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Law School Case Brief

Metallizing Eng'g Co. v. Kenyon Bearing & Auto Parts Co - 153 F.2d 516 (2d Cir. 1946)

Rule:

If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should make and sell his invention publicly, and thus gather the whole profits, it would materially retard the progress of science and the useful arts to allow him fourteen years of legal monopoly when the danger of competition should force him to secure the exclusive right.

Facts:

Plaintiff, assignee of a patent, brought a complaint alleging infringement against defendant for a patent on the process of conditioning a metal that is useful for building up the worn metal parts of the machine. The district judge, concluding that the complaint was valid, found that plaintiff's main purpose in his use of his process more than one year before the date of application was secret, and for that reason its predominantly commercial character was prevented from invalidating the patent. The district court further held that defendant had infringed all but three of the claims of a reissued patent that had been issued to plaintiff’s assignor. Defendant manufacturer sought review from the United States Court of Appeals for the Second Circuit.

Issue:

Does the delay in making the invention public invalidate plaintiff’s right to file an action for infringement?

Answer:

Yes.

Conclusion:

The Court overruled the case relied on by the district court in reaching its decision, reversed the judgment and dismissed the complaint, concluding that the secrecy of invention did not validate its use more than one year before the patent application was made. It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it.  But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly.

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