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proof to an applicant to somehow show that this prior knowledge does not constitute prior art. Yet there is language in Hellsund and Nomiya which suggests that the applicant is estopped from doing that by the very fact of the admission."18 But no rationale or logic is advanced for why this should be the case. Rather, all that is stated in Font is that: It is not unfair or contrary to the policy of the patent system that appellants’invention be judged on obviousness against their actual contribution to the art.19 Assuming arguendo that this is the patent equivalent of the flag, apple pie, and motherhood, it still does not explain why applicants' invention should not be judged against the stan dard set forth in Section 102(8) rather than a judge-made standard which entirely ignores the statutory mandate.

Thus, for example, assume that Fout et al. could have shown that the Pagliaro invention had been abandoned, sup pressed, or concealed.'20 Under such circumstances, the Pagliaro invention could not be treated as Section 102(3) prior invention. If it could nôt be treated as prior art by virtue of Section 102(g), why should the so-called admission somehow make it applicable ant? In point of fact, given such circumstances, Fout et al. can well be argued to have made a significant contribution to the art by making publicly available not only their invention but that of Pagliaro which otherwise would never have seen the light of day, i.e., be made publicly available. Indeed, it is for precisely this rest son that under interference law a later inventor may be awarded priority because the first inventor suppressed, abandoned, or concealed his invention.'21

Nor does the existence of Section 102(f) change this conclusion. The purpose of the patent statute is to promote the progress of the useful arts in the United States. For that reason, the statute does not treat “prior art" arising outside the United States in the same manner as that developed

118 Sec. e..., judge Baldwin's concurring opinion in Hellsund, 177 U.S.P.Q. at 177; see also Nomiya, 184 U.S.P.Q. at 611.

119 213 U.S.P.Q. at 536.

120 While this was in fact not the case, one could never know this from the opinion in Font.

121 See, e.g., Klug v. Wood, 212 U.S.P.Q. 767 (Bd. Pat. Int. 1981); Shindelar v. Holdeman, 628 F.2d 1337, 207 U.S.P.Q. 112 (C.C.P.A. 1980); and Peeler v. Miller, 535 F.2d 647, 190 U.S.P.Q. 117 (C.C.P.A. 1976).

within this country. As but one example, while a U.S. patent is prior art as of its filing date, a foreign patent is not. In another context, work performed publicly in the United States is prior art, but public knowledge in a foreign country, without more, does not constitute prior art.

If by means of Section 102(f). prior invention in a foreign country could somehow have a greater impact as prior art than prior invention in this country in that a "secret" foreign invention could be prior art whereas a “secreto domestic invention could not, such would be contrary to the whole tenor of the statute which gives advantage to actions taken in this country over those performed abroad.

The argument that this problem is avoided by applying Section 102(f) to actions in this country as well as abroad is specious. As has been previously noted, the C.C.P.A. has not adopted such a position although it could readily have done so. More importantly, to take this view simply reads out of Section 102(g) the provision that a person shall be entitled to a patent unless before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it.“ Simply put, that which could not be treated as prior art under Section 102(g) should not be permitted to become prior art under Section 102(f).

In Clemens the C.C.P.A. engrafted onto the statutory constraints of no abandonment, suppression, or concealment an additional requirement of derivation before a Section 102(g) prior invention could be treated as Section 103 prior art."-The net result, however, was that under Section 102(g) a prior invention could have been derived from an earlier inventor and yet not be Section 103 prior art because it had been abandoned, suppressed, or concealed. It is for this reason that Clemens can be read as effectively precluding the use of Section 102(f) prior invention as Section 103 prior art. To do otherwise is to effectively remove the constraints in Section 102(g).

How then should secret” prior invention, i.e., prior invention which has not been publicly disclosed in this coun


122 206 U.S.P.Q. at 299. For a critique of this aspect of Clemens see Walterscheid, op cit., 64 J.P.O.S. at 635 et seq.

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try, published, patented, or disclosed in a filed U.S. patent application which subsequently issues as a patent, and thus is not prior art under Sections 102(a) or (e), be treated? Because “secret" prior invention, even if derived from another, ought not be viewed as Section 103 prior art if it has been abandoned, suppressed, or concealed, the use of such prior invention should be limited to the conditions set forth in Section 102(g) regardless of whether the prior invention has been made in this country and regardless of whether there has been any "admission,” express or implied.

Such is probably too much to hope for, however. Why should the district courts or the Office worry about statutory constraints set forth in Section 102(g) when it is so much easier to rely on an express or implied “admission" a la Fout and its ancestry?123 Unfortunately, as Stiefel has suggested in a different context, 124 to pose the question is to answer it.

Nonetheless, it would be wise to recall certain of the concerns expressed by Judge Rich in Hellsund in 1973: The opinion declines to consider what, if any, statutor: basis exists for using an applicant's admission as establishing “prior art" under $103.


By refusing to consider $102(g) or to relate the use of the admission of prior invention ... to it in any way, the opinion discards safeguards carefully written into $102(g) to prevent the use of prior abandoned, suppressed, or concealed inventions as prior art."12 (Emphasis in the original.) Although these concerns were raised in the context of “admissions,” they apply equally well to the use of Section 102(1) prior invention as Section 103 prior art. They are as valid today as they were in 1973.

123 Chisum has argued that “nothing can be prior art under Section 103 without a statutory basis in Section 102." 52 Wash. L. Rev. at 26. But as the C.C.P.A. expressly stated in Four:

This court has recognized that section 102 is not the only source of section 103 prior art. (Footnote omitted.) Valid prior art may be created by the

admissions of the parties. 213 U.S.P.Q. at 535. This is an open invitation to the Office and district courts to rely on “admissions," express or implied, and to ignore the statutory constraints set forth in Section 102.

124 Stiefel, op cit., 61 J.P.O.S. at 743. 125 177 U.S.P.Q. at 174.






In 1845 ir pilenice printed in licensees the right in manufacture : machinc for ginning collon and wool and reccived'in return a right 10 il furcentage of their profits. The licensers hrcached the contract and claimed, as a justilication, that the patent was invalil.' The Supreme Court held that the licensees were estopped from asserting this dcfense, thereby establishing the doctrine of licensee estoppel. In June 1969, the doctrine was repudiated in Lear, Inc. v. Adkins." This note will briclly explore the doctrine, the rationales offered 10 support it, and the exceptions created to hypass it. An examination will then follow of the Lear case and its possible inslucncc on future patent agreements. I.stoppel Prior 10 Icar, Inc. v. Adkins

Estoppel has most often arisen in iwo distinct but closely related situations involving the transfer of patent rights - estoppel of an assignor and estoppel of a licensee.' the assignment of a palent The inventor ostensibly transfers to the assignee all rights under his patent, retaining nothing for himself save the right to receive royalties." if after the assignment the inventor commences or continues to manufacture the patented device, he presumably is guilty of infringement, and his assignee is given a federal cause of action against the inventor. Numerous federal courts have held that the inventor may not defend on the basis that his invention was invalidly patented.' A patent license, however, is a transfer to another of a limited right under the patcni lo manufacture, use, or sell the patented device at a prescribed royalty, free from a claim of infringement by the inventor." The inventor retains title to the patent

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1. Kinsman v. Parkhurst, 59 U.S. (18 How.) 289 (1855).
2. Id at 29).
3. 395 U.S. 653 (1969)

4. Assignce and licensor esioppel cases have arisen less frequently. See, eg. Stuhnitz. Circene Spring Corp. v. Fort Pill Bedding Co., 110 F.2d 192 (6th Cir. 1940) (licensor cstoppel); Brown v. L.V. Marks & Sons Co., 64 F. Supp. 352 (E.D. Ky. 1946) (assignee estoppel).

3. See 4 A DELLER, WALKER ON PATENTS $ 335 (2d ed. 1965) (hereinafter cited as TRILER).

6. 35 U.S.C. $ 271 (1964).
1. See.c.8. Faulks v. Kemp. 3 F. 898 (C.C.S.D.N.Y. 1880).
X. See 4 DELLER $ 381.

and may retain the right to manufacture, sell, or license the patent 10 ullicos. A pislcul loce.nnc ir il contract, and a cause of action thereunder will normally arise under state law is the licensee breaches by nonpayment of royalties. In the past, courts have refused to permit a licensee to assert the invalidity of the licensed patent when he is sucd for nonpayment of royallics."

Real property law served the courls well as a rationale for the cstoppel doctrine." A grantor conveying properly by deed is estopped from claiming any title inconsistent with the deed or from denying a material fact in thc decd." Analogously, is one conveys a potential right to exclude the public from an invention, he is prevented from derogating from the transferred title by claiming patent invalidity." Similarly, when a landlord leases property and puts the tenant in possession, the latter is estopped to deny that the landlord had good title in a suit for rent." Under the same rationale, a licensee was prohibited from asserting patent invalidity in a suit for royalties under a licensing agreement." But just as an evicted tenant could contest the validity of the landlord's title in an action sor past rent," the courts held that a licensee could test the validity of the patent in a suit for royalties where he showed an “eviction," such as a prior judgment of invalidity of the patent at issue."

By invoking the estoppel doctrine, courts have sought to prevent unfair dealings between the parties. Thus in one case involving a licensee's denial of the validity of his licensor's patent, the Court held that after entering into the agreement and manufacturing under

9. Id. $ 380.
10. See, e.g., United States v. Harvey Steel Co., 196 U.S. 310 (1905).

11. See Treece, Licensee Estoppel in Patent and Trademark Cases. 53 lowa L. Rev. 525 (1967).

12. See 6 R. POWELL, REAL PROPERTY $ 937 (1969).

13. See, e.g.. Westinghouse Elec. & Msg. Co. v. Formica Insulation Co., 266 U.S. 342, 350 (1924).

14. See, e.g.. Goode v. Gaines, 145 U.S. 141 (1892).

15. See, e.g.. Barber Asphalt Paving Co. v. Headley Good Roads Co., 284 F. 177 (D. Del. 1922).

16. See, e.g.. Merryman v. Bourne, 76 U.S. (9 Wall.) 592 (1869).

17. See, e.g., Drackett Chem. Co. v. Chamberlain Co., 63 F.2d 853, 854 (6th Cir. 1933). The assignce of certain patents licensed the right to use the patents in the grocery trade to licensee. Both the assignee and licensee joined in an infringement action against a third party. and the court found that the patent was invalid. It was then held in a suit for royalties by the assignce against the licensee that the previous judgment constituted the eviction, relcasing the licensee from his obligation to pay royalties. Id. See also White v. Lee, 14 F. 789 (C.C.D Mass. 1882).

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