Barnes heard his wife and her
friend complaining that their corsets kept breaking. Barnes invented a
new type of doo-dad that would make the corsets more sturdy. He gave one
to his wife who used it for over ten years.
Barnes also brought one of
his friends over one day to show them how the doo-dad worked.
Eleven years after originally
making the doo-dad, Barnes applied for and received a patent on it. It
became very popular.
Barnes died and his wife
inherited the patent.
Later, a competitor, Lippmann
began manufacturing corsets with the same doo-dad. Barnes' wife sued for infringement.
FYI, Mrs. Barnes remarried
which is why the name on the case is Egbert.
The US Supreme Court found the
patent to be invalid.
The Court looked to the
patent law (now 35 U.S.C. §102(b)),
which said that you could not patent something that was in public use,
with the consent and allowance of the inventor, for more than two years
prior to his application.
FYI, the current standard
in §102(b) is one year, but back
then it was two years.
The Court found that even if
one other person has use and knowledge of the invention that counts as public
use.
There was nothing stopping
Mrs. Barnes from showing the doo-dads to other people, or selling them.
So for all practical purposes the invention was potentially available to
the public.
The Court noted that if
there had been a confidentially agreement, then it would not have been a public
use.
In a dissent, it was argued
that this was not a public use, but
instead a 'private use with consent'. Considering that this invention was
in Mrs. Barnes' underwear, and she probably didn't go around showing her
undies to people, how could it be a public use?
The dissent argued that
confidentially was implied by the nature of the patent.
The Public Use Exception is important because the US has a "first
to invent" patent system. If the exception didn't exist, then a
person could invent something, sell it all over the place, and then only
apply for a patent once a competitor started copying it. Since no
competitors would copy the product knowing that the inventor could patent
it at any time, the inventor's monopoly would be indefinitely extended.
In addition, other inventors
who might independently invent something need assurance that there isn't
someone out there who has already invented it and is just sitting on the
invention waiting to sue them.
