An employee, paid by salary or wages, who devises an improved
method of doing his work, using the property or labor of his
employer to put his invention into practical form, and assenting to
the use of such improvements by his employer, cannot entitle
himself, by taking out a patent for such invention, to recover a
royalty or other compensation for such use.
A person looking on and assenting to that which he has power to
prevent is precluded from afterwards maintaining an action for
damages.
Solomons v. United States, 137 U.
S. 342, affirmed and applied to this case.
This was a suit by Gill to recover of the United States the sum
of $94,693.04 upon an implied contract for the use of certain
machines covered by letters patent issued to the claimant.
The petition alleged, in substance, that from March, 1864, to
March, 1881, the claimant was employed as machinist, foreman, and
draftsman at the Frankford Arsenal, in the State of Pennsylvania,
and since March, 1881, as master armorer at such arsenal, receiving
during the term of his employment a
per diem compensation
for his services. His engagement required him to perform manual
labor and to exercise his mechanical skill in the service of the
government, but did not require the exercise of his inventive
genius in such service, nor secure to the government the right to
use any of his inventions without compensation.
That at sundry times from 1869 to 1882, six patents were granted
to him, for a cartridge-loading machine, a weighing machine, a
gauging machine, a cartridge anvil, a heading machine, and a
priming tool for reloading; that at different times, he assigned to
individuals or corporations all these inventions, but reserved to
the government the right to use them.
The petition further alleged that the reasonable value of such
use by the government amounted to the sum of
Page 160 U. S. 427
$94,693.04, no part of which had even been paid; that no action
upon the claim had been had in any department of the government
beyond repeated acknowledgments, by the ordnance department, of
claimant's right to compensation for the use of the inventions.
The government made a general denial of the allegations of the
petition, and submitted the case to the Court of Claims, which made
a finding of facts, the material portions of which are printed in
the margin,
* and entered a
judgment dismissing
Page 160 U. S. 428
the claim upon the ground that where an employee of the
government takes advantage of his connection with it to introduce
an unpatented device into the public service, giving no intimation
at the time that he regards it as property or that he intends to
protect it by letters patents, but allows the government to test
the invention at its own exclusive cost and risk by constructing
machinery and bringing it into practical use before he applies for
a patent, the law will not imply a contract, and that a contract
will not be implied in favor of an employee who has thus placed a
patented device in the public service as to machines constructed
and used after his patent has been obtained.
Page 160 U. S. 429
MR. JUSTICE BROWN. after stating the facts in the foregoing
language, delivered the opinion of the Court.
This case raises the question, which has been several times
presented to this Court, whether an employee paid by salary or
wages, who devises an improved method of doing his work, using the
property or labor of his employer to put his invention into
practical form, and assenting to the use of such improvements by
his employer, may, by taking out a patent
Page 160 U. S. 430
upon such invention, recover a royalty or other compensation for
such use. In a series of cases to which fuller reference will be
made hereafter, we have held that this could not be done.
The principle is really an application or outgrowth of the law
of estoppel
in pais by which a person looking on and
assenting to that which he has power to prevent is held to be
precluded ever afterwards from maintaining an action for damages. A
familiar instance is that of one who stands by while a sale is
being made of property in which be has an interest, and makes no
claim thereto, in which case he is held to be estopped from setting
up such claim. The same principle is applied to an inventor who
makes his discovery public, looks on, and permits others to use it
without objection or assertion of a claim for a royalty. In such
case, he is held to abandon his inchoate right to the exclusive use
of his invention, to which a patent would have entitled him, had it
been applied for before such use. As was said by Mr. Justice Story
in
Pennock v.
Dialogue, 2 Pet. 1,
27 U. S. 16:
"This inchoate right, thus once gone, cannot afterwards be
resumed at his pleasure, for where gifts are once made to the
public in this way they become absolute."
"It is possible," said the trial court, in charging the
jury,
"that the inventor may not have intended to give the benefit of
his discovery to the public, and may have supposed that by giving
permission to a particular individual to construct for others the
thing patented he could not be presumed to have done so. But it is
not a question of intention which is involved in the principle we
have laid down, but of legal inference, resulting from the conduct
of the inventor, and affecting the interests of the public. It is
for the jury to say whether the evidence brings this case within
the principle which has been stated."
This language was quoted with approval in
Grant v.
Raymond, 6 Pet. 218. So also, in
Shaw v.
Cooper, 7 Pet. 292,
32 U. S. 323,
it was held directly that
"whatever may be the intention of the inventor, if he suffers
his invention to go into public use through any means whatsoever
without the immediate assertion of his right, he is not entitled to
a patent. "
Page 160 U. S. 431
The application of this principle to a single individual whom
the patentee has permitted to make use of his invention without
claiming compensation therefor first arose in
McClurg v.
Kingsland, 1 How. 202. In this case, the patentee,
Harley, was employed by the defendants at their foundry upon weekly
wages. While so employed, he invented the patented improvements,
making experiments in the defendants' foundry, and wholly at their
expense. The result proving useful, his wages were increased. He
continued in their employment, during all of which time he made
rollers for them, spoke about procuring a patent, and finally made
an application, which was granted. He assigned the patent to the
plaintiffs, after the defendants had declined his proposition that
they should take out a patent and purchase his right. He made no
demand upon them for compensation for using his improvement, and
gave them no notice not to use it, until a misunderstanding had
arisen, when he left their employment and made an agreement with
plaintiffs to assign his right to them. The defendants continuing
to make the rollers on his plan, the action was brought by the
plaintiffs, without any previous notice by them. It was held that
the facts above stated justified the presumption of a license to
use the invention, and that the charge of the court that the
defendants might continue to use it without liability to the
plaintiffs was correct.
In the case of
Solomons v. United States, 137 U.
S. 342, one Clark, who was in the employ of the
government as chief of the Bureau of Engraving and Printing,
conceived the idea of a self-cancelling stamp, and prepared a die
or plate therefor, making use of the services of the employees of
the bureau and the property of the government. While his
application for a patent was pending, he assigned his rights to the
appellant, Solomons, in payment of an account between them. On
taking out the patent, the appellant notified the Commissioner of
Internal Revenue that he was the owner of the patent, and demanded
compensation for the use of the stamp on whisky barrels. It further
appeared that Mr. Clark, as chief of the bureau, had been assigned
the duty of devising a stamp for this purpose, and it was not
understood or intimated that the
Page 160 U. S. 432
stamp which he was to devise should be patented, or become his
personal property. Indeed, before the final adoption of the stamp,
he said that the design was his own, but he should make no charge
to the government therefor, as he was employed on a salary by the
government, and had used its machinery and other property in the
perfection of the stamp. It was held that, having been employed and
paid to devise a new stamp, the invention, when accomplished,
became the property of the government, and that the patentee had
practically sold in advance whatever he might be able to accomplish
in that direction.
A similar case was that of
Lane & Bodley Company v.
Locke, 150 U. S. 193, in
which an engineer and draftsman at a fixed salary, in the employ of
the defendants, and using their tools and patterns, invented a stop
valve, which the firm used with his knowledge in certain elevators
constructed by them until its dissolution, and after that a
corporation organized by the firm used it in the same way, and with
the like knowledge. It was held that the patentee, having made no
claim for remuneration for the use of the patent, saying that he
did not desire to disturb his friendly relations with the firm,
might be presumed to have recognized an obligation to permit them
to use the invention.
In
McAleer v. United States, 150 U.
S. 424, there was an express license by an employee in
the Treasury Department to such department and its bureaus of a
right to make and use machines containing the improvements of the
patentee to the end of the patented term, and it was held that this
agreement could not be varied by parol evidence that it was to
terminate upon the discharge of the patentee from the employment of
the government.
In
Keyes v. Eureka Mining Co., 158 U.
S. 150, a person in the employ of a smelting company
invented a new method of withdrawing molten metal from a furnace,
took out a patent for it, and permitted his employer to use it
without charge so long as he remained in its employ, which was
about ten years. It was held that there was at least an implied
license to use the improvement without payment of royalties
during
Page 160 U. S. 433
the continuance of his employment, and also a license to use the
invention upon the same terms and royalties fixed for other
parties, from the time the patentee left the defendant's
employment.
An attempt is made to differentiate the case under consideration
from those above cited in the fact, stated in the third finding,
that the invention in this case, until it was reduced to paper in
the form of an intelligible drawing, was made out of the hours of
labor at the arsenal, and during the time which properly belonged
to the patentee, and that, by finding 4,
"the claimant did not use any property of the defendants or the
services of any of the employees of the defendants in making or
developing or perfecting the inventions themselves."
This, however, must be taken in connection with the further
finding that
"the cost of preparing patterns for the iron and steel castings,
and of preparing working drawings, and of constructing working
machines was borne exclusively by the government,"
and that in each case one or more machines or articles of
manufacture embodying the invention had been constructed, and was
in operation or use in the arsenal, with the claimant's knowledge
and consent, before he filed an application for a patent. The
inference to be deduced from the findings is in substance that
while the claimant used neither the property of the government nor
the services of its employees in conceiving, developing, or
perfecting the inventions themselves, the cost of preparing the
patterns and working drawings of the machines, as well as the cost
of constructing the machines themselves that were made in putting
the inventions into practical use, was borne by the government, the
work being also done under the immediate supervision of the
claimant.
There is an assumption by the claimant in this connection that
if he did not make use of the time or property of the government in
conceiving and developing his ideas, the fact is an important one
as distinguishing this case from those above cited. In view of the
finding that he did make use of the property and labor of the
government in preparing patterns and working drawings and
constructing his working
Page 160 U. S. 434
machines, the distinction is a very narrow one -- too narrow, we
think, to create a difference in principle or to prevent the
application of the rule announced in those cases. In
Solomons' case, the finding was that, while employed as
Chief of the Bureau of Engraving and Printing, Clark conceived the
idea of a self-cancelling stamp, and under his direction the
employees of that bureau, using government property, prepared a die
or plate, and put into being the conception of Mr. Clark.
In every case, the idea conceived is the invention. Sometimes,
as in the case of
McClurg v. Kingsland, a series of
experiments is necessary to develop and perfect the invention. At
other times, as in the case under consideration and apparently in
the
Solomons case, the invention may be reduced to paper
in the form of an intelligible drawing, when nothing more is
necessary than the preparing of patterns and working drawings, and
the embodiment of the original idea in a machine constructed
accordingly. Now whether the property of the government and the
services of its employees be used in the experiments necessary to
develop the invention, or in the preparation of patterns and
working drawings, and the construction of the completed machines,
is of no importance. We do not care in this connection to dwell
upon the niceties of the several definitions of the word "develop"
as applied to an invention. The material fact is that in both this
and the
Solomons case, the patentee made use of the labor
and property of the government in putting his invention into the
form of an operative machine, and whether such employment was in
the preliminary stage of elaborating and experimenting upon the
original idea, putting that idea into definite shape by patterns or
working drawings, or finally embodying it in a completed machine is
of no consequence. In neither case did the patentee risk anything
but the loss of his personal exertions in conceiving the invention.
In both cases, there was a question whether machines made after his
idea would be successful or not, and if such machines had proven to
be impracticable, the loss would have fallen upon the
government.
In this connection, too, it should be borne in mind that the
Page 160 U. S. 435
fact, upon which so much stress has been laid by both sides,
that the patentee made use of the property and labor of the
government in putting his conceptions into practical shape, is
important only as furnishing an item of evidence tending to show
that the patentee consented to and encouraged the government in
making use of his devices. The ultimate fact to be proved is the
estoppel, arising from the consent given by the patentee to the use
of his inventions by the government, without demand for
compensation. The most conclusive evidence of such consent is an
express agreement or license, such as appeared in the
McAleer case, but it may also be shown by parol testimony
or by conduct on the part of the patentee proving acquiescence on
his part in the use of his invention. The fact that he made use of
the time and tools of his employer, put at his service for the
purpose, raises either an inference that the work was done for the
benefit of such employer or an implication of bad faith on the
patentee's part in claiming the fruits of labor which technically
he had no right to enlist in his service.
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. On
the other hand, it is equally clear that if the patentee be
employed to invent or devise such improvements, his patents
obtained therefor belong to his employer, since in making such
improvements, he is merely doing what he was hired to do. Indeed,
the
Solomons case might have been decided wholly upon that
ground, irrespective of the question of estoppel, since the finding
was that Clark had been assigned the duty of devising a stamp, and
it was understood by everybody 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 understood that he was acting in
Page 160 U. S. 436
his official capacity as Chief of the Bureau of Engraving and
Printing, but it was not understood or intimated that the stamp he
was to devise would be patented or become his personal property. In
fact, he was employed and paid to do the very thing which he did --
viz., to devise an improved stamp, and, having been
employed for that purpose, the fruits of his inventive skill
belonged as much to his employer as would the fruits of his
mechanical skill. So, if the inventions of a patentee be made in
the course of his employment, and he knowingly assents to the use
of such inventions by his employer, he cannot claim compensation
therefor, especially if his experiments have been conducted or his
machines have been made at the expense of such employer.
The following remarks of the Court in the
Solomons case
(page
137 U. S. 346)
are pertinent in this connection:
"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 practical form his
invention, and expressly 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 the
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 acquiescence of the claimant in this case in the use of his
invention by the government is fully shown by the fact that he was
in its employ; that the adoption of his inventions by the
commanding officer was procured at his suggestion; that the
patterns and working drawings were prepared at the cost of the
government; that the machines embodying his inventions were also
built at the expense of the government; that he never brought his
inventions before any agent of the government as the subject of
purchase and sale; that he raised no objection to the use of his
inventions by the government, and that the commanding officer never
undertook to incur a legal or pecuniary obligation on the part of
the government
Page 160 U. S. 437
for the use of the inventions or the right to manufacture
thereunder. It further appeared that from time to time his wages
were advanced from four to six dollars a day, and while it was
never stipulated by the commanding officer or understood by the
claimant that the advance of wages was a consideration for the use
of the inventions, the practical ability of the claimant as an
inventor, and the value of his inventions to the government, did
operate on the minds of the officers in estimating the claimant's
services and ordering his advancement.
Clearly a patentee has no right, either in law or morals, to
persuade or encourage officers of the government to adopt his
inventions, and look on while they are being made use of year after
year without objection or claim for compensation, and then to set
up a large demand upon the ground that the government had impliedly
promised to pay for their use. A patentee is bound to deal fairly
with the government, and if he has a claim against it, to make such
claim known openly and frankly, and not endeavor silently to raise
up a demand in his favor by entrapping its officers to make use of
his inventions. While no criticism is made of the claimant, who was
a simple mechanic and, as found by the Court of Claims, "a
faithful, intelligent, and capable employee, whose services were of
great value to the government," and whose conduct was "fair,
honest, and irreproachable," and while the government appears to
have profited largely by his inventive skill, we are of opinion,
for the reasons above stated, that the appeal in his behalf should
be addressed to the generosity of the legislative, rather than to
the justice of the judicial, department.
It may be added in this connection that the inventions which the
claimant suggested to the commanding officer to adopt were mere
undeveloped conceptions of his own, that had never been embodied in
a machine; that it was uncertain at this time whether he could or
would obtain patents for them. If he did not obtain patents, their
use was open to anybody. Under such circumstances, it is impossible
to say that an officer of the government, conceiving that he had
full authority
Page 160 U. S. 438
to make use of them, agreed by their adoption to pay for the
value of the use of such machines under patents that might be
applied for and granted in the future.
We are clearly of opinion that the case is covered by our former
decisions, and that the judgment of the court below must be
Affirmed.
*
"(1) During the period of time within which the claimant
invented the devices hereafter mentioned, he was in the defendants'
employment, and received wages, or a salary, for his services. The
terms of his employment required him to exercise his mechanical
skill in the service of the defendants, but did not require the
exercise of his inventive genius in such service, nor secure to the
defendants the right to use any inventions of the claimant without
compensation therefor."
"Letters patent of the United States were granted to the
claimant, while in the service of the defendants, as follows: No.
97,904, dated December 14, 1869, for a cartridge-loading machine;
No. 185,858, dated January 2, 1877, for a cartridge-weighing
machine; No. 208,903, dated October 15, 1878, for a
cartridge-gauging machine; No. 220,472, dated October 14, 1879, for
a cartridge anvil; No. 241,962, dated May 24, 1881, for a
cartridge-heading machine; No. 257,860, dated May 16, 1882 for a
priming tool for reloading."
"(2) The manner in which the inventions above referred to
originated and came into the use of the government was as
follows:"
"In 1867, the claimant, being a machinist or skilled mechanic in
the Frankford Arsenal, and getting as compensation $4 a day, came
to General Benet, the commanding officer, and suggested that an
improvement could be made in the method of loading cartridges, and
exhibited to the commanding officer then or subsequently his device
for an improvement which is now embodied in patent No. 97,904."
"General Benet, after due examination and consideration,
authorized the construction of such a machine. The machine was
built at a cost of $500 by the United States according to the
design of the claimant. On its completion, it proved to be
thoroughly satisfactory to the commanding officer, who authorized
the construction of a second machine. The construction of both took
place under the immediate supervision of the claimant, and such
supervision was a part of his ordinary duty and employment.
Subsequently successive commanding officers ordered from time to
time six other machines to be constructed, which in like manner
were built under the immediate supervision of the claimant, and all
of these eight machines were completed prior to the claimant filing
his application for a patent."
"After his patent had been issued, a ninth machine was also
ordered, and in like manner constructed under the immediate
supervision of the claimant. These machines have been used by the
government at the Frankford Arsenal in the manufacture of
cartridges, and continue in use to the present time."
"(3) At no time did the claimant ever bring his invention before
a commanding officer or other agent of the government as a subject
of purchase and sale; nor did he ever raise an objection to the use
of the invention as set forth in the preceding finding; nor did he
ever enter into an express agreement, written or oral, whereby a
license was granted or intended to be granted to the government to
operate and use the machine described in the preceding finding, or
whereby the claimant waived or intended to waive his legal or
equitable right, if any, to compensation; nor did any commanding
officer ever undertake or assume to incur a legal or pecuniary
obligation on the part of the government for the use of the
invention of the right to manufacture thereunder."
"The claimant was not employed to make inventions, nor assigned
to that duty, and his invention, until it was reduced to paper in
the form of an intelligible drawing, was made out of the hours of
labor at the arsenal and during the time which was properly his
own, and the thought and time which he devoted to it were
voluntarily given, as a good and earnest servant of the government
intent on rendering more effective the work and machinery of the
arsenal with which he was connected, and the work of so devising a
machine was not an obligation imposed upon him by the authorities
of the arsenal."
"(4) The other inventing of the claimant, set forth in the
patents enumerated in finding I, except that of the heading
machine, which was fabricated and used by the defendants under the
supervision of the claimant, were also brought to the attention of
the various commanding officers by suggestions from the claimant
for making the means and appliances at the arsenal more efficient
than they were, and in like manner the cost of preparing patterns
for the iron and steel castings and of preparing working drawings
and of constructing working machines was borne exclusively by the
government; but the claimant did not use any property of the
defendants, or the services of any employee of the defendants, in
making or developing or perfecting the inventions themselves. In
each case, one or more machines or articles or manufacture
embodying the invention had been constructed and was in operation
or use in the arsenal with the claimant's knowledge and assent
before he filed an application for a patent."
"(5) In 1867, when the claimant made his first invention
described in the patents hereinbefore enumerated, he was a
machinist, rated as a skilled laborer in the Frankford Arsenal, but
acting and doing the duty of a master armorer, on wages of $4 a
day. From time to time his wages were advanced until they became,
in 1881, $6 a day, and he was in 1881 appointed master armorer, the
duties of which are a general supervision of the shops. This
increase of pay and advancement of position came through and by
authority of the commanding officers of the arsenal, and the
consideration or reason therefor was that the claimant was a
faithful, intelligent, and capable employee whose service were of
great value to the government."
"It was never stipulated by any commanding officer, nor
understood or agreed to by the claimant, that the advance of wages
was to be a consideration for the use of his inventions, though the
practical ability of the claimant as an inventor, and the value of
his inventions to the government, did operate upon the minds of the
officers in estimating the claimant's services and ordering his
advancement."
"(6) The claimant has sold the right to use his inventions,
reserving the right to the government as set forth in finding 7, to
various persons for sums amounting in the aggregate to $5,380. But
the use of the inventions by private manufacturers is not nearly so
large as the use by the government, the inventions being specially
adapted to military purposes and appliances."