United States v. Dubilier Condenser Corp.
289 U.S. 178 (1933)
Rule of Law:
An employer is not entitled to an assignment of a patent for an invention conceived by an employee during the course of general employment, even if government resources were used. However, the employer is entitled to a non-exclusive, royalty-free license to use the invention under the doctrine of 'shop right.'
Facts:
- Francis W. Dunmore and Percival D. Lowell were employed as research scientists in the radio section of the U.S. Bureau of Standards.
- Their assigned work involved projects related to radio technology for aircraft.
- Independent of their assigned tasks and driven by their own scientific curiosity, Dunmore and Lowell conceived of inventions to power radio receiving sets using household alternating current (AC) instead of batteries.
- This AC-powered radio project was not part of their assigned duties, nor was it suggested or directed by any superior.
- They used the Bureau's laboratory, materials, and time during their regular working hours to experiment on and perfect these inventions.
- After developing the concepts, they disclosed them to their superiors, who permitted them to continue perfecting the devices in the laboratory.
- Dunmore and Lowell subsequently applied for and were granted patents for their inventions.
- They granted an exclusive license to these patents to the Dubilier Condenser Corp.
Procedural Posture:
- The United States filed three suits against Dubilier Condenser Corp. in the U.S. District Court for the District of Delaware.
- The government sought to compel the assignment of three patents, claiming equitable ownership.
- The District Court consolidated the cases and, after a hearing, dismissed the government's bills.
- The United States, as appellant, appealed the dismissal to the U.S. Court of Appeals for the Third Circuit.
- The Court of Appeals affirmed the decree of the District Court in favor of Dubilier Condenser Corp., the appellee.
- The United States petitioned the Supreme Court of the United States for a writ of certiorari, which was granted.
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Issue:
Is the government entitled to ownership of an invention conceived by a government employee on their own initiative, when the employee was hired for general research and not specifically directed to invent that device, even though government resources were used to perfect it?
Opinions:
Majority - Justice Roberts
No, the government is not entitled to ownership of the invention. The court distinguishes between employment 'to make an invention' and a general employment during which an employee conceives an invention. If an employee is hired specifically to invent a particular device or solve a specific problem, the employer is entitled to an assignment of the resulting patent. However, when an employee in a general research role invents something on their own initiative outside of their specific assignments, the invention belongs to the employee. The fact that the employee used the employer's time, facilities, and materials gives the employer an equitable 'shop right'—a non-exclusive, royalty-free license to use the invention—but it does not confer title to the patent itself. The court found no express or implied agreement that Dunmore and Lowell were hired to invent, and it held that the rules governing patent ownership are the same for government employment as for private employment.
Dissenting - Justice Stone
Yes, the government should be entitled to ownership of the inventions. The dissent argues that the majority mischaracterizes the nature of the employment. Dunmore and Lowell were employed in a public enterprise, funded by taxpayers, with the mission of advancing the radio art for the public benefit. Invention was an expected goal of their research work. To allow them to claim a private patent monopoly on the fruits of their public service is unconscionable and inequitable, as it defeats the very purpose of their employment. The government's interest is not merely private gain but the public good, which requires that it be free to use the results of its own research for the benefit of the people. A mere 'shop right' is insufficient to protect this public interest.
Dissenting - Chief Justice Hughes
Yes, the government should be entitled to ownership of the inventions. Agreeing with Justice Stone's reasoning, Chief Justice Hughes added that the most appropriate remedy would be the cancellation of the patents, which would place the inventions in the public domain for all to use freely.
Analysis:
This case established the critical distinction between being 'employed to invent' for a specific purpose and inventing during the course of general employment. It solidified the 'shop right' doctrine as the default remedy for employers whose resources are used for inventions they don't otherwise own. This decision created a strong default rule favoring employee-inventors, compelling employers who desire full ownership of employee inventions to secure it through explicit contractual agreements. The ruling continues to be a cornerstone of intellectual property law in the employment context for both public and private sectors.
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