City of Elizabeth v. American Nicholson Pavement Co.

City of Elizabeth v. American Nicholson Pavement Co.
Supreme Court of the United States
Argued October, 1877 Decided May 13, 1878
Full case name	City of Elizabeth v. American Nicholson Pavement Company
Citations	97 U.S. 126 (more) 24 L. Ed. 1000; 1877 U.S. LEXIS 1761; 7 Otto 126
Prior history	Appeal from the Circuit Court of the United States for the District of New Jersey
Holding
Public use of an invention for the purpose of testing and experimenting with it does not create a bar to patentability.
Court membership
Case opinions
Majority	Bradley, joined by unanimous
Laws applied
35 U.S.C. § 102

City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878), was a case in which the Supreme Court of the United States held that while the public use of an invention more than one year prior to the inventor's application for a patent normally causes the inventor to lose his right to a patent, there is an exception to this rule for public uses for experimental purposes.

Inventor Samuel Nicholson (alt. spelling Nicolson) had patented a process for Nicolson pavement in August 8, 1854, a system of pavement using wooden blocks. Although Nicholson had died before the commencement of the lawsuit, George T. Bigelow, representative of the American Nicholson Pavement Company brought the lawsuit on his behalf, alleging that the City of Elizabeth, New Jersey, George W. Tubbs, and the New Jersey Wood-Paving Co. had infringed on his patent. Nicholson was testing his new process publicly at the time the patent was filed. The defendants alleged that Nicholson's patent was invalid because the invention lacked novelty, and that he had been publicly using the system for the previous six years prior to the issuance of the patent, thus constituting an abandonment of his right to a patent under the "On-sale bar". The lower court found for Nicholson, and the defendants appealed.

Justice Bradley first examined the prior art in both the U.S. and England, and determined that nothing therein substantiated the defendants' claim of lack of novelty. Although the elements specified in Nicholson's claims were not new, there was nothing in the prior art to suggest his particular combination of these elements.

As to the question of whether Nicholson abandoned his rights by his public use of the claimed invention, Bradley examined the circumstances surrounding the public use. Nicholson put down a section of his new pavement on a turnpike in Boston, Massachusetts in 1848 in order to test its durability and the public's response to it. The turnpike was operated by a private corporation in which Nicholson was a shareholder and officer.