Gearon v. United States, 159-53.

• Decision Date: 03 November 1953
• Docket Number: No. 159-53.,159-53.
• Citation: 115 F. Supp. 910
• Parties: GEARON et al. v. UNITED STATES.
• Court: U.S. Claims Court

115 F. Supp. 910

GEARON et al. v. UNITED STATES.

No. 159-53.

United States Court of Claims.

November 3, 1953.

Walter F. Boye, Chicago, Ill., for plaintiffs.

Gordon C. Biddle, Washington, D. C., Warren E. Burger, Asst. Atty. Gen., Augustus G. Douvas, Alexandria, Va., on the brief, for defendant.

Before JONES, Chief Judge, and LITTLETON, WHITAKER, MADDEN and HOWELL, Judges.

JONES, Chief Judge.

This is a patent case which is before the court on defendant's motion to dismiss counts II, III, and IV of plaintiffs' petition. The petition was filed April 20, 1953, under the provision of the patent laws of the United States now recodified as Title 28, Section 1498.

The petition alleges that one of the plaintiffs, J. J. Gearon, was the inventor of collapsible military pontoon bridges for which he was issued letters patent No. 2,423,832 on July 15, 1947, on an application filed in the United States Patent Office December 21, 1942.

Under count II of the petition plaintiffs allege unauthorized use of the invention and request reasonable compensation for such unauthorized use during the period when the application for the patent was pending in the Patent Office.

The Patent Office was established for the fundamental purpose of examining patent applications pending before it against the background of prior art and knowledge, and until this has been done, the fact that there is anything novel or that invention exists cannot be ascertained. Until such examination is completed and a patent issued, the patentee has established no monopoly to an invention. In accordance with the patent statutes, when a patentee is given a monopoly as to his invention, as expressed in the claims of the issued patent, such monopoly is limited to a period of seventeen years. To award compensation for the use of an invention when the application is still pending in the Patent Office in the formative stage would extend the period beyond seventeen years.

There is only one exception to what has been said and that is where publication or disclosure by the grant of a patent might be detrimental to the national security, in which case the Commissioner of Patents shall order that the invention be kept secret and withhold the grant of a patent under certain conditions. See Sec. 181, 66 Stat. 805, 35 U.S.C.A. § 181. In such case the patentee, where he receives a patent, may under certain conditions recover from the Government for the use of such invention the right to compensation for such use beginning on the date of the first use of the invention by the Government. Plaintiffs, however, do not plead the issuance of such a secrecy order in the present case.

Count II of the petition which requests compensation for the unauthorized use of an unpatented invention should be dismissed.

Count III of the petition requested this court to determine the amount of reasonable compensation for future use of the patent throughout its life up to and including the date of July 15, 1964, and as an alternative to determine the price or consideration for the sale of the patent to the defendant. It is unnecessary, however, to consider this count of the petition, for plaintiffs in their reply brief have agreed that defendant's motion to dismiss count III may be granted.

Plaintiffs originally based count IV of the petition on the provisions of United States Code, Title 28, Sec. 1491, and of the Federal Tort Claims Act of August 2, 1946, United States Code, Title 28, Sec. 2674. Plaintiffs, however, in their reply brief now state as follows:

"Plaintiffs make no contention that this Court has original jurisdiction of cases founded in tort; nor of cases predicated on contracts implied in law rather than implied in fact.

"But Count 4 makes allegations which spell out a contract implied in fact. In paragraph 4 it is alleged that the defendant by its Department of Defense and War Department used said invention; in paragraph 5, page 11, that defendant utilized and used said invention with profit and benefit to the defendant, and without resulting compensation or emolument or benefit whatever to the plaintiffs."

The allegations...