Law School Case Brief
United States v. Dubilier Condenser Corp. - 289 U.S. 178, 53 S. Ct. 554 (1933)
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 non-exclusive right to practice the invention. This is an application of equitable principles. Since the servant uses his master's time, facilities, and materials to attain a 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.
Three suits were brought in the District Court for Delaware against Dubilier Condenser Corp. (Dubilier) as exclusive licensee 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 Dubilier 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. The Court of Appeals for the Third Circuit affirmed the trial court's determination that "research" and "invention" were not synonymous, and the research work of petitioner's former employees did not include the duty to make inventions. In its petition for certiorari review, the United States argued that its former employees' research work was expressly involved in improving radio communications, and they were merely doing what they were hired to do. United States also argued it was not in the public interest that private persons should collect royalties for inventions developed at public expense.
Did the lower courts err in concluding that while the patentees were employed by United States, their employment did not contemplate that they were to exercise their inventive faculties in their service to United States?
Applying the rules between private employers and their servants to the relationship between United States and its former employees, the United States Supreme Court affirmed the judgment, holding that United States was only entitled to shop-rights or the free and nonexclusive use of patents that resulted from efforts of its former employee in their working hours and with material belonging to United States.
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