Owen J. Roberts

“ If the proviso must be construed literally we would have a situation wherein all the patents taken out under the act would be nullified by the very terms of the act under which they were granted, for the reason that a patent which does not carry with it the limited monopoly referred to in the Constitution is in reality not a patent at all. The only value that a patent has is the right that it extends to the patentee to exclude all others from making, using, or selling the invention for a certain period of years. ”

“ Is the distinction to be that, where the government department is, so to speak, a business department operating a business activity of the government, the employee has the same rights as one in private employment, whereas, if his work be for a bureau interested more particularly in what may be termed scientific research, he is upon notice that whatever he invents in the field of activity of the bureau, broadly defined, belongs to the public and is unpatentable? ”

“ But where, as in this case, the employment contemplates invention, the adequacy of such a compromise is more doubtful, not because it contravenes an agreement for an assignment, which may not exist, but because, arguably, as the patent is the fruit of the very work which the employee is hired to do, and for which he is paid, it should no more be withheld from the employer, in equity and good conscience, than the product of any other service which the employee engages to render. ”

“ The intent was that a government employee who in the course of his employment conceives an invention should afford the government free use thereof, but should be protected in his right to exclude all others. If Dunmore and Lowell, who tendered the government a nonexclusive license without royalty, and always understood that the government might use their inventions freely, had proceeded under the act of 1883, they would have retained their rights as against all but the United States. ”

“ The cases recognizing the doctrine of shop rights may be said to fix a trust upon the employee in favor of his master as respects the use of the invention by the latter, but they do not affect the title to the patent and the exclusive rights conferred by it against the public.
The government's position in reality is, and must be, that a public policy, to be declared by a court, forbids one employed by the United States, for scientific research, to obtain a patent for what he invents, though neither the Constitution nor any statute so declares. ”

“ This distinction between the idea and its application in practice is the basis of the rule that employment merely to design or to construct or to devise methods of manufacture is not the same as employment to invent. Recognition of the nature of the act of invention also defines the limits of the so-called shop right, which, shortly stated, is that, where a servant, during his hours of employment, working with his master's materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a nonexclusive right to practice the invention. ”

“ Thus a monopoly takes something from the people. An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge. ”

“ For the work to be successful, the government must be free to use the results for the benefit of the public in the most effective way. A patent monopoly in individual employees, carrying with it the power to suppress the invention, or at least to exclude others from using it, would destroy this freedom ”

“ Where the employment does not contemplate the exercise of inventive talent, the policy of the patent laws to stimulate invention by awarding the benefits of the monopoly to the inventor and not to some one else leads to a ready compromise: a shop right gives the employer an adequate share in the unanticipated boon. ”

“ The United States is entitled, in the same way and to the same extent as a private employer, to shop rights, that is, the free and nonexclusive use of a patent which results from efforts of its employee in his working hours and with material belonging to the government. ”

“ For these employees, in the circumstances, to attempt to withhold from the public and from the government the full benefit of the inventions which it has paid them to produce, appears to me so unconscionable and inequitable as to demand the interposition of a court exercising chancery powers. ”

“ All the varying and conflicting language of the books cannot obscure the reality that, in any case where the rights of the employer to the invention are not fixed by express contract, and no agreement in fact may fairly be implied, equity determines after the event what they shall be. In thus adjudicating in invitum the consequences of the employment relationship, equity must reconcile the conflicting claims of the employee who has evolved the idea and the employer who has paid him for his time and supplied the materials utilized in experimentation and construction. ”

“ It is claimed that, as the work of the Bureau, including all that Dunmore and Lowell did, was in the public interest, these public servants had dedicated the offspring of their brains to the public, and so held their patents in trust for the common weal, represented here in a corporate capacity by the United States. The patentees, we are told, should surrender the patents for cancellation, and the respondent must also give up its rights under the patents.
The trust cannot be express. Every fact in the case negatives the existence of one. ”

“ Does the character of the service call for different rules as to the relative rights of the United States and its employees?
The title of a patentee is subject to no superior right of the government. The grant of letters patent is not, as in England, a matter of grace or favor, so that conditions may be annexed at the pleasure of the executive. To the laws passed by the Congress, and to them alone, may we look for guidance as to the extent and the limitations of the respective rights of the inventor and the public. ”

“ The result is repugnant to common notions of justice and to policy as well, and the case must turn upon these considerations if we abandon the illusion that equity is called upon merely to enforce a contract, albeit one that is 'implied.' The case would be more dramatic if the inventions produced at public expense were important to the preservation of human life, or the public health, or the agricultural resources of the country. The principle is the same here, though the inventions are of importance only in the furtherance of human happiness. ”

“ No servant of the United States has by statute been disqualified from applying for and receiving a patent for his invention, save officers and employees of the Patent Office during the period for which they hold their appointments. [8] This being so, this court has applied the rules enforced as between private employers and their servants to the relation between the government and its officers and employees. ”

“ Though often so characterized a patent is not, accurately speaking, a monopoly, for it is not created by the executive authority at the expense and to the prejudice of all the community except the grantee of the patent. ”

“ The opinion of this Court apparently rejects the distinction between specific employment or assignment and general employment to invent, adopted by the court below and supported by authority, in favor of the broader position urged by the government that, wherever the employee's duties involve the exercise of inventive powers, the employer is entitled to an assignment of the patent on any invention made in the scope of the general employment. ”

“ In 1921 and 1922, when Dunmore and Lowell made the inventions in controversy, they were employed in this section as members of the scientific staff. They were not, of course, engaged to invent, in the sense in which a carpenter is employed to build a chest, but they were employed to conduct scientific investigations in a laboratory devoted principally to applied rather than pure science, with full knowledge and expectation of all concerned that their investigations might normally lead, as they did, to invention. ”

“ The Board found that there had never been any general governmental policy established with respect to inventions, that whether public dedication, private exploitation, or governmental control and administration is desirable depends largely on the nature of the invention. Accordingly, legislation was recommended establishing a permanent Interdepartmental Patents Board with the power to demand assignments of patents on those inventions thereafter developed in the service which 'in the interest of the national defense, or otherwise in the public interest' should be controlled by the government. ”

“ The legislative record does show, as the opinion of the Court states, that it is a difficult question which has been the subject of consideration at least since the war, whether the public interest is best served by the dedication of an invention to the public or by its exploitation with patent protection under license from the government or the inventor. ”

“ The respondent concedes that the United States may practice the inventions without payment of royalty, but asserts that all others are excluded, during the life of the patents, from using them without the respondent's consent. The petitioner insists that the circumstances require a declaration either that the government has sole and exclusive property in the inventions or that they have been dedicated to the public so that anyone may use them. ”

“ The Bureau of Standards is a subdivision of the Department of Commerce. [3] Its functions consist in the custody of standards; the comparison of standards used in scientific investigations, engineering, manufacturing, commerce, and educational institutions with those adopted or recognized by the government; the construction of standards, their multiples or subdivisions; the testing and calibration of standard measuring apparatus; the solution of problems which arise in connection with standards; and the physical properties of materials. ”

“ A task so delicate cannot be performed by accepting the formula advanced by the petitioner any more than by adopting that urged by the respondent, though both are not without support in the opinions of this Court. ”

“ For members of the research staff were expected and encouraged to follow their own scientific impulses in pursuing their researches and discoveries to the point of useful application, whether they involved invention or not, and even though they did not relate to the immediate problem in hand. ”

“ He may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon the expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use. ”

“ The issue raised here is unaffected by legislation. Undoubtedly the power rests with Congress to enact a rule of decision for determining the ownership and control of patents on inventions made by government employees in the course of their employment. But I find no basis for saying that Congress has done so or that it has manifested any affirmative policy for the disposition of cases of this kind, which is at variance with the considerations which are controlling here. ”

“ The need of commercial incentives to private exploiters as well as the general desirability of such exploitation were admitted, but the dangers were recognized as well. It was thought that the public interest would best be served by the establishment of a single agency for government control, with the power to determine upon some compensation for the inventor. After the death of this bill in the Senate, February 21, 1921, the subject was again considered by an Interdepartmental Board established by executive order of President Harding. ”

“ By article 1, section 8, clause 8, of the Constitution, Congress is given power to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their respective discoveries. ”

“ If, in the application of familiar principles to the situation presented here, we must advance somewhat beyond the decided cases, I see nothing revolutionary in the step. We need not be deterred by fear of the necessity, inescapable in the development of the law, of setting limits to the doctrine we apply, as the need arises. ”

“ They are practical questions, and the decision as to what will accomplish the greatest good for the inventor, the government, and the public rests with the Congress. We should not read into the patent laws limitations and conditions which the Legislature has not expressed. ”

“ He obtained a relay for operating a telegraph instrument which was in no way related to the remote control relay devised for aircraft use. The conception of the application of alternating current concerned particularly broadcast reception. This idea was conceived by Dunmore August 3, 1921, and he reduced the invention to practice December 16, 1921. Early in 1922 he advise his superior of his invention and spent additional time in perfecting the details. February 27, 1922, he filed an application for a patent. ”

“ A system of research associates permits industrial groups to maintain men at the Bureau for research of mutual concern. The plan has facilitated co-operation. See Annual Report for 1923, p. 4; Annual Report for 1924, p. 35; Annual Report for 1925, p. 38; Annual Reports for 1926, 1928, 1929, 1931, 1932, p. 1; Research Associates at the Bureau of Standards, Bureau Circular No. 296 (1926) . For a list of co-operating organizations as of December 1, 1926, see Misc. Publications No. 96 (1927) .↑ No fees have been charged except to cover the cost of testing, but the Act of June 30, 1932, c. ”