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

Sup. Ct., 524, 525) Mr. Justice Holmes in delivering the opinion of the Court said:

Election is simply what its name imports; a choice, shown by an overt act, between two inconsistent rights, either of which may be asserted at the will of the chooser alone.

So many applications have been made of the rule, thus so clearly stated, that it is not necessary to refer to more of them than appear in the opinion of that case. It is settled that when a choice of inconsistent rights is once made by a person having the right of election and also knowledge or means of knowledge of the essential facts, he is concluded by his action. Here the choice made was deliberate and is unmistakable; it was the secret use for profit and was persisted in for years. If the right to secure protection of the patent laws can be effectively repudiated, it certainly has been here.

This conclusion is reinforced by other considerations of a kindred character which lead to a like result. When the application for a patent was made we think the invention had in legal effect been abandoned. This is plainly related to the question whether there was an election, equivalent to an abandonment, and is of course a question individual to each case. True, as we have seen, it is contended that the efforts made here to preserve the secret were not reconcilable with an intent to abandon the invention. This is based on the theory that in the absence of intervening rights of other inventors a perfected invention may in point of time be indefinitely used in secret and for profit and also in entire consistency with the right to secure a patent on the invention; in a word, that persistence in such secret use, no matter for what length of time, will not justify an inference of abandonment of the invention. The abandonment contemplated by the patent laws naturally has reference to the advantages and protection alike which are obtainable under those laws. Abandonment

in this sense must have been intended to signify a relinquishment of patent privileges. (Kendall v. Winsor, 62 U. S., [21 How.,] 322.) As Macomber says:

Abandonment must reside in the acts of the inventor by which he has deprived himself of the right to establish or enjoy the monopoly which he might have secured. (Macomber, Fixed Law of Pat., 2d ed., 2; Walk. on Pats. 5th ed., sec. 91, at p. 110.)

Otherwise stated, abandonment of patent privileges is in every sense material to the patent laws tantamount to abandonment of the invention itself; and, of course, proof of such relinquishment or abandonment may be shown by conduct inconsistent with any other purpose. (Rifle & Cartridge Co. v. Whitney Arms Co., 118 U. S., 22; 6 Sup. Ct., 950; Planing Machine Co. v. Keith, 101 U. S., 479.)

What has already been shown in respect of appellant's and its assignor's conduct in connection with the question of election is clearly

pertinent to the question of abandonment and so need not be repeated. Appellant also contends, it is true, that it is necessary to prove abandonment of the invention to the public. There could be no abandonment that would not inure to the benefit of the public, since the public could be the only possible beneficiary of such a relinquishment; this would be equally true if the invention were cast away or destroyed and the circumstances of the act or conduct of the inventor were consistent only with an intent to abandon the invention. This we think fairly accounts for the use of the words "had been abandoned to the public." (Par. 5, sec. 4920.) When the intent then of sections 4886 and 4920, paragraph 5, is kept in mind, they may be as literally interpreted as counsel claim they must be, and yet forbid issue of the patent in suit. The views thus expressed are fortified by the rule that abandonment may take place at any time. (Elizabeth v. Pavement Co., 97 U. S., 126; 24 L. Ed., 1000.) That rule differs and ought to differ from the statutory rule enacted with reference to the public use of an invention or the act of placing it on sale, since abandonment in itself signifies surrender of the right to a patent. This would seem to indicate a strong reason, if not the very reason, for the omission to prescribe a distinct period within which a patent must be applied for after an invention is perfected. Further, the fact that the public may in some such instances lose the advantages of inventions cannot impair the force and effect of the inventor's conduct, for in all instances abandonment in terms prevents the issue of a patent.

There is still another view to be taken of the course pursued by the present inventor and his assignee. Their conduct was inconsistent with the duty of diligence resting upon an inventor desiring to patent his invention. This duty was in effect defined by the Supreme Court as early as 1829, when, speaking through Mr. Justice Story, it was in substance declared that withholding disclosure of an invention for a long period of time and for purposes only of profit was opposed to the intent and policy of the constitutional provision and the statutes in relation to patents. At that time the patent laws contained no provision respecting abandonment of an invention; this, however, cannot be important since an abandoned invention. could never have been intended to be made the subject of a patent. Moreover, this rule of diligence was also declared by Mr. Justice Daniel, speaking for the Supreme Court, in 1858 in respect of a patent which had been issued after the introduction into the patent statutes of a provision in effect the same as the present one concerning abandonment. In Pennock v. Dialogue (2 Pet., 1; 7 L. Ed., 327,) an infringement suit, the invention involved was perfected in 1811 and the patent obtained in 1818; the patent was for an improvement in the art of making water-hose. In this interval the inventors had