permitted public use to two years before the application for a patent, that clause was not repeated, nor has it been incor 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." Further, that before the act of 1836 a public use or sale without the knowledge or consent of the inventor could not affect his right to a patent, see Mellus v. Silsbee (1825), 4 Mason, 108; 1 Robb, 506; Whitney v. Emmett (1831), Baldwin, 303; 1 Robb, 567; Shaw v. Cooper (1833), 7 Pet. 292; 1 Robb, 643. should not only be with the knowledge and consent of the inventor, but that it should be before his application for a patent. A sale or use of it with such knowledge or consent, in the intermediate time between the application for a patent and a grant thereof, has no such effect. It furnishes no foundation to presume that the inventor means to abandon his invention to the public; and does not, because it is not within the words of our act, create any statute disability to assert his right to a patent." 1 Robb, 725 (729). In Jones v. Sewall (1873), 3 Clifford, 563, Clifford, J.: (592) "No one but the inventor is competent to abandon his invention to the public. His acts and declarations, if explicit, are sufficient for the purpose, or he may accomplish the same end by continued acquiescence in the acts of others, of which it appears that he had knowledge; but the proof of knowledge and acquiescence must be beyond all reasonable doubt, as every presumption is the other way." 6 Fisher, 343 (367); 3 O. G. 630 (638). These doctrines were formulated and sanctioned by the act of 1836, which made the allowance and consent of the inventor an essential element in any public use affecting his title to a patent. Under this act, and that of 1839 (on the interpretation of which the modern departure from the ancient rules is based), numerous decisions have been rendered uniformly announcing the same necessity for knowledge and consent. Among these decisions is Ryan Further, that the consent of the inv. Goodwin (1839), 3 Sumner, 514, in ventor to the public use is necessary, which Story, J., says: (518) "As to see Davis v. Fredericks (1884), 21 the second point, it is clear by our Blatch. 556; 19 Fed. Rep. 99; Emery law, whatever it may be by the law v. Cavanagh (1883), 17 Fed. Rep. 242; of England, that the public use or sale Campbell v. Mayor of New York (1881), of an invention, in order to deprive the 20 O. G. 1817; 20 Blatch. 67; 9 Fed. inventor of his right to a patent, must Rep. 500; Andrews v. Cross (1881), 19 be a public use or sale by others with O. G. 1705; 8 Fed. Rep. 269; 19 Blatch. his knowledge and consent, before his 294; Campbell v. James (1879), 18 application therefor. If the use or sale O. G. 979; 17 Blatch. 42; 4 Bann & A. is without such knowledge or consent, 456; Draper v. Wattles (1878), 16 O. G. or if the use be merely experimental to 629; 3 Bann. & A. 618; Andrews v. ascertain the value or utility or success Carman (1876) 9 0. G. 1011; 13 of the invention by putting it in prac- Blatch. 307; 2 Bann. & A. 277; Locotice, that is not such a use as will de- motive Engine Safety Truck Co. v. prive the inventor of his title. Our Penna. R. R. Co. (1874), 10 Phila. law also requires that the use or sale 252; 1 Bann. & A. 470; 6 O. G. 927; porated into any subsequent statute. For this reason our courts have lately seemed inclined to treat the act of 1839 as repealing that provision of the act of 1836, and to consider public use as an abandonment, or a bar to a patent, whether with or without the allowance or consent of the inventor.2 Jones v. Sewall (1873), 3 Clifford, 563; 6 Fisher, 343; 3 O. G. 630; Russell & Erwin Mfg. Co. v. Mallory (1872), 10 Blatch. 140; 5 Fisher, 632; 2 O. G. 495; Allen v. Blunt (1846), 2 W. & M. 143; 2 Robb, 530; Hovey v. Stevens (1846), 1 W. & M. 290; 2 Robb, 479; Pierson v. Eagle Screw Co. (1844), 3 Story, 402; 2 Robb, 268; Wyeth v. Stone (1840), 1 Story, 273; 2 Robb, 23. Between the passage of the act of 1839 and the year 1883 the Supreme Court had occasion to examine this question in six cases. In two of them, viz., Elizabeth v. Pavement Co. (1877), 97 U. S. 126, and Bates v. Coe (1878), 98 U. S. 31, it expressly asserted that under the act of 1839 a public use without the consent of the inventor does not affect his rights. In the other four it recognized such consent as necessary to an abandonment by public use; see Kendall v. Winsor (1858), 21 How. 322; Consolidated Fruit Jar Co. v. Wright (1876), 94 U. S. 92; Worley v. Tobacco Co. (1881), 104 U. S. 340; Egbert v. Lippman (1881), 104 U. S. 333. seems to have been Egbert v. Lippman (1878), 15 Blatch. 295, although in earlier cases Clifford, J., notwithstanding his repeated assertions of the usual rule, had said that under the act of 1870 and the Revised Statutes a public use, with or without the consent of the inventor, would defeat his rights if coupled with laches in applying for a patent, - apparently thus confounding the abandonment presumed from public use with that inferrible from actions or omissions of the inventor. In Egbert v. Lippman, speak. ing of the effect of public use as an abandonment under the act of 1839, the court declares : (296) "The seventh section of the act of July 4, 1836 (5 U. S. Stat. at Large, 119), provided that a patent should be issued if it should not appear to the Commissioner of Patents that the invention had been in public use or on sale, with the applicant's consent or allowance, prior to his application for the patent. The fifteenth section of that act provided that, in a suit for infringement the defendant should have judgment if it should be proved that the thing patented had been in public use or on sale, with the consent and allow. ance of the patentee, before his appli cation for a patent. By the seventh section of the act of March 3, 1839 (5 U. S. Stat. at Large, 354), it was enacted that every person who shall have purchased or constructed any newly invented machine prior to the application by the inventor for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine so made or purchased, without liability therefor to the inventor, and It is in the face of these decisions, which not merely expound the words of a statute, but declare and apply essential principles of the common law, that a doctrine is now introduced into our patent system which, unless so qualified as to practically make it a mere definition of "knowledge and consent," is inconsistent alike with authority and with the fundamental rules whereby the rights of all parties to contracts and all owners of property have been hitherto controlled. 2 The first case of importance in which this view was formally advocated This new position harmonizes with the tendency of modern after his invention is in such condition that he can apply for a patent for it, and that, if he does not apply within such time, but applies after the expiration of such time and obtains a patent, and it appears that his invention was in public use at a time more than two years earlier than the date of his application, his patent will be void, even though such public use was without his knowledge, consent, or allowance, and even though he was in fact the original and first inventor of the thing patented and so in public use. Such public use for such length of time is made equivalent to absolute abandonment." 14 0. G. 822, (822); 3 Bann. & A. 468 (469). that no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent, as aforesaid, 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 for a patent.' The patent in question was applied for and issued when the act of 1839 was in force. The effect of that act is to require that an inventor shall not permit his invention to be used in public at a period earlier than two years prior to his application for a patent, under the penalty of having his patent rendered void by such use. Consent and allowance by the inventor are not necessary to such invalidity. But, a fortiori, consent to a use in public, not followed by an application for a patent within two years afterwards, makes the patent, when granted, invalid. The policy introduced by the act of 1839 is continued in the act of July 8, 1870, and in the Revised Statutes. The 24th section of the act of 1870 (16 U. S. Stat. at Large, 201) provides that a patent may be obtained for an invention if it has not been in public use or on sale for more than two years prior to the application for such patent, unless it is proved to have been abandoned. This provision is embodied in section 4886 of the Revised Statutes. The 61st were obiter dicta in the case under consection of the act of 1870 (id. 208), sideration, the public use there found now section 4920 of the Revised Statutes, having been with the inventor's knowlprovides that it shall be a defence to a edge and consent, and hence are probsuit for the infringement of a patent ably not as carefully framed as otherthat the thing patented had been in wise they might have been. public use or on sale in the United they stand, they announce the proposiStates for more than two years before tion that an inventor, without " conthe application for a patent, or had been senting to" or "allowing" the use of abandoned to the public. The policy his invention, may nevertheless " perintroduced by the act of 1839 and thus mit" it. To many this would seem a continued is that the inventor must mere play upon words. Webster, Dic. apply for his patent within two years in loc. defines “permit" by "allow," 66 In this opinion occur two sentences which may perhaps be regarded as the fountain out of which the modern doctrine flows, though in endeavoring to sustain it, the courts urge other reasons derived from narrow and technical constructions of the statutes. The learned judge, in speaking of the act of 1839, says: 'The effect of that act is to require that an inventor shall not ‘permit' his invention to be used in public at a period earlier than two years prior to his application for a patent, under the penalty of having his patent rendered void by such use. Consent and allowance by the inventor are not necessary to such invalidity.” These sentences But as judicial authority to discourage, as far as possible, any 66 and discussing the possible shade of difference between the synonymes "to permit, allow, etc.," says: "To permit' is more positive, denoting a decided assent, either directly or by implication. To allow' is more negative, and imports only acquiescence or an abstinence from prevention." See also "allow ;' and Worcester, Dic. in loc. The learned judge in this case, however, undoubtedly intended to distinguish in some degree between "allowance" and "permission." If he regarded "consent and allowance" as implying some voluntary act or recognition, and "permission" as expressive of failure to prevent or prohibit a known or suspected use of the invention, the distinction, though reversing the exact meaning of the words, may be justified, but was unnecessary, since it has always been held that acquiescence, even though silent, was consent. (See § 358 and notes, post.) If by "permission" he intended the failure to prevent unknown, fraudulent, and surreptitions uses, his position was not only a denial of all previous doctrines on the subject, but a declaration that piracy and fraud, though concealed from its victim, and unpreventable by him, may operate to deprive him of his rights and transfer his invention to the public without his knowledge and against his will. If in "permission" he included the absence of interference on the part of the inventor with the unknown use of the invention as the product of a rival's inventive skill, he set aside at once the characteristic principle of our law that the first conceiver of an invention, if guilty of no wilful fault or neglect, is entitled to a patent, whatever success his rivals may have attained either in the creation or the use of the invention, and returned to the English theory, that merit resides alone in publication, at least so far as to re gard the prior publication by a rival as a sufficient reason for refusing a patent to the innocent and diligent first inventor. If, as the latter portion of the quoted passage indicates, he endeavored to formulate, and by his construction of the act of 1839 to support, the rule that an inventor must exclude the possibility of a two years' public use of his invention by applying for a patent within that period after he had completed his inventive act, it was the introduction of a doctrine warranted by no former interpretation of the statutes, contradicted by an unbroken current of decisions, and inconsistent with universal principles of reason and justice, unless qualified by excepting from its operation all cases in which the delay arose from circumstances over which the inventor had no control. But whichever of these ideas was present in the mind of the distinguished jurist from whose pen this decision proceeded, the conclusion which he reached, that the patent of the inventor will be invalid if the invention was in public use more than two years before his application, "even though such public use was without his knowledge, consent, or allowance, and even though he was in fact the original and first inventor of the thing patented and so in public use," became the guide to several other courts in subsequent cases, and has at last obtained announcement from the Supreme Court itself. Thus in Andrews v. Hovey (1883), 5 McCrary, 181, Love, J.: (206) "Upon what principle of construction may we attempt to interpolate the sig nificant words 'consent or allowance into the statute. These words do not appear in the statute. No such condition is expressed as these words imply. The plain, simple, and unqualified provision is that no patent delay of the inventor in applying for a patent after his inven shall be held to be invalid by reason of such purchase, sale, or use prior to the application, 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 for a patent.' Not a word is here used to the effect that such prior use or sale shall be with the 'allowance or consent' of the patentee." 26 O. G. 1011 (1018); 16 Fed. Rep. 387 (405). In Manning v. Cape Ann Isinglass & Glue Co. (1883), 108 U. S. 462, Woods, J.: (465) "It is the policy of the patent laws to forbid the issue of a patent for an invention which has been in public use before the application therefor. The statute of 1836, 5 Stat. 117, section 6, did not allow the issue of a patent when the invention had been in public use or on sale for any period, however short, with the consent and allowance of the inventor; and the statute of 1870, 16 Stat. 201, section 24, Rev. Stat. section 4886, does not allow the issue when the invention had been in public use for more than two years prior to the application, either with or without the consent or allowance of the inventor." 23 O. G. 2413 (2414). article, and declares that he may use and sell such specific machine or article after the patent is issued, without liability to the patentee. The section does not require, in order to this protection, that the purchase or construction shall have been with the consent or allowance of the person who afterwards obtains the patent and seeks to enforce it against such purchaser or constructor. The words 'consent or allowance' are not found in the provision. The only requirement is that the specific machine or article shall have been purchased or constructed at some time prior to the application for a patent. The second clause of the section then passes to consider the effect upon the validity of the patent of such purchase, sale, or use prior to the application' for the patent, and declares that no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the appli cation for a patent as aforesaid, 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 for a patent.' The expression 'such purchase' clearly means the purchase from any person, and not merely from the person who becomes the patentee of the machine or article. The expression In Andrews v. Hovey (1887), 123 U. S. 267, Blatchford, J.: (273) "It is very plain that, under the act of 1836, if the thing patented had been in public use or on sale with the consent or allowance of the applicant for any time, however short, prior to his application, the patent issued to him was invalid. Then came section 7 of the act of 1839, which was intended as an amelioration in favor of the inventor, in this respect, of the strict provisions of the act of 1836. The first clause of that section provides for the protection of a person who, prior to the application for the patent, purchases or constructs a specific machine or such sale or use' clearly refers to the use or sale by the person who has purchased or constructed the machine or article, the right to use and sell which is given to him by the first part of the section. That right is given to a person who has constructed the machine or article, as well as to one who has purchased it; and the plain declaration of the second part of the section is, that where the purchase or construction of the machine or article took place more than two years prior to the application for the patent, or where the use or sale by |