U.S. Supreme Court
Pennock & Sellers v. Dialogue, 27 U.S. 2 Pet. 1 1 (1829)
Pennock & Sellers v. Dialogue
27 U.S. (2 Pet.) 1
The record contains, embodied in the bill of exceptions, the whole of the testimony and evidence offered at the trial of the cause by each party in support of the issue. It is very voluminous, and as no exception was taken to its competency or sufficiency, either generally or for any particular purpose; it is not properly before this Court for consideration, and forms an expensive and unnecessary burden upon the record. This Court has had occasion in many cases to express its regret on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the court, delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury.
It is no ground of reversal that the court below omitted to give directions to the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. It is sufficient for us that the court has given no erroneous directions.
If either party considers any point presented by the evidence omitted in the charge of the court, it is competent for such party to require an opinion from the court upon that point. The court cannot be presumed to do more in ordinary cases than to express its opinion upon questions which the parties themselves have raised on the trial.
It has not been and indeed it cannot be denied that an inventor may abandon chanrobles.com-red
his invention, and surrender or dedicate it to the public. This inchoate right, thus gone, cannot afterwards be resumed at his pleasure, for when gifts are once made to the public in this way, they become absolute. The question which generally arises on trials is a question of fact, rather than of law; whether the acts or acquiescence of the party furnish in the given case satisfactory proof of an abandonment or dedication of the invention to the public.
It is obvious that many of the provisions of our patent act are derived from the principles and practices which have prevailed in the construction of the law of England in relation to patents.
Where English statutes, such for instance as the statute of frauds and the statute of limitations, have been adopted into our own legislation, the known and settled construction of those statutes by courts of law has been considered as silently incorporated into the acts, or has been received with all the weight of authority. This is not the case with the English statute of monopolies, which contains an exception, on which the grants of patents for inventions have issued in that country. The language of that clause in the statute is not identical with the patent law of the United States, but the construction of it adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known, and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it.
The true meaning of the words of the patent law "not known or used before the application" is not known or used by the public before the application.
If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly and make and sell the invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure, and then and then only, when the danger of competition should force him to procure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts and give a premium to those who should be least prompt to communicate their discoveries.
If an invention is used by the public with the consent of the inventor at the time of his application for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is not a use within the meaning of the statute, how can the court extract the case from its operation and support a patent when the suggestions of the patentee were not true and the conditions on which alone the grant was authorized do not exist?
The true construction of the patent law is that the first inventor cannot acquire a good title to a patent if he suffers the thing invented to go into public use or to be publicly sold for use before he makes application for a patent. This voluntary act, or acquiescence in the public sale or use, is an abandonment of his right, or rather creates a disability to comply with the terms and conditions of the law on which alone the Secretary of State is authorized to grant him a patent. chanrobles.com-red
In that court, the plaintiffs in error had instituted their suit against the defendants for an infringement of a patent right for "an improvement in the art of making tubes or hose for conveying air, water, and other fluids." The invention claimed by the patentees was in the mode of making the hose so that the parts so joined together would be tight and as capable of resisting the pressure as any other part of the machine.
The bill of exceptions, which came up with the record, contained the whole evidence given in the trial of the cause in the circuit court. The invention for which the patent right was claimed was completed in 1811, and the letters patent were obtained in 1818. In this interval, upwards of 13,000 feet of hose constructed according to the invention of the patentees had been made and sold in the City of Philadelphia. One Samuel Jenkins, by the permission of and under an agreement between the plaintiffs as to the price, had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the City of Philadelphia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence that the agreement between Jenkins and the plaintiffs in error was known to or concealed from the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent for the purpose of improving their invention, or that from 1811 to 1818 any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed before the jury that all the hose which had been made and sold to the public prior to their patent had been constructed and vended by Jenkins under their permission.
Upon the whole evidence in the case, the circuit court charged the jury: chanrobles.com-red
"We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons the inchoate right to the exclusive use of the invention, to which a patent would have entitled him had it been applied for before such use. And we think it makes no difference in the principle that the article so publicly used and afterwards patented was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured, and even if it be made public, but accompanied by an assertion of the inventor's claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the inventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public, and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down, but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict."
To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant. chanrobles.com-red