When a person in the employ of the United States makes an
invention of value and takes out letters patent for it, the
government, if it makes use of the invention without the consent of
the patentee, becomes thereby liable to pay the patentee
therefor.
If a person in the employ and pay of another or of the United
States is directed to devise or perfect an instrument or means for
accomplishing a prescribed result, and he obeys and succeeds and
takes out letters patent for his invention or discovery, he cannot,
after successfully accomplishing the work for which he was
employed, plead title thereto as against his employer.
When a person in the employ of another in a certain line of work
devises an improved method or instrument for doing that work, and
uses the property of his employer and the services of other employs
to develop and put in practicable form his invention, and
explicitly assents to the use by his employer of such invention, a
jury, or a court trying the facts, is warranted in finding that he
has so far recognized the obligations of service flowing from his
employment and the benefits resulting from his use of the property
and the assistance of the co-employees of his employer as to have
given to such employer an irrevocable license to use such
invention.
McClurg v.
Kingsland, 1 How. 202, affirmed and applied.
During the years 1867 and 1868, Spencer M. Clark was in the
employ of the government as Chief of the Bureau of Engraving and
Printing. That bureau was not one created by any special act of
Congress, but was established by order
Page 137 U. S. 343
of the Secretary of the Treasury under the general powers
conferred by the second section of the Act of July 11, 1862, 12
Stat. 532, now ยง 3577 Rev.Stat., which provides as follows:
"That the Secretary of the Treasury be, and is hereby,
authorized, in case he shall think it inexpedient to procure said
notes or any part thereof, to be engraved and printed by contract,
to cause the said notes, or any part thereof, to be engraved,
printed, and executed in such form as he shall prescribe at the
Treasury Department in Washington and under his direction, and he
is hereby empowered to purchase and provide all the machinery and
materials, and to employ such persons and appoint such officers as
may be necessary for this purpose."
While so employed, he conceived the idea of a self-canceling
stamp, and under his direction the employees of that bureau, in the
fall of 1867, using government property, prepared a die or plate,
and put into being the conception of Mr. Clark. On February 10,
1868, Clark filed a caveat in the Patent Office, and on September 1
an application for a patent. While this application was pending,
and on December 6, 1869, he assigned, by deed duly recorded, his
rights to the appellant in payment of a longstanding account of
appellant against him. On December 21, 1869, the patent was issued
to appellant, as the assignee of Clark, antedated to June 21, 1869.
On December 27, 1869, appellant notified the Commissioner of
Internal Revenue that he was the owner of the patent, and sought an
arrangement for proper compensation for the use of this patented
stamp by the government on whiskey barrels. No answer was made to
this communication, and on September 17, 1875, appellant brought
this suit in the Court of Claims to recover from the government for
such use. In addition to the matters heretofore stated, the
following facts were found by the Court of Claims:
"I. In the latter part of 1867, or early part of 1868, while the
subject of revising the methods for collecting internal revenue was
being considered by the Committee on Ways and Means of the House of
Representatives, a subcommittee was
Page 137 U. S. 344
given special charge of the tax on whiskey and distilled
spirits. A room was assigned by the Secretary of the Treasury in
the Treasury building to this subcommittee, which immediately
proceeded to hold official consultations with the Secretary of the
Treasury and Commissioner and Deputy Commissioner of Internal
Revenue. Into these consultations, Spencer M. Clark, the Chief of
the Bureau of Engraving and Printing, was called officially, and to
him was assigned the duty of devising a stamp, and it was early
determined and understood by all, including Mr. Clark, that the
scheme would proceed upon the assumption that the best stamp which
he could devise would be adopted and made a part of the revised
scheme. In these consultations it was mutually understood that Mr.
Clark was acting in his official capacity, as Chief of the Bureau
of Engraving and Printing, and it was not understood or intimated
that the stamp which he was to devise would be patented or become
his personal property."
"II. In the course of the consultations referred to in the first
finding, Mr. Clark laid before the Commissioner and subcommittee a
self-canceling revenue stamp as being, in his opinion, a very
desirable stamp for the prevention of fraud. This stamp was
satisfactory to the Committee on Ways and Means and to the
Commissioner of Internal Redenne. It was of the same design and
construction as the stamp subsequently adopted by the Commissioner
and manufactured and used by the government, as hereinafter set
forth, and was the same device as that set forth and described in
the specifications of Clark's patent annexed to and forming part of
the petition."
"III. No bargain, agreement, contract or understanding was ever
entered into or reached between the officers of the government and
Mr. Clark concerning the right of the government to use the
invention or concerning the remuneration, if any, which should be
paid for it. Neither did Mr. Clark give notice or intimate that he
intended to protect the same by letters patent, or that he would
expect to be paid a royalty if the government should manufacture
and use stamps of his invention. Before the final adoption of the
stamp by the Commissioner of Internal Revenue, he stated to him
that the
Page 137 U. S. 345
design was his own, but that he should make no charge to the
government therefor, as he was employed on a salary by the
government and had used the machinery and other property of the
government in the perfection of the stamp. No express license to
use the invention was ever given by Mr. Clark to the government,
nor any notice prohibiting its use or intimating that he would
demand a royalty."
"IV. Immediately after the enactment of the Act 20th July, 1868,
15 Stat. 125, and before Mr. Clark had filed an application for a
patent, the Commissioner of Internal Revenue adopted the stamp as
the one to be used in the collection of the tax on whiskey and
distilled spirits. It was adopted by the Commissioner on the
recommendation of Mr. Clark. The Commissioner's selection referred
to the completed and perfected stamp which had been devised by the
claimant and engraved and made in the Bureau of Engraving and
Printing and approved by the Committee of Ways and Means, as set
forth in the second finding. The government then proceeded to
manufacture at the Bureau of Engraving and Printing large
quantities of these stamps. The first so manufactured were
delivered to the Commissioner of Internal Revenue on the 25th
August, 1868, and the second November following was fixed by the
Secretary of the Treasury as the day for commencing the use
thereof. Their manufacture and use were continued until some time
in the year 1872, the last issue to the collection districts being
on February 15, 1872."
And upon these facts, judgment was entered in favor of the
government. 21 Ct.Cl. 479 and 22 Ct.Cl. 335. From such judgment an
appeal was brought to this Court.
MR. JUSTICE BREWER, after stating the facts as above, delivered
the opinion of the court.
The case presented by the foregoing facts is one not free from
difficulties. The government has used the invention of
Page 137 U. S. 346
Mr. Clark, and has profited by such use. It was an invention of
value. The claimant and appellant is the owner of such patent, and
has never consented to its use by the government. From these facts,
standing alone, an obligation on the part of the government to pay
naturally arises. 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 therein. 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. But this general rule is subject to these limitations: If
one is employed to devise or perfect an instrument, or a means for
accomplishing a prescribed result, he cannot, after successfully
accomplishing the work for which he was employed, plead title
thereto as against his employer. That which he has been employed
and paid to accomplish becomes, when accomplished, the property of
his employer. Whatever rights as an individual he may have had in
and to his inventive powers, and that which they are able to
accomplish, he has sold in advance to his employer. So also when
one is in the employ of another in a certain line of work, and
devises an improved method or instrument for doing that work, and
uses the property of his employer and the services of other
employees to develop and put in practicable form his invention, and
explicitly assents to the use by his employer of such invention, a
jury or a court trying the facts is warranted in finding that he
has so far recognized the obligations of service flowing from his
employment and the benefits resulting from his use of the property
and the assistance of the co-employees of his employer as to have
given to such employer an irrevocable license to use such
invention. The case of
McClurg v.
Kingsland, 1 How. 202, is in point. In that case
was presented the question as to the right of defendants to use an
invention
Page 137 U. S. 347
made and patented by one Harley. The facts as stated, and the
rulings of the court, are these:
"That Harley was employed by the defendants at their foundry in
Pittsburgh, receiving wages from them by the week. While so
employed, he claimed to have invented the improvement patented,
and, after several unsuccessful experiments, made a successful one
in October, 1834. The experiments were made in the defendant's
foundry, and wholly at their expense, while Harley was receiving
his wages, which were increased on account of the useful result.
Harley continued in their employment on wages until January or
February, 1835, during all which time he made rollers for them. He
often spoke about procuring a patent, and prepared more than one
set of papers for the purpose; made his application, the 17th
February, 1835, for a patent. It was granted on the 3d of March,
and assigned to the plaintiffs on the 16th of March, pursuant to an
agreement made in January. While Harley continued in the
defendant's employment, he proposed that they should take out a
patent, and purchase his right, which they declined. He made no
demand on them for any compensation for using his improvement, nor
gave them any notice not to use it, till, on some misunderstanding
on another subject, he gave them such notice, about the time of his
leaving their foundry, and after making the agreement with the
plaintiffs, who owned a foundry in Pittsburgh, for an assignment to
them of his right. The defendants continuing to make rollers on
Harley's plan, the present action was brought in October, 1835,
without any previous notice by them. The court left it to the jury
to decide what the facts of the case were, but if they were as
testified, charged that they would fully justify the presumption of
license, a special privilege, or grant to the defendants to use the
invention, and the facts amounted to 'a consent and allowance of
such use,' and show such a consideration as would support an
express license or grant, or call for the presumption of one to
meet the justice of the case, by exempting them from liability,
having equal effect with a license, and giving the defendants a
right to the continued use of the invention."
On review in this Court, the rulings of the trial
Page 137 U. S. 348
court were sustained. That case is decisive of this. Clark was
in the employ of the government when he made this invention. His
experiments were wholly at the expense of the government. He was
consulted as to the proper stamp to be used, and it was adopted on
his recommendation. He notified the government that he would make
no charge if it adopted his recommendation, and used his stamp, and
for the express reason that he was in the government employ, and
had used the government machinery in perfecting his stamp. He never
pretended personally to make any charge against the government.
Indeed, there is but one difference between that case and this. In
that, Harley's wages were increased on account of his invention; in
this, Clark's were not; but such difference does not seem vital. We
think, therefore, the rulings of the Court of Claims were correct,
and its judgment is
Affirmed.