Egbert v. Lippmann
104 U.S. 333 (1881) (1881)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
An inventor's consent to the use of their completed invention by a single person, without any limitation, restriction, or injunction of secrecy, constitutes a "public use" under patent law. If this public use occurs for more than the statutorily prescribed period (in this case, two years) prior to the patent application, it acts as a bar to patentability and invalidates the patent.
Facts:
- Between January and May 1855, Samuel H. Barnes invented an improved corset-spring composed of layered metallic plates.
- In 1855, Barnes made a pair of these springs and presented them as a gift to Frances Lee (later his wife, the complainant Egbert) for her personal use.
- Barnes imposed no obligation of secrecy, conditions, or any other restrictions on Lee's use of the springs.
- The invention was complete at the time of the gift, and it was not provided for experimental purposes.
- In 1858, Barnes made and gave Lee a second pair of the corset-springs, which she also wore for a long time.
- Lee used the springs continuously for years, transferring them to new corsets as old ones wore out.
- In 1863, Barnes showed the springs, which his wife retrieved from the corsets she was wearing, to another individual, Joseph H. Sturgis.
- Barnes did not file an application for a patent on his invention until March 1866, approximately eleven years after its first use by Lee.
Procedural Posture:
- The complainant, Frances Lee Egbert (as executrix of Samuel H. Barnes's estate), brought a suit for patent infringement in a federal trial court.
- The defendants answered, denying infringement and asserting that the patent was invalid due to prior public use for more than two years.
- On final hearing, the trial court found for the defendants and entered a decree dismissing the complainant's bill.
- The complainant, Egbert, appealed the trial court's decision to the Supreme Court of the United States.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does an inventor's gift of his completed invention to a single individual for her personal, long-term use, without any restriction or injunction of secrecy, constitute a "public use" that invalidates a patent applied for more than two years later?
Opinions:
Majority - Mr. Justice Woods
Yes, this constitutes a 'public use' that invalidates the patent. An invention is in public use if the inventor gives or sells it to another to be used without limitation, restriction, or an injunction of secrecy, even if the use and knowledge of it are confined to a single person. The fact that an invention's use is by its nature hidden from public view, such as a spring inside a corset, does not prevent its use from being legally 'public.' Here, Barnes gave the completed invention to the complainant for her unrestricted use in 1855. Because this public use occurred for more than two years before he applied for the patent in 1866, it operates as a statutory bar, and the patent is therefore void.
Dissenting - Mr. Justice Miller
No, this does not constitute a 'public use' sufficient to invalidate the patent. The patent statute's requirement that a consensual prior use be 'public' is a critical element meant to signify an abandonment of the invention to the public. The use of a single corset-spring by one woman, concealed beneath her clothing and withheld from public observation, is the essence of a private use. A private use that does not teach the invention to the public should not defeat a patent. The majority's reasoning effectively eliminates the word 'public' from the statute, wrongly concluding that an invention incapable of being seen in use is therefore in 'public use' whenever it is used at all.
Analysis:
This decision established a broad and influential definition of "public use" under U.S. patent law, clarifying that the term is not limited to uses that are visible or known to many people. The key determinant is the inventor's loss of control over the invention by allowing another to use it without restriction or an obligation of secrecy. This ruling created a strict standard, placing a significant burden on inventors to file for patent protection promptly after allowing any non-experimental use of their invention, regardless of how private or limited that use may seem.
Unlock the full brief for Egbert v. Lippmann