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432
Moore v. United States

194 USPQ Defendant's charge that plaintiff aban- again recognized that the keeping of an indoned and/or forfeited his right to a patent vention secret was not violative of any patent because:

law by the following language: After plaintiff filed, and while the applica Even were an inventor to keep his distion was pending in the Patent Office, covery completely to himself, something plaintiff further unduly delayed issuance that neither the patent nor trade secret of a patent on the invention in suit

laws forbid, will be discussed hereinbelow.

Also, Adelman, in Trade Secrets and However, for the moment, it appears only Sears and Compco, Vol. XLIX, No. 10,

Federal Pre-emption - The Aftermath of necessary to emphasize that the last-men- JPOS (Oct. 1967), at 727, states: tioned cases do not involve the question of whether a "mere delay" by an inventor The time periods for which trade secret between the time that he reduces his inven. protection is available are significant for tion to practice and files for a patent is a suf distinguishing between pre-emption and ficient basis for a finding that he has aban limited Section 101 secrets and pre-emp. doned his invention or forfeited his right to a tion and potentially perpetual Sec. 101 patent.

secrets. Trade secret protection may be In sum, after reviewing the cases cited,

available as soon as the secret is both pro and con, involving abandonment,

developed, but patent protection is of it must be repeated that defendant has not

necessity preceded by the filing of a patshown, by clear and convincing evidence,

ent application, and a period of some that plaintiff abandoned his invention

years of prosecution in the Patent Office. within the meaning of 35 U.S.C. $102(c).

Furthermore, the patent laws do not require that Moreover, assuming that forfeiture is a

an application be filed within a reasonable time viable doctrine that can be used as a defense

after the completion (actual reduction to practice] to a patent infringement charge, none of the

of the subject invention. Instead, a patent cases cited indicate that it has been applied

application may be filed on a secret invention at to a situation which involves pure and sim

any time as long as it is filed within a year after

the invention has been placed in commercial use. ple delay - regardless of the length or duration of the delay - between the time that an

(Footnotes omitted and emphasis added.) inventor reduces his invention to practice A very good treatment of the subject, in a and the time that he files for a patent patent interference context (35 U.S.C. application.

$ 102(g)),' is found in the case of Young v. To the contrary, a great number of cases

Dworkin, 489 F.2d 1277, 180 USPQ 388 involving both applicants before the Patent

(CCPA 1974). The majority, at 1281, 180 Office or patentees in patent infringement

USPQ at 391-392, noted: actions have recognized the principle that First, the length of time from reduction mere delay is not per se bad. This principle to practice to filing of an application for a was announced in terms which are as ac patent is not determinative. Woofter v. curate and correct today as they were in Carlson, supra; Schnick v. Fenn, 277 F.2d 1878 when the Supreme Court stated in 935, 47 CCPA 1174, 125 USPQ 567 Bates v. Coe, 98 U.S. 31, 46 (1878):

(1960). Mere delay, without more, is not Inventors may, if they can, keep their invention secret; and if they do for any length of time, they do not forfeit their right to apply for a patent, unless another

5"8102. Conditions for patentability; novelty in the mean time has made the invention,

and loss of right to patent and secured by patent the exclusive right

“A person shall be entitled to a patent unless — to make, use, and vend the patented improvement. Within that rule and subject "(g) before the applicant's invention thereof the to that condition, inventors may delay to invention was made in this country by another apply for a patent;

who had not abandoned, suppressed, or conceal

ed it. In determining priority of invention there Similarly, as recently as 1974, when dis shall be considered not only the respective dates cussing the interplay between trade secrets

of conception and reduction to practice of the inand patents, the Supreme Court in Kewanee

vention, but also the reasonable diligence of one Oil Co. v. Bicron Corp., 416 U.S. 470,

who was first to conceive and last to reduce to 490-91 (1974), 181 USPQ 673, 681-82,

practice, from a time prior to conception by the other."

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194 USPQ
Moore v. United States

433 sufficient to establish suppression or con And again, “it is a rule according to cealment. Gallagher v. Smith, supra. which the patent right goes to the most However, the warning has been sounded deserving." that one who delays filing his application does so at the peril of a finding of suppression or concealment due to the cir I cannot agree with the board that the cumstances surrounding the delay. question in this case is whether Young Woofter v. Carlson, supra. See also Wat. "forfeited his right to a patent.”. (My son, Commissioner of Patents v. Allen, emphasis.) But for Dworkin's conflicting 103 U.S.App.D.C. 5, 254 F.2d 342, 117 claim, Young forfeited nothing and would USPQ 68" (1958); International Glass get a patent. All he forfeited, as I tried to Co., Inc. v. United States, 408 F.2d 395, point in Brokaw v. Vogel, supra, last 187 Ct.Cl. 376, 161 USPQ 116 (1968). paragraph of the opinion, was the right to In his concurring opinion, Judge Giles

rely on his prior actual reduction to pracRich expands on the problems which can

tice in a priority dispute. Considering result by an inventor who delays in filing for

what Robinson said, quoted above, a patent after reducing his invention to prac

another, and perhaps better, way to have tice. After a review a number of the early

stated it would have been that Young.was cases, Judge Rich states (at 1284, 180

estopped by his conduct to rely on his USPQ at 393-394):

reduction to practice in a priority dispute. We also see in these early interferences that the concept of "diligence" was view

The issue is, therefore, not forfeiture or esed as applying to two different periods: toppel or anything other than whether diligence in reducing the invention to Young suppressed or concealed, since no practice and diligence in filing a patent question of abandonment has been raised. application after a reduction to practice. The only reason we have to look to prior li clearly appears to have been the rule cases is to gain an understanding of the that absence of the latter while a rival in m“aning of "suppressed and ventor industriously brought the inven "cc.icealed,” which concepts have been tion to public attention through manufac codified in $102(g). Case law "doctrines' ture, or by proceeding with the filing of an are no more; the question is now simply application for patent, resulted in loss of one of statutory construction. the right to a patent by the first inventor

Finally, and significantly, it is possible to unless he could show some good excuse for his inaction. In Mallett v. Cogger,

distinguish all of the cases cited by the par1879 C.D. 100 (Com’r. Pats.) we find the each of the cited cases the invention was in

ties from the case at bar by noting that in interesting concept that the second inven

the public domain at the time that the first tor “rescues the invention from oblivion

inventor filed his application for a patent. and confers its benefits upon the public,'

Specifically, the invention was in the public Later, at 1285-87, 180 USPQ at 394-396, domain because of acts by the inventor Judge Rich profoundly observes:

which are now proscribed by 35 U.S.C.

$ 102 or because during the inventor's delay, In delving into these old cases it becomes apparent that it is not the time

others working independently made the

same or substantially the same invention. elapsed that is the controlling factor but the total conduct of the first inventor.

Levinson, supra, for example, is a case While only 27 months is involved in the

where the invention was reduced to practice case at bar it is clear that in the by plaintiff in 1957 and an application filed nineteenth century the Patent Office

in the Patent Office on September 23, 1963. thought nothing of depriving the first in However, as noted hereinabove, defendant, ventor of his right to a patent as against a

by at least December 4, 1962, was attempmore diligent second inventor when the

ting to sell the same invention. Accordingly, period involved from reduction to practice

since the Levinson invention had already to filing was two years or less. It all come into the public domain by the acts of depended on what the first inventor was

defendant, the primary purpose for the doing during the period of delay. It is

granting of a patent no longer existed. clear that it was regarded as a question of However, in the case at bar, at least as "diligence." * * * "What is involved is a can best be determined from the record at policy question as to which of two rival in trial, defendant has not demonstrated that ventors has the greater right to a patent." Moore's invention was already in the public

434
Moore v. United States

194 USPQ domain at the time that he filed for a patent grounds, and received an indication that his in 1955.

application contained allowable claims. While defendant has introduced a After the Patent Office indicated that the number of alleged prior art references, they six claims in Serial No. 818,254 were at best show that others were working in the allowable, Moore tried to increase his patsame general field during the years 1942-55. ent coverage by adding two claims directed None of the references show that the inven to an embodiment using flowable rubber. tion covered by the Moore patent was made The Patent Office refused to consider these by another during the 1942-55 period. claims. Moore, as a result, filed a con

Based on the record before me, I must tinuation-in-part application that included conclude that the public would still benefit all of the six allowed claims and added by the public disclosure which would result several more. The Patent Office not only from Moore's 1955 filing for a patent, refused to allow the new claims in this notwithstanding the many years which had application, but, as well, rejected the six passed from his 1942 reduction to practice. claims that had previously been allowed. This being the case, it is in keeping with the Finally, Moore filed yet another conpronouncements of the Supreme Court, and tinuation-in-part application, Serial No. as well, with U.S. Const. art. I, 88, cl. 8, 165,456, on January 10, 1962. that a patent be granted to plaintiff for the In Serial No. 165,456, the Patent Office disclosure of his invention to the public. allowed the six claims previously allowed in

In sum, defendant has not demonstrated Serial No. 818,254, plus two additional that plaintiff has either abandoned and/or claims. No claims to the flowable rubber forfeited his right to a patent by merely embodiment were, however, allowed. This waiting from 1942 to 1955 to file for a pat- application issued as Patent No. 3,135,634. ent.

Moore, however, persisted in his attempts Alleged Acts by Plaintiff to Delay Issuance of and, therefore, before allowance of the

to patent his flowable rubber embodiment Patent

3,135,634 patent and, specifically, on May Defendant also argues that plaintiff has

20, 1963," he filed continuation-in-part abused certain Patent Office practices to

application 281,748. The continuation-indeliberately keep his application pending for part application 281,748 was directed to the as long as possible and thus postponing the sowable rubber embodiment as well as time when the public would be entitled to

others. When the Patent Office refused to free use of his invention. In order to be able

allow claims in this continưation-in-part, to evaluate defendant's charge, it is

Moore filed still another continuation-innecessary to briefly, but thoroughỉy, review part on December 30, 1964. This last-menthe facts and circumstances surrounding tioned continuation-in-part application, No. plaintiff's continuation-in-part applications. 422,056, eventually was abandoned with no (14) Moore filed a series of patent the chain of continuity terminated. In the

claims indicated as being patentable, and applications in connection with the invention at bar. On September 7, 1955, Moore meantime, on May 19, 1965, Moore filed an filed application 533,028. Because of rejec- That application not only included the eight

application to reissue his 3,135,634 patent. tions on a number of different bases, no claims were found allowable by the ex

claims of his patent, but also added the adaminer. In fact, it was not until four con

ditional claims. tinuation-in-part applications later, in Although Moore filed a large number of application Serial No. 818,254, filed June 5, continuing applications, defendant has not 1959, that Moore first overcame all the re shown or complained of a particular abuse jections based on new matter, insufficient by Moore as a result of the Patent Office disclosure,' prior art, as well as other proceedings. In fact, as the above analysis

indicates, the first four continuations-inpart were necessary to place the first

application into condition for allowance. • Moore also refers to application Serial No. 524,815, filed July 27, 1955, but continuity with this application has not been shown.

The frequency of new matter and insufficient It is, of course, the burden of the patentee to show disclosure rejections indicates that Moore may affirmatively

that material that is asserted to be not be entitled to the September 7, 1955, filing entitled to the carliest filing date is, in fact, comdate on all the material and claims in the patent. mon to all links in the chain of continuity.

194 USPQ
Moore v. United States

435 (15) On October 21, 1960, Moore did file While it is true that two continuation-ina continuation-in-part following an indica part applications were filed following an intion by the Patent Office of allowable claims dication by the Patent Office that six claims in an effort to cover inventions which could were allowable in application 818,254, at have been claimed earlier. This, however, is least one of the continuation-in-part not, by itself, antagonistic or contrary to the applications resulted from a change in posiproper use of continuation-in-part tion by the Patent Office with respect to the applications. It should also be pointed out allowed claims. Moore filed the first of these that the change in position by the Patent Of continuations-in-part in order to add an adfice in continuation-in-part application ditional embodiment. In the present case 63,984 of October 21, 1960, with respect to most of the continuation-in-part claims that it had previously found to be applications were filed in order for Mr. allowable/patentable also added to the con- Moore to overcome rejections of the Patent fusion. Finally, the filing of continuation Office examiner. The filing of the numerous in-part applications 281,748 and 422,056 continuations-in-part was, under the cirshould not enter into any consideration con- cumstances, necessary and was not the type cerning alleged abuses by Moore of Patent of unconscionable conduct that would Office proceedings since these applications render the resulting patent invalid. are not in the chain of continuity leading to In Ex parte Hull, supra, the Patent Office the reissue patent in suit.

in the very first application indicated that a The above analysis illustrates that the number of the claims were patentable. practices of Moore are clearly dis. Instead of allowing a patent to issue with the tinguishable from the purpose and practices allowable claims, the inventor carried these in Ex parte Hull, 191 USPQ 157 (P.O. Bd. claims over into a continuation-in-part App: 1975), Vitamin Technologists, supra, application which added refinements to the or Wirebounds Patents Co., supra. Those original invention. When claims to these cases all turned on clear abuses in the use of refinements were indicated allow'ible, the continuing applications to circumvent the inventor again carried all the allowable tenevolent aims of the patent laws, whereas claims over to arother application which Moore was using continuation-in-part added still further refinements. In total, applications in a normal manner.

Hull filed six continuation-in-part

applications. Hull admitted that he filed the In Wirebounds, supra, the inventor abus- chain of continuation-in-part applications to ed established Patent Office practice by fil. prevent others from seeing his invention and ing a continuing application to obtain pat. improving upon it. ent claims which the court held he could The Patent Office Board of Appeals rulonly obtain by way of a reissue application. ed, after questioning if a court would enforce This act by the inventor resulted in his hav- such a patent, that Hull's actions did not ing two patents with different expiration bar his right to a patent, but did issue a war. dates on a single invention. Moore, of ning that the filing of additional concourse, did not attempt to extend his period tinuations-in-part by Hull, without permitof patent protection by obtaining more than ting the present application to issue, might one patent on the same invention.

result in a rejection based on conduct that is In Vitamin Technologists, supra, the

contrary to the purpose of the Constitution court felt that the inventor was attempting and patent laws. To the contrary, Moore's to hide the invention in the Patent Office continuation-in-part applications were not through needless continuation-in-part

filed to cover up allowed claims, but in applications. The applicant persisted in

attempt to obtain allowed claims. these practices even after a second inventor Thus, Moore's long string of continuing published the invention and purported to applications cannot be tied to any attempt dedicate it to the public. In fact, it appears to hide a patentable invention, but must be that rather than coming forward and public viewed as part of the arduous route under. ly asserting his rights, the applicant remain taken by an applicant upon the filing of a ed silent and filed yet another continuation patent application in the Patent Office. The in-part application. Moore, on the other court sees no conduct on Moore's part that hand, was using continuation-in-part applications to correct deficient applications and otherwise overcome objections raised by the Patent Office examiner in the hope that Applications 63,984 of October 21, 1960, and a patent would ultimately issue.

165,456 of January 10, 1962.

436
Aloe Creme Laboratories, Inc. v. Matafleur, Inc.

194 USPQ would cause a loss of patent rights. In fact, if judgment they are unwise or prejudicial anything, the observation of the Supreme to the interests of the public. Court in the Overland Motor Co. case, supra, at 424-25, relating to a different com

It is, accordingly, concluded that plaintiff plaint of abuse by applicants before the Pat- has not abandoned or forfeited his right to a ent Office, quoted with approval the follow

patent as a result of conduct before the Pating language from United States v.

ent Office. American Bell Tel. Co., 167 U.S. 224 In sum, defendant has not shown, by (1896):

clear and convincing evidence that plaintiff Neither can a party pursuing a strictly right to the patent in suit.

has either abandoned and/or forfeited his legal remedy be adjudged in the wrong if he acts within the time allowed, and pur

In accordance with the order of March sues the method prescribed by the statute.

15, 1976, any appeal by defendant to this • Under section 4886, Rev. Stat., an

decision shall be held in abeyance until a inventor has two years from the time his

decision is rendered on the entire case. Trial invention is disclosed to the public within is hereby set to commence on the remaining which to make his application, and unless issues at 10 a.m. on October 3, 1977, in the

United States Court of Claims, Washington, an abandonment is shown during that

D.C. time he is entitled to a patent, and the patent runs as any other patent for seventeen years from its date. He cannot be deprived of this right by proof that if he had filed his application immediately after the invention the patent would have been issued two years earlier than it was, and the public therefore would have come into possession of the free use of the invention two years sooner. The statute has [The following decision was designated given this right, and no consideration of by the board to appear in digest form only.) public be!efit can take it from him. His right exists because Congress has Patent and Trademark Office Trademark declared that it should.

A party seeking a right under the pateni statutes

Trial and Appeal Board may avail himself of all their provisions,

Aloe Creme Laboratories, Inc. and the courts may not deny him the benefit of a single one. These are

v. Matafleur, Inc. questions not of natural but of purely

Decided Mar. 31, 1977 statutory right. Congress, instead of fixing

Released May 30, 1977 seventeen had the power to fix thirty years as the life of a patent. No court can disregard any statutory provisions in respect

Trademark opposition No. 57,171, by to these matters on the ground that in its Aloe Creme Laboratories, Inc., against

Matafleur, Inc., application, Serial No. 38,171, filed Nov. 26, 1974. Opposition dis

missed. • "Counsel for the alleged infringer says, that even with the time limit for action on the part of the applicant thus reduced to one year, it becomes casily possible for an applicant, after an action by 10 "To assure a rapid initiation of the trial in the Patent Office upon his application, to delay chief in the event that plaintiff prevails on the for the full period of a year his response to such separate trial, the motion is granted on the unaction, and however promptly the Patent Office derstanding that defendant agrees and stipulates may again act, he can delay another full year that a trial on all remaining issues will commence before replying to it, and thus, by waiting a year within 90 days after the undersigned's decision in after each official action, (1) keep his application the separate trial, if adverse to defendant; and pending so as to enable him to withhold, in that defendant's rights to appeal will be held in definitely, his invention from the public, (2) add abeyance until a decision is rendered on the entire claims to his application covering the indepen case. In this way defendant will get its separate dent intervening developments of others, and (3) trial and plaintiff's position would be taken into postpone the time when the public may enjoy the consideration since defendant's right to appeal free use of the invention — all contrary to sound would be merged into its right to appeal from a public policy."

decision on the entire case.

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