Pennock & Sellers vs. Dialogue

Supreme Court of the United States
27 U.S. 1, 7 L.Ed.327 (1829)

ELI5:

Rule of Law:

An inventor's public use or sale of an invention, with the inventor's consent and acquiescence, prior to applying for a patent, constitutes an abandonment of the inchoate right to the patent. Such prior public use invalidates any patent subsequently obtained for that invention.

Facts:

Pennock invented a new and useful improvement in the art of making leather tubes or hose.
Prior to applying for a patent, Pennock granted permission to an individual to manufacture and sell the improved hose.
The invention was publicly used and sold with Pennock's knowledge and consent for a period of time.
After this period of public use, on July 6, 1818, Pennock obtained a patent for the invention.
Dialogue subsequently used the same method for making hose, leading Pennock to sue for patent infringement.

Procedural Posture:

Pennock sued Dialogue for patent infringement in the United States Circuit Court for the District of Pennsylvania, a federal trial court.
The case was tried before a jury, which heard evidence on the matter.
The trial court judge instructed the jury that if an inventor allows his invention to be publicly used before applying for a patent, he has abandoned his right to it.
The jury returned a verdict in favor of the defendant, Dialogue.
The Circuit Court entered a judgment in favor of Dialogue based on the jury's verdict.
Pennock, as the plaintiffs in error, appealed the judgment to the Supreme Court of the United States via a writ of error, challenging the trial court's jury instruction.

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Issue:

Does an inventor abandon their right to a patent if they permit their invention to be publicly used or sold before filing a patent application?

Opinions:

Majority - Mr. Justice Story

Yes, an inventor abandons their right to a patent if they permit their invention to be publicly used or sold before filing a patent application. The Patent Act of 1793 authorizes patents only for inventions 'not known or used before the application,' which the Court interprets to mean not known or used by the public. The main object of the patent system is to promote the progress of science and useful arts by encouraging prompt disclosure, and allowing an inventor to profit from public use for years before seeking a patent would undermine this goal. While Section 6 of the Act provides a defense that an invention was in use 'anterior to the supposed discovery,' this addresses who is the 'first' inventor. An inventor’s voluntary act or acquiescence in the public sale and use of the invention before application is a separate and distinct bar to patentability, constituting an abandonment of the right.

Analysis:

This landmark decision established the 'public use' bar in United States patent law, creating a critical deadline for inventors. The ruling prevents inventors from commercially exploiting an invention for an indefinite period and then, only when faced with competition, seeking a patent to extend their monopoly. It solidified the quid pro quo of the patent system: a time-limited exclusive right is granted in exchange for a prompt and full public disclosure. This holding incentivizes early patent filing and has profoundly shaped the strategic behavior of inventors and businesses, remaining a cornerstone of patent law today.

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