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One who delays filing his application does so at the peril of a finding of suppression or concealment due to the circumstances surrounding the delay, the unreasonable length of a delay may be ample circumstance in itself to find suppression.
In 1965, in ultrasonic vibrating probe tests, in which a soft metal tip is vibrated at high frequency in a beaker containing SKYDROL 500A and the additive under test and the loss of metal from the tip measured, it was found that water as an additive would reduce cavitation damage substantially. This laboratory finding was confirmed in use in the Trident aircraft. In March 1966 Miller thought of using FREON 11 (the DuPont trademark for trichloromonofluoromethane) as the additive and also other halocarbons, which are fire-resistant and, like water, have high volatility in relation to the base fluid, as anti-cavitation additives. On March 8 Miller instructed a colleague (Stainbrook) to conduct ultrasonic vibrating probe tests using FREON 11 as the additive. Stainbrook performed one control run and one run with FREON 11 as the additive on that day. FREON 11 significantly reduced erosion of the probe tip in the experiment. In his notebook entry Miller indicated, "To better assess such additives, we are setting up hermetically sealed sample containers." The record does not show that hermetically sealed containers were subsequently used by Miller. On April 5, 1966, Miller submitted a "preliminary disclosure of invention," which his superiors in the Research Department of Monsanto's Organic Chemicals Division rated "A (Ready [to file])" on April 18, 1966. Presumably, this disclosure was forwarded to Monsanto's patent department for action soon thereafter, but the record does not show when this occurred. From the time when Miller's invention disclosure was rated "A(Ready)" more than four years elapsed until Miller's filing date. Miller continued working on cavitation inhibitors of undisclosed nature during this time, and in September 1966 he gave presentations at several U.S. aviation industry meetings on Monsanto's solution of the Trident valve damage problem. Notably, there was no evidence of action in Monsanto's patent department until the arrival of Mr. Black in October 1968, some two and a half years after Miller's alleged actual reduction to practice. Peeler (while not clear in the record or opinion) also invented something similar to Miller’s idea. He thus instituted an action before the Patent and Trademark Office Board of Patent Interferences, which granted priority of invention in five counts in favor of Miller.
Is Miller deemed to have suppressed the invention under 35 USC 102(g) through the behavior of his assignee?
There is no evidence that Miller (or Monsanto) was spurred into filing his application by knowledge of Peeler's invention; spurring, however, is not an essential element of suppression. Young v. Dworkin, supra. Neither Miller nor anyone else at Monsanto appears to have had any specific intent to suppress or conceal the invention. But proof of specific intent to suppress is not necessary where the time between actual reduction to practice and filing is unreasonable. This unreasonable delay may raise an inference of intent to suppress. The evidence shows, however, that over four years elapsed between the rating of Miller's invention disclosure "A, (Ready)" and Miller's filing date and that much, if not all, of the delay occurred while the disclosure lay dormant in Monsanto's patent department. A four-year delay from the time an inventor is satisfied with his invention and completes his work on it and the time his assignee-employer files a patent application is, prima facie, unreasonably long in an interference with a party who filed first. The circumstances surrounding the delay and Monsanto's attempted justification thereof serve only to persuade us of the correctness of our opinion. We make no criticism of Mr. Black; getting Miller's application filed in the time he did may have been an extraordinary effort. Monsanto, however, can take no comfort in that, since its neglect of Miller's application for the 2 1/2 years preceding Mr. Black's arrival and its failure to replace two of the three attorneys who resigned were at least partial causes of the backlog which greeted Mr. Black.