City of Elizabeth v. American Nicholson Pavement Co.
97 U.S. 126 (1877)

  • Nicholson invented a new kind of pavement that was more durable than the current pavement technology. He received a patent.
    • Nicholson had come up with the invention a number of years earlier. In order to make sure that the pavement was actually more durable, he installed some on a single public road owned by a company he was a shareholder in, and then tested its qualities over a number of years.
  • Later, a competitor named Tubbs started installing the sidewalk in Elizabeth NJ. Nicholson sued them for infringement.
    • Tubbs argued that the patent was invalid because the invention had been in public use for more than two years prior to Nicholson applying for the patent.
      • That's the Public Use Exception (now 35 U.S.C. 102(b)).
        • Currenty 102(b) limits it to one year, but back then you had two years.
    • Nicholson argued that the road was just for experimental use, and did not count as public use, despite the fact that the public used the road.
  • The US Supreme Court found the patent to be valid.
    • The US Supreme Court found that there was no way to test the durability of the pavement without subjecting it to traffic.
    • The Court found that the public use of the road was incidental to the main purpose of the road, which was as an experiment.
      • Nicholson wasn't selling the pavement, or abandoning it to others for their use. He was using the pavement for his private use (experiment). It just happened that his private use of the pavement was in a public place.
    • The Court noted that it is not really public 'knowledge' of an invention that invalidates a patent, it is the public 'use' or 'sale' of the invention.
      • If Nicholson had been using the invention for profit, and not for experiment, then the Public Use Exception would have applied and the patent would be invalid.
  • The Public Use Exception is designed to get people to put their inventions into the public domain as soon as possible. But some inventions require some 'tinker-time' to perfect. So it is in the public interest to allow a limited extension for certain inventions that require longer to perfect.
    • A road that didn't last very long wouldn't be a good invention, so it is in the public interest allow Nicholson time to test the durability before rushing his invention into public use.