B.Public Sale

Pennock v.Dialogue

United States Supreme Court,1829

27 U.S.1,2 Pet.1

[Plaintiff in error made an invention in 1811 on “an improvement in the art of making tubes or hose for conveying air,water,and other fluids,” in the mode of making the hose so that the parts so joined together would be tight,and as capable of resisting the pressure as any other part of the machine,for which a patent was obtained in 1818.During the interval,more than 13,000 feet of hose under this invention were made and sold in Philadelphia,by one Samuel Jenkins with permission from,and in service of,the patentee,to several hose companies.The court below found the invention abandoned since the inventor made no attempt to claim or assert his right during that interval.]

MR.JUSTICE STORY delivered the opinion of the Court.

The single question is,whether the charge of the court was correct in point of law.It has not been,and indeed cannot be denied,that an inventor may abandon his invention,and surrender or dedicate it to the public.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.Thus,if a man dedicates a way,or other easement to the public,it is supposed to carry with it a permanent right of user.The question which generally arises at trials,is a question of fact,rather than of law; whether the acts or acquiescence of the party furnish in the given case,satisfactory proof of an abandonment or dedication of the invention to the public.But when all the facts are given,there does not seem any reason why the court may not state the legal conclusion deducible from them.In this view of the matter,the only question would be,whether,upon general principles,the facts stated by the court would justify the conclusion.

In the case at bar,it is unnecessary to consider whether the facts stated in the charge of the court would,upon general principles,warrant the conclusion drawn by the court,independently of any statutory provisions; because,we are of opinion,that the proper answer depends upon the true exposition of the act of congress,under which the present patent was obtained.The constitution of the United States has declared,that congress shall have power“to promote the progress of science and useful arts,by securing for limited times,to authors and inventors,the exclusive right to their respective writings and discoveries.”It contemplates,therefore,that this exclusive right shall exist but for a limited period,and that the period shall be subject to the discretion of congress.The patent act of 1793 prescribes the terms and conditions and manner of obtaining patents for inventions; and proof of a strict compliance with them lies at the foundation of the title acquired by the patentee.The first section provides,“that when any person or persons,being a citizen or citizens of the United States,shall allege that he or they have invented any new or useful art,machine,manufacture,or composition of matter,or any new or useful improvement on any art,machine,or composition of matter,not known or used before the application; and shall present a petition to the secretary of state,signifying a desire of obtaining an exclusive property in the same,and praying that a patent may be granted therefor; it shall and may be lawful for the said secretary of state,to cause letters patent to be made out in the name of the United States,bearing teste by the President of the United States,reciting the allegations and suggestions of the said petition,and giving a short description of the said invention or discovery,and thereupon,granting to the said petitioner,&c.for a term not exceeding fourteen years,the full and exclusive right and liberty of making,constructing,using,and vending to others to be used,the said invention or discovery,&c.”The third section provides,“that every inventor,before he can receive a patent,shall swear,or affirm,that he does verily believe that he is the true inventor or discoverer of the art,machine,or improvement for which he solicits a patent.”The sixth section provides that the defendant shall be permitted to give in defense,to any action brought against him for an infringement of the patent,among other things,“that the thing thus secured by patent was not originally discovered by the patentee,but had been in use,or had been described in some public work,anterior to the supposed discovery of the patentee.”

These are the only material clauses bearing upon the question now before the court; and upon the construction of them,there has been no inconsiderable diversity of opinion entertained among the profession,in cases heretofore litigated.

…

By the very term of the first section of our statute,the secretary of state is authorised to grant a patent to any citizen applying for the same,who shall allege that he has invented a new and useful art,machine,&c.&c.“not known or used before the application?”The authority is a limited one,and the party must bring himself within the terms,before he can derive any title to demand,or to hold a patent.What then is the true meaning of the words“not known or used before the application?”They cannot mean that the thing invented was not known or used before the application by the inventor himself,for that would be to prohibit him from the only means of obtaining a patent.The use,as well as the knowledge of his invention,must be indispensable to enable him to ascertain its competency to the end proposed,as well as to perfect its component parts.The words then,to have any rational interpretation,must mean,not known or used by others,before the application.But how known or used? If it were necessary,as it well might be,to employ others to assist in the original structure or use by the inventor himself;or if before his application for a patent his invention should be pirated by another,or used without his consent; it can scarcely be supposed,that the legislature had within its contemplation such knowledge or use.

We think,then,the true meaning must be,not known or used by the public,before the application.And,thus construed,there is much reason for the limitation thus imposed by the act.While one great object was,by holding out a reasonable reward to inventors,and giving them an exclusive right to their inventions for a limited period,to stimulate the efforts of genius; the main object was“to promote the progress of science and useful arts;”and this could be done best,by giving the public at large a right to make,construct,use,and vend the thing invented,at as early a period as possible; having a due regard to the rights of the inventor.If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly,and make,and sell his invention publicly,and thus gather the whole profits of it,relying upon his superior skill and knowledge of the structure; and then,and then only,when the danger of competition should force him to secure the exclusive right,he should be allowed to take out a patent,and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts,and give a premium to those who should be least prompt to communicate their discoveries.

A provision,therefore,that should withhold from an inventor the privilege of an exclusive right,unless he should,as early as he should allow the public use,put the public in possession of his secret,and commence the running of the period,that should limit that right; would not be deemed unreasonable.It might be expected to find a place in a wise prospecting legislation on such a subject.If it was already found in the jurisprudence of the mother country,and had not been considered inconvenient there; it would not be unnatural that it should find a place in our own.

Now,in point of fact,the statute of 21 Jac.Ch.3,commonly called the statute of monopolies,does contain exactly such a provision.That act,after prohibiting monopolies generally,contains,in the sixth section,an exception in favour of“letters patent and grants of privileges for fourteen years or under,for the sole working or making of any manner of new manufactures within this realm,to the true and first inventor and inventors of such manufactures,which others,at the time of making such letters patent and grants,shall not use.”Lord Coke,in his commentary upon this clause or proviso,(3 Inst.184),says that the letters patent“must be of such manufactures,which any other at the time of making such letters patent did not use; for albeit it were newly invented,yet if any other did use it at the making of the letters patent,grant of the privilege,it is declared and enacted to be void by this act.”The use here referred to has always been understood to be a public use,and not a private or surreptitious use in fraud of the inventor.

In the case of Wood vs.Zimmer,1 Holt’s N.P.Rep.58,this doctrine was fully recognised by lord chief justice Gibbs.There the inventor had suffered the thing invented to be sold,and go into public use for four months before the grant of his patent; and it was held by the court,that on this account the patent was utterly void.Lord chief justice Gibbs said,“To entitle a man to a patent,the invention must be new to the world.The public sale of that which is afterwards made the subject of a patent,though sold by the inventor only,makes the patent void.”By“invention,”the learned judge undoubtedly meant,as the context abundantly shows,not the abstract discovery,but the thing invented; not the new secret principle,but the manufacture resulting from it.

The words of our statute are not identical with those of the statute of James,but it can scarcely admit of doubt,that they must have been within the contemplation of those by whom it was framed,as well as the construction which had been put upon them by Lord Coke….

The only real doubt which has arisen upon this exposition of the statute,has been created by the words of the sixth section already quoted.That section admits the party sued to give in his defence as a bar,that“the thing thus secured by patent was not originally discovered by the patentee,but had been in use anterior to the supposed discovery of the patentee.”It has been asked,if the legislature intended to bar the party from a patent in consequence of a mere prior use,although he was the inventor; why were not the words“anterior to the application”substituted,instead of“anterior to the supposed discovery?”If a mere use of the thing invented before the application were sufficient to bar the right,then,although the party may have been the first and true inventor,if another person,either innocently as a second inventor,or piratically,were to use it without the knowledge of the first inventor; his right would be gone.In respect to a use by piracy,it is not clear that any such fraudulent use is within the intent of the statute; and upon general principles it might well be held excluded.In respect to the case of a second invention,it is questionable at least,whether,if by such second invention a public use was already acquired,it could be deemed a case within the protection of the act.If the public were already in possession and common use of an invention fairly and without fraud,there might be sound reason for presuming,that the legislature did not intend to grant an exclusive right to any one to monopolize that which was already common.There would be no quid pro quo – no price for the exclusive right or monopoly conferred upon the inventor for fourteen years.

Be this as it may,it is certain that the sixth section is not necessarily repugnant to the construction which the words of the first section requires and justify.The sixth section certainly does not enumerate all the defences which a party may make in a suit brought against him for violating a patent.One obvious mission is,where he uses it under a license or grant from the inventor.The sixth section in the clause under consideration,may well be deemed merely affirmative of what would be the result from the general principles of law applicable to other parts of the statute.It gives the right to the first and true inventor and to him only; if known or used before his supposed discovery he is not the first,although he may be a true inventor; and that is the case to which the clause looks.But it is not inconsistent with this doctrine,that although he is the first,as well as the true inventor,yet if he shall put it into public use,or sell it for public use before he applies for a patent,that this should furnish another bar to his claim.In this view an interpretation is given to every clause of the statute without introducing any inconsistency,or interfering with the ordinary meaning of its language.No public policy is overlooked; and no injury can ordinarily occur to the first inventor,which is not in some sort the result of his own laches or voluntary inaction.

It is admitted that the subject is not wholly free from difficulties; but upon most deliberate consideration we are all of opinion,that the true construction of the act is,that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use,or to be publicly sold for use,before he makes application for a patent.His voluntary act or acquiescence in the public sale and use is an abandonment of his right; or rather creates a disability to comply with the terms and conditions on which alone the secretary of state is authorized to grant him a patent.

The opinion of the circuit court was therefore perfectly correct; and the judgment is affirmed with costs.