1. Any practice of an inventor and applicant for patent through
which he, deliberately and without excuse, postpones the beginning
of the term of his monopoly, and thus puts off the free public
enjoyment of the invention, is an evasion of the patent law and
defeats its aim. P.
263 U. S.
55.
2. An inventor of projectiles for rifled cannon having obtained
allowance of a patent from the Patent Office, procured the papers
to be filed in the secret archives on a statement that he wished
this for one year only as an aid in obtaining patent rights abroad,
and thereafter, for nearly ten years, deliberately abstained from
requesting issuance of his patent in order to postpone the
beginning of the patent monopoly until the needs of the government
for the invention should render it of pecuniary value to himself.
Held that he forfeited his right to the patent, within the
meaning of the special act of Congress authorizing this suit, and
therefore compensation could not be recovered from the government
even if it used the invention within the period defined by that
statute. Act of March 2, 1901, 31 Stat. 1788. Pp.
263 U. S. 56,
263 U. S.
59.
55 Ct.Clms. 234 affirmed.
Appeal from a judgment of the Court of Claims rejecting a claim
preferred under a special act of Congress, for compensation for use
by the government of an invention made by the plaintiffs'
decedent.
Page 263 U. S. 51
MR. CHIEF JUSTICE TAFT delivered the opinion of the Court.
This suit in the Court of Claims was brought under the authority
of a special act of Congress of March 2, 1901 (31 Stat. 1788), by
which the claim of William E. Woodbridge, for compensation from the
United States for use of his alleged invention relating to
projectiles for rifled cannon, for which a patent was ordered
issued by the government, was referred to the Court of Claims to
hear and determine first whether Woodbridge was the first and
original inventor, and second to what extent the United States had
used it and the amount of compensation which was due in equity and
justice therefor, and, if it found that Woodbridge was such
inventor, to decide the case as if a patent had issued for
seventeen years in 1852, the year in which it had been ordered to
issue, with the right of appeal as in other causes,
"
Provided, however, that the said court shall first be
satisfied that the said Woodbridge did not forfeit or abandon his
right to a patent by publication, delay, laches or otherwise, and
that the said patent was wrongly refused to be issued by the Patent
Office."
The Court of Claims heard the case, made findings of fact, and
held that the petition must be dismissed on two grounds: first,
that Woodbridge had forfeited or abandoned his right to a patent by
his delay or laches, and second that the United States had not used
his invention.
From the findings of fact, it appears that Woodbridge was a man
skilled in the science of projectiles and an inventor of genius and
experience. In February, 1852, he filed an application for a patent
for an invention which he described as consisting of
"applying to a projectile to be fired from a rifled gun a rifle,
ring or sabot, in the manner hereafter described, for the purpose
of giving to the projectile the rifle motion."
The Patent Office
Page 263 U. S. 52
advised him that the use of sabots or rings of soft metal
applied to iron balls was known for either smooth bore or rifled
guns, but, after discussion, allowed him two claims, the first for
a smooth ring for a smooth bore cannon and the second for a ring
with exterior projections to fit into the rifled cannon for the
purpose of diminishing windage, and giving the projectile a motion
in direction of the axis of the bore.
In a letter of March 23, 1852, Woodbridge wrote the Patent
Commissioner, with the claims amended in the form in which the
Patent Office had agreed to allow them, and said:
"I was informed in answer to my inquiry that, upon the issue, or
order to issue, of a patent, it may be filed in the secret archives
of your office (at the risk of the patentee) for such time as he
may desire. I wish to avail myself of this privilege when my patent
may issue in order that my ability to take out a patent in a
foreign country may not be affected by the publication of the
invention. If it is necessary to specify a particular time during
which the patent shall remain in the secret archives, you will
please consider one year as the time designated by me."
To this, on April 15, 1852, the Patent Office answered that a
patent had been ordered to issue on his application and, in
accordance with his request, the papers were filed among the secret
archives of the office, subject to his directions as to the time of
issuing them. This was done presumably under § 8 of the Act of July
4, 1836, 5 Stat. 121, which contains the following provision:
"And whenever the applicant shall request it, the patent shall
take date from the time of the filing of the specification and
drawings, not however exceeding six months prior to the actual
issuing of the patent, and on like request, and the payment of the
duty herein required, by any applicant, his specification and
drawings shall be
Page 263 U. S. 53
filed in the secret archives of the office until he shall
furnish the model and the patent be issued, not exceeding the term
of one year, the applicant being entitled to notice of interfering
applications."
After the filing of the papers in the secret archives before
April 15, 1852, nothing was done either by Woodbridge or the Patent
Office for 9 1/2 years, when, on December 31, 1861, Woodbridge
wrote to the Commissioner of Patents calling attention to his
invention in 1850 and his application for a patent in 1852, the
order of the office to issue the patent, and the filing of the
papers in the secret archives. He said:
"I have allowed it to remain until the present time, it being
only lately that any immediate opportunity of rendering it
pecuniarily available has occurred."
The fourth finding of the Court of Claims was as follows:
"The reason of said Woodbridge for his delay in requesting issue
of the patent allowed him was, as stated by him in communications
to the Patent Office, that he thought that course best fitted to
enable him to avail himself of the value of the patent, as, by
procuring delay in the issue of the patent, the wants of the
government might demand the invention before the patent should
expire, and that, as the invention could be made available only by
the necessities and action of the government, he thought the intent
of the law that the inventor should have 14 years' exclusive use of
his invention could in no other way be so well attained in the case
of this particular invention 'as by deferring the issue of the
patent to a time when it could be brought into practical use.'"
In the same letter in which Woodbridge asked the issue of the
patent, he requested that he be permitted to amend his
specifications and claims and broaden them, so as to cover the use
in a rifle of the sabot or ring without the projections to fit in
the grooves of the bore. Within five days,
Page 263 U. S. 54
the Patent Office replied that the patent would be ordered to
issue, but that the defects in his specifications could only be
cured by a reissue. On January 29th, before a month had elapsed,
the Patent Office wrote Woodbridge another letter, in answer to his
letter of December 31, 1861, in which he was informed that the
length of time he had allowed his invention to slumber was a bar to
the issue of a patent; that for nearly 10 years he had suffered his
application to remain locked up, not merely beyond the reach of the
public, but beyond even the cognizance of the examiners and other
officers of the department; that meantime, many patents had issued
for the same invention, and yet his only reason for his delay and
silence was that he supposed the invention would not prove
remunerative until recently. The application was rejected on the
ground of abandonment. On April 15, 1862, Woodbridge appealed to
the Board of Examiners in Chief, and on July 10, 1862, that board
affirmed the action of the examiner. Nothing was done by Woodbridge
after this until January 7, 1871, when he appealed to the
Commissioner of Patents. A day was set for the hearing. Woodbridge
did not get the notice. Another day was set. The Commissioner had
to postpone it, and told Woodbridge he would give him another date.
Nothing was done by anybody till January, 1879, when, on
Woodbridge's application, the case was heard and the Commissioner
affirmed the decision by the subordinate tribunals that the facts
amounted to abandonment. Woodbridge appealed to the Supreme Court
of the District, which affirmed the Commissioner on February 28,
1880.
The Court of Claims found that Woodbridge was the first and
original inventor of the invention involved in the two claims
recited above. It also found that the United States had not used
the invention. The latter finding as one of fact is attacked on the
ground that the question of infringement is a mixed question of law
and fact, and that,
Page 263 U. S. 55
with all the devices used by the United States shown in patents
subsequent to Woodbridge which it is found the United States did
use, the question of nonuser is really a question of law which
should be reviewed here.
The judgment of the Court of Claims was chiefly based on the
conclusion of law from the facts found that Woodbridge had
forfeited or abandoned his right to a patent by his delay and
laches. The court also held that the claims of Woodbridge did not
cover the devices the United States used.
The purpose of the clause of the Constitution concerning patents
is, in terms, to promote the progress of science and the useful
arts, and the plan adopted by Congress in exercise of the power has
been to give one who makes a useful discovery or invention a
monopoly in the making, use and vending of it for a limited number
of years. Under the Act of February 21, 1793, 1 Stat. 318, it was
for 14 years. Under the Act of July 4, 1836, 5 Stat. 117, 119, it
was 14 years, with a right of extension under certain conditions
and a proper showing for 7 years longer (
idem., p. 124, §
18). Under the Act of March 2, 1861, 12 Stat. 246, 249, the term
was made 17 years without extension, and this has been the term
ever since. It was the legislative intention that the term should
run from the date of the issue of the patent, and that, at the end
of that time, the public might derive, from the full specifications
required in the application accompanying the patent, knowledge
sufficient to enable it freely to make and use the invention. It is
true that a patentee is not obliged either to make, use, or vend
his invention during the period of his monopoly.
Crown Co. v.
Nye Tool Works, 261 U. S. 24;
Continental Paper Bag Co. v. Eastern Paper Bag Co.,
210 U. S. 405.
Congress relies for the public benefit to be derived from the
invention during the monopoly on the natural motive for gain in the
patentee to exploit his invention and to make, use,
Page 263 U. S. 56
and vend it or its product or to permit others to do so, for
profit. The importance in working out the purpose of Congress of
keeping the inventor's monopoly within the term for which the
patent is granted is thus shown to be capital. Any practice by the
inventor and applicant for a patent through which he deliberately
and without excuse postpones beyond the date of the actual
invention, the beginning of the term of his monopoly, and thus puts
off the free public enjoyment of the useful invention, is an
evasion of the statute, and defeats its benevolent aim.
In this case, we have a delay of 9 1/2 years in securing a
patent that might have been had at any time in that period for the
asking, and this for the admitted purpose of making the term of the
monopoly square with the period when the commercial profit from it
would be highest. Not until war or fear of war came was there
likely to be a strong demand for rifled cannon and their
improvement. Hence, the inventor, having put his order for the
issue of a patent into the secret archives of the Patent Office in
1852, sat down and waited until after the Civil War came on in 1861
before seeking to avail himself of the patent, thus postponing the
time when the public could freely enjoy it for nearly 10 years.
Meantime, other inventors had been at work in the same field and
had obtained patents without knowledge of the situation with
respect to Woodbridge's invention. This is not a case where
evidence has to be weighed as to the purpose of the inventor. He
avows his deliberate intention. This is not a case of abandonment.
It is a case of forfeiting the right to a patent by designed delay.
The special statute makes it a condition of any jurisdiction of the
Court of Claims to render a judgment against the United States that
the court shall find that claimant had not forfeited his right to a
patent by delay or laches or for other reasons. This necessarily
implies that there may be forfeiture by delay or laches,
Page 263 U. S. 57
and this Court has said that there may be such a forfeiture. In
Kendall v.
Winsor, 21 How. 322,
62 U. S. 329,
Mr. Justice Daniel, speaking for the Court, delivered a very clear
and forcible opinion on what the inventors who sought patents owed
the public. One passage in that opinion is apposite here:
"It is," said the Justice,
"the unquestionable right of every inventor to confer
gratuitously the benefits of his ingenuity upon the public, and
this he may do either by express declaration or by conduct equally
significant with language -- such, for instance, as an acquiescence
with full knowledge in the use of his invention by others; or he
may forfeit his rights as an inventor by a willful or negligent
postponement of his claims, or by an attempt to withhold the
benefit of his improvement from the public until a similar or the
same improvement should have been made and introduced by
others."
In the case before us, we have the feature last alluded to. Many
inventors were at work in the same field, and had made advances in
the art, and the government had used them. When Woodbridge
conceived that the time for him had come to assert his monopoly, he
became aware of the fact that, in his specifications and claims, as
allowed, he had not covered the real advance made by his
unconscious competitors, and that was the use in a rifled gun of a
ring or sabot without projections to fit into the rifling of the
bore, which, because of the softness of the metal of the ring under
the heat and pressure, would do so without projections, and so, 9
1/2 years after his patent had been allowed, but not issued, he
applied for a change of specifications and claims so that he might
cover the patents of these subsequent inventors.
Reference is made to the custom of the Patent Office in 1852,
and its permission and acquiescence in the consignment of
Woodbridge's specifications and order for issue
Page 263 U. S. 58
of his patent to the secret archives, as an excuse and
explanation for his course. But this is no justification. By the
terms of his letter directing it to be done, he said he wished to
apply for foreign patents, and that he would not ask delay for more
than a year. Moreover, § 8 of the law of 1836, quoted above,
wherein is found the only authority for such a proceeding, limits
the possible period of the deposit in the secret archives to one
year, for the evident purpose of preparing a model. Here, the
findings show that the model had been filed before the deposit, and
also show that he never applied for a foreign patent. These
circumstances only emphasize the truth of his avowal of 1862 that
he was deliberately delaying the issue of his patent so that its
term and monopoly would reach forward to include nearly 10 more
years of the future, and cover a much more commercially lucrative
period than if he had obtained his patent when he might and should
have requested it. Thus, he would have deprived the public of a
decade of free use of the patent which the law intended. It is true
that, under the special law authorizing this action, Woodbridge's
representatives could not recover compensation from the government
except for the period of 17 years from 1852. But this feature of
the special law is immaterial in considering the jurisdictional
question whether, by his conduct, he forfeited his right to his
patent. That must be decided on the facts as they were between 1852
and 1862. Had he taken out his patent in 1852, he would have been
entitled to a term of 14 years, with a contingent possibility of an
extension for 7 years more. With the change of the law in 1861, had
he succeeded in his effort on the last day of that year, he would
have secured a patent for 17 years from 1862. To state it in
another way, his certain term, if he had been diligent and not
sought to evade the law, would have expired in 1866. Had he
succeeded in his illegal plan
Page 263 U. S. 59
and procured a patent in 1862, his term would have ended in
1879. Part of this unconscionable postponement of the end of his
monopoly was due to the change of law in 1861, but nearly 10 years,
as already said, was the result of his deliberate design.
No case cited to us presents exactly these facts, but the
general principles upon which this Court has proceeded in cases of
abandonment by conduct and its views of the rights of the public,
and the purpose of the constitutional authority to grant patents
and of Congress in its legislative execution of that purpose set
forth in those cases leave no doubt of the conclusion we must
reach.
Pennock v.
Dialogue, 2 Pet. 1;
Wyeth v. Stone, 1
Story 273, 282;
Show v.
Cooper, 7 Pet. 292;
Kendall v.
Winsor, 21 How. 322,
62 U. S. 329;
Planing-Machine Co. v. Keith, 101 U.
S. 479,
101 U. S. 485;
United States Rifle & Cartridge Co. v. Whitney Arms
Co., 118 U. S. 22,
118 U. S. 25.
Of course, the conclusion that patents have been abandoned by
conduct in such cases are reached by inference that the delay and
other circumstances indicated an intention to give up effort to
secure a patent. The circumstances usually relied on to show
abandonment are a rejection of an application for a patent by the
Patent Office and unexplained delay in prosecuting appeal from one
of the several executive tribunals to another provided in the
procedure of obtaining a patent. From these, intent to abandon is
presumed. It is urged that such authorities have no application,
because intent to abandon cannot be inferred from the delay in this
case. That is true, but our conclusion rests not on neglect and
intention to give up the patent, but on a deliberate and unlawful
purpose to postpone the term of the patent the inventor always
intended to secure.
The case which comes nearer in its facts to this than any other,
and is a case of forfeiture, rather than abandonment, is that of
Macbeth-Evans Glass Co. v. General
Page 263 U. S. 60
Electric Co., 246 F. 695. There, an inventor of a
process for making glass used it in secret for nearly 10 years,
selling the product. At the end of that time, when the secret was
betrayed by an employee, the inventor applied for a patent. It was
held by the Circuit Court of Appeals of the Sixth Circuit, in a
most satisfactory opinion by Judge Warrington, that the policy of
the patent law to secure to the public the full benefit of
inventions after expiration of the fixed term deemed sufficient
reasonably to stimulate invention would be defeated if an inventor
could withhold his invention from the public for an indefinite time
for his own profit, and that the right to preserve a monopoly in an
invention by keeping it a trade secret and the right to secure its
protection under the patent laws were inconsistent, and could not
both be exercised by an inventor. The gist of the reason for the
conclusion there was the same as here -- that the purpose and
result of the conduct of the inventor were unduly to postpone the
time when the public could enjoy the free use of the invention.
Mr. Justice Clifford, in
Bates v. Coe, 98 U. S.
31, when considering the validity of a reissued patent,
used these words (p.
98 U. S. 46):
"Inventors may, if they can, keep their invention secret, and if
they do for any length of time, they do not forfeit their right to
apply for a patent unless another in the meantime has made the
invention, and secured by patent the exclusive right to make, use,
and vend the patented improvement. Within that rule and subject to
that condition, inventors may delay to apply for a patent."
And in
Parks v. Booth, 102 U. S.
96,
102 U. S. 105,
the same Justice said:
"Unless inventors keep their inventions secret, they are
required to be vigilant in securing patents for their protection.
"
Page 263 U. S. 61
These remarks were not necessary to the conclusion in the case
he was describing, and those in
Bates v. Coe have given
some concern to judges having to consider actual cases of
deliberate delay. Chief Justice Alvey, of the Court of Appeals of
the District, said of them (
In re Appeal of Mower, 15
App.D.C. 144, 152-153):
"This doubtless is a correct general proposition, but, like all
general propositions, it may have its exceptions under special and
particular circumstances, even where the intervening rights of
third parties have not been secured by patent."
"The patent laws are founded in a large public policy to promote
the progress of science and the useful arts. The public therefore
is a most material party to, and should be duly considered in,
every application for a patent, securing to the individual a
monopoly for a limited time, in consideration for the exercise of
his genius and skill. But the arts and sciences will certainly not
be promoted by giving encouragement to inventors to withhold and
conceal their inventions for an indefinite time, or to a time when
they may use and apply their inventions to their own exclusive
advantage, irrespective of the public benefit, and certainly not if
the inventor is allowed to conceal his invention to be brought
forward in some after time to thwart and defeat a more diligent and
active inventor, who has placed the benefit of his invention within
the reach and knowledge of the public."
Judge Warrington, in the
Macbeth-Evans case,
supra, refers to the same remarks (246 F. 705) as
follows:
"We therefore cannot think that the rule laid down in
Pennock v. Dialogue and
Kendall v. Winsor was
intended to be qualified by the remarks of Mr. Justice Clifford in
Bates v. Coe. . . . We are confirmed in this by the
reference made in
Bates v. Coe . . . to the decision in
Pennock v. Dialogue and to the effect of the legislation
enacted since, and particularly by the view expressed by
Page 263 U. S. 62
the same Justice while sitting on the circuit in
Jones v.
Sewall, 3 Cliff. 563, 592, 593, Fed.Cas. No. 7,495, where, in
distinguishing between the intent to be inferred from experimental
practice of an invention and practice for gain, he said:"
" Such an inference [of intention to surrender the invention to
the public] is never favored, nor will it in general be sufficient
to prove such a defense, unless it appears that the use, exercise,
or practice of the invention was somewhat extensive, and for the
purpose of gain, evincing an intent on the part of the inventor to
secure the exclusive benefits of his invention without applying for
the protection of letters patent."
We concur in these explanations and qualifications of Mr.
Justice Clifford's general remarks in
Bates v. Coe, and
for the reasons given. They certainly should not be construed to
militate against our conclusion in this case and the reasons upon
which it is founded.
Counsel for the appellant relies chiefly on the cases of
Smith v. Goodyear Dental Vulcanite Co., 93 U. S.
486,
Colgate v. Western Union Telegraph Co., 6
Fed.Cas. 85, and
United States v. American Bell Telephone
Co., 167 U. S. 224,
known as the
Berliner case. The first two cases have no
bearing on this case. In them, the court found as a fact that the
delays of the inventor in prosecuting his claims in the Patent
Office after rejection were not due to an intention to abandon, but
to his necessitous circumstances. In the
Berliner case,
there was also a question of fact, but a different one. The
government charged in that case, as it is charged here, that the
telephone company, the owner of the invention, deliberately delayed
proceedings in the Patent Office for thirteen years in order that,
when its main Bell patent expired, the patent for the indispensable
Berliner device might overlap and continue the monopoly as a whole.
A reading of Mr. Justice Brewer's opinion in that case shows that
the attention
Page 263 U. S. 63
of the Court was chiefly directed to the issue whether as a fact
the delay was due to the design of the owner of the invention or to
circumstances over which it had no control, including the rules of
the Patent Office, the delays of the examiners, and the peculiar
situation as to applications for patents in that active field of
invention. The Court found this issue against the government and in
favor of the patentee, whose patent the government was attempting
to cancel for this fraud and could only cancel by clear and
convincing proof. In the case at bar, the design of the inventor is
disclosed by his own avowal, and his plan of nonaction was not in
accord with the rules of procedure in the Patent Office, but was in
plain violation of the statutory law.
The conclusion that Woodbridge forfeited his right to a patent
by his delay in taking it from 1852 to 1862 makes it unnecessary
for us to consider whether he abandoned it by his wholly
unexplained delay of 9 more years in prosecuting his appeal from
the decision of the Board of Examiners in July, 1862, to the
Commissioner of Patents until January, 1871. It also relieves us
from going into the question whether the government's use of
subsequent patents for improvements in adjusting projectiles for
firing from cannon embraced the invention of Woodbridge as
contained in his specifications and claims allowed in 1852.
The judgment of the Court of Claims dismissing the petition
is
Affirmed.