Becher v. Contoure Laboratories, Inc.
Headline: State court judgment upheld enforcing an inventor’s confidentiality agreement and ordering assignment of a patent, allowing employers to reclaim patents secretly obtained by workers despite possible federal patent questions.
Holding:
- Allows state courts to enforce confidentiality agreements over secret inventions.
- Lets employers recover patents taken by employees who breached confidentiality.
- Limits federal patent exclusivity to cases truly arising under patent law.
Summary
Background
In 1927 an inventor employed a machinist to build and improve a machine and asked the machinist to keep the invention secret and not use it for himself. The inventor sued in a New York state court and won a judgment that the machinist had to assign a later-issued patent, stop using or selling the invention, and pay costs. After that judgment the machinist sued in federal court claiming his patent and asking the federal court to bar the state case.
Reasoning
The Court recognized that federal courts have exclusive power over suits that truly arise under the patent laws. But it found the state suit was not a patent lawsuit: it was a claim for breach of a confidentiality agreement and a wrongful use of an undisclosed invention. The state claim existed independently of patent law and sought assignment of the patent based on the earlier trust and breach, not a federal decree invalidating the patent. The Court explained that proving those facts in state court does not amount to a universal invalidation of the patent and that a state court may enforce the inventor’s prior rights.
Real world impact
The decision lets state courts hear and enforce claims by inventors or employers when a worker secretly patents an invention taken in breach of confidence. It means employers have a state-law route to recover rights and patents obtained by trusted workers who violated secrecy agreements, while clearer patent-validity rulings remain for federal patent cases.
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