Disclosure Without Claiming Dedicates To The Public: Sontag Chain Stores (U.S. 05/20/1940) (finding intervening rights against a reissue patent; “It is now accepted doctrine that ‘the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed.’ ‘This legal effect of the patent cannot be revoked unless the patentee surrenders it and proves that the specification was framed by real inadvertence, accident, or mistake . . . .’”); Johnson (Fed. Cir. en banc, 03/28/02) (no equivalents infringement; “when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public.”). But, claiming that subject matter in co-pending application likely avoids such dedication to the public. SeeSuffolk (U.S. Dec. 1865) (second patent not void for abandonment; no abandonment of claimed invention A, where applicant filed first app. claiming A, then filed second co-pending app. claiming A + B, not claiming A alone, and then first filed app. issued later with claim to just A.); Miller (U.S. 1882) (reissue invalid; “the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed. It is a declaration that that which is not claimed is either not the patentee’s invention, or, if his, he dedicates it to the public. This legal effect of the patent cannot be revoked unless the patentee surrenders it and proves that the specification was framed by real inadvertence, accident, or mistake, without any fraudulent or deceptive intention on his part; and this should be done with all due diligence and speed.”; Mahn (U.S. 11/03/1884) (reissue invalid; “The taking out of a patent which has (as the law requires it to have) a specific claim, is notice to all the world, of the most public and solemn kind, that all those parts of the art, machine or manufacture set out and described in the specification and not embraced in such specific claim, are not claimed by the patentee, — at least not claimed in and by that patent. If he has a distinct patent for other parts, or has made application therefor, or has reserved the right to make such application, that is another matter, not affecting the patent in question. But so far as that patent is concerned, the claim actually made operates in law as a disclaimer of what is not claimed; and of all this the law charges the patentee with the fullest notice.”).
Expired Patent Dedicates Formerly Patented Subject Matter To The Public: U.S. patent law gives a right to copy and use certain inventions. Bonito Boats (U.S. 02/21/1989) (“For almost 100 years it has been well established that in the case of an expired patent, the federal patent laws do create a federal right to ‘copy and to use.’ Sears and Compco extended that rule to potentially patentable ideas which are fully exposed to the public.”) A device which was described in an expired patent (even if a third-party’s expired patent) cannot infringe. Scott Paper (U.S. 11/13/1945) (“the patent laws preclude the patentee of an expired patent and all others … from recapturing any part of the former patent monopoly; for those laws dedicate to all the public the ideas and inventions embodied in an expired patent. They do not contemplate that anyone by contract or any form of private arrangement may withhold from the public the use of an invention for which the public has paid by its grant of a monopoly and which has been appropriated to the use of all.”) (not distinguished, yet, by Fed. Cir. on this issue) [seeMinerva Surgical (U.S. 06/29/2021) (explaining Scott Paper: “There, estoppel would have prevented the assignor from making a device on which the patent had expired—a device, in other words, that had already entered the public domain.”)]; Kimble (U.S. 06/22/2015) (6-3) (“Scott Paper—the decision on which Brulotte primarily relied—remains good law.”); Singer (U.S. 05/18/1896) (“It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent”) (cited with approval in AbbVie (Fed. Cir. 08/21/14) (double patenting)); Elmer (Fed. Cir. 10/10/95) (in trade dress context: “once the ‘994 patent expires, the public will be entitled to practice the invention claimed in the patent.”) (citing Bonito Boats (U.S. 02/21/1989) and Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 59 S. Ct. 109, 83 L. Ed. 73 (1938).); Gilead (Fed. Cir. 04/22/14) (2-1) (double-patenting case; citing many cases for: “it is a bedrock principle of our patent system that when a patent expires, the public is free to use not only the same invention claimed in the expired patent but also obvious or patentably indistinct modifications of that invention.”); Kimble (U.S. 06/22/2015) (6-3) (“Congress had made a judgment: that the day after a patent lapses, the formerly protected invention must be available to all for free;” “when the patent expires, the patentee’s prerogatives expire too, and the right to make or use the article, free from all restriction, passes to the public,” citing Sears Roebuck (U.S. 03/09/1964)); In re Roslin Institute (Fed. Cir. 05/08/14) (citing Sears Roebuck (U.S. 03/09/1964): “‘when the patent expires the monopoly created by it expires, too, and the right to make the article—including the right to make it in precisely the shape it carried when patented—passes to the public.’”)). Cf. Golan (U.S. 01/18/2012) (upholding statute restoring copyright protection to foreign works that had been in the public domain for certain reasons: the Constitution does not prohibit laws that give copyright or patent protection to works that had been in the public domain.); Kewanee Oil (U.S. 05/13/1974) (“patent law does not pre-empt trade secret law”).
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