What is the purpose of the patent system?

  • The promotion of the progress of science and the useful arts is the main object of the patent system, and reward of inventors is secondary and merely a means to that end.

    U.S. v Masonite Corporation, N.Y.1942 [101, n 5] *

  • Patents are issued not for private benefit but for public good and grant a monopoly for limited period as incentive to disclosure of innovations which, in end, will add to fund of freely available knowledge.

    Griffith Rubber Mills v. Hoffar, C.A.Or. 1963, 313 F. 2d 1 [101, n 5] *

  • This section (35 USCS § 101) should be construed in light of its purpose to promote welfare of society by encouraging and stimulating discovery and invention.

    McCashen v Watson, D.C.D.C. 1955, 131 F. Supp. 233 [101, n 2] *

  • Grand objective of patent system, as stated in Constitution, is to promote progress of useful arts; presumably for this reason, patent statutes from very beginning in 1790 to latest act in 1952 have made it prerequisite to patentability that invention be new and useful.

    In re Nelson (1960) 47 CCPA 1031, 280 F2d 172, 126 USPQ 242 [101, n 5] **

  • Purpose of limitation on patentability expressed in 35 USCS § 103 is to insure that patents are issued not for private benefit but for public good, granting monopoly for limited period as incentive to disclosure of innovation which in end add to fund of freely available knowledge; public is entitled to benefit, without granting special concessions, from such advances as normally flow from application of ordinary skills of one in the trade to existing fund of public knowledge.

    Griffith Rubber Mills v Hoffar (1963, CA9 Or) [103, n 2] **

What is patent?

  • Patent law confers on patentee right to exclude all others from manufacturing, using, or selling his invention; extent of that right is limited by definition of his invention, as its boundaries are marked by specification and claims of patent.

    Ethyl Gasoline Corp. v United States (1940) [101, n25]**

  • A patent is the grant of a temporary monopoly to the patentee and at its expiration all are free to use the invention.

    Lucien Lelong, Inc. v Lander Co., C.C.A.N.Y. 1947 164 F.2d 395 [154, n 90] *

  • The law, having given an inventor seventeen years [now 20 years from application date] within which to enjoy the monopoly of a patent, exacts of him in return a full disclosure of the manner and making of the invention, and upon the expiration of the period of monopoly, the public is free to use the invention and the policy of the law is to encourage use thereof so as to provide competition for the benefit of the general public.

    Ballard and Ballard Co. v Borden Co., D.C. Ky.1952, 107 F. Supp.41 [154, n 5] *

  • A "patent" is not a certificate of merit but its purpose is to provide an incentive to disclosure.

    Valmont Industries, Inc. v. Yuma Mfg. Co., D.C.Colo. 1969, 296 F. Supp. 1291 [101, n 5] *

  • Purpose of awarding patent monopoly is to stimulate inventions that would not otherwise be made, and court believes that patent monopoly should not be granted to inventions that would be made anyway without such inducement.

    Roberts v Sears, Roebuck and Co. (1983, CA7 Ill) [103, n 2] **

  • Patent laws give to inventor opportunity to secure material rewards for his invention for limited time on condition that he make full disclosure for benefit of public of manner of making and using invention and that upon expiration of patent public be left to use invention.

    Scott Paper Co. v Marcalus Mfg. Co. (1945) [154, n 1] **

  • Patent is not, accurately speaking, a monopoly, for it is not created by executive authority at expense and to prejudice of community except grantee of patent, since inventor deprives public of nothing which it enjoyed before his discovery, but gives something of value to community by adding to sum of human knowledge.

    United States v Dubilier Condenser Corp. (1933) [154, n 5] **

  • When monopoly of patent ceases, the invention becomes public property and can be used by anyone, for any and all purposes for which it is adapted.

    Warden v City of St. Louis, Mo., C.C.A.Mo.1944, 140 F.2d 615 [154, n 90] *

  • On expiration of patent, knowledge of invention inures to public and any person is entitled to thereafter practice it and profit by its use.

    Orsolino v United States (1949) [101, n22] **

  • The monopoly expires with the term of patent and others may make and sell the thing patented, subject only to the rule against unfair trade.

    Lenox, Inc. v Jones, McDuffee and Stratton Corporation, D.C.Mass.1921, 271 F. 511 [154, n90] *

How detailed are inventions described in patents?

  • A device to be patentable must be useful, and to be useful it must work.

    H. Brinton Co. v Mishcon, C.C.A.N.Y.1938, 93 F.2d 445 [101, n 194] *

  • Full disclosure, so that public can know how to use it when patent expires, is consideration for monopoly given patentee for limited time.

    Newport Industries, Inc. v Crosby Naval Stores, Inc. (1944, CA5 Miss) [101, n7] **

  • Inventor is required, before receiving patent, to file in Patent Office written description of his invention and of manner and process of making and using it, in such full, clear, concise and exact terms as will enable any person skilled in art to make, construct and use same.

    Bates v Coe (1878) [112, n 7] **

  • Correct and adequate description or disclosure of claimed discovery is essential to validity of patent for reason that such disclosure is necessary in order to give public benefit of invention after patent shall expire.

    Beidler v United States (1920) [112, n 7] **

  • Specification is sufficient when it enables a person skilled in the art to practice invention; this does not restrict examiner's authority to call for proof of utility in appropriate cases; specification may be sufficient even though some experimentation is necessary.

    In re Bartholome (1967) [112, n 23] **

  • "Best mode" portion of first paragraph of 35 USCS § 112 does not prescribe standard by which best mode is to be "set forth" but this standard should be full, clear, and precise disclosure if public is to receive benefits intended to result from grant of patent monopoly, and failure to set forth best mode in any manner violates § 112 and invalidates patent.

    Union Carbide Corp. v Borg-Warner Corp. (1977, CA6 Ohio) [112, n 66] **

  • Neither claims nor specifications standing alone were sufficient to enable one skilled in art to practice invention but patent was not invalid since, when specification and claims were read in connection with drawing, one skilled in art could, without difficulty, have made patented device.

    Strong-Scott Mfg. Co. v Weller (1940, CA8 Minn) [112, n 12] **

  • If description was so vague that no one could have told, except by independent experiments, how to construct patented device, patent was void.

    Incandescent Lamp Patent (1895) [112, n 23] **

What can be patented?

  • Patentable subjects are new and useful arts, machines, manufactures or compositions of matter, and new and useful improvements on any art, machine, manufacture or composition of matter.

    Rubber Co. v Goodyear (1870) [101, n33] **

  • Term "machine" includes every mechanical device or combination of mechanical powers and devices to perform some function and produce certain result or effect, but if result or effect is produced by chemical action, by operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called "processes."

    Corning v Burden (1854) [101, n 65] **

  • "Composition of matter" covers all compositions of two or more substances and includes all composite articles, whether they be results of chemical union or of mechanical mixture or whether they be gases, fluids, powders, or solids.

    Shell Development Co. v Watson (1957) [101, n 251] **

  • Patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture; manufacturing process is clearly art, within meaning of law.

    Tilghman v Proctor (1881) [101, n 47] **

  • 35 USCS § 101 governing issuance of patents does not embrace every discovery, nor is it without limit, laws of nature, physical phenomena and abstract ideas are not patentable; discoveries that are manifestations of nature free to all men and reserved exclusively to none are not patentable.

    Diamond v Chakrabarty (1980) [101, n 38] **

  • Patent law is concerned not with laws and processes of nature governing electrical forces, but with visible and tangible means and methods humanly devised to control and employ those forces for useful purpose.

    Hazeltine Corp. v Electric Service Engineering Corp (1926, DC NY) [101, n 41] **

  • Idea, of itself, is not patentable, but new device by which it may be made practically useful is.

    Rubber-Tip Pencil Co. v Howard (1874) [101, n 38] **

  • Patent may be issued for application of principle but not for principle itself. Tilghman v Proctor (1881) [101, n 40] **

  • One cannot have patent for function or abstract effect of machine, but only for machine which produces it.

    Fuller v Yentzer (1877) [101, n 66] **

  • In crowded arts, sometimes slight change, doing of thing which at first blush seems of no consequence, may revolutionize industry and be such new and useful contribution as to be proper subject of patent.

    In re Richardson (1945) [101, n 132] **

  • Making change in form, proportions, or degree, by substantially same means, even though changes produce better results, is not invention.

    Smith v Nichols (1875) [101, n 316] **

What is invention?

  • Congress has made no attempt, either under older law or in 1952 Patent Act (35 USCS §§1 et seq.) to define "invention"; instead, courts, aided only by case law, have had to determine what constitutes invention.

    United Mattress Machinery Co. v Handy Button Machine Co. (1953, CA 3 Del) [101, n 116] **

  • It is "evolution" where expectable follows from what is already known; "invention" is antithesis of evolution and necessarily connotes achievement of unexpectable.

    International Carrier-Call and Television Corp. v Radio Corp. of America (1942, SD NY) [101, n 116] **

  • Invention consists in discovering how natural laws may be utilized or applied for some beneficial purpose by process, device, or machine which in tangible form demonstrates truth of concept.

    United States v Dubilier Condenser Corp. (1933) [101, n 116] **

  • Where means and methods are novel and result practical there is invention.

    United States v De Forest Radio Tel. and Tel. Co. (1927, DC Del) [101, n 120]**

  • Any achievement which marks distinct advance in art should be sustained as invention.

    Hobbs v Beach (1901) [101, n 130] **

  • Mere idea is not "conception of invention" for purposes of patent law; until entire conception is complete and is ready to be incorporated in practical embodiment, there is no available and complete conception of invention within meaning of law.

    Rex Chainbelt, Inc. v Borg-Warner Corp. (1973, Cay Ind) [101, n 126] **

  • Where underlying idea is old, there must be either improvement in apparatus, or improvement in method over prior art, in order to constitute patentable invention.

    Powers-Kennedy Contracting Corp. v Concrete Mixing and Conveying Co. (1930) [101, n 130] **

  • Giving mere scientific explanation of known result is not invention.

    Pennlylvania Crusher Co. v Bethlehem Steel Co. (1951, DC Pa) [101, n 125] **

  • Carrying forward of thought to greater degree is not invention.

    Forcheimer v Franc, Strohmenger and Cowan, Inc. (1927, CA6 Ohio) [101, n 133] **

  • New use for old device is not invention.

    Mac Dougald Const. Co. v Finley (1930, CA5 Ga) [101, n 142] **

  • Invention cannot rest alone in discovering defect or cause of defect in prior art but can rest in discovering cause of defect and remedying it.

    In re Atkinson (1939) [101, n 138] **

What are the criteria to determine that there is invention and that the article is patentable?

  • Under Patent Act of 1952, patentability is dependent upon 3 explicit conditions: novelty and utility, as articulated and defined in 35 USCS §§ 101 and 102, and nonobviousness, as set out in 35 USCS §§ 103.

    Graham v John Deere Co. (1966) (101, n 35) **

  • Under American law, only basic requirements for patentability are novelty, utility, and unobviousness; unlike German law, technical advance or advance in art is not required, and compound need not be better in all respects than prior art compounds used for same purpose, and may be better in some respects, worse in others.

    Deutsche Gold Und Silber-Scheideanstatlt Vormals Roessler v Commissioner of Patents, D.C.D.C. 1966, 251 F. Supp. 431. [101, n 4] *

  • Utility, novelty, and non-obviousness are separate tests of patentability; all must be satisfied for a valid patent.

    Elimco Corp. v Peterson Filters and Engineering Co. (1968, CA10 Utah) [101, n 35] **

  • Congressional standards of novelty, utility, and non-obviousness must be applied strictly in determining patentability; commercial acceptance shows utility; standards of non-obviousness and novelty must not be confused; combination of old elements may be new and at the same time obvious.

    Ohio Citizens Trust Co. v Lear Jet Corp. (1968, CA10 Kan) [101, n 35] **

  • In order to qualify for patentability, an invention must fulfill the three criteria of novelty, usefulness, and non-obviousness to one having ordinary skill in the art to which the subject of the claimed invention pertains.

    Rosenberg v Standard Food Products Corp. (1971, ED NY) [101, n 35] **

  • Constitution requires that there be some "invention" to be entitled to patent protection; unless more ingenuity and skill are required than are possessed by ordinary mechanic acquainted with business, there is absence of that degree of skill and ingenuity which constitute essential elements of every invention.

    Sakraida v Ag Pro, Inc. (1976) [101, n 118] **

  • It is not invention to describe and claim process, or to produce machine, or formulate method which any successful mechanic would produce when required to effectuate given result.

    Wirebounds Patents Co. v H. R. Gibbons Box Co. (1928, CA7 Ill) [101, n 118] **

  • Simplicity of device may be evidence of invention.

    Baldwin-Southwark Corp. v Tinius Olsen Testing Mach. Co. (1937, CA3 Pa) [101, n 183] **

  • While patented device seemed simple, nothing in prior art was shown to accomplish same results; despite simplicity, others skilled in art were unsuccessful; patent is valid.

    Protective Closures Co. v Clover Industries, Inc. (1954, DC NY) [101, n 171] **

What is "prior art"?

  • Generally, all patents, publications, and prior uses which were in existence prior to patentee's date of invention or more than year prior to his filing date are referred to as "prior art."

    Mohasco Industries Inc. v E.T. Barwick Mills, Inc. (1963, ND Ga) [102, n 10] **

  • Scope and content of prior art in determining obviousness consists of prior patents, publications, products, and methods in use at time invention is made, whether or not inventor is actually aware of such prior art when he made alleged invention; pertinent prior art is that to which one can reasonably be expected to look for solutions to the problems which patented device attempts to solve.

    Fisher and Porter Co. v Haskett (1973, ED Pa) [103, n 33] **

  • In considering whether there is invention, everything known to art through patents, publications, or use has to be considered.

    Radtke Patents Corp. v Coe (1941) [101, n 128] **

  • Issue as to what prior art is relevant depends upon what a skilled person in the field would be expected to know in connection with his art.

    Continental Can Co. v Old Dominion Box Co. (1968, CA2 NY) [102, n 10] **

  • Since for grant of patent 35 USCS § 101 requires that alleged invention be new and useful, it is essential that knowledge of prior art be considered in determining whether there is patentable invention; what is already known to art at time of application is of material bearing on question of novelty.

    Zephyr American Corp. v Bates Mfg. Co. (1942, CA3 NJ) [101, n 128] **

  • Prior patents, reductions to practice, publications, and public uses in art are all considered in determining anticipation of patents on device.

    Elfab Corp. v NCR Corp. (1979, CD Cal) [102, n 11] **

  • Patents issued more than year prior to date of plaintiff's application are available as prior art under 35 USCS § 102(b).

    Allen-Bradley Co. v Air Reduction Co. (1967, WD Pa) [102, n 13] **

  • Previous foreign and domestic patents are prior art and are relevant to anticipation of patents.

    Norris Industries, Inc. v Tappan Co. (1976, CD Cal) [102, n 72] **

Who may be qualified as "artisan of ordinary skill"?

  • Factors that may be considered in determining level of ordinary skill in art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which inventions are made; (5) sophistication of technology; and (6) educational level of active workers in the field.

    Environmental Designs, Ltd. V Union Oil Co. (1983, CA) [103, n 66] **

  • Ordinary skill in art is not measured by actual artisans involved but by hypothetical person having all prior art at hand, and under such task, adding extra O-rings and piston cock to ice cream machine is obvious, making patent invalid.

    Carpigiani v Beatrice Foods Co. (1979, ND Ill) [103, n 67] **

  • Hypothetical person having ordinary skill in art refers to problem solver rather than user of solution, and relative to tomato slicing, refers to mechanic familiar with food slicing equipment, rather than to person familiar with manual tomato slicing.

    Systematic Tool and Machine Co. v Walter Kidde and Co. (1977, CA3 Pa) [103,67] **

  • Criteria for obviousness of invention is measured not in terms of what would be obvious to laymen, but rather what would be obvious to one reasonably skilled in applicable art.

    Dann v Johnston (1976) [103, n 67] **

  • Level of ordinary skill in catalytic cracking art is chemical engineer with bachelor's degree and 5 or more years industrial experience.

    Mobil Oil Corp. v Filtrol Corp. (1975, CD Cal) [103, n 71] **

  • Level of skill in computer control of machine tools involve skill of both machine tool art and computer art.

    White Consol. Industries, Inc. v Vega Servo-Control, Inc. (1982, ED Mich) [103, n 74] **

  • Level of skill in art of building tractor pulling sled is knowledge of ordinary farm handyman familiar with welding and does not involve engineering or scientific education.

    National Tractor Pullers Asso. V Watkins (1980, ND ILL) [103, n 77] **

  • Level of ordinary skill in haircutting equipment is not skill of barbers and technicians who use the equipment but is skill of ordinary graduate mechanical or electrical engineers with experience in devising and building hair cutting equipment.

    Andis Clipper Co. v Oster Corp. (1979, ED Wis) [103, n 78] **

How knowledgeable does the law assume the inventor to be?

  • Patentee is presumed to have known and is chargeable with knowledge of everything disclosed in prior art in his field.

    Belden v Air Control Products, Inc. (1956, DC Mich) [102, n 367] **

  • Inventor is charged with acquaintance with all that patent offices in every country contain and with all that has ever been publicly sold or used in United States.

    Merit Mfg. Co. v Hero Mfg. Co. (1950, CA2 NY) [102, n 367]**

  • Applicant is charged with knowledge of literature in his field, irrespective of whether he is actually familiar with it; therefore, he may not be deemed to be original inventor if substance of alleged invention has been previously shown or described in patent or other printed publication.

    Monaco v Hoffman (1960, DC Dist Col) [102, n 367] **

  • Patentee's contribution must be measured against entire body of prior art and he is presumed by law to have been familiar with whole prior art as it existed at time he made his contribution.

    Mohasco Industries, Inc. v E.T. Barwick Mills, Inc. (1963, ND Ga) [102, n 367] **

  • It is irrelevant that inventor might not have been aware of some of prior art.

    Leach v Rockwood and Co. (1967, WD Wis) [103, n 33] **

  • 35 USCS § 102(a) renders patent void if art it teaches was reduced to practice by others or known to others prior to patentee's invention, whether or not patentee had such knowledge.

    Everlube Corp. of America v Electrofilm, Inc. (1957, DC Cal) [102, n 45] **

  • Although inventor is conclusively presumed to know the prior art in his own and clearly allied lines of endeavor, he is not bound by what has been done in remote or nonanalogous arts and whether arts of uses are analogous depends upon similarity of their elements and purposes.

    Diversified Products Corp. v Sports Stores, Inc. (1968, DC Md) [102, n 65] **

What kind of rights do patentees have?

  • Patentees have three distinct and independent rights, the right to make, to use, and to sell.

    Dailmler Mfg. Co. v Conklin, N.Y. 1909, 170 F. 70 95 C.C.A. 346 [154, n 76] *

  • During term of years fixed by patent, no one may make, use, or sell patented product without patentee's authority; grant of patent is grant of statutory monopoly.

    Sears, Roebuck and Co. v Stiffel Co. (1964) [154, n 5] **

  • Patentee receives nothing from law which he did not have before and only effect of his patent is to restrain others from manufacturing, using, or selling that which he has invented; patent law simply protects him in monopoly of that which he has invented and has described in claims of his patent.

    Motion Picture Patents Co. v Universal Film Mfg. Co. (1917) [154, n 5] **

  • Right to make, use, and sell invented article was not derived from patent law; right existed before and without passage of such law and was always right of inventor; patent law secured to inventor exclusive right to make, use, and sell thing invented and patented, and consequently to prevent others from exercising like privileges without consent of patentee.

    Bauer and Cie v O'Donnell (1913) [154, n 1] **

  • Where a patent holder exercises his "right to exclude others from making, using or selling the invention," by refusing unilaterally to license patent for 17-year term [now 20 years from application date], his conduct is expressly permitted by patent laws.

    SCM Corp. v Xerox Corp., C.A.Conn.1981, 645 F2d 1195 [154, n 74] *

  • When patent expires, monopoly created by it expires also, and right to make, use, and sell article passes to public.

    Plastic and Metal Fabricators, Inc. v Roy (1972)[154, n 15] **

  • When patent expires, monopoly created by it expires too and right to make article, including right to make it in precisely the shape it carried when patented, passes to public.

    Sears, Roebuck and Co. v Stiffel Co., Ill. 1964 84 S.Ct. 784 [154, n 90] *

  • Rights to make, sell, and use patented article are each substantive rights, and may be granted or conferred separately by patentee.

    Brulotte v Thys Co. (1964) [154, n 16] **

  • Patentee may grant license for any royalty, or on any condition, performance of which is reasonably within reward which patentee, by grant of patent, is entitled to secure.

    Eversharp, Inc. v Fisher Pen Co., D.C.Ill.19612, 204 F. Supp. 649 [154, n 74] *

  • Patent owner may lawfully set price for use of patented invention by others and may elect to use it himself and refuse to license it, or to retain it and neither use nor license it.

    Hartford-Empire Co. v United States (1945) [154, n 9] **

  • A patentee may grant license for limited period of time, license with territorial restrictions, license to make and use but not sell subject of the patent, or license to exercise only one of his rights to make, use, and sell his inventions; in short, the patentee may divide and parcel out certain portions of his patent monopoly.

    U.S. v Studiengesellschaft Kohle, M.B.H., D.C.D.C.1976, 426 F. Supp.143 [154, n 75] *

  • Assignee of patentee of invention may grant separately the right to make, right to sell, and right to use invention and is the sole judge as to what party or parties should be given any one or all of such rights.

    Green v Rocket Research Corp., 1975, 530 P.2d 1340, 12 Wash.App. 613 [154, n 76] *

  • A dealer cannot purchase in another country articles patented there, and import and sell them in the United States, without the license of the owners of the United States patent.

    Boesch v Graff, Cal.1890, 10 S.Ct.378 U.S. 697, 33 L.Ed. 787 [154, n 76] *

Who is the inventor?

  • Intent of patent laws is that patent should protect invention only if applied for by first inventor and, patent which credits someone else with invention confers no rights against public; if first inventor does not avail himself of patent, development belongs to public.

    Interstate Bakeries v General Baking Co. (1948, DC Kan) [102, n 204] **

  • Person rendering drawings of ideas of inventor of underwater pipelaying equipment does not become prior inventor or co-inventor, and patent is valid for properly naming sole inventor.

    Underwater Devices, Inc. v Morrison-Knudsen Co. (1982, DC Hawaii) [102, n 64] **

  • Suggestion by assistant for lowering electrode already placed by applicant within region required by patent claims, does not make co-inventor out of assistant or invalidate patent for improper inventorship.

    Libbey-Owens-Ford Co. v BOC Group, Inc. (1987, DC NJ) [102, n 214] **

  • Laboratory worker who calcined hard kaolin clay at direction of inventor who understood its possible uses as paper finishing material is no co-inventor, and patent is not invalid for failing to name assistant as inventor.

    Engelhard Minerals and Chemicals Corp. v Anglo-American Clays Corp. (1984, MD Ga) [102, n 214] **

Is the patent automatically assigned to the employer of the inventor?

  • Courts are reluctant to imply agreement by employee to assign his patent to employer; there must be an express agreement; proof of such agreement should be clear and satisfactory where specific performance is sought from employee.

    Photometric Products Corp. v Radtke (1954, SD NY) 104 USPQ 4. [261, n 101]**

  • Mehr fact that invention was conceived and developed while inventor was employed by another does not give employer any right or title to invention.

    Kinkade v New York Shipbuilding Corp. (1956) 21 NJ 362 [261, n 101]**

  • In absence of contract or custom giving employer right to inventions made by employee, such right does not exist.

    Howard v Howe (1932, CA7 Ill) [261, n 102]**

  • Employer cannot compel assignment of invention of employee where there is no contract and employee is not employed to invent.

    American Cyanamid Co. v Hubbell (1935, CA3 NJ) 76 F2k 807 [261, n 102]**

Does the inventor need to know the science behind his invention?

  • Operative invention is patentable though patentee does not know scientific principle on which it is based.

    Smith v Hall (1937) [101, n 122] **

  • Fact that patentee has erroneous theory of his process does not defeat patent.

    Knick v Bowes "Seal Fast" Corp. (1928, CA8 Mo) [101, n 122] **

  • It is not necessary that patentee understand scientific principles underlying his discovery so long as he makes sufficient disclosure to enable other persons skilled in art to practice invention.

    Inre Libby (1958) [112, n 31] **

What is the relationship between Patent law and trade secrets?

  • Under the common law, courts protect the owner of a secret process.

    U.S. v Parker Rust-Proof Co., D.C.Mich. 1945, 61 F. Supp. 805 [154, n 3] *

  • Under common law, inventor does not have any special right to his invention, except, perhaps, to keep it a secret.

    Republic Engineering and Mfg. Co. v Moskovitz, Mo. App. 1964, 376 S.W.2d 649 [154, n 3] *

  • Patent policy of encouraging invention is not disturbed by existence of another form of incentive to invention, and trade secret law protects items that are not proper subjects for patent protection, trade secret law providing weaker protection than patent law and not being in conflict with patent policy.

    Kewanee Oil Co. v Bicron Corp. (1974) [101, n 6] **

  • As reward for inventions and to encourage their disclosure, government offers 17-year [now 20 years from application date] monopoly to inventor who refrains from keeping invention trade secret; but quid pro quo is disclosure of process or device in sufficient detail to enable one skilled in art to practice invention once period of monopoly has expired; same precision is essential to warn industry of precise scope of monopoly asserted.

    Universal Oil Products Co. v Globe Oil and Refining Co. (1944) [101, n 7] ** (quid pro quo = An equal exchange or substitution.)

  • 35 USCS § 112 precludes inventor from accepting patent protection and withholding full disclosure of best mode contemplated in effecting patented item; thus, patent is unenforceable where patent specifications disclose neither what special tool in manufacturing hydraulic seals is nor where description of it may be found in any prior art because of inventor's selfish desire to keep this information a trade secret.

    Flick-Reedy Corp. v Hydro-Line Mfg. Co. (1965, CA7 Ill) [112, n 41] **

Isn't there a conflict between the monopoly provided by patent and antitrust laws?

  • Patents are a favored exception to antitrust policies.

    Harrington Mfg. Co. v White (1973, CA5 Fla) [101, n8] **

  • The patent laws, which give a patentee a monopoly of making and vending the patented article for a limited time, are not affected by the Sherman Antitrust Act, sections 1 to 7 of Title 14.

    U.S. v Motion Picture Patents Co., D.C.Pa.1915, 225 F. 800 [154, n 92] *

  • Patent serves public interest by stimulating invention and enhancing competition; at same time, Antitrust Laws (15 USCS §§ 1 et seq.) seek to keep open avenues of invention as well as of trade; antitrust considerations are not to override limited patent monopoly, and patent may not be employed beyond its scope for purposes condemned by Sherman Act (14 USCS §§ 1-7, 15 note); and , although patent confers right to exclude others from use of patented invention, it does not legalize exclusion of competition from unpatented products, and any attempt to prohibit competition from unpatented goods carries patentee beyond immunity of patent law and into area controlled by Antitrust Law.

    United States v Crown Zellerbach Corp. (1956, DC III) [101, n 8] **

REFERENCES:

* United States Code Annotated, Title 35, Patents, St. Paul, Minn., West Publishing Co. 1984.

** United States Code Service, 35 USCS, Patents, Lexis Publishing, 2000.

Numbers within square brackets written at the end of each court interpretation or decision are the section and note numbers in the referred publications. E.g. [101, n 8] means section 101, note 8.