Talk:Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

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The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an inventor who continues for more than a year to practice his invention for his private purposes or his own enjoyment and who does not thereby extend the period of his commercial monopoly, although such an inventor, by too long a concealment, will also lose right to a patent. 35 U.S.C.A. § 31.

The kernel of them is the following: ‘the inventor's main purpose in his use of the process prior to August 6, 1941, and especially in respect to all jobs for owners not known to him, was commercial, and * * * an experimental purpose in connection with such use was subordinate only.’ Upon this finding he concluded as matter of law that, since the use before the critical date- August 6, 1941- was not primarily for the purposes of experiment, the use was not excused*518 for that reason.

Section one of the first and second Patent Acts, 1 Stat. 109 and 318, declared that the petition for a patent must state that the subject matter had not been ‘before known or used.’ Section six of the Act of 1836, 5 Stat. 117, changed this by providing in addition that the invention must not at the time of the application for a patent have been ‘in public use or on sale’ with the inventor's ‘consent or allowance’; and Sec. 7 of the Act of 1839, 5 Stat. 353, provided that ‘no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent * * * except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application * * *.’ Section 4886 of the Revised Statutes made it a condition upon patentability that the invention shall not have been ‘in public use or on sale for more than two years prior to his application,’ and that it shall not have been ‘proved to have been abandoned.’ This is in substance the same as the Act of 1839, and is precisely the same as Sec. 31 of Title 35, U.S.C.A. except that the prior use is now limited to the United States, and to one year before the application. Sec. 1, Chap. 391, 29 Stat. 692; Sec. 1, Chap. 450, 53 Stat. 1212, 35 U.S.C.A. § 31.

‘If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.’ The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been ‘known or used before the application.’ ‘If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts' to allow him fourteen years of legal monopoly ‘when the danger of competition should force him to secure the exclusive right’

But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649.

...we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, ‘prior use’; but the first is a defence for quite different reasons from the second.

Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.

It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have Seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all. With that question we have not however any concern here.