holding, inter alia that “overriding federal policies would be significantly frustrated if licensees could be required to continue to pay royalties during the time they are challenging patent validity in the courts’’
How later courts described this case
- holding, inter alia that “overriding federal policies would be significantly frustrated if licensees could be required to continue to pay royalties during the time they are challenging patent validity in the courts’’
- recognizing "strong federal policy favoring the full and free use of ideas in the public domain" and holding that pre-litigation patent license cannot waive licensee's right to challenge patent validity
- noting that, concerning whether the licensee must pay royalties until the patent is held invalid, ’’[t]he parties' contract ... is no more controlling ... than is the State’s doctrine of estoppel, which is also rooted in contract principles.”
- stating that licensees may often be the only individual with enough economic incentive to challenge the patentability of an inventor’s discovery
Written by the judges who cited it.
The opinion
Me. Justice Black,
with whom The Chief Justice and Mr. Justice Douglas join,
concurring in part and dissenting in part.
I concur in the judgment and opinion of the Court, except for what is said in Part III, C, of the Court’s opinion. What the Court does in this part of its opinion is to reserve for future decision the question whether the States have power to enforce contracts under which someone claiming to have a new discovery can obtain payment for disclosing it while his patent application is pending, even though the discovery is later held to be unpatentable. This reservation is, as I see it, directly *677 in conflict with what this Court held to be the law in Sears, Roebuck v. Stiffel Co., 376 U. S. 225 (1964), and Compco Corp. v. Day-Brite Lighting, Inc., 376 U. S. 234 (1964). Brother Harlan concurred in the result in those cases, saying — contrary to what the Court held — “I see no reason why the State may not impose reasonable restrictions on the future ‘copying’ itself.” Compco, supra, at 239 . Consequently the Court is today joining in the kind of qualification that only Mr. Justice Harlan was willing to make at the time of our Stiff el and Compco decisions.
I still entertain the belief I expressed for the Court in Stiffel and Compco that no State has a right to authorize any kind of monopoly on what is claimed to be a new invention, except when a patent has been obtained from the Patent Office under the exacting standards of the patent laws. One who makes a discovery may, of course, keep it secret if he wishes, but private arrangements under which self-styled “inventors” do not keep their discoveries secret, but rather disclose them, in return for contractual payments, run counter to the plan of our patent laws, which tightly regulate the kind of inventions that may be protected and the manner in which they may be protected. The national policy expressed in the patent laws, favoring free competition and narrowly limiting monopoly, cannot be frustrated by private agreements among individuals, with or without the approval of the State.