United States v. Dubilier Condenser Corp.

Background

The United States sued to claim ownership of three radio-related inventions made by two scientists employed in the Bureau of Standards’ radio laboratory, and sought to cancel or require assignment of the patents held by a private licensee. The lower courts found the inventors conceived and reduced the devices to practice on their own initiative, were not specifically assigned to invent those devices by supervisors, and had allowed the Government free use without royalty; the District Court dismissed the bills and the Third Circuit affirmed.

Reasoning

The Court addressed whether the Government automatically owns inventions made by its scientific employees. It applied established rules used between private employers and employees: absent an express agreement that an employee must invent and assign patents, the inventor keeps title. The Government, like a private employer, has only a non-exclusive shop-right to use inventions developed with government time or materials. The Court also examined statutes and congressional history and concluded Congress has not declared a rule giving the Government full ownership instead of the inventor, so courts should not impose a public-dedication rule.

Real world impact

As a result, scientists working in federal laboratories may obtain and keep patents against the public while the Government keeps the right to use such inventions without paying royalties. Agencies cannot commandeer patent ownership except where employment contracts or statutory provisions require assignment. Congress, not the courts, must decide any broader change in policy.

Dissents or concurrances

A dissent argued the Bureau’s research employment contemplated invention, and that equity required cancelling or assigning the patents to give the public unrestricted benefit; that view would have reversed the lower courts.