Case 17: Elizabeth v. American Nicholson Pavement Company (1877)

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The patent in question was for an improved process for creating wooden pavement blocks which were cheaper, more uniform, and easier to lay than other forms of pavement. Nicholson alleged that the city of Elizabeth, New Jersey, infringed upon their patent by laying roads in a process largely similar to the one patented. Elizabeth responded saying they were indeed laying roads, but under the methods of another patent; they claimed that Nicholson's patent was not new, and that the new process was in use six years before the patent was issued.

The Supreme Court did not think there was any question of novelty. The true issue here was whether the pavement was in public use prior to the period granted by the law of the day (two years). Nicholson had laid down pavement in Boston on Mill-dam Avenue as an experiment. Elizabeth alleged that this was public use within the meaning of the law. It was clear that Nicholson did not intend to abandon his right to the patent. The stretch of road which he paved, while public, was a toll road. Nicholson was the stockholder and treasurer for Boston and Roxbury Mill Corporation, who owned the road. A tollkeeper testified that Nicholson would often talk about the experiment, testing the road, commenting on the wear, and generally surveying the performance. The toll forced wayfarers to stop and start; large wagon teams tested the road in this way, and Nicholson apparently had this in mind when he selected the road for his tests.

The court discussed whether public experimentation is a forfeiture of patent rights in the sense that public sale is. Highways, by necessity, can only be experimented upon in the public sphere. Machines may be tested and experimented upon in private, on the inventor's own premises. So long as the inventor doesn't reveal his invention to the public in any way, the machine may be used and examined before it is patented. The difficulty with the road is that it can only be examined satisfactorily by heavy, public use.

Nicholson's own company laid the road for the purpose of experimentation. Had the city of Boston, for example, laid the road in other places with Nicholson's consent, then the road would be in public use and the patent would be forfeit. The Supreme Court here makes a delineation: it is not merely public knowledge which voids patent rights, but the public use and sale. While the public knew of the road, certainly, Nicholson did not set out to use or sell his method, either with the city of Boston or anyone else. While it is true that inventors may not delay the release of their invention and then patent it, thereby increasing their monopoly over it, it is the case here that Nicholson delayed the release because of a legitimate effort to improve upon and perfect his design. It is in the interest of the public and of himself that the product be tested, verified, and perfected as far as possible.