnote 15] Several federal courts
referred to the statute, and, in
dicta, indicated
disagreement with the views expressed in these later opinions.
[
Footnote 16]
The departments of government were anxious to have the situation
cleared, and repeatedly requested that the act be amended. Pursuant
to the recommendations of the War Department, an amendment was
enacted April 30, 1928. [
Footnote 17] The proviso was changed to read:
"
Provided, That the applicant in his application shall
state that the invention described therein, if patented,
Page 289 U. S. 201
may be manufactured and used by or for the Government for
governmental purposes without the payment to him of any royalty
thereon, which stipulation shall be included in the patent."
The legislative history of the amendment clearly discloses the
purpose to save to the employee his right to exclude the public.
[
Footnote 18] In the report
of the Senate Committee on Patents submitted with the amendment,
the object of the bill was said to be the protection of the
interests of the government, primarily by securing patents on
intentions made by officers and employees, presently useful in the
interest of the national defense or those which may prove useful in
the interest of national defense in the future, and, secondarily,
to encourage the patenting of inventions by officers and employees
of the government with the view to future protection of the
government against suits for infringement of patents. The Committee
stated that the bill had the approval of the Commissioner of
Patents, and was introduced at the request of the Secretary of War.
Appended to the report is a copy of a letter of the Secretary of
War addressed to the committees of both Houses stating that the
language of the legislation then existing was susceptible of two
interpretations contrary to each other. The letter quoted the
proviso of the section as it then stood, and continued:
"It is clear that a literal construction of this proviso would
work a dedication to the public of every patent taken out under the
act. If the proviso must be construed literally we would have a
situation wherein all the patents taken out under the act would be
nullified by the
Page 289 U. S. 202
very terms of the act under which they were granted, for the
reason that a patent which does not carry with it the limited
monopoly referred to in the Constitution is in reality not a patent
at all. The only value that a patent has is the right that it
extends to the patentee to exclude all others from making, using,
or selling the invention for a certain period of years. A patent
that is dedicated to the public is virtually the same as a patent
that has expired."
After referring to the interpretation of the Judge Advocate
General and the Attorney General and mentioning that no
satisfactory adjudication of the question had been afforded by the
courts, the letter went on the state:
"Because of the ambiguity referred to and and unsettled
condition that has arisen therefrom, it has become the policy of
the War Department to advise all its personnel who desire to file
applications for letters patent to do so under the general law, and
pay the required patent office fee in each case."
And added:
"If the proposed legislation is enacted into law, Government
officers and employees may unhesitatingly avail themselves of the
benefits of the act with full assurance that, in so doing, their
patent is not dedicated to the public by operation of law. The War
Department has been favoring legislation along the lines of the
proposed bill for the past five or six years."
When the bill came up for passage in the House, a colloquy
occurred which clearly disclosed the purpose of the amendment.
[
Footnote 19] The intent was
that a government
Page 289 U. S. 203
employee who, in the course of his employment, conceives an
invention should afford the government free use thereof, but should
be protected in his right to exclude all others. If Dunmore and
Lowell, who tendered the government a nonexclusive license without
royalty, and always understood that the government might use their
inventions freely, had proceeded under the act of 1883, they would
have retained their rights as against all but the United States.
This is clear from the executive interpretation of the act. But,
for greater security, they pursued the very course then advised by
the law officers of the government. It would be surprising if they
thus lost all rights as patentees, especially so since Congress has
now confirmed the soundness of the views held by the law officers
of the government.
Page 289 U. S. 204
Until the year 1910, the Court of Claims was without
jurisdiction to award compensation to the owner of a patent for
unauthorized use by the United States or its agents. Its power
extended only to the trial of claims based upon an express or
implied contract for such use. [
Footnote 20] In that year, Congress enlarged the
jurisdiction to embrace the former class of claims. [
Footnote 21] In giving consent to be sued,
the restriction was imposed that it should not extend to owners of
patents obtained by employees of the government while in the
service. From this it is inferred that Congress recognized no right
in such patentees to exclude the public from practicing the
invention. But
Page 289 U. S. 205
an examination of the legislative record completely refutes the
contention.
The House Committee, in reporting the bill, after referring to
the law as laid down in the
Solomons case, said:
"The United States in such a case has an implied license to use
the patent without compensation, for the reason that the inventor
used the time or the money or the material of the United States in
perfecting his invention. The use by the United States of such a
patented invention without any authority from the owner thereof is
a lawful use under existing law, and we have inserted the words 'or
lawful right to use the same' in order to make it plain that we do
not intend to make any change in existing law in this respect, and
do not intend to give the owner of such a patent any claim against
the United States for its use. [
Footnote 22]"
From this it is clear that Congress had no purpose to declare a
policy at variance with the decisions of this Court.
The executive departments have advocated legislation regulating
the taking of patents by government employees and the
administration by government agencies of the patents so obtained.
In 1919 and 1920, a bill sponsored by the Interior Department was
introduced. It provided for the voluntary assignment or license by
any government employee, to the Federal Trade Commission, of a
patent applied for by him, and the licensing of manufacturers by
the Commission, the license fees to be paid into the Treasury and
such part of them as the President might deem equitable to be
turned over to the patentee. [
Footnote 23] In the hearings and reports upon this
measure, stress was laid not only upon the fact that action by an
employee thereunder would be voluntary, but that the inventor would
be protected, at least to some extent, in his private
Page 289 U. S. 206
right of exclusion. It was recognized that the government could
not compel an assignment, was incapable of taking such assignment
or administering the patent, and that it had shop rights in a
patent perfected by the use of government material and in
government working time. Nothing contained in the bill itself or in
the hearings or reports indicates any intent to change the existing
and well understood rights of government employees who obtain
patents for their inventions made while in the service. The measure
failed of passage.
In 1923, the President sent to the Congress the report of an
interdepartmental patents board created by executive order to study
the question of patents within the government service and to
recommend regulations establishing a policy to be followed in
respect thereof. The report adverted to the fact that, in the
absence of a contract providing otherwise, a patent taken out by a
government employee, and any invention developed by one in the
public service, is the sole property of the inventor. The committee
recommended strongly against public dedication of such an
invention, saying that this, in effect, voids a patent, and, if
this were not so,
"there is little incentive for anyone to take up a patent and
spend time, effort, and money . . . on its commercial development
without at least some measure of protection against others free to
take the patent as developed by him and compete in its use. In such
a case, one of the chief objects of the patent law would be
defeated. [
Footnote 24]"
In full accord is the statement on behalf of the Department of
the Interior in a memorandum furnished with respect to the bill
introduced in 1919. [
Footnote
25]
With respect to a policy of permitting the patentee to take a
patent and control it in his own interest (subject,
Page 289 U. S. 207
of course, to the government's right of use, if any) the
committee said:
". . . It must not be lost sight of that, in general, it is the
constitutional right of every patentee to exploit his patent as he
may desire, however expedient it may appear to endeavor to modify
this right in the interest of the public when the patentee is in
the Government service. [
Footnote 26]"
Concerning a requirement that all patents obtained by government
employees be assigned to the United States or its agent, the
committee said:
". . . It would, on the one hand, render difficult securing the
best sort of technical men for the service, and, on the other,
would influence technical workers to resign in order to exploit
inventions which they might evolve and suppress while still in the
service. There has always been more or loss of a tendency for able
men in the service to do this, particularly in view of the
comparative meagerness of Government salaries; thus, the Government
has suffered loss among its most capable class of workers.
[
Footnote 27]"
The committee recommended legislation to create an
Interdepartmental Patents Board, and further that the law make it
part of the express terms of employment, having the effect of a
contract, that any patent application made or patent granted for an
invention discovered or developed during the period of government
service and incident to the line of official duties, which in the
judgment of the Board should, in the interest of the national
defense, or otherwise in the public interest, be controlled by the
government, should, upon demand by the Board, be assigned by the
employee to an agent of the government. The recommended measures
were not adopted.
Page 289 U. S. 208
Fifth. Congress has refrained from imposing upon
government servants a contract obligation of the sort above
described. At least one department has attempted to do so by
regulation. [
Footnote 28]
Since the record in this case discloses that the Bureau of
Standards had no such regulation, it is unnecessary to consider
whether the various departments have power to impose such a
contract upon employees without authorization by act of Congress.
The question is more difficult under our form of government than
under that of Great Britain, where such departmental regulations
seem to settle the matter. [
Footnote 29]
All of this legislative history emphasizes what we have stated
-- that the courts are incompetent to answer the difficult question
whether the patentee is to be allowed his exclusive right or
compelled to dedicate his invention to the public. It is suggested
that the election rests with the authoritative officers of the
government. Under what power, express or implied, may such
officers, by administrative fiat, determine the nature and extent
of rights exercised under a charter granted a patentee pursuant to
constitutional and legislative provisions? Apart from the fact that
express authority is nowhere to be found, the question arises, who
are the authoritative officers whose determination shall bind the
United States and the patentee? The government's position comes to
this -- that the courts may not reexamine the exercise of an
authority by some officer, not named, purporting to deprive the
patentee of the rights conferred upon him by law. Nothing would be
settled by such a holding except that the determination of the
reciprocal rights and obligations of the government and its
employee as respects
Page 289 U. S. 209
inventions are to be adjudicated, without review, by an
unspecified department head or bureau chief. Hitherto, both the
executive and the legislative branches of the government have
concurred in what we consider the correct view -- that any such
declaration of policy must come from Congress, and that no power to
declare it is vested in administrative officers.
The decrees are
Affirmed.
[
Footnote 1]
49 F.2d 306.
[
Footnote 2]
59 F.2d 381.
[
Footnote 3]
See Act of March 3, 1901, 31 Stat. 1449; Act of
February 14, 1903, § 4, 32 Stat. 826.
[
Footnote 4]
Act of March 4, 1915, 38 Stat. 1044; Act of May 29, 1920, 41
Stat. 684; Act of March 3, 1921, 41 Stat. 1303.
[
Footnote 5]
The fees charged cover merely the cost of the service rendered,
as provided in the Act of June 30, 1932, § 312, 47 Stat. 410.
[
Footnote 6]
Webster's New International Dictionary: "Monopoly."
[
Footnote 7]
U.S.Code, Tit. 35, § 33.
[
Footnote 8]
R.S. § 480, U.S.Code, Tit. 35, § 4.
[
Footnote 9]
19 Op.Attys.Gen. 407.
[
Footnote 10]
20 Op.Attys.Gen. 329.
And compare Report Judge Advocate
General of the Navy, 1901, p. 6; Digest, Opinions Judge Advocate
General of the Army, 1912-1930, p. 237; Opinions, Judge Advocate
General of the Army, 1918, vol. 2, pp. 529, 988, 1066.
[
Footnote 11]
No exhaustive examination of the official records has been
attempted. It is sufficient, however, for present purposes, to call
attention to the following instances:
Dr. Frederick A. Kolster was employed in the radio section,
Bureau of Standards, from December, 1912, until about March 1,
1921. He applied for the following patents: No. 1,609,366, for
radio apparatus, application dated November 26, 1920. No 1,447,
165, for radio method and apparatus, application dated January 30,
1919. No. 1,311,654, for radio method and apparatus, application
dated March 25, 1916. No. 1,394,560, for apparatus for transmitting
radiant energy, application dated November 24, 1916. The Patent
Office records show assignments of these patents to Federal
Telegraph Company, San Francisco, Cal., of which Dr. Kolster is now
president. He testified that these are all subject to a
nonexclusive license in the United States to use and practice the
same.
Burten McCollum was an employee of the Bureau of Standards
between 1911 and 1924. On the dates mentioned, he filed the
following applications for patents, which were issued to him: No.
1,035,373, alternating current induction motor, March 11, 1912. No.
1,156,364, induction motor, February 25, 1915. No. 1,226.091,
alternating current induction motor, August 2, 1915. No. 1,724,495,
method and apparatus for determining the slope of subsurface rock
boundaries, October 24, 1923. No. 1,724,720, method and apparatus
for studying subsurface contours, October 12, 1923. The last two
inventions were assigned to McCollum Geological Explorations, Inc.,
a Delaware corporation.
Herbert B. Brooks, while an employee of the Bureau between 1912
and 1930, filed November 1, 1919, an application on which patent
No. 1,357,197, for an electric transformer, was issued.
William W. Coblentz, an employee of the Bureau of Standards from
1913, and still such at the date of the trial, on the dates
mentioned, filed applications on which patents issued as follows:
No. 1,418,362, for electrical resistance, September 22, 1920. No,
1,458,165, system of electrical control, September 22, 1920. No.
1,450,061, optical method for producing pulsating electric current,
August 6, 1920. No. 1,563,557, optical means for rectifying
alternating currents, September 18, 1923. The Patent Office records
show that all of these stand in the name of Coblentz, but are
subject to a license to the United States of America.
August Hund, who was an employee of the Bureau from 1922 to
1927, on the dates mentioned filed applications on which letters
patent issued, No. 1,649,828, method of preparing Piezoelectric
plates, September 30, 1925. No. 1,688,713, Piezoelectric crystal
oscillator system, May 10, 1927. No. 1,688,714, Piezoelectric
crystal apparatus, May 12, 1927. No. 1,648,689, condenser
transmitter, April 10, 1926. All of these patents are shown of
record to have been assigned to Wired Radio, Inc., a
corporation.
Paul R. Heyl and Lyman J. Briggs, while employees of the Bureau,
filed an application January 11, 1922, for patent No. 1,660,751, on
inductor compass, and assigned the same to the Aeronautical
Instrument Company of Pittsburgh, Pa.
C. W. Burrows was an employee of the Bureau of Standards between
1912 and 1919. While such employee, he filed applications on the
dates mentioned for patents which were issued, No. 1,322,405,
October 4, 1917, method and apparatus for testing magnetizable
objects by magnetic leakage; assigned to Magnetic Analysis
Corporation, Long Island City, N.Y. No. 1,329,578, relay, March 13,
1918; exclusive license issued to make, use, and sell for the field
of railway signaling and train control, to Union Switch &
Signal Company, Swissvale, Pa. No. 1,459,970, method of and
apparatus for testing magnetizable objects, July 25, 1917; assigned
to Magnetic Analysis Corporation, Long Island City, N.Y.
John A. Willoughby, an employee of the Bureau of Standards
between 1918 and 1922, while so employed, on June 26, 1919, applied
for and was granted a patent, No. 1,555,345 for a loop antenna.
[
Footnote 12]
Act of March 3, 1883, c. 143, 22 Stat. 625.
[
Footnote 13]
See Squier v. American T. & T. Co., 21 F.2d
747, 748.
[
Footnote 14]
November 30, 1918; Opinions of Judge Advocate General, 1918,
vol. 2, p. 1029.
[
Footnote 15]
32 Op.Attys.Gen. 145.
[
Footnote 16]
See Squier v. American Tel. & Tel. Co., 7 F.2d 831;
21 F.2d
747;
Hazeltine Corp. v. Electric Service Engineering
Corp., 18 F.2d
662;
Hazeltine Corp. v. A. H. Grebe &
Co., 21 F.2d
643;
Selden Co. v. National Aniline & Chemical
Co., 48 F.2d
270.
[
Footnote 17]
45 Stat. 467, 468.
[
Footnote 18]
Report No. 871, 70th Cong., 1st Sess., House of Representatives,
to accompany H.R. 6103; Report No. 765, 70th Cong., 1st Sess.,
Senate, to accompany H.R. 6103; Cong.Rec. House of Representatives,
March 19, 1928, 70th Cong., 1st Sess., p. 5013; Cong.Rec. Senate,
April 24, 1928, 70th Cong., 1st Sess., p. 7066.
[
Footnote 19]
Cong.Rec. 70th Cong. 1st Sess., vol. 69, part 5, p. 5013:
"Mr. LaGuardia. Mr. Speaker, reserving the right to object, is
not the proviso too broad? Suppose an employee of the Government
invents some improvement which is very valuable -- is he compelled
to give the Government free use of it?"
"Mr. Vestal [who reported the bill for the Committee and was in
charge of it]. If he is employed by the Government and the
invention is made while working in his capacity as an agent of the
Government. If the head of the bureau certifies this invention will
be used by the Government, then the Government, of course, gets it
without the payment of any royalty."
"Mr. LaGuardia. The same as a factory rule?"
"Mr. Vestal. Yes, but the man who takes out the patent has his
commercial rights outside."
"Mr. LaGuardia. Outside of the Government?"
"Mr. Vestal. Yes."
"Mr. LaGuardia. But the custom is, and without this bill, the
Government has the right to the use of the improvement without
payment if it is invented in Government time and in Government
work."
"Mr. Vestal. That is correct, and then, on top of that, may I
say that a number of instances have occurred where an employee of
the Government, instead of taking out a patent, had someone else
take out the patent, and the Government has been involved in a
number of suits. There is now $600,000,000 worth of such claims in
the Court of Claims."
It will be noted from the last statement of the gentleman in
charge of the bill that Congress was concerned with questions of
policy in the adoption of the amendment. These, as stated above,
are questions of business policy and business judgment -- what is
to the best advantage of the government and the public. They are
not questions as to which the courts ought to invade the province
of the Congress.
[
Footnote 20]
See Belknap v. Schild, 161 U. S.
10,
161 U. S. 16;
Eager v. United States, 35 Ct.Cls. 556.
[
Footnote 21]
Act of June 25, 1910, 36 Stat. 851. (
See Crozier v. Fried
Krupp Aktiengesellschaft, 224 U. S.
290.)
"That, whenever an invention described in and covered by a
patent of the United States shall hereafter be used by the United
States without license of the owner thereof
or lawful right to
use the same, such owner may recover reasonable compensation
for such use by suit in the Court of Claims:
Provided,
however, That said Court of Claims shall not entertain a suit
or reward compensation under the provisions of this Act where the
claim for compensation is based on the use by the United States of
any article heretofore owned, leased, used by, or in the possession
of the United States:
Provided further, That in any such
suit, the United States may avail itself of any and all defenses,
general or special, which might be pleaded by a defendant in an
action for infringement, as set forth in Title Sixty of the Revised
Statutes, or otherwise:
And provided further, That the
benefits of this Act shall not inure to any patentee, who, when he
makes such claim, is in the employment or service of the Government
of the United States or the assignee of any such patentee; nor
shall this Act apply to any device discovered or invented by such
employee during the time of his employment or service."
The Act was amended in respects immaterial to the present
question, July 1, 1918, 40 Stat. 705.
See William Cramp &
Sons Co. v. International Curtis Marine Turbine Co.,
246 U. S. 28;
Richmond Screw Anchor Co. v. United States, 275 U.
S. 331,
275 U. S. 343.
As amended, it appears in U.S.C. Tit. 35, § 68.
[
Footnote 22]
House Report 1288, 61st Cong., 2d Sess.
[
Footnote 23]
S. 5265, 65th Cong., 3d Sess.; S. 3223, 66th Cong., 2d Sess.;
H.R. 9932, 66th Cong., 2d Sess.; H.R. 11984, 66th Cong., 3d
Sess.
[
Footnote 24]
Sen.Doc. No. 83, 68th Cong., 1st Sess., p. 3.
[
Footnote 25]
Hearings, Senate Patent Committee, 66th Cong., 2d Sess., January
23, 1920, p. 11.
[
Footnote 26]
Sen.Doc. No. 83, 68th Cong., 1st Sess., p. 3.
[
Footnote 27]
Id., p. 4.
[
Footnote 28]
See Annual Report, Department of Agriculture, for 1907,
p. 775.
See Selden Co. v. National Aniline & Chemical Co.,
Inc., 48 F.2d
270, 273.
[
Footnote 29]
Queen's Regulations (Addenda 1895, 1st February); Ch. 1,
Instructions for Officers in General, pp. 15-16.
MR. JUSTICE STONE, dissenting.
I think the decrees should be reversed.
The Court's conclusion that the employment of Dunmore and Lowell
did not contemplate that they should exercise inventive faculties
in their service to the government, and that both courts below so
found, seems to render superfluous much that is said in the
opinion. For it has not been contended, and I certainly do not
contend, that, if such were the fact, there would be any foundation
for the claim asserted by the government. But I think the record
does not support the Court's conclusion of fact. I am also unable
to agree with the reasoning of the opinion, although, on my view of
the facts it would lead to the reversal of the decree below, which
I favor.
When originally organized [
Footnote
2/1] as a subdivision of the Department of Commerce, the
functions of the Bureau of Standards consisted principally of the
custody, comparison, construction, testing, and calibration of
standards and the solution of problems arising in connection with
standards. But, in the course of its investigation of standards of
quality and performance, it has gradually expanded into a
laboratory for research of the broadest character of the various
branches of science and industry, and particularly
Page 289 U. S. 210
in the field of engineering. [
Footnote 2/2] Work of this nature is carried on for
other government departments, [
Footnote
2/3] the general public, [
Footnote
2/4] and private industries. [
Footnote 2/5] It is almost entirely supported by public
funds, [
Footnote 2/6] and is
maintained in the public
Page 289 U. S. 211
interest. In 1915, as the importance of radio to the government
and to the public increased, Congress appropriated funds [
Footnote 2/7] to the Bureau "for
investigation and standardization of methods and instruments
employed in radio communication." Similar annual appropriations
have been made since, and public funds were allotted by Acts of
July 1, 1916, c. 209, 39 Stat. 262, 324, and October 6, 1917, c.
79, 40 Stat. 345, 375, for the construction of a fireproof
laboratory building "to provide additional space to be used for
research and testing in radio communication," as well as "space and
facilities for cooperative research and experimental work in radio
communication" by other departments of the government. Thus, the
conduct of research and scientific investigation in the field of
radio has been a duty imposed by law upon the Bureau of Standards
since 1915.
Radio research has been conducted in the radio section of the
Electrical Division of the Bureau. In 1921 and 1922, when Dunmore
and Lowell made the inventions in controversy, they were employed
in this section as members of the scientific staff. They were not,
of course, engaged to invent, in the sense in which a carpenter is
employed to build a chest, but they were employed to conduct
scientific investigations in a laboratory devoted principally to
applied, rather than pure, science, with full knowledge and
expectation of all concerned that their investigations might
normally lead, as they did, to invention. The Bureau was as much
devoted to the advancement of the radio art by invention as by
discovery which falls short of it. Hence, invention in the field of
radio was a goal intimately related to and embraced within the
purposes of the work of the scientific staff.
Page 289 U. S. 212
Both courts below found that Dunmore and Lowell were impelled to
make these inventions "solely by their own scientific curiosity."
They undoubtedly proceeded upon their own initiative beyond the
specific problems upon which they were authorized or directed to
work by their superiors in the Bureau, who did not actively
supervise their work in its inventive stages. But the evidence
leaves no doubt that, in all they did, they were following the
established practice of the section. For members of the research
staff were expected and encouraged to follow their own scientific
impulses in pursuing their researches and discoveries to the point
of useful application, whether they involved invention or not, and
even though they did not relate to the immediate problem in hand.
After the inventions had been conceived, they were disclosed by the
inventors to their chief, and they devoted considerable time to
perfecting them, with his express approval. All the work was
carried on by them in the government laboratory with the use of
government materials and facilities, during the hours for which
they received a government salary. Its progress was recorded
throughout in weekly and monthly reports which they were required
to file, as well as in their laboratory notebooks. It seems clear
that, in thus exercising their inventive powers in the pursuit of
ideas reaching beyond their specific assignments, the inventors
were discharging the duties expected of scientists employed in the
laboratory; Dunmore, as well as his supervisors, testified that
such was their conception of the nature of the work. The conclusion
is irresistible that their scientific curiosity was precisely what
gave the inventors value as research workers; the government
employed it and gave it free rein in performing the broad duty of
the Bureau of advancing the radio art by discovery and
invention.
The courts below did not find that there was any agreement
between the government and the inventors as to
Page 289 U. S. 213
their relative rights in the patents, and there was no evidence
to support such a finding. They did not find, and, upon the facts
in evidence and within the range of judicial notice, they could not
find, that the work done by Dunmore and Lowell leading to the
inventions in controversy was not within the scope of their
employment. Such a finding was unnecessary to support the decisions
below, which proceeded on the theory relied on by the respondent
here, that, in the absence of an express contract to assign it, an
employer is entitled to the full benefit of the patent granted to
an employee only when it is for a particular invention which the
employee was specifically hired or directed to make. The bare
references by the court below to the obvious facts that "research"
and "invention" are not synonymous, and that all research work in
the Bureau is not concerned with invention, fall far short of a
finding that the work in the Bureau did not contemplate invention
at all. Those references were directed to a different end -- to the
establishment of what is conceded here -- that Dunmore and Lowell
were not specifically hired or directed to make the inventions
because, in doing so, they proceeded beyond the assignments given
them by their superiors. The court's conception of the law, applied
to this ultimate fact, led inevitably to its stated conclusion that
the claim of the government is without support in reason or
authority
"unless we should regard a general employment for research work
as synonymous with a particular employment (or assignment) for
inventive work."
The opinion of this Court apparently rejects the distinction
between specific employment or assignment and general employment to
invent, adopted by the court below and supported by authority, in
favor of the broader position urged by the government that,
wherever the employee's duties involve the exercise of inventive
powers, the employer is entitled to an assignment of the patent
Page 289 U. S. 214
on any invention made in the scope of the general employment. As
I view the facts, I think such a rule, to which this Court has not
hitherto given explicit support, would require a decree in favor of
the government. It would also require a decree in favor of a
private employer on the ground stated by the court that, as the
employee "has only produced what he is employed to invent," a
specifically enforceable "term of the agreement necessarily is that
what he is paid to produce belongs to his paymaster." A theory of
decision so mechanical is not forced upon us by precedent, and
cannot, I think, be supported.
What the employee agrees to assign to his employer is always a
question of fact. It cannot be said that, merely because an
employee agrees to invent, he also agrees to assign any patent
secured for the invention. Accordingly, if an assignment is ordered
in such a case, it is no more to be explained and supported as the
specific enforcement of an agreement to transfer property in the
patent than is the shop right which equity likewise decrees, where
the employment does not contemplate invention. All the varying and
conflicting language of the books cannot obscure the reality that,
in any case where the rights of the employer to the invention are
not fixed by express contract, and no agreement in fact may fairly
be implied, equity determines after the event what they shall be.
In thus adjudicating
in invitum the consequences of the
employment relationship, equity must reconcile the conflicting
claims of the employee who has evolved the idea and the employer
who has paid him for his time and supplied the materials utilized
in experimentation and construction. A task so delicate cannot be
performed by accepting the formula advanced by the petitioner any
more than by adopting that urged by the respondent, though both are
not without support in the
Page 289 U. S. 215
opinions of this Court.
Compare Hapgood v. Hewitt,
119 U. S. 226;
Dalzell v. Dueber Watch Case Mfg. Co., 149 U.
S. 315;
Solomons v. United States, 137 U.
S. 342,
137 U. S. 346;
Gill v. United States, 160 U. S. 426,
160 U. S. 435;
Standard Parts Co. v. Peck, 264 U. S.
52.
Where the employment does not contemplate the exercise of
inventive talent, the policy of the patent laws to stimulate
invention by awarding the benefits of the monopoly to the inventor,
and not to someone else, leads to a ready compromise: a shop right
gives the employer an adequate share in the unanticipated boon.
[
Footnote 2/8]
Hapgood v.
Hewitt, supra; Lane & Bodley Co. v. Locke, 150 U.
S. 193;
Dalzell v. Dueber Watch case Mfg. Co.,
supra; Pressed Steel Car Co. v. Hansen, 137 F. 403;
Amdyco
Corp. v. Urquhart, 39 F.2d
943,
aff'd, 51 F.2d 1072;
Ingle v. Landis Tool
Co., 272 F. 464;
see Beecroft & Blackman v.
Rooney, 268 F. 545, 549.
But where, as in this case, the employment contemplates
invention, the adequacy of such a compromise is more doubtful, not
because it contravenes an agreement for an assignment, which may
not exist, but because, arguably, as the patent is the fruit of the
very work which the employee is hired to do, and for which he is
paid, it should no more be withheld from the employer, in equity
and good conscience, than the product of any other service which
the employee engages to render. This result has been reached where
the contract was to devise a means for solving a defined problem,
Standard Parts Co. v. Peck, supra, and the decision has
been thought to establish the employer's right wherever the
employee is hired or assigned to evolve a process or mechanism for
meeting a specific need.
Magnetic Mfg. Co. v. Dings Magnetic
Separator Co., 16 F.2d 739;
Goodyear Tire &
Rubber
Page 289 U. S. 216
Co. v. Miller, 22 F.2d 353, 356;
Houghton v. United
States, 23 F.2d 386. But the court below and others have
thought (
Pressed Steel Car Co. v. Hansen, supra; Houghton v.
United States, supra; Amdyco Corp. v. Urquhart, supra), as the
respondent argues, that only in cases where the employment or
assignment is thus specific may the employer demand all the
benefits of the employee's invention. The basis of such a
limitation is not articulate in the cases. There is at least a
question whether its application may not be attributed, in some
instances, to the readier implication of an actual promise to
assign the patent, where the duty is to invent a specific thing
(
see Pressed Steel Car Co. v. Hansen, supra, 137 F. 415),
or, in any case, to the reluctance of equity logically to extend,
in this field, the principle that the right to claim the service
includes the right to claim its product. The latter alternative may
find support in the policy of the patent laws to secure to the
inventor the fruits of his inventive genius, in the hardship which
may be involved in imposing a duty to assign all inventions,
see Dalzell v. Dueber Watch case Mfg. Co., supra,
149 U. S. 323,
cf. Aspinwall Mfg. Co. v. Gill, 32 F. 697, 700, and in a
possible inequality in bargaining power of employer and employee.
But compare Goodyear Tire & Rubber Co. v. Miller,
supra, 22 F.2d 355;
Hulse v. Bonsack Mach. Co., 65 F.
864, 868;
see 30 Columbia Law Rev. 1172, 1176-1178. There
is no reason for determining now the weight which should be
accorded these objections to complete control of the invention by
the employer in cases of ordinary employment for private purposes.
Once it is recognized, as it must be, that the function of the
Court in every case is to determine whether the employee may, in
equity and good conscience, retain the benefits of the patent, it
is apparent that the present case turns upon considerations which
distinguish it from any which has thus far been decided.
Page 289 U. S. 217
The inventors were not only employed to engage in work which
unmistakably required them to exercise their inventive genius as
occasion arose; they were a part of a public enterprise. It was
devoted to the improvement of the art of radio communication for
the benefit of the people of the United States, carried on in a
government laboratory, maintained by public funds. Considerations
which might favor the employee where the interest of the employer
is only in private gain are therefore of slight significance; the
policy dominating the research in the Bureau, as the inventors
knew, was that of the government to further the interests of the
public by advancing the radio art. For the work to be successful,
the government must be free to use the results for the benefit of
the public in the most effective way. A patent monopoly in
individual employees, carrying with it the power to suppress the
invention, or at least to exclude others from using it, would
destroy this freedom; a shop right in the government would not
confer it. For these employees, in the circumstances, to attempt to
withhold from the public and from the government the full benefit
of the inventions which it has paid them to produce appears to me
so unconscionable and inequitable as to demand the interposition of
a court exercising chancery powers. A court which habitually
enjoins a mortgagor from acquiring and setting up a tax title
adversely to the mortgagee,
Middletown Savings Bank v.
Bacharach, 46 Conn. 513, 524;
Chamberlain v. Forbes,
126 Mich. 86, 85 N.W. 253;
Waring v. National Savings &
Trust Co., 138 Md. 367, 114 A. 57;
see 2 Jones on
Mortgages (8th Ed.) § 841, should find no difficulty in enjoining
these employees and the respondent claiming under them from
asserting, under the patent laws, rights which would defeat the
very object of their employment. The capacity of equitable doctrine
for growth and of courts of equity to mould it to
Page 289 U. S. 218
new situations was not exhausted with the establishment of the
employer's shop right.
See Essex Trust Co. v. Enwright,
214 Mass. 507, 102 N.E. 441;
Meinhard v. Salmon, 249 N.Y.
458, 164 N.E. 545.
If, in the application of familiar principles to the situation
presented here, we must advance somewhat beyond the decided cases,
I see nothing revolutionary in the step. We need not be deterred by
fear of the necessity, inescapable in the development of the law,
of setting limits to the doctrine we apply as the need arises. That
prospect does not require us to shut our eyes to the obvious
consequences of the decree which has been rendered here. The result
is repugnant to common notions of justice and to policy as well,
and the case must turn upon these considerations if we abandon the
illusion that equity is called upon merely to enforce a contract,
albeit one that is "implied." The case would be more dramatic if
the inventions produced at public expense were important to the
preservation of human life, or the public health, or the
agricultural resources of the country. The principle is the same
here, though the inventions are of importance only in the
furtherance of human happiness. In enlisting their scientific
talent and curiosity in the performance of the public service in
which the Bureau was engaged, Dunmore and Lowell necessarily
renounced the prospect of deriving from their work commercial
rewards incompatible with it. [
Footnote
2/9] Hence, there is nothing oppressive or
Page 289 U. S. 219
unconscionable in requiring them or their licensee to surrender
their patents at the instance of the United States, as there
probably would be if the inventions had not been made within the
scope of their employment or if the employment did not contemplate
invention at all.
The issue raised here is unaffected by legislation. Undoubtedly
the power rests with Congress to enact a rule of decision for
determining the ownership and control of patents on inventions made
by government employees in the course of their employment. But I
find no basis for saying that Congress has done so, or that it has
manifested any affirmative policy for the disposition of cases of
this kind which is at variance with the considerations which are
controlling here.
The Act of June 25, 1910, 36 Stat. 851, as amended July 1, 1918,
40 Stat. 704, 705, permitted patentees to sue the government in the
Court of Claims for the unauthorized use of their patents. It was,
in effect, an eminent domain statute by which just compensation was
secured to the patentee whose patent had been used by the
government.
See Richmond Screw Anchor Co. v. United
States, 275 U. S. 331.
This statute excluded government employees from the benefits of the
act in order, as the House Committee Report explicitly points out,
to leave unaffected the shop rights of the government.
See
H.R. Report No. 1288, 61st Cong. 2d Sess. A statute thus
Page 289 U. S. 220
aimed at protecting in every case the minimum rights of the
government can hardly be taken to deny other and greater rights
growing out of the special equity of cases like the resent.
The Act of April 30, 1928, 45 Stat. 467, 468, amending an
earlier statute of 1883 (22 Stat. 625) so as to permit a patent to
be issued to a government employee without payment of fees for any
invention which the head of a department or independent bureau
certifies "is used or liable to be used in the public interest,"
and which the application specifies may, if patented, "be
manufactured and used by or for the Government for governmental
purposes without the payment . . . of any royalty," was passed, it
is true, with the general purpose of encouraging government
employees to take out patents on their inventions. But this purpose
was not, as the opinion of the Court suggests, born of a
congressional intent that a government employee who conceives an
invention in the course of his employment should be protected in
his right to exclude all others but the government from using it.
Congress was concerned neither with enlarging nor with narrowing
the relative rights of the government and its employees. [
Footnote 2/10] This is apparent from the
language of the statute that the patent shall be issued without a
fee "subject to existing law," as well as from the records of its
legislative history. [
Footnote
2/11]
Page 289 U. S. 221
The purpose of Congress in facilitating the patenting of
inventions by government employees was to protect the existing
right of the government to use all devices invented in the service,
whether or not the patentee was employed to use his inventive
powers. Experience had shown that this shop right was jeopardized
unless the employee applied for a patent, since, without the
disclosure incident to the application, the government was
frequently hampered in its defense of claims by others asserting
priority of invention. But doubt which had arisen whether an
application for a patent under the Act of 1883 did not operate to
dedicate the patent to the public, [
Footnote 2/12] and reluctance to pay the fees otherwise
required, had led government employees to neglect to make
applications, even when they were entitled to the benefits of the
monopoly subject only to the government's right of use. This doubt
the amendment removed. It can hardly be contended that, in removing
it in order to aid the government in the protection of its shop
right, Congress declared a policy that it should have no greater
right to control a patent procured either under this special
statute or under the general patent laws by fraud or any other type
of inequitable conduct. Had such a policy been declared, it is
difficult to see on what basis we could award the government a
remedy, as it seems to be agreed we would if Dunmore and Lowell had
been specifically employed to make the inventions. There is nothing
to indicate that Congress adopted one policy for such a case and a
contrary one for this.
Page 289 U. S. 222
Other legislation proposed but not enacted, [
Footnote 2/13] requires but a word. Even had
Congress expressly rejected a bill purporting to enact into law the
rule of decision which I think applicable here, its failure to act
could not be accorded the force of law. But no such legislation has
been proposed to Congress, and that which was suggested may have
been, and probably was, defeated for reasons unconnected with the
issue presented in this case. The legislative record does show, as
the opinion of the Court states, that it is a difficult question
which has been the subject of consideration, at least since the
war, whether the public interest is best served by the
Page 289 U. S. 223
dedication of an invention to the public or by its exploitation
with patent protection under license from the government or the
inventor. But the difficulty of resolving the question does not
justify a decree which does answer it in favor of permitting
government employees such as these to exploit their inventions
without restriction, rather than one which would require the
cancellation of their patents or their assignment to the United
States.
The decrees should be reversed.
MR. JUSTICE CARDOZO concurs in this opinion.
[
Footnote 2/1]
Act of March 3, 1901, 31 Stat. 1449; Act of February 14, 1903, §
4, 32 Stat. 825, 826. For an account of the origin and development
of the Bureau and its predecessor,
see Weber, The Bureau
of Standards, 1-75.
[
Footnote 2/2]
Much of the expansion of the Bureau's activities in this
direction took place during the war.
See Annual Report of
the Director, Bureau of Standards, for 1919, p. 25; War Work of the
Bureau of Standards (1921), Misc. Publications of the Bureau of
Standards No. 46. The scope of the Bureau's scientific work is
revealed by the annual reports of the Director.
See also
the bibliography of Bureau publications for the years 1901-1925,
Circular of the Bureau of Standards No. 24 (1925).
[
Footnote 2/3]
The Act of May 29, 1920, 41 Stat. 631, 683-684, permitted other
departments to transfer funds to the Bureau of Standards for such
purposes, though, even before that time, it was one of the major
functions of the Bureau to be of assistance to other branches of
the service.
See e.g., Annual Reports of the Director for
1915, 1916, 1917, p. 16; Annual Report for 1918, p. 18;
compare Annual Report for 1921, p. 25; for 1922, p.
10.
[
Footnote 2/4]
The consuming public is directly benefited not only by the
Bureau's work in improving the standards of quality and performance
of industry, but also by the assistance which it lends to
governmental bodies, state and city.
See Annual Reports of
the Director for 1915, 1916, 1917, p. 14; Annual Report for 1918,
p. 16; National Bureau of Standards, Its Functions and Activity,
Circular of the Bureau of Standards, No. 1 (1925), pp. 28, 33.
[
Footnote 2/5]
Cooperation with private industry has been the major method
relied upon to make the accomplishments of the Bureau effective.
See Annual Report for 1922, p. 7; Annual Report for 1923,
p. 3. A system of research associates permits industrial groups to
maintain men at the Bureau for research of mutual concern. The plan
has facilitated cooperation.
See Annual Report for 1923,
p. 4; Annual Report for 1924, p. 35; Annual Report for 1925, p. 38;
Annual Reports for 1926, 1928, 1929, 1931, 1932, p. 1; Research
Associates at the Bureau of Standards, Bureau Circular No. 296
(1926). For a list of cooperating organizations as of December 1,
1926,
see Misc. Publications No. 96 (1927).
[
Footnote 2/6]
No fees have been charged except to cover the cost of testing,
but the Act of June 30, 1932, c. 314, § 312, 47 Stat. 410, directs
that, "for all comparisons, calibrations, tests, or investigations,
performed" by the Bureau, except those performed for the Government
of the United States or a state, "a fee sufficient in each case to
compensate the . . . Bureau . . . for the entire cost of the
services rendered shall be charged. . . ."
[
Footnote 2/7]
Act of March 4, 1915, c. 141, 38 Stat. 997, 1044.
[
Footnote 2/8]
See the cases collected in 30 Columbia Law Rev. 1172;
36 Harvard Law Rev. 468.
[
Footnote 2/9]
It has been said that many scientists in the employ of the
government regard the acceptance of patent rights leading to
commercial rewards in any case as an abasement of their work.
Hearings on Exploitation of Inventions by Government Employees,
Senate Committee on Patents, 65th Cong., 3d Sess. (1919), pp. 16,
17.
See also the Hearings before the same Committee,
January 23, 1920, 66th Cong., 2d Sess. (1920), p. 5. The opinion of
the Court attributes importance to the fact, seemingly irrelevant,
that other employees of the Bureau have in some instances in the
past taken out patents on their inventions which, so far as
appears, the government has not prevented them from enjoying. The
circumstances under which those inventions were made do not appear.
But even if they were the same as those in the present case, there
is no basis for contending that, because the government saw fit not
to assert its rights in other cases, it has lost them in this.
Moreover, there is no necessary inconsistency in the government's
position if it concluded in those cases that the public interest
would be served best by permitting the employees to exploit their
inventions themselves, and adopted a contrary conclusion here.
[
Footnote 2/10]
[
Footnote 2/11]
In addition to the hearings cited
supra, 289
U.S. 178fn2/10|>note 10,
see H.R. Report No. 1596,
68th Cong., 2d Sess.; H.R. Report No. 871, Senate Report No. 765,
70th Cong., 1st Sess. The bill was originally a companion proposal
to the Federal Trade Commission bill discussed
infra note
289
U.S. 178fn2/13|>13.
See the references given
there.
[
Footnote 2/12]
See Selden Co. v. National Aniline & Chemical
Co., 48 F.2d
270, 272;
Squier v. American Telephone & Telegraph
Co., 7 F.2d 831, 832,
aff'g, 21 F.2d
747.
[
Footnote 2/13]
The bill referred to in the opinion of the Court was one
sponsored by the executive departments to endow the Federal Trade
Commission with the power to accept assignments of patents from
government employees and administer them in the public interest. It
passed the Senate on one occasion and the House on another, but
failed to become a law. S. 5265, 65th Cong., 3d Sess., S. 3223,
66th Cong., 1st Sess., H.R. 9932, 66th Cong., 1st Sess., H.R.
11984, 66th Cong., 3d Sess. In the course of hearings and debates,
many points of view were expressed.
See Hearings on
Exploitation of Inventions by Government Employees, Senate
Committee on Patents, 65th Cong., 3d Sess. (1919); Hearing before
the same Committee, 66th Cong., 2d Sess. (1920); Senate Report No.
405, H.R. Report No. 595, 66th Cong., 2d Sess., recommending
passage.
See 59 Cong.Rec. 2300, 2421, 2430, 3908, 4682,
4771, 8359, 8360, 8483, 8490; 60
id. 356; Conference
Report, H.R. No. 1294, Sen.Doc. No. 379, 66th Cong., 3d Sess.
And see 60 Cong.Rec. 2890, 3229, 3264-3269, 3537.
Differences were stressed in the purposes and needs of different
agencies of the government.
See especially Hearings
(1919),
supra, pp. 22, 24, 25. The need of commercial
incentives to private exploiters as well as the general
desirability of such exploitation were admitted, but the dangers
were recognized as well. It was thought that the public interest
would best be served by the establishment of a single agency for
government control, with the power to determine upon some
compensation for the inventor.
After the death of this bill in the Senate, February 21, 1921,
the subject was again considered by an Interdepartmental Board
established by executive order of President Harding. August 9,
1922. Its report was transmitted to Congress by President Coolidge,
in December, 1923. Sen.Doc. No. 83, 68th Cong., 1st Sess. The Board
found that there had never been any general governmental policy
established with respect to inventions, that whether public
dedication, private exploitation, or governmental control and
administration is desirable depends largely on the nature of the
invention. Accordingly, legislation was recommended establishing a
permanent Interdepartmental Patents Board with the power to demand
assignments of patents on those inventions thereafter developed in
the service, which, "in the interest of the national defense, or
otherwise in the public interest," should be controlled by the
government. No action was taken upon this proposal.
Since that time, the Director of the Bureau of Standards has
recommended that a "uniform, equitable policy of procedure" be
defined for the government by legislation. Annual Report for 1925,
p. 40. In the Report for 1931, it is said (p. 46) that the "patent
policy of this Bureau has always been that patentable devices
developed by employees paid out of public funds belong to the
public," and the Report for 1932 adds (p. 40), "if not so dedicated
directly, the vested rights should be held by the Government."
MR. CHIEF JUSTICE HUGHES, dissenting:
I agree with MR. JUSTICE STONE's analysis of the facts showing
the nature of the employment of Dunmore and Lowell, and with his
conclusions as to the legal effect
Page 289 U. S. 224
of that employment. As the people of the United States should
have the unrestricted benefit of the inventions in such a case, I
think that the appropriate remedy would be to cancel the
patents.