City of Elizabeth v. Pavement Co.

97 U.S. 126 (1877)



It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection. It is the interest of the public, as well as himself, that the invention should be perfect and properly tested before a patent is granted. Any attempt to use it for a profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent.


This patent infringement suit was brought by the American Nicholson Pavement Company against the city of Elizabeth, N. J., George W. Tubbs, and the New Jersey Wood-Paving Company, upon a patent issued to Samuel Nicholson, in 1867, for a new and improved wooden pavement, being a second reissue of a patent issued to said Nicholson on 1854. The reissued patent was extended in 1868 for a further term of seven years. A copy of it is appended to the bill; and, in the specification, it is declared that the nature and object of the invention consists in providing a process or mode of constructing wooden block pavements upon a foundation along a street or roadway with facility, cheapness, and accuracy, and also in the creation and construction of such a wooden pavement as shall be comparatively permanent and durable, by so uniting and combining all its parts, both superstructure and foundation, as to provide against the slipping of the horses' feet, against noise, against unequal wear, and against rot and consequent sinking away from below. The defendants denied novelty on Nicholson’s invention, citing other patents exhibited every substantial and material part claimed as new.They also alleged that Nicholson’s invention was already in public use for experimentation six years before Nicholson applied for a patent.


Does the placing of an invention into public use for the purpose of experimentation and testing its qualities create a bar to patentability?




The Court found that none of the similar patents appellants referenced combined all the elements of appellee's, much less exhibited a combination of those elements arranged according to his plan. The Court also found that appellee's experimental use of his pavement prior to obtaining a patent did not constitute public use within the meaning of patent law. Accordingly, the Court affirmed the lower court's finding of infringement, but reversed the court's assessment of profits against appellant city and appellant individual. Because only appellant corporation made profit by construction of the pavement in question, the Court ordered that the decree below be amended to conform with its ruling.

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