City of Elizabeth v. American Nicholson Pavement Co.
97 U.S. 126, 24 L. Ed. 1000 (1877)
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Rule of Law:
An inventor's use of an invention in public is not a statutory "public use" that would bar patentability if the use is for the bona fide purpose of experimentation, testing the qualities of the invention, and bringing it to perfection.
Facts:
- In 1847, Samuel Nicholson filed a caveat in the Patent Office for his invention of a new type of wooden pavement.
- In 1848, Nicholson constructed a 75-foot-long test section of his pavement on Mill-dam Avenue, a public toll road in Boston.
- Nicholson was a stockholder and treasurer of the corporation that owned the toll road.
- He installed the pavement at his own expense to test its durability and performance under heavy and constant traffic.
- For six years, Nicholson frequently inspected the pavement, striking it with a cane and inquiring about its condition to monitor the experiment.
- Nicholson applied for and was granted a patent for his invention on August 8, 1854.
- Years later, the City of Elizabeth, New Jersey, and the New Jersey Wood-Paving Company constructed a wooden pavement using Nicholson's patented design.
Procedural Posture:
- The American Nicholson Pavement Company sued the City of Elizabeth, George W. Tubbs, and the New Jersey Wood-Paving Company in the U.S. Circuit Court for patent infringement.
- The defendants denied infringement and asserted that Nicholson's patent was invalid due to prior public use, among other defenses.
- The Circuit Court found in favor of the complainant, American Nicholson Pavement Company, holding the patent valid and infringed.
- The Circuit Court entered a decree against all defendants for an injunction and an account of profits.
- The defendants (the City of Elizabeth, et al.) appealed the Circuit Court's decree to the Supreme Court of the United States.
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Issue:
Does an inventor's placement and monitoring of his paving invention on a public toll road for six years, for the purpose of testing its durability and functionality, constitute a 'public use' that would invalidate a subsequently granted patent?
Opinions:
Majority - Mr. Justice Bradley
No. An inventor's use of an invention does not constitute a disqualifying 'public use' if it is conducted in good faith for the purpose of experimentation to test the invention's qualities, even if the use occurs in a public place and spans a long duration. The court reasoned that the nature of some inventions, like street pavement, requires testing in a public setting to be evaluated satisfactorily. So long as the inventor's primary intent is to test and perfect the invention rather than to commercially exploit it, and the inventor maintains control, the use remains experimental. Here, Nicholson's placement of the pavement was a genuine experiment to test its durability, a quality that could only be determined over a considerable time and under real-world conditions. He did not sell the invention or allow others to use it, indicating he had no intent to abandon his right to a patent. The court distinguished this from commercial use, stating that any attempt to use the invention for profit for more than the statutory period before applying for a patent would invalidate it.
Analysis:
This case firmly established the 'experimental use' exception to the public use bar in patent law. It clarifies that public accessibility to an invention does not automatically trigger the statutory bar if the inventor's primary motive is bona fide experimentation. The decision is significant because it protects inventors during the crucial, and often lengthy, testing and development phase, particularly for inventions that cannot be tested in private. This precedent allows inventors to perfect their creations under real-world conditions without forfeiting their right to patent protection, thereby encouraging thorough innovation and development.
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