[289 U.S. 178, 179] The Attorney General and Mr.Thomas D. Thacher, Sol. Gen., of Washington, D.C., for the United States.
[289 U.S. 178, 182] Mr. James H. Hughes, Jr., of Wilmington, Del., for respondent.
Mr. Justice ROBERTS delivered the opinion of the Court.
Three suits were brought in the District Court for Delaware against the respondent as exclusive license under three separate patents issued to Francis W. Dunmore and Percival D. Lowell. The bills recite that the inventions were made while the patentees were employed in the radio laboratories of the Bureau of Standards, and are therefore, in equity, the property of the United States. The prayers are for a declaration that the respondent is a trustee for the government, and, as such, required to assign to the United States all its right, title, and interest in the patents, for an accounting of all moneys received as licensee, and for general relief. The District Court consolidated the cases for trial, and after a hearing dismissed the bills. 1 The Court of Appeals for the Third Circuit affirmed the decree. 2
The courts below concurred in findings which are not challenged and, in summary, are:
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 [289 U.S. 178, 183] 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. In 1915 the Bureau was also charged by Congress with the duty of investigation and standardization of methods and instruments employed in radio communication, for which special appropriations were made. 4 In recent years it has been engaged in research and testing work of various kinds for the benefit of private industries, other departments of the government, and the general public. 5
The Bureau is composed of divisions, each charged with a specified field of activity, one of which is the electrical division. These are further subdivided into sections. One section of the electrical division is the radio section. In 1921 and 1922 the employees in the laboratory of this section numbered approximately twenty men doing technical work and some draftsmen and mechanics. The twenty were engaged in testing radio apparatus and methods and in radio research work. They were subdivided into ten groups, each group having a chief. The work of each group was defined in outlines by the chief or alternate chief of the section.
Dunmore and Lowell were employed in the radio section and engaged in research and testing in the laboratory. In the outlines of laboratory work the subject of 'airplane radio' was assigned to the group of which Dunmore was chief and Lowell a member. The subject of 'radio receiving sets' was assigned to a group of which J. L. Preston was chief, but to which neither Lowell nor Dunmore belonged. [289 U.S. 178, 184] In May, 1921, the Air Corps of the Army and the Bureau of Standards entered into an arrangement whereby the latter undertook the prosecution of forty-four research projects for the benefit of the Air Corps. To pay the cost of such work, the Corps transferred and allocated to the Bureau the sum of $267,500. Projects Nos. 37 to 42, inclusive, relating to the use of radio in connection with aircraft, were assigned to the radio section and $25,000 was allocated to pay the cost of the work. Project No. 38 was styled 'visual indicator for radio signals,' and suggested the construction of a modification of what was known as an 'Eckhart recorder.' Project No. 42 was styled 'airship bomb control and marine torpedo control.' Both were problems of design merely.
In the summer of 1921 Dunmore, as chief of the group to which 'airplane radio' problems had been assigned, without further instructions from his superiors, picked out for himself one of these navy problems, that of operating a relay for remote control of bombs on airships and torpedoes in the sea, 'as one of particular interest and having perhaps a rather easy solution, and worked on it.' In September he solved it.
In the midst of aircraft investigations and numerous routine problems of the section, Dunmore was wrestling in his own mind, impelled thereto solely by his own scientific curiosity, with the subject of substituting house-lighting alternating current for direct battery current in radio apparatus. 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 addi- [289 U.S. 178, 185] tional time in perfecting the details. February 27, 1922, he filed an application for a patent.
In the fall of 1921 both Dunmore and Lowell were considering the problem of applying alternating current to broadcast receiving sets. This project was not involved in or suggested by the problems with which the radio section was then dealing and was not assigned by any superior as a task to be solved by either of these employees. It was independent of their work and voluntarily assumed.
While performing their regular tasks they experimented at the laboratory in devising apparatus for operating a radio receiving set by alternating current with the hum incident thereto eliminated. The invention was completed on December 10, 1921. Before its completion no instructions were received from and no conversations relative to the invention were held by these employees with the head of the radio section, or with any superior.
They also conceived the idea of energizing a dynamic type of loud speaker from an alternating current house-lighting circuit and reduced the invention to practice on January 25, 1922. March 21, 1922, they filed an application for a 'power amplifier.' The conception embodied in this patent was devised by the patentees without suggestion, instruction, or assignment from any superior.
Dunmore and Lowell were permitted by their chief, after the discoveries had been brought to his attention, to pursue their work in the laboratory and to perfect the devices embodying their inventions. No one advised them prior to the filing of applications for patents that they would be expected to assign the patents to the United States or to grant the government exclusive rights thereunder.
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 [289 U.S. 178, 186] 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.
First. 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. Rev. St. 4886, as amended (U.S. Code, title 35, 31 (35 USCA 31)$, is the last of a series of statutes which since 1793 have implemented the constitutional provision.
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. Seymour v. Osborne, 11 Wall. 516, 533. The term 'monopoly' connotes the giving of an exclusive privilege for buying, selling, working, or using a thing which the public freely enjoyed prior to the grant. 6 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. United States v. American Bell Telephone Co., 167 U.S. 224, 239 , 17 S.Ct. 809; Paper Bag Patent Case, 210 U.S. 405, 424 , 28 S. Ct. 748; Brooks v. Jenkins, 3 McLean, 432, 437, Fed. Cas. No. 1,953; Parker v. Haworth, 4 McLean, 370, 372, Fed. Cas. No. 10,738; Allen v. Hunter, 6 McLean, 303, 305, 306, Fed. Cas. No. 225; Attorney General v. Rumford Chemical Works, 2 Bann. & Ard. 298, 302. 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 [289 U.S. 178, 187] 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. Kendall v. Sinsor, 21 How. 322, 327; United States v. American Bell Telephone Co., supra, page 239 of 167 U.S., 17 S.Ct. 809. To this end the law requires such disclosure to be made in the application for patent that others skilled in the art may understand the invention and how to put it to use. 7
A patent is property, and title to it can pass only by assignment. If not yet issued, an agreement to assign when issued, if valid as a contract, will be specifically enforced. The respective rights and obligations of employer and employee, touching an invention conceived by the latter, spring from the contract of employment.
One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained. The reason is that he has only produced that which he was employed to invent. His invention is the precise subject of the contract of employment. A term of the agreement necessarily is that what he is paid to produce belongs to his paymaster. Standard Parts Company v. Peck, 264 U.S. 52 , 44 S.Ct. 239, 32 A.L.R. 1033. On the other hand, if the employment be general, albeit it covers a field of labor and effort in the performance of which the employee conceived the invention for which he obtained a patent, the contract is not so broadly construed as to require an assignment of the patent. Hapgood v. Hewitt, 119 U.S. 226 , 7 S.Ct. 193; Dalzell v. Dueber Watch Case Mfg. Co., 149 U.S. 315 , 13 S.Ct. 886, 888. In the latter case it was said:
The reluctance of courts to imply or infer an agreement by the employee to assign his patent is due to a recognition of the peculiar nature of the act of invention, which consists neither in finding out the laws of nature, nor in fruitful research as to the operation of natural laws, but in discovering how those laws may be utilized or applied for some beneficial purpose, by a process, a device, or a machine. It is the result of an inventive act, the birth of an idea and its reduction to practice; the product of original thought; a concept demonstrated to be true by practical application or embodiment in tangible form. Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 , 11 S.Ct. 846; Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 386 , 39 S.Ct. 542; Pyrene Mfg. Co. v. Boyce (C.C.A.) 292 F. 480, 481.
Though the mental concept is embodied or realized in a mechanism or a physical or chemical aggregate, the embodiment is not the invention and is not the subject of a patent. 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. McClurg v. Kigsland, 1 How, 202; Solomons v. United States, 137 U.S. 342 , 11 S.Ct. 88; Lane & Bodley Co. v. Locke, 150 U.S. 193 , 14 S.Ct. 78. This is an application of equitable principles. Since the servant uses his master's time, facilities, and materials to attain a [289 U.S. 178, 189] concrete result, the latter is in equity entitled to use that which embodies his own property and to duplicate it as often as he may find occasion to employ similar appliances in his business. But the employer in such a case has no equity to demand a conveyance of the invention, which is the original conception of the employee alone, in which the employer had no part. This remains the property of him who conceived it, together with the right conferred by the patent, to exclude all others than the employer from the accruing benefits. These principles are settled as respects private employment.
Second. 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. Attorney General v. Rumford Chemical Works, supra, at pages 303, 304 of 2 Bann. & Ard. And this court has held that the Constitution evinces no public policy which requires the holder of a patent to cede the use or benefit of the invention to the United States, even though the discovery concerns matters which can properly be used only by the government; as, for example, munitions of war. James v. Campbell, 104 U.S. 356 , 358; Hollister v. Benedict & B. Mfg. Co., 113 U.S. 59, 67 , 5 S.Ct. 717.
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 [289 U.S. 178, 190] 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.
United States v. Burns, 12 Wall. 246, 252, was a suit in the Court of Claims by an army officer as assignee of a patent obtained by another such officer for a military tent, to recover royalty under a contract made by the Secretary of War for the use of the tents. The court said, in affirming a judgment for the plaintiff:
In United States v. Palmer, 128 U.S. 262 , 9 S.Ct. 104, 106, Palmer, a lieutenant in the Army, patented certain improvements in infantry accoutrements. An army board recommended their use and the Secretary of War confirmed the recommendation. The United States manufactured and purchased a large number of the articles. Palmer brought suit in the Court of Claims for a sum alleged to be a fair and reasonable royalty. From a judgment for the plaintiff the United States appealed. This court, in affirming, said:
These principles were recognized in later cases involving the relative rights of the government and its employees in instances where the subject-matter of the patent was useful to the public generally. While these did not involve a claim to an assignment of the patent, the court reiterated the views earlier announced.
In Solomons v. United States, 137 U.S. 342, 346 , 11 S.Ct. 88, 89, it was said:
And in Gill v. United States, 160 U.S. 426, 435 , 16 S.Ct. 322, 326:
The distinction between an employment to make an invention and a general employment in the course of [289 U.S. 178, 192] which the servant conceives an invention has been recognized by the executive department of the government. A lieutenant in the Navy patented an anchor while he was on duty in the Bureau of Equipment and Recruiting, which was charged with the duty of furnishing anchors for the Navy; he was not while attached to the Bureau specially employed to make experiments with a view to suggesting improvements to anchors or assigned the duty of making or improving. The Attorney General advised that, as the invention did not relate to a matter as to which the lieutenant was specially directed to experiment with a view to suggesting improvements, he was entitled to compensation from the government for the use of his invention in addition to his salary or pay as a navy officer. 9
A similar ruling was made with respect to an ensign who obtained a patent for improvements in 'B.L.R. ordnance' and who offered to sell the improvements, or the right to use them, to the government. It was held that the Navy might properly make a contract with him to this end. 10
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. Solomons v. United States, supra, pages 346, 347 of 137 U.S., 11 S.Ct. 88; McAleer v. United States, 150 U.S. 424 , 14 S.Ct. 160; Gill v. United States, supra.
The statutes, decisions, and administrative practice negate the existence of a duty binding one in the service of the government different from the obligation of one in private employment. [289 U.S. 178, 193] Third. When the United States filed its bills, it recognized the law as heretofore declared; realized that it must like any other employer, if it desired an assignment of the respondent's rights, prove a contractual obligation on the part of Lowell and Dunmore to assign the patents to the government. The averments clearly disclose this. The bill in No. 316 is typical. After reciting that the employees were laboratory apprentice and associate physicist and laboratory assistant and associate physicist respectively, and that one of their duties was 'to carry on investigation research and experimentation in such problems relating to radio and wireless as might be assigned to them by their superiors,' it is charged 'in the course of his employment as aforesaid, there was assigned to said Lowell by his superiors in said radio section, for investigation and research, the problem of developing a radio receiving set capable of operation by alternating current. ...'
Thus the government understood that respondent could be deprived of rights under the patents only by proof that Dunmore and Lowell were employed to devise the inventions. The findings of the courts below show how far the proofs fell short of sustaining these averments.
The government is consequently driven to the contention that, though the employees were not specifically assigned the task of making the inventions (as in Standard Parts Co. v. Peck, supra), still, as the discoveries were 'within the general field of their research and inventive work' the United States is entitled to an assignment of the patents. The courts below expressly found that Dunmore and Lowell did not agree to exercise their inventive faculties in their work and that invention was not within its scope. In this connection it is to be remembered that the written evidence of their employment does not mention research, much less invention; that never was there [289 U.S. 178, 194] a word said to either of them, prior to their discoveries, concerning invention or patents or their duties or obligations respecting these matters; that, as shown by the records of the Patent Office, employees of the Bureau of Standards and other departments had while so employed received numerous patents and enjoyed the exclusive rights obtained as against all private persons without let or hindrance from the government. 11 In no proper [289 U.S. 178, 195] sense may it be said that the contract of employment contemplated invention; everything that Dunmore and Lowell knew negatived the theory that they were employed to invent; they knew, on the contrary, that the past and then present practice was that the employees of the Bureau were allowed to take patents on their inventions and have the benefits thereby conferred save as to use by the [289 U.S. 178, 196] United States. The circumstances preclude the implication of any agreement to assign their inventions or patents.
The record affords even less basis for inferring a contract on the part of the inventors to refrain from patenting their discoveries than for finding an agreement to assign them.
The bills aver that the inventions and patents are held in trust for the United States, and that the court should so declare. 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. Nor can it arise ex maleficio. The employees' conduct was not fraudulent in any respect. They promptly disclosed their inventions. Their superiors encouraged them to proceed in perfecting and applying the discoveries. Their notebooks and reports disclosed the work they were doing, and there is not a syllable to suggest their use of time or material was clandestine or improper. No word was spoken regarding any claim of title by the government until after applications for patents were filed. And, as we have seen, no such trust has been spelled out of the relation of master and servant, even in the cases where the employee has perfected his invention by the use of his employer's time and materials. 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 [289 U.S. 178, 197] 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.
Where shall the courts set the limits of the doctrine? For, confessedly, it must be limited. The field of research is as broad as that of science itself. If the petitioner is entitled to a cancellation of the patents in this case, would it be so entitled, if the employees had done their work at home, in their own time and with their own appliances and materials? What is to be said of an invention evolved as the result of the solution of a problem in a realm apart from that to which the employee is assigned by his official superiors? We have seen that the Bureau has numerous divisions. It is entirely possible that an employee in one division may make an invention falling within the work of some other division. Indeed this case presents that exact situation, for the inventions in question had to do with radio reception, a matter assigned to a group of which Dunmore and Lowell were not members. Did the mere fact of their employment by the Bureau require these employees to cede to the public every device they might conceive?
Is the doctrine to be applied only where the employment is in a bureau devoted to scientific investigation pro bono publico? Unless it is to be so circumscribed, the statements of this court in United States v. Burns, supra, Solomons v. United States, supra, and Gill v. United States, supra, must be held for naught.
Again, what are to be defined as bureaus devoted entirely to scientific research? It is common knowledge that many in the Department of Agriculture conduct re- [289 U.S. 178, 198] searches and investigations, that divisions of the War and Navy Departments do the like, and doubtless there are many other bureaus and sections in various departments of government where employees are set the task of solving problems all of which involve more or less of science. Shall the field of the scientist be distinguished from the art of a skilled mechanic? Is it conceivable that one working on a formula for a drug or an antiseptic in the Department of Agriculture stands in a different class from a machinist in an arsenal? 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? Illustrations of the difficulties which would attend an attempt to define the policy for which the government contends might be multiplied indefinitely.
The courts ought not to declare any such policy; its formulation belongs solely to the Congress. Will permission to an employee to enjoy patent rights as against all others than the government tend to the improvement of the public service by attracting a higher class of employees? Is there in fact greater benefit to the people in a dedication to the public of inventions conceived by officers of government than in their exploitation under patents by private industry? Should certain classes of invention be treated in one way and other classes differently? These are not legal questions, which courts are competent to answer. They are practical questions, and the decision as to what will accomplish the greatest good for the inventor, the government, and the public rests [289 U.S. 178, 199] with the Congress. We should not read into the patent laws limitations and conditions which the Legislature has not expressed.
Fourth. Moreover, we are of opinion Congress has approved a policy at variance with the petitioner's contentions. This is demonstrated by examination of two statutes, with their legislative history, and the hearings and debates respecting proposed legislation which failed of passage.
Since 1883 there has been in force an act12 which provides:
This law was evidently intended to encourage government employees to obtain patents, by relieving them of the payment of the usual fees. The condition upon which the privilege was accorded is stated at the grant of free use by the government, 'its officers or employees in the prosecution of work for the government, or by any [289 U.S. 178, 200] other person in the United States.' For some time the effect of the italicized phrase was a matter of doubt.
In 1910 the Judge Advocate General of the Army rendered an opinion to the effect that one taking a patent pursuant to the act threw his invention 'open to public and private use in the United States.' 13 It was later realized that this view made such a patent a contradiction in terms, for it secured no exclusive right to any one. In 1918 the Judge Advocate General gave a well-reasoned opinion14 holding that, if the statute were construed to involve a dedication to the public, the so-called patent would at most amount to a publication or prior reference. He concluded that the intent of the act was that the free use of the invention extended only to the government or those doing work for it. A similar construction was adopted in an opinion of the Attorney General. 15 Several federal courts referred to the statute, and in dicta indicated disagreement with the views expressed in these later opinions.