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