the issue of public versus private knowledge in the treatment of prior invention as prior art is most appropriately addressed. As will be shown, the case law subsequent to Bass does not always address the issue and, on occasion, treats it inconsistently. Writing in 1968, and thus prior to Bass, Trial Commissioner Davis of the United States Court of Claims stated in International Glass Co. v. United States": The courts have consistently held that an invention, though completed, is deemed abandoned, suppressed or concealed if, within a reasonable time after completion, no steps are taken to make the invention publicly known. [Citing cases.] He pointed out that in the case law prior to the enactment of Section 102(g), failure to file a patent application," or to describe the invention in a publicly disseminated document," or to use the invention publicly had been held to constitute abandonment, suppression, or concealment. In his opinion in Young v. Dworkin13 in 1974, Judge Miller of the C.C.P.A. noted ... that commencing with the first edition of Webster's Dictionary in 1828 and continuing to the present the definition of "suppress" has included the idea of keeping from public knowledge."4 He also emphasized that each case involving the issue of suppression or concealment must be considered on its own particular set of facts. In considering those facts, the length of time from reduction to practice' to the filing of a patent application is not in and of itself determinative. That is to say, mere delay, without more, is not sufficient to establish suppression or concealment. 16 7 408 F.2d 395, 159 U.S.P.Q. 434. 8 That is, reduced to practice. 9 159 U.S.P.Q. at 441. 10 Mason v. Hepburn, 13 App.D.C. 86 (1898). 11 Corona Cord v. Dovan Corp., 276 U.S. 358 (1928). 12 Allison Mfg. Co. v. Ideal Filter Co.. 21-F.2d 22 (8th Cir. 1927). 13 489 F.2d 1277, 180 U.S.P.Q. 388 (1974). 14 180 U.S.P.Q. at 390-91. 15 An invention cannot be abandoned. suppressed, or concealed within the meaning of Section 102(g) until it has been reduced to practice. See, e.g., Peeler v. Miller, 535 F.2d 647, 190 U.S.P.Q. 117, 120 (C.C.P.A. 1976). 16 180 U.S.P.Q. at 391. But, according to Judge Miller, when the delay period is determined to be "unreasonable," there is a basis for inferring an intent to suppress. A showing of appropriate activity during the delay may excuse it and thereby render it reasonable." The controlling factor, however, is not time but conduct.18 Nonetheless, both International Glass and Young v. Dworkin seem to suggest that an unexplained delay which extends over some period of time would be prima facie evidence of suppression or concealment. And indeed that is the way the later cases have tended. While no fixed time has been held to raise the inference," there is case law indicating that a delay in excess of two years which is not explained satisfactorily will be considered as unreasonable and hence evidence of suppression or concealment.20 Although such case law is limited to interference practice, it would appear to be applicable where no interference is involved. Thus, if a patent relied on as evidence of a prior invention under Section 102(g) can be shown to have issued on an application filed some two years or more after the invention was reduced to practice, the burden would presumably then shift to the opposing party to show that the delay was not unreasonable, i.e., it was not prima facie evidence of suppression or concealment. If that burden were not met, then a good argument can be made that even though the prior invention was ultimately disclosed in an issued patent, it is still not prior art under Section 102(g) because it was suppressed or concealed for an unreasonable time.21 17 180 U.S.P.Q. at 391, n. 3. 18 Judge Rich, concurring, 180 U.S.P.Q. at 394. 19 The C.C.P.A. has cautioned that any attempt to establish a rule that a certain specified length of time is per se unreasonable will be looked upon askance. Shindelar v. Holdeman, 628 F.2d 1337, 207 U.S.P.Q. 112, 117 (1980), cert. denied, 210 U.S.P.Q. 776 (1981). -1 20 See, e.g., Klug v. Wood, —____F.2d ____, 212 U.S.P.Q. 767 (C.C.P.A. 1981) (unexcused 26 month delay held presumptive evidence of intent to suppress); Shindelar v. Holdeman, 628 F.2d 1337. 207 U.S.P.Q. 112 (C.C.P.A. 1980) (29 month delay held to be, prima facie, unreasonable and hence evidence of suppression or concealment); and Peeler v. Miller, 535 F.2d 647, 190 U.S.P.Q. 117 (C.C.P.A. 1976) (48 month delay held prima facie evidence of suppression and concealment). 21 It is for this reason that disclosure of a prior invention in an issued patent should only be treated as presumptive evidence that the prior invention is prior art under Section 102(g). But what of the circumstance wherein the prior invention could not-when originally made-be disclosed in an issued patent or in any other publication available to the public. This was precisely the situation faced by the Court of Claims in Del Mar Engineering Laboratories v. United States wherein the plaintiff sought compensation from the Government for the unauthorized use of its patented "tow target having combustion signal means. 23 A similar target known as the Dart had been previously developed at the Naval Ordnance Test Station and reduced to practice but at the time of the reduction to practice, all documents pertaining thereto were classified. Apparently the security classification was not removed until after the invention of the patent in suit. The published record in Del Mar does not indicate that the declassified documents were ever published or that a patent application was ever filed covering the Dart invention. It does indicate that the Dart work was abandoned sometime after conception of the invention of the patent in suit.26 The Government argued successfully that despite its security classification the Dart invention was a prior invention under Section 102(g) which had not been suppressed or concealed and hence was Section 103 prior art. The Court of Claims began its consideration by holding that since the Dart had been reduced to practice, its subsequent abandonment did not remove it as prior invention under Section 102(g)." It then went on to note that while suppression or concealment are deemed to be contrary to the public interest, "[i]t is difficult to view the secrecy imposed on work by a security classification as being hostile to the public good." Accordingly, ... the fact of security classification should not be regarded per se as a suppression and concealment; rather it should be viewed 22 524 F.2d 1178, 186 U.S.P.Q. 42 (Ct.Cl. 1975). 23 186 U.S.P.Q. at 43. 24 186 U.S.P.Q. at 45. 25 Security classification would not have precluded the filing of a patent application but instead would only have precluded the issuance of a patent until such time as declassification occurred. See 37 C.F.R. §5.3 (July 1, 1981 Rev.). 26 186 U.S.P.Q. at 47. as but one fact in the totality of particular facts applicable to the specific situation under consideration.28 The court based its holding of no suppression or concealment on the fact that (a) information relating to the Dart was accessible to at least certain of the military, and (b) targets subsequently procured and used by the military were similar to the Dart. In support of its holding, it stated: Thus, despite its classified nature, the work on the Dart was not suppressed, in the sense that the benefit thereof was withheld from the public. In the absence of any showing that defendant, by its security classification system, attempted to exclude the public from the benefit of this work, it is considered not to have been suppressed or concealed for purposes of 35 U.S.C. §102(g).29 Del Mar is interesting in that although the opinion was issed more than a year after Bass it made no reference whatever to Bass. Moreover, there is nothing to indicate that the Dart prior invention had ever been made publicly available even after its declassification.30 Suppose that the facts in Del Mar had been somewhat different. That is, what if the Dart prior invention had occurred more than four years prior to the Del Mar invention and the Government had decided to file a patent application on the Dart invention after becoming aware of the Del Mar invention. Bear in mind that the work on the Dart was abandoned a little more than a year after the Del Mar invention had been conceived. Assume further that an interference had been declared between the two applications. Under these hypothetical circumstances, there is a fair chance that priority would have been awarded to the Del Mar application on the grounds of suppression or concealment of the Dart invention." Presumably, the Government would thereafter be liable for its use of the invention claimed in the Del Mar patent. Now assume the same set of hypothetical facts except that no patent application is filed on the Dart invention. 28 Id. 29 186 U.S.P.Q. at 48. 30 The mere fact of declassification does not in and of itself make previously classified documents "publicly" available. 31 Such an inference can certainly be drawn from the case law discussed in the text accompanying notes 13–21, supra. Under the holding of Del Mar presumably no liability would accrue against the Government. In other words, the failure to file the patent application would actually work to the benefit of the Government. No other case has been found which is on all fours with Del Mar. In 1969 in Carboline Co. v. Mobil Oil Corp., the district court held that work done under a government security classification is not publicly available and hence is not prior art under Section 102. Unfortunately, the opinion discussed only Section 102(a) issues and did not address the problem in the context of Section 102(g). The Carboline holding was distinguished in Del Mar on the ground that the prior invention had not been adequately proved to have been reduced to practice." In 1977 in Lockheed Aircraft Corp. v. United States.36 the Court of Claims cited Del Mar in assuming arguendo that classified material can form the basis of Section 102(g) prior invention.37 There appears to be no other recent case law on the topic. Although few patent attorneys are aware of its existence and the Patent and Trademark Office has only rarely relied upon it, there is an express statutory provision requiring classified prior inventions in the field of atomic energy to be treated as prior art. Thus, Section 155 of the Atomic Energy Act of 1954 relating to prior art reads as follows: In connection with applications for patents covered by this subchapter, the fact that the invention or discovery was known or used before shall be a bar to the patenting of such invention or discovery even though such prior knowledge or use was under secrecy within the atomic energy program of the United States.38 32 301 F.Supp. 141, 163 U.S.P.Q. 273 (N.D.MM. 1969). 33 163 U.S.P.Q. at 279. 34 $102. Conditions for patentability: novelty and loss of right to patent A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or 35 186 U.S.P.Q. at 47, n. 5. 38 42 U.S.C. 2185. |