Letters Patent, left the company's employ and without its knowledge and in fraud of its rights disclosed these secrets to officials of the Jefferson Glass Company; and prior to the 17th of the following December that company began a secret use of the invention and continued such use until after application was made for the patent as stated, May 9, 1913, and placed the products upon the market and sold them in this country as―

regular articles of trade and commerce continuously from and after a date prior to December 17, 1910.

On the last-mentioned date, appellant commenced an action in the common pleas court of Allegheny county, State of Pennsylvania, against its former employee and the Jefferson Glass Company, including also a salesman of appellant who had left its employ and entered that of the Jefferson Glass Company, praying injunction against disclosures of the secrets to others and further manufacture and sale of glass under the secret formula and process. January 30, 1912, decree was entered in that court enjoining defendants from making any glass

by substantially said secret process and formula and from disclosing the same to others.

This decree was affirmed by the Supreme Court of Pennsylvania January 6, 1913. (Macbeth-Evans Glass Co. v. Schnelbach, 239 Pa., 76; 86 Atl., 688.)

The instant case was heard below upon the facts thus in substance stated. District Judge, now Mr. Justice, Clarke, entered a decree adjudging the patent in suit to be void

because the discovery was used in the manner stated in the stipulation for almost ten years before the patent in suit was applied for, and was therefore abandoned, and also because the invention described in the patent was in public use more than two years prior to the application of (for) the patent, (231 Fed. Rep., 183;)

accordingly, the bill was dismissed. The Macbeth-Evans Glass Company appeals.

(1,2) The question is whether one who has discovered and perfected an invention can employ it secretly more than nine years for purposes only of profit, and then, upon encountering difficulty in preserving his secret, rightfully secure a patent, and thus in effect extend his previous monopoly for the further period fixed by the patent laws. Are both of the courses consistent with a reasonable interpretation of the constitutional provision and the statutes of the United States in relation to patents?

It is earnestly contended for appellant that its rights under the patent in issue are to be tested (1) by the use that was made of the invention, rather than of the product of the invention, prior to the application for a patent, and (2) by the acts if any of appellant and

its assignor Macbeth, which would evince an intent to abandon the invention as distinguished from the right to patent the invention. The argument is that, when the acts of Macbeth and appellant are tested by the language of the patent laws, the secret use made of the invention could not have been a public use, and the constant effort made to preserve the secret was inconsistent with intent to abandon the invention; and consequently that the public use and the abandonment contemplated by the patent laws are inapplicable to the present case. The statutory provisions relied on are section 4886 and 4920, Revised Statutes, (16 Stat., sec. 24, p. 201; sec. 61, p. 208; Comp. St., 1916, secs. 9430, 9466.) Section 4886 provides:

* * *

Any person who has invented or discovered any new and useful art, machine, inanufacture, or composition of matter, not known or used by others in this country, and not patented, or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may * obtain a patent therefor.

*

*

Section 4920 enumerates "special matters" which in an action for infringement may upon notice be proved under the general issue, and among them:

Fifth. That it [the invention or discovery] had been in public use or on sale in this country, for more than two years before his application for a patent, or had been abandoned to the public.

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The existence of all the conditions thus prescribed is essential alike to the right to issue or to obtain a patent; the absence of any one of the conditions is fatal. It is to be added that section 4884 (Comp. St., 1916, sec. 9428) limits the grant of every patent to a seventeen years." The requirements and the limitation so imposed existed at the date of the patent in issue, and they were enacted in virtue of the power vested by the Constitution in Congress

to promote the progress of science and useful arts, by securing for limited times to * * * inventors the exclusive right to their respective * * discoveries.

(Art. 1, sec. 8.)

These provisions at once define a public purpose and the restrictions under which it is intended to be accomplished. The subject is a broad one; but the compass of the present case is restricted. No decision has come to our attention upon facts precisely like those here involved; in a word, the case is sui generis. It is not necessary, we may observe, to consider the portion of the decision below which deals with the question of public use. Our consideration will be limited to questions pertinent to abandonment.

In considering the subject of abandonment we assume that the patent is for a process which is not unitary with the product. If, indeed, this patent is for a process, and if the process and the product are distinct inventions separately patentable, (as has been held

in more or less analogous situations-the Leeds-Catlin Case, C. D., 1909, 536; 144 O. G., 1089; 213 U. S., 301; 29 Sup. Ct., 495; the Acetylene Case, 192 Fed. Rep., 321; 112 C. C. A., 573; C. C. A. 6, and see Judge Lurton's comment in the Sanitas Case, 139 Fed. Rep., 551; 71 C. C. A., 535; C. C. A. 6,) there are some difficulties in the way of concluding that secret use of the process resulting in public use and sale of the product constitutes the statutory public use of the invention. It is these difficulties which we pass by when we make, for the purpose of the opinion, the assumption just stated.

It is in substance urged for appellee that there is distinct inconsistency between the right to a trade-secret and the right to a patent; and that Macbeth, having elected to use his invention as a trade secret for some ten years instead of applying for a patent, could not under settled principles of the doctrine of election turn around and assert the inconsistent right to a patent. It is not entirely clear whether appellee's counsel mean that the right to practise an invention in secret and for profit is inconsistent with the right to obtain a patent for the invention or with the right acquired under a granted patent; but we understand them to treat the trade-secret as the invention. Macbeth, like any inventor of a new and useful object, possessed the right to practise his invention in secret and for profit, though the secret was the sole source of protection for the invention. He had no right to exclude others from legitimate discovery and use of the invention, (John D. Park & Son Co. v. Hartman, 153 Fed. Rep., 24; 82 C. C. A., 158; C. C. A. 6; Chadwick v. Covell, 151 Mass., 190; 23 N. E., 1068; 21 Am. St. Rep., 442); but he had an inchoate right to the exclusive use of the invention, which right, apart from the issues of the instant case, he might have perfected and made absolute by proceeding in the manner required by the patent laws, (Gaylor v. Wilder, 51 U. S., [10 How.,] 477); and while this was the only step open to him to secure the absolute right to exclude others (Paper Bag Case, C. D., 1908, 594; 136 O. G., 1297; 210 U. S., 405; 28 Sup. Ct., 748; Herman v. Youngstown Car Mfg. Co., 191 Fed. Rep., 579; 112 C. C. A., 185; C. C. A. 6; Swindell v. Youngstown Sheet & Tube Co., 230 Fed. Rep., 438; 144 C. C. A., 580, and citations, C. C. A. 6) yet he failed to take the step. Hence the controversy as to inconsistency of rights must relate to the unpatented invention and so present the question, whether there is inconsistency between the right to practice an invention in secret without limit of time and for profit and the right to obtain a patent on the invention. Counsel for appellant say that these rights are different but not inconsistent. Such rights are important here only in their relation to a patentable invention. In this relation they seem to us to be inconsistent; inherently considered, their use can lead only to opposed ends—the one to reject and the other to seek a patent. The test of this will be

aided by contrasting what was admittedly done in the exercise of the first of these rights with the claimed retention of the other.

When Macbeth perfected his invention in 1903 he and his company evidently concluded to control and use it for purposes of profit, and to work out these ends by practicing the invention in secret and placing the product on public sale. The plain object of such a course was to exclude others from using the invention and to secure its benefits for themselves. The adoption of this course signified by necessary implication a belief that the nature of the invention would enable them in this way to protect it for a substantial period of time, if not for a longer time than could be secured under the patent laws. The result shows that their belief was justified for a period of nearly ten years. True, it is admitted and rightly that the inventor and his company adopted and pursued this plan with knowledge that the invention, as already pointed out, furnished them no protection against use by others who might honestly discover it. This, however, inevitably concedes an intent either to abandon the right to secure protection under the patent laws, or to retain such right and if necessity should arise then to obtain through a patent a practical extension of any previous exclusive use (secured through secrecy) into a total period beyond the express limitation fixed by those laws. If the first of these hypotheses be the true one, it is not easy to see how the right to secure patent protection survived. The second hypothesis presents the two rights claimed and which it is said could not both be retained because of their inconsistency.

The conduct of the parties in carrying out the scheme of secret use and profit is appropriate evidence of its object and effect. It would be a contradiction to say that an inventor could both give up and hold the right to secure a patent. Here we have a continuous and uniform course of conduct for upward of nine years; this would certainly be sufficient in any other sort of controversy to establish a definite intent; and, as if to accentuate their intent, the present inventor and his assignee engaged in serious litigation to maintain their scheme of secret use. It is impossible to see how such a course of conduct is reconcilable with a subsisting purpose to adhere to the right to secure a patent; it has every token of practical repudiation of such a purpose. Admittedly, we may repeat, these things were all done in the exercise of the right to adopt and pursue the scheme of secret use and profit; and it will not escape attention that the logic of this admission would lead to the same result as respects a purpose to retain the right to a patent if the plan had been pursued for a much longer time.

(3) All this is strengthened by distinct provisions of the patent laws. We refer to the provision, already pointed out, which limits

the grant of every patent to a "term of seventeen years; " and also to section 4888, (Comp. St., 1916, sec. 9432,) which requires that the application shall contain such a description of the invention as will—

enable any person skilled in the art or science to which it appertains to make, construct, compound, and use the same.

*

The relation of this exaction to the term fixed for a grant is manifest. The two provisions define a policy which was enacted in the interest of the public. When a patent expires, the right to practise. the invention thus becomes available to everybody. The object of such a limitation and disclosure was to secure to the public the full benefits of patented objects as speedily as was consistent with reasonable stimulation of invention. If then we assume that the course adopted by the present inventor and his assignee did not contemplate an intent to abandon the right to secure a patent, it certainly did contemplate an indefinite delay in disclosure of the invention and a practical and substantial enlargement of any period of monopoly recognized by statute. Can it be doubted that this was opposed to a declared and subsisting public policy?

Enough, however, has been shown of the practical construction and effect of the right to practise an invention in secret and for profit and the right to obtain a patent on the invention fairly to test the soundness of the claim that the rights are not inconsistent. They of course are now to be considered with reference to a scheme which includes an effort to secure a patent. And so regarded we may safely add to what we have already said of these rights that the first is in its nature and essence susceptible of exercise only in a way to evade, or at least unduly to delay, a disclosure of the invention in the interest of science and the useful arts, and with an intent to expand the statutory period of monopoly and thereby reap additional profits. The second is a means simply to acquire a monopoly subject to all the conditions and limitations of the patent laws. Such rights in our opinion are inconsistent in themselves-notably in the matter of profits available through use as distinguished from sale of the invention—and in their respective relations to the patent laws. It is not conceivable that an inventor can consistently hold both rights throughout the same period of time, where the design is to use them for purposes and with results like or similar to those here shown. We understand the rule of election to be broad enough to reach such rights as these; in Birmingham v. Kirwan, Lord Chancellor Redesdale said:

The rule of election seems to me to apply to every species of right. (2 Schoales & Lefr., 442, 450.)

And we think that in this case Macbeth was put to a choice, an election. In Wm. W. Bierce, L'D. v. Hutchins (205 U. S., 340; 27