*1 Gray, Corp. H. Messrs. Chester whom Korman, Principal Counsel, Milton D. Douglas Counsel, H. Corp.
Asst. Counsel, Corp. Moore, Jr., Asst. brief, petitioner. Euwer, Cary M. respondent.
C., for Judge, Chief Edgerton, Burger,
Danaher
PER CURIAM. appear of Colum- in District It did University, George Washington bia v. U.S.App.D.C. 140, half-day fee of 20 cents nominal charges University its stu- parking of an automоbile dents operation. It does cost of lot exceeds here, does not appear think this University’s basis affect exemption. tax claim to WATSON, Commissioner C.
Robert Patents, Appellant, ALLEN, Appellee. J.
Thomas
No. States Court
United of Columbia Circuit. 19,1957.
Argued Nov.
Decided *2 recognized “public use” is
to this patentability no bar to experiment.2 The issue was incidental to appeal on this is whether the finding prior use *3 Court erred in of the invention was incidental to periment, findings contrary of the to Patent Office. shim, a The invention a designed plate inserted to be
thin metal bearing bearing engine an between compensate wear in for so as holder reducing consump- bearing, oil thus engines. worn аutomobile in appellee a his shims installed set Oldsmobile, for the in his 1934 investigating their experiment. After using stopped performance, the car. he lay exceptions, car idle minor With being finally in year, sold $75 for a containing Appel- 1942, still the shims. buyer pres- did tell of their lee ence, nоt up per- to follow and made no effort hands of in the formance shims Atty., U. S. Patent Cochran, Mr. S. W. passed purchaser. The car to several W. Clarence Office, whom with being owners, of the other none aware Office, onwas Moore, Patent U. S. Sol. improve Appelleе continued shims. appellant. brief, for working design shims, of the models, Yates A. in Yates Dowell other A. Messrs. ap- C., proceed- patent. a After extended Dowell, for ings Jr., application pellee. his was denied because had', (1) shims Officefound his Patent Bazelon Bur- Prettyman, public use, in thаt members been in ger, buyers) public (the the- had used car any restrictions, shims even pub- without Judge. BURGER, Circuit though unwittingly; (2) such Patent decision From adverse an experiment,, lic use was incidental to jurisdiction Office, appellee invoked sale, appellee did because after the not. § under U.S.C. Court District actually experiment with shims. those patentability of the issue apparently Office would have- The Patent required appellee The de novo. was tried his invention remove either to the- rejected Patent Office experiment- shims when he was finished in invention had been claims that ing apply them, for a or else use, non-experimental and author- year the car con- within one sold issue Officeto ized the Patent taining them. pat trial found the use court of' person is entitled to A * * * appellee’s experimental- invention “was “the ent where ** * regard- than one and did more constitute application or less whether removed them not. year prior date * * * ”1 Further, exception An continued efforts make: 102(b). v. American Pave 2. Elizabeth Nicholson § 1. 35 U.S.C. Co., 1877, 126, 24 ment by, improvement or ex- where the invention is used posed to, anyone be an which would shims than the likewise he had installed those over secrecy obligation persons peri- experimental and this sweeping year such one the inventor.8 Under than to date less od extended interpretations, filing application.” no choice we have prior conclude shims on Goodwin v. relied court trial though buyer use, did Borg-Warner Corp.,3 known as also presence in- not know of the of the shims wherein the Daukus improved friend’s the car. Since this occurred more clutch stalled an year appellee applied еx- one profit. was held The use before car without *4 patent, was it perimental, the car seem the statute the fact that that expressly apparently stranger, with- bars a a sold to later non- restriction, a out did not constitute But such a strict and inflexible result experimental Of- public The Patent use. necessarily is not so. courts The contra, precisely fice relies a case engrafted exception, an onto the statute by Court which was handed down the public the to effect not bar that use does days Appeals a few Customs and Patent рatent a use was incidental to below.4 after of the court the decision experiment. leading The case is Eliza- beth v. Nicholson American Pavement “public statutory The term paved portion Co.9 There the inventor a extraordinarily given use” has been an improved рave- of a road toll wooden Lippm meaning. Egbert broad In v. public ment. After the used road the public ann,5 Supreme found the years for six for a given novel use where the inventor had a public pat- use was not to held bar stay lady Thus, the corset friend. entability, because such use was inciden- user, in is or the fact that there but one experiment. tal to given profit, vention is or that without eye, general public’s is hidden from the rea it order understand extremely Nor need broad immaterial. construction seem to be son for would using excep judicial inv “public use,” and he is realize the user seemingly use statu into absolute immaterial read It is ention.6 consent, necessary tory words, to examine inventor’s it is without his seem to be policy The cases due factors involved. use was may during beyond hospitable his control.7 It to the inventor fault and invention, stage perimental exists but use conclude that fair to be gained Cir., 267, may 1946, de sur certiorari the idea F.2d exist where 6 157 3. 491, reptitiously 799, inventor. v. 91 from the Shaw 67 S.Ct. nied 329 U.S. 1756, 292, 292, 683; 1833, 860, Cooper, 8 32 U.S. 67 S.Ct. 7 Pet. U.S. L.Ed. 331 rehearing 1866, denied 329 U.S. 689. 91 835, L.Ed. L.Ed. 707; 631, 91 L.Ed. 331 67 S.Ct. obligation 1823; by persons 796, 1726, under an 67 91 L.Ed. S.Ct. 8. Use U.S. probably 1749, secrecy 869, 91 inventor is L.Ed. to the S.Ct. 331 U.S. 67 National Tube v. use. Co. Sеe 1872. 1937, Tubes, Inc., Cir., 3 90 & Steel Blaisdell, Journeaux, Application Public Use Private Cust. & Pat. 52. Cf. 4. J.Pat.Off.Soc’y. Versa, App. 1957, 514 23 242 F.2d which was 779 or Vice (1941), companion due caution it This who states “With case to the instant case. may an is un considered that Goodwin case as be criticized the case оpenly used when sound. by for its intended anyone 333, 1881, when it used be 26 and also 5. 104 U.S. L.Ed. 755. yond control the inventor.” Of. Macneale, 1882, 90, Note, The Inventor’s Dilem 2 Public Use: Hall v. 107 U.S. 6. (1958). 73, ma, 297 27 26 Geo.Wash.L.Rev. S.Ct. L.Ed. 307. 267, Hovey, 126, 1877, 24 U.S. 7. Andrews exception 31 L.Ed. An S.Ct. disposed experiment the law of patentabil- become to construe will bar аgainst judicial ity.16 During experiment, him thereafter.10 as- policy underlying obligation secrecy has been said this rule sistants under no probably acquires although an undue will patent,17 to be that advantage not bar a by delaying experiments ended, over use or knowledge thereby patent, as he take out a inasmuch assistants or un- workmen obligation
preserves
monopoly
secrecy
der
may
himself for a
no
well bar
longer period
patentability18
allows.11 Of
the law
Our conclusion is that
course,
chooses,
may,
hospitality
the inventor
if he
the courts accord considerable
himself,
during
keep
unto
the inventor
invention secret
stage.
apply
limitation,
as a
we note
rather than
hospitality disappears
that
ing
peril.
reduction
After
even dur-
does so at
delay
applying
stage
practice, unreasonable
when the “ex-
рerimental
patent
wanes,
super-
to be an
motive”
construed
or is
by profit
consequence
motive,
seded
with the
or is
abandonment
tainted
rights
careless acts
the inv
is entitled to
inventor.
to be an
construed
Whether
ention.12
*5
already
We have
conceded that a
nоt,
inventor
the
abandonment
public use
appellee’s
existed here. But
may
delay
he
be
the risk that
assumes
experiments
up
continued
to within one
subsequent
inventor.13
forestalled
year
application
patent,
for
and
may well bar
Any
his invention
of
sale
public
during
hence thе
use occurred
already
And,
have
as we
inventor14
the
period
the
of experimentation, and less
laid down
rules
stern
the
seen
year
than a
thereafter. The trial court
any public
whatever
courts
after
the
held,
so
and
sup
there was evidence to
ended will
periоd has
the
port
finding.
the
Consequently, we are
patentability.
bar
bound to view the
question,
next
whether
the
use was
experi
incidental to
hand,
law also
On the
ment, hospitably to the inventor.
may
recognizes
wish
pat
applying for
perfect his
before
idea
The Patent Office clаims that
indeed,
ent,
in
interest
use was not
ex
incidental to
Hence,
which
facts
do
he
so15
periment because the
did
patentability
fatal
well be
actually experiment
very
with those
frequently excused if
perimentation are
shims after the sale. There is force to
during experimentation.
they occurred
argument,
but
believe that rea
primarily
disposal
for the
prototypes
sonable
which
discarded
A sale
Mfg.
Kohler,
Macneale, 1882,
90,
v.
Elec.
Co.
7
14. Hall v.
Cline
10. Cf.
2
107 U.S.
638,
1928,
73,
Cir.,
certiorari denied
27
S.Ct.
the law use. Judge
BAZELON, (dissent- Circuit
ing). Blaisdell, Application I follow would Pat.App.1957, 242 F.2d Cust. & pre-
where, upon precisely the same facts here, the
sented United States Court Appeals upheld a
Customs and Patent
determination of Board of the United States Patent
Office. Harlan, Washington,
Mr. Robert J. D. C., Wilson, with whom Mr. J. Franklin C., Washington, brief, D. was appellants. Ginberg, C., Washington, Louis D. Somkin, Washing-
with whom Mr. Fred ton, C., brief, appellee. on the Danaher Bastían, Stephen S. MADISONand Public Invest- Corporation, corporation, ment Appellants, PER CURIAM. (ap- Defendants PHILLIPS, Gerard infant, by his moth- here) pellants appeal judgment from friend, Mary er next Frances plaintiff (appellee) entered in a suit Phillips, Appellee. *7 personal injuries. No. 14147. presented Most of the issues ap on this United States Court of peal are for the raised first time this District of Columbia Circuit. Appellant’s attorney1 vigorously court. Argued March urges that this court is vested with the power, 17(i) both Rule
Decided and de court, cisions to consider such is sues. under the circumstances of this no we see reason to exercise this discretion. See also Rules 46 and 51 of the Federal Rules of Civil Proce dure, 28 U.S.C.A. presented other issues far as the So affecting
concerned, no we find error sub- rights. stantial Appellants’ court, disregarded, counsel in this will be court was rules though court, option, at its in the trial in the District no- counsel Court. upon pass plain tice and error not 17(i), Rules, upon.” pointed General or relied 2. Rule U.S.C.A.: out presented according “Points to the