§ 358. Public Use Acquiesced in if Known to the Inventor and not Prohibited. If the consent of the inventor is essential, neither a fraudulent nor a surreptitious use of the invention raises a presumpfruit of the patentee's inventive skill, and by its usor were derived from him, this use must have been either with or without the consent of the inventor. If with his consent, or through any neglect on his part which is morally equivalent to consent, there can be no difficulty, since in this case the old and new rules are identical. But if the use were without his knowledge, he employing proper diligence to know, it was a secret fraud upon his rights, a simple piracy of his invention. No such use can justly deprive him of a patent, or invalidate it when granted, however long such use may be continued. This was the position maintained by our courts before the act of 1836 was passed, and while the law permitted no use by others before the application for a patent; nor is it supposable that any legislature or judicial body will ever take the ground that if a person can steal the knowledge of an invention and put it into public use without the cognizance of the inventor, the theft shall, after two years, redound to the public benefit and leave them in permanent possession of the results of the inventor's skill. The law may well require an inventor to apply for a patent within a prescribed period after his invention is completed, but as it has not done so, the same effect ought not to be indirectly sought by making crime and fraud the means of forcing the inventor to a premature disclosure of his secret. (2) If the invention used had been created by, and was employed as the production of, some rival inventor, either the rival or the plaintiff's patentee was the first and true inventor. If the rival were the first inventor, no question of public use arises, the plaintiff's patent being invalid upon other grounds. If the plaintiff's patentee were, the first inventor, the public use of the invention must have occurred either before or after he had completed the reduction of his idea to practice. A public use, unknown to the inventor, and before he has perfected his inven tion, manifestly can have no effect upon his rights. If he were the first conceiver, and were diligent in reduction, no act of his rival could deprive him of a patent in the interest of the rival or of any other individual; and there is no principle of law or ethics which would support the claim that what the rival could not appropriate to himself he could nevertheless dedicate to the public. The fundamental theory of our law that the first conceiver, if a diligent reducer, is to receive a patent, notwithstanding any achievements or successes of a rival, should not be shaken by admitting that a public use by the rival, concealed from the first inventor, can defeat the right of the first inventor to a patent when this effect is not accomplished even by the issue of a previous patent to the rival himself. No other position, in such a case, is tenable but that an unknown public use, which oc curred before the plaintiff's patentee had brought the invention to such perfection as would have made it suitable subject-matter for a patent, cannot invalidate or bar the issue of a patent. But where a public use, though occurring before the plaintiff's patentee completes the invention, is known to him or comes to his knowledge after he has reduced his idea to practice, it may be fairly held that he must act with promptness and make his application for tion of abandonment. Knowledge, or failure to use accessible means of knowledge which in law is knowledge, is necessary a patent with reasonable diligence. His inventive act being finished, and his invention ready for a patent, justice to the public requires that he should not allow them to remain uninformed as to his rights after he ascertains that they are liable to be misled by such public use unless he makes his own claim known by applying for a patent. No measure of delay in such cases can be fixed by law. If knowledge exists before his invention is completed, a reasonable time should be allowed him, after completion, to make his application. If knowledge is first obtained after his reduction to practice, a reasonable time after the knowledge is acquired is proper; reasonable time, in either instance, being determined by reference to all the circumstances of the case. in producing the same art or instrument (see § 346, and notes), so if the subsequent inventor, instead of appropriating his invention to his own use, dedicates it to the public, who in good faith and without knowledge of the first inventor's rights apply it to the satisfaction of their wants for a period sufficient to bar the last inventor's claim to a monopoly, the first inventor may be properly regarded as estopped from insisting on his ownership of the invention as against the public, unless his circumstances warranted his long delay. There is here no question of piratical use, for the invention used is that of the subsequent not the prior inventor. There is no invasion of the recognized privileges of a diligent first inventor, for after the invention is complete and patentable, the inventor voluntarily postpones the endeavor to secure it by a patent. The case is one where both the subsequent inventor and the public are innocently misled by such conduct on the part of the first inventor as, in view of common events, he must have known was likely to have that result, and hence he may well be considered to have contemplated such result and indirectly to have abandoned his invention. A suggestion of this position is found in Pennock v. Dialogue (1829), 2 Peters, 1, where Story, J., discussing the early doctrine of public use, says: (22, 23) "In respect to a use by piracy, it is not clear that any such fraudulent use is within the intent of the statute; and upon general principles it might well be excluded. In respect to the case of a second invention, it is questionable at least, whether, if by such second invention a public use was already acquired, it could be deemed a case within the protection of the act. If the public were already in possession and common If the public use occurs after the completion of the invention by the plaintiff's patentee, a different rule is justified by legal principle and wise regard for public welfare. Where the first and true inventor, having completed his inventive act, unreasonably delays his application for a patent, and pending such delay a subsequent inventor produces the invention and places it before the world by a public use or sale of more than two years' duration, whether with or without the knowledge of the first inventor, the right of the latter to protect it by a patent is forfeited, and the invention remains forever in the possession of the public. This rule rests upon the principle of equitable estoppel. As a prior inventor, unreasonably withholding his application for a patent, may be estopped to claim the invention as against a subsequent inventor who, in ignorance of the concealed invention of the former, has expended time and inventive skill to consent, and a use successfully concealed from the inventor, to whomsoever else it may be known, imposes upon him no obligation to interfere in order to protect his rights. But use of an invention, fairly and without fraud, there might be sound reason for presuming that the legislature did not intend to grant an exclusive right to any one to monopolize that which was already common. There would be no quid pro quo- no price for the exclusive right or monopoly conferred upon the inventor for fourteen years." This suggestion does not express the entire law on the subject, since it takes no notice of the diligent inventor's rights as against the subsequent inventor and the public. But, assuming the existence of these rights, it fairly discloses the principle that a public possession, once honestly obtained, cannot be defeated unless by a superior claimant who has not wilfully or negligently contributed to place the public in the position from which he now seeks to exclude them. See also to the same effect Manning v. Cape Ann Isinglass & Glue Co. (1879), 4 Bann. & A. 612; United States Rifle & Cartridge Co. v. Whitney Arms Co. (1877), 14 Blatch. 94; 11 O. G. 373; 2 Bann. & A. 493. The doctrine of abandonment can be relieved of much, if not of all, of its ambiguity by preserving the radical distinction between abandonment inferred from conduct and abandonment presumed by law. The former is a question of fact, to be determined from the evidence, unaided by legal presumption. The latter is a conclusion which the law draws from specific circumstances, whenever those circumstances are proved to have existed. The difficulties now attending the doctrine seem to have been created mainly by the struggle of the courts to turn the former method of abandonment into the latter, and to raise a conclusive presumption of law from circumstances which, though they might warrant an inference of abandonment as a matter of fact, were not those specific circumstances which authorize the court to find abandonment as a matter of law. This appears to have been the case in the decisions of Judge Blatchford in Egbert v. Lippman and Andrews v. Hovey, before cited. The delay of the inventor in applying for a patent for two years after he has completed his invention, and after his invention has gone into public use, either through his own instrumentality or that of other inventors, unless caused by some condition or event over which he had no control and hence without bad faith or laches on his part, may well constitute the basis of an inference that the inventor intended to abandon his invention, although his want of knowledge that the invention was in public use might prevent the court from applying to him the inevitable and unrebuttable presumption of the law. To restore the doctrine to its ancient harmony and intelligibility it is merely necessary to hold, I. That the law conclusively presumes abandonment by the inventor only when the invention has been in public use or on sale, as his invention and with his acquiescence, for more than two years before his application for a patent. II. That abandonment in fact may be inferred from unreasonable delay in patenting the invention, or from any other circumstances which render the inventor chargeable with bad faith toward the public or voluntary negligence in the assertion of his rights. See §§ 346, 351, and notes, ante. § 358. That surreptitious use is no evidence of abandonment, see Kendall from his knowledge or his means of knowledge acquiescence is properly inferred, unless by prohibition or by application for a patent he seasonably endeavors to prevent the public from appropriating the invention; 2 and though strict proof both of his knowledge and his negligence is required, yet, these being once established, his privileges are forfeited if without his interference the term specified elapses after he becomes chargeable with knowledge of the use.1 § 359. Abandonment by Sale. The same general characteristics must exist in any sale of the invention from which abandonment is to be inferred. The sale must have been in the usual course of business,1 and v. Winsor (1858), 21 How. 322; Pennock v. Dialogue (1829), 2 Peters, 1; 1 Robb, 542; Mellus v. Silsbee (1825), 4 Mason, 108; 1 Robb, 506. See also § 357 and notes, ante. 2 That acquiescence is consent, see Kendall v. Winsor (1858), 21 How. 322; Mellus v. Silsbee (1825), 4 Mason, 108; 1 Robb, 506. That silence in view of known use is acquiescence, see Sisson v. Gilbert (1871), 9 Blatch. 185; 5 Fisher, 109. 8 That the presumptions are in favor of the inventor, see Emery v. Cavanagh (1883), 17 Fed. Rep. 242; Graham v. McCormick (1880), 10 Bissell, 39; 11 Fed. Rep. 859; 21 O. G. 1533; 5 Bann. & A. 244; Jennings v. Pierce (1878), 15 Blatch. 42; 3 Bann. & A. 361; Pitts v. Hall (1851), 2 Blatch. course of business, whether absolute or conditional, if they are sales of the patented thing, work a forfeiture. A single sale has this effect as well as a hundred sales." 2 Fed. Rep. 78 (80). In Morgan v. Seaward (1837), 1 Web. 187, Parke, B.: (194) "It must be admitted that if the patentee himself had, before his patent, constructed machines for sale as an article of commerce, for gain to himself, and been in the practice of selling them publicly, that is, to any one of the public who would buy, the invention would not be new at the date of the patent." 2 M. & W. 544 (559); 2 Abb. P. C. 419 (428). the invention must have been regarded by the contracting parties as a complete and operative means, ready for immediate practical employment in the arts.2 When such a sale is unconditional, the art or instrument is placed beyond the control of the inventor and irrevocably dedicated to the public; and the same result follows where title is to pass at the option of the purchaser, since here the inventor has no power to resume, at pleasure, his exclusive right. A single sale of this kind, of a single article and to a single person, is thus consid to offer or expose for sale in the ordinary methods is sufficient, see Plimpton v. Winslow (1883), 14 Fed. Rep. 919; 23 O. G. 1731; Burton v. Town of Greenville (1880), 5 Bann. & A. 541; 18 O. G. 411; 3 Fed. Rep. 642; Hancock v. Somervell (1851), 39 New L. J. 158. That to offer for sale, though there is no demand for the article, is enough, see Losh v. Hague (1838), 1 Web. 202; 2 Abb. P. C. 501. That to place the article on sale, if it be used, though no sales take place, is abandonment, see Plimpton v. Winslow (1883), 23 O. G. 1731; 14 Fed. Rep. 919. 2 That the invention sold must be complete and operative, see Henry v. Francestown Soapstone Stove Co. (1880), 17 O. G. 569; 2 Fed. Rep. 78; Draper v. Wattles (1878), 16 O. G. 629; 3 Bann. & A. 618; Am. H. & L. S. & D. Mach. Co. v. Am. T. & Mach. Co. (1870), Holmes, 503; 4 Fisher, 284; Winans v. N. Y. & Harlem R. R. Co. (1855), 4 Fisher, 1. That the sale of an experimental machine in the market for over two years is abandonment of the machine in its existing state, see Lyman v. Maypole (1884), 19 Fed. Rep. 735; 28 O. G. 810. See notes to this case in 19 Fed. Rep. on Abandonment, Experiments, etc. 3 In Henry v. The Francestown Soapstone Stove Co. (1880), 2 Fed. Rep. 78, Lowell, J. (80) "In my opinion the evidence tends to show a sale of the inVOL. I.-33 vention. True, some sales were conditional; that is to say, the stoves were to be returned if they were not satisfactory to the buyers; but this does not, without further explanation, prove that they were experimental. It may show that the purchaser had doubts about the article, but does not prove any on the part of the seller. . . . It is very unlikely that a buyer would take what he understood to be an experimental thing; but if he did, the evidence should be unequivocal that a test of the invention was one of the purposes of the seller. This article could be tested by the inventor as well in his own house as in any other place; and when he sold it in its completed form, though with warranty or on condition, he sold it." 17 O. G. 569 (569). Thus that to sell "on trial," to be kept and paid for if satisfactory to the vendee, is a sufficient sale, see Kells v. McKenzie (1881), 20 O. G. 1663; 9 Fed. Rep. 284. That selling "to see if it will sell," is also sufficient, see Consolidated Fruit Jar Co. v. Wright (1874), 6 O. G. 327; 12 Blatch. 149; 1 Bann. & A. 320. That any sale without limitation is enough, see Schneider v. Thill (1880), 5 Bann. & A. 565. That if the invention is sold embraced in another, without notice, it is abandonment, see Egbert v. Lippman (1881), 104 U. S. 333; 21 O. G. 75. |