Lorenz v. Colgate-Palmolive-Peet Co.
77 U.S.P.Q. (BNA) 138, 1948 U.S. App. LEXIS 4154, 167 F.2d 423 (1948)
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Rule of Law:
A public use of an invention for more than the statutorily prescribed period prior to the patent application bars the issuance of a valid patent, even if that public use was by a party who misappropriated or pirated the invention from the original inventor.
Facts:
- In January 1920, Lorenz filed a patent application for a soap manufacturing process.
- Shortly thereafter, Lorenz disclosed the substance of his application to Ittner, the chief chemist for Colgate-Palmolive-Peet Company (Colgate), for potential commercialization, but Ittner expressed disinterest.
- The Patent Office later rejected Lorenz's 1920 application, which he subsequently abandoned.
- On February 19, 1931, Ittner filed his own patent application for the process Lorenz had disclosed to him, and a patent was issued to Ittner on July 18, 1933.
- From November 1931 until November 1932, Colgate engaged in commercial production using the process in its factory.
- On November 8, 1934, more than two years after Colgate began its commercial use, Lorenz learned of Ittner's patent and filed a new patent application for the same process.
Procedural Posture:
- In an interference proceeding, the Patent Office examiner awarded priority of invention to Lorenz over Ittner.
- Lorenz sued Colgate in the U.S. District Court, seeking to have his patent declared valid and Ittner's patent declared void.
- The District Court initially ruled in favor of Colgate, finding no proof of appropriation.
- Lorenz, as appellant, appealed to the U.S. Circuit Court of Appeals, which reversed, holding that Lorenz had priority of invention, and remanded the case.
- On remand, the District Court held Lorenz's patent was invalid because of prior public use by Colgate.
- Lorenz, as appellant, appealed that decision back to the U.S. Circuit Court of Appeals; Colgate, as appellee, cross-appealed the trial court's refusal to validate Ittner's patent.
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Issue:
Does the commercial use of an invention by a party who misappropriated it from the inventor constitute a 'public use' under R.S. § 4886, thereby invalidating a patent application filed by the original inventor more than two years after that use began?
Opinions:
Majority - Biggs, Circuit Judge
Yes. The commercial use of an invention constitutes a 'public use' sufficient to invalidate a patent application filed outside the statutory two-year period, regardless of whether that use was by a party who pirated the invention. The prior-public-use provision of R.S. § 4886 was enacted in the public interest and contains no qualification or exception for fraudulent, surreptitious, or piratical use. The statute's language is absolute and applies 'without regard to the consent or allowance of the inventor.' The legislative intent was to require an inventor to file a patent application promptly to prevent an extension of the monopoly period. While the result may seem unjust, the inventor is the master of the situation and can protect his rights by filing a timely application. Creating a judicial exception for pirated use would undermine the statute's public policy goals and open a 'fruitful field for collusion.'
Analysis:
This decision establishes a strict and inflexible application of the 'public use' bar in patent law, refusing to create a judicial exception for fraudulent or 'piratical' use. It clarifies that the focus of the statutory bar is on the public's exposure to the invention and the inventor's diligence, not on the morality or legality of how the public use came about. This ruling places the full burden on inventors to protect their discoveries by filing for a patent promptly, reinforcing the policy that inventors cannot delay filing to extend their de facto monopoly. The case serves as a strong warning that an inventor's failure to act within the statutory period, even when victimized by misappropriation, can result in a complete forfeiture of patent rights.
