v. Keith, 101 U. S. 479, 25 L. ed. 939;|ernment, was referred to the court of United States Rifle & Cartridge Co. v. claims to hear and determine, first, Whitney Arms Co. 118 U. S. 22, 30 L. whether Woodbridge was the first and ed. 53, 6 Sup. Ct. Rep. 950; Colgate v. original inventor, and, second, to what Western U. Teleg. Co. 4 Bann. & Ard. extent the United States had used it and 562, Fed. Cas. No. 2,994; Smith v. the amount of compensation which was Goodyear Dental Vulcanite Co. 93 U. S. due in equity and justice therefor, and, 486, 23 L. ed. 952; United States v. if it found that Woodbridge was such American Bell Teleph. Co. 167 U. S. 226, inventor, to decide the case as if a patent had issued for seventeen years in 42 L. ed. 144, 17 Sup. Ct. Rep. 809. 1852, the year in which it had been ordered to issue, with the right of appeal as in other causes-"Provided, however, That the said court shall first be satisfied that the said Woodbridge did not forfeit, or abandon, his right to a patent, by publication, delay, laches or otherwise; and that the said patent was wrongly refused to be issued by the The court of claims Patent Office." heard the case, made findings of fact, and held that the petition must be dison two grounds,-first, that missed Woodbridge had forfeited or abandoned his right to a patent by his delay or laches, and, second, that the United States had not used his invention.

Special Assistant to the Attorney General Harry E. Knight argued the cause, and, with Solicitor General Beck, Assistant Attorney General Robert H. Lovett, and Special Assistant to the Attorney General Melville D. Church, filed a brief for appellee:

The Woodbridge invention was abandoned as the result of laches and delay from March 25, 1852, to December 31,

1861.

Kendall v. Winsor, 21 How. 322, 327, 16 L. ed. 165, 167; MacBeth-Evans Glass Co. v. General Electric Co. 158 C. C. A. 651, 246 Fed. 700; Boyden v. Burke, 14 How. 575, 14 L. ed. 548; Consolidated Fruit Jar Co. v. Wright, 12 Blachf. 149, Fed Cas. No. 3,135; Wyeth v. Stone, 1 Story, 281, Fed. Cas. No. 18,107; Clements v. Odorless Excavating Apparatus Co. 109 U. S. 641, 649, 27 L. ed. 1060, 1063, 3 Sup. Ct. Rep. 525; Mahn v. Harwood, 112 U. S. 354, 363, 28 L. ed. 665, 668, 5 Sup. Ct. Rep. 174, 6 Sup. Ct. Rep. 451; Ex parte Hoiland, 285 Off. Gaz. 391; Miller v. Bridgeport Brass Co. 104 U. S. 350, 26 L. ed. 783.

From the findings of fact, it appears that Woodbridge was a man skilled in the science of projectiles and an invenIn Feb tor of genius and experience. ruary, 1852, he filed an application for a patent for an invention which he described as consisting of "applying to a projectile to be fired from a rifled gun a rifle ring, or sabot, in the manner hereafter described, for the purpose of giving to the projectile the rifle motion." The Patent Office [52] advised him that the use of sabots or rings of soft metal applied to iron balls was known for either smoothbore or rifled guns, but after discussion allowed him two claims, the first for a smooth ring for a smoothUnited States Rifle & Cartridge Co. v. bore cannon, and the second for a ring Whitney Arms Co. 118 U. S. 22, 25, 30 with exterior projections to fit into the L. ed. 53, 54, 6 Sup. Ct. Rep. 950; Wood-rifled cannon, for the purpose of diminbury Patent Planing Mach. Co. v. Keith, ishing windage and giving the projectile 101 U. S. 479, 485, 25 L. ed. 939, 941; a motion in direction of the axis of the Marsh v. Commissioner of Patents, 3 bore. Biss. 322, Fed Cas. No. 9,114.

Woodbridge forfeited or abandoned his right to a patent by his acquiescence for nine years in the adverse decision of the Board of Examiners in Chief, rendered July 10, 1862, and by eight years' additional delay after filing his appeal in

1871.

[51] Mr. Chief Justice Taft delivered the opinion of the court:

This suit in the court of claims was brought under the authority of a special act of Congress of March 2, 1901 (31 Stat. at L. 1788, chap. 821), by which the claim of William E. Woodbridge for compensation from the United States for use of his alleged invention relating to projectiles for rifled cannon, for which a patent was ordered issued by the gov

In a letter of March 23, 1852, Woodbridge wrote the Patent Commissioner, with the claims amended in the form in which the Patent Office had agreed to allow them, and said:

"I was informed, in answer to my inquiry, that upon the issue, or order to issue, of a patent, it may be filed in the secret archives of your office (at the risk of the patentee) for such time as he may desire. I wish to avail myself of this privilege when my patent may issue, in order that my ability to

263 U. S.

take out a patent in a foreign country | necessities and action of the government, may not be affected by the publication he thought the intent of the law that of the invention. If it is necessary to the inventor should have fourteen years' specify a particular time during which exclusive use of his invention could in the patent shall remain in the secret no other way be so well attained in archives, you will please consider one the case of this particular invention year as the time designated by me." 'as by deferring the issue of the patent to a time when it could be brought into practical use." [55 Ct. Cl. 243.]

To this, on April 15, 1852, the Patent Office answered that a patent had been ordered to issue on his application and, in accordance with his request, the papers were filed among the secret archives of the office, subject to his directions as to the time of issuing them. This was done presumably under § 8 of the Act of July 4, 1836 (5 Stat. at L. 121, chap. 357), which contains the following provision:

In the same letter in which Woodbridge asked the issue of the patent he requested that he be permitted to amend his specifications and claims and broaden them so as to cover the use in a rifle of the sabot or ring, without the projections to fit in the grooves of the bore. Within five days [54] the Patent Office replied that the patent would be "And whenever the applicant shall re-ordered to issue, but that the defects in quest it, the patent shall take date from the time of the filing of the specification and drawings, not however exceed ing six months prior to the acutal is suing of the patent; and on like request, and the payment of the duty herein required, by any applicant, his specification and drawings shall be [53] filed in the secret archives of the office until he shall furnish the model and the patent be issued, not exceeding the term of one year, the applicant being entitled to notice of interfering applications."

After the filing of the papers in the secret archives before April 15, 1852 nothing was done either by Woodbridge or the Patent Office for nine years and a half, when on December 31, 1861, Woodbridge wrote to the Commissioner of Patents calling attention to his invention in 1850 and his application for a patent in 1852, the order of the office to issue the patent, and the filing of the papers in the secret archives. He said:

"I have allowed it to remain until the present time, it being only lately that any immediate opportunity of rendering it pecuniarily available has occurred."

The fourth finding of the court of claims was as follow:

"The reason of said Woodbridge for his delay in requesting issue of the patent allowed him was, as stated by him in communications to the Patent Office, that he thought that course best fitted to enable him to avail himself of the value of the patent, as by procuring delay in the issue of the patent the wants of the government might demand the invention before the patent should expire, and that, as the invention could be made available only by the

the

his specifications could only be cured by a reissue. On January 29th, before a month had elapsed, the Patent Office wrote Woodbridge another letter in answer to his letter of December 31, 1861, in which he was informed that the length of time he had allowed his invention to slumber was a bar to the issue of a patent, that for nearly ten years he had suffered his application to remain locked up not merely beyond the reach of the public, but beyond even the cognizance of the examiners and other officers of the Department, that meantime many patents had issued for the same invention, and yet his only reason for his delay and silence was that he supposed the invention would not prove remunerative until recently. The application was rejected on ground of abandonment. On April 15, 1862, Woodbridge appealed to the Board of Examiners in Chief, and on July 10, 1862, that board affirmed the action of the examiner. Nothing was done by Woodbridge after this until January 7, 1871, when he appealed to the Commissioner of Patents. A day was set for the hearing. Woodbridge did not get the notice. Another day was set. The Commissioner had to postpone it, and told Woodbridge he would give him another date. Nothing was done by anybody till January, 1879, when on Woodbridge's application the case was heard and the Commissioner affirmed the decision by the subordinate tribunals that the facts amounted to abandonment. Woodbridge appealed to the supreme court of the District, which affirmed the Commissioner on February 28, 1880.

The court of claims found that Woodbridge was the first and original inventor of the invention involved in the

The

two claims recited above. It also found mit others to do so, for profit. that the United States had not used importance in working out the purpose the invention. The latter finding as one of Congress of keeping the inventor's of fact is attacked on the ground that monopoly within the term for which the question of infringement is a mixed the patent is granted is thus shown to question of law and fact, and that [55] be capital. Any practice by the invenwith all the devices used by the United tor and applicant for a patent through States shown in patents subsequent to which he deliberately and without exWoodbridge, which it is found the United cuse postpones beyond the date of the States did use, the question of nonuser actual invention, the beginning of the is really a question of law which should term of his monopoly, and thus puts off be reviewed here. the free public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.

The judgment of the court of claims was chiefly based on the conclusion of law from the facts found that Woodbridge had forfeited or abandoned his right to a patent by his delay and laches. The court also held that the claims of Woodbridge did not cover the devices the United States used.

In this case we have a delay of nine years and a half in securing a patent that might have been had at any time in that period for the asking, and this for the admitted purpose of making the term of the monopoly square with the period when the commercial profit from it would be highest. Not until war or fear of war came was there likely to be a strong demand for rifled cannon and their improvement. Hence, the inventor, having put his order for the issue of a patent into the secret archives of the Patent Office in 1852, sat down and waited until after the Civil War came on in 1861 before seeking to avail himself of the patent, thus postponing the time when the public could freely enjoy it for nearly ten years. Meantime other inventors had been at work in the same field and had obtained patents without knowledge of the situation with respect to Woodbridge's invention. This is not a case where evidence has to be weighed as to the purpose of the inventor.

tention.

The purpose of the clause of the Constitution concerning patents is, in terms, to promote the progress of science and the useful arts, and the plan adopted by Congress in exercise of the power has been to give one who makes a useful discovery or invention a monopoly in the making, use, and vending of it for a limited number of years. Under the Act of February 21, 1793 (1 Stat. at L. 318, chap. 11, § 1), it was for fourteen years. Under the Act of July 4, 1836 (§ 6, 5 Stat. at L. 117, 119, chap. 357), it was fourteen years, with a right of extension, under certain conditions and a proper showing, for seven years longer (id. § 18, p. 124). Under the Act of March 2, 1861 (§ 16, 12 Stat. at L. 246, 249, chap. 88), the term was made seventeen years without extension, and this has been the term ever since. It was the legislative intention that the term should run from the date of the issue of the patent, and that, at the end of that time, the public might derive from the full specifications required in the application accompanying the patent, knowledge sufficient to enable it freely to make and use the invention. It is true that a patentee is not obliged either to make, use, or vend his invention during the period of his monopoly. Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U. S. 24, 34, 67 L. ed. 516, 43 Sup. Ct. Rep. 254; Continental Paper Bag Co. v. Eastern Paper Bag Co. 210 U. S. 405, 52 L. ed. 1122, 28 Sup. Ct. Rep. 748. Congress relies, for the public benefit to be derived from the invention during the monopoly, on the natural mo"It is," said the Justice, "the unquestive for gain in the patentee to exploit tionable right of every inventor to conhis invention and to make, use, [56] fer gratuitously the benefits of his inand vend it or its product, or to per-genuity upon the public, and this he

He avows his deliberate inThis is not a case of abandonment. It is a case of forfeiting the right to a patent by designed delay. The special statute makes it a condition of any jurisdiction of the court of claims to render a judgment against the United States that the court shall find that claimant had not forfeited his right to a patent by delay or laches or for other reasons. This necessarily implies that there may be forfeiture by delay or laches, [57] and this court has said that there may be such a forfeiture. In Kendall v. Winsor, 21 How. 322, 329, 16 L. ed. 165, 168, Mr. Justice Daniel, speaking for the court, delivered a very clear and forcible opinion on what the inventors who sought patents owed the public. One passage in that opinion is apposite here:

may do either by express declaration or by conduct equally significant with language such, for instance, as acquiescence with full knowledge in the use of his invention by others; or he may forfeit his rights as an inventor by a wil ful or negligent postponement of his claims, or by an attempt to withhold the benefit of his improvement from the public until a similar or the same improvement should have been made and introduced by others."

ed it. Thus, he would have deprived the public of a decade of free use of the patent which the law intended. It is true that under the special law authorizing this action, Woodbridge's representatives could not recover compensation from the government except for the period of seventeen years from 1852. But this feature of the special law is immaterial in considering the jurisdictional question whether by his conduct he forfeited his right to his patent. In the case before us, we have the That must be decided on the facts as feature last alluded to. Many inven- they were between 1852 and 1862. Had tors were at work in the same field and he taken out his patent in 1852, he had made advances in the art, and the would have been entitled to a term of government had used them. When fourteen years with a contingent posWoodbridge conceived that the time for sibility of an extension for seven years him had come to assert his monopoly, more. With the change of the law in he became aware of the fact that in his 1861, had he succeeded in his effort on specifications and claims, as allowed, he the last day of that year, he would had not covered the real advance made have secured a patent for seventeen by his unconscious competitors, and that years from 1862. To state it in anothwas the use in a rifled gun of a ring or er way, his certain term, if he had been sabot without projections to fit into the diligent and not sought to evade the rifling of the bore, which because of the law, would have expired in 1866. Had softness of the metal of the ring under he succeeded in his illegal plan [59] and the heat and pressure would do so with- procured a patent in 1862, his term would out projections; and so, nine and a half have ended in 1879. Part of this unconyears after his patent had been allowed scionable postponement of the end of but not issued, he applied for a change his monopoly was due to the change of of specifications and claims, so that he law in 1861, but nearly ten years, as almight cover the patents of these sub-ready said, was the result of his desequent inventors. liberate design.

Reference is made to the custom of the Patent Office in 1852 and its permission and acquiescence in the consignment of Woodbridge's specifications and order for issue [58] of his patent to the secret archives, as an excuse and explanation for his course. But this is no justification. By the terms of his letter directing it to be done, he said he wished to apply for foreign patents and that he would not ask delay for more than a year. Moreover, § 8 of the Law of 1836, quoted above, wherein is found the only authority for such a proceed ing, limits the possible period of the deposit in the secret archives to one year, for the evident purpose of prepar ing a model. Here the findings show that the model had been filed before the deposit, and also show that he never applied for a foreign patent. These circumstances only emphasize the truth of his avowal of 1862 that he was deliberately delaying the issue of his patent so that its term and monopoly would reach forward to include nearly ten more years of the future and cover a much more commercially lucrative period than if he had obtained his patent when he might and should have request

No case cited to us presents exactly these facts, but the general principles upon which this court has proceeded in cases of abandonment by conduct, and its views of the rights of the public and the purpose of the constitutional author ity to grant patents and of Congress, in its legislative execution of that purpose, set forth in those cases, leave no doubt of the conclusion we must reach. Pennock v. Dialogue, 2 Pet. 1, 7 L. ed. 327; Wyeth v. Stone, 1 Story, 273, 282, Fed. Cas. No. 18,507; Shaw v. Cooper, 7 Pet. 292, 8 L. ed. 689; Kendall v. Winsor, supra; Woodbury Patent PlaningMach. Co. v. Keith, 101 U. S. 479, 485, 25 L. ed. 939, 941; United States Rifle & Cartridge Co. v. Whitney Arms Co. 118 U. S. 22, 25, 30 L. ed. 53, 6 Sup. Ct. Rep. 950.

Of course the conclusion that patents have been abandoned by conduct in such cases are reached by inference that the delay and other circumstances indicated an intention to give up effort to secure a patent. The circumstances usually relied on to show abandonment are a rejection of an application for a patent by the Patent Office and unexplained delay in prosecuting appeal from one of