## Facts

- Davis-Bournonville Co. owned a patent issued to Whitford covering an improvement in welding and cutting apparatus.
- Whitford filed his patent application on March 4, 1911; the patent issued June 4, 1912.
- Clifford filed an earlier patent application on January 31, 1911; his patent issued February 6, 1912.
- Clifford’s earlier application contained a complete and adequate description of the same invention later patented to Whitford, but Clifford did not claim that subject matter.
- Alexander Milburn Co., accused of infringement, defended on the ground that Whitford was not the “original and first inventor” because Clifford’s earlier application disclosed the invention first.

## Issues

1. Whether a later patentee is the “original and first inventor” when an earlier-filed patent application fully and adequately disclosed the same invention but did not claim it.
2. Whether an enabling disclosure in a filed patent application can negate “first inventor” status in the same manner as an issued patent or printed publication.

## Decision

- The Supreme Court reversed the judgment for Davis-Bournonville.
- The Court held that Whitford was not the “first inventor” within Revised Statutes § 4920 because Clifford’s earlier application fully and adequately described the invention before Whitford’s earliest provable invention date.
- The Court ruled that, for “reduction to practice” and priority purposes, an enabling disclosure in a patent application is as effective as an enabling disclosure in a printed publication or issued patent, even if the application did not claim the invention.

## Legal Principles

- A patentee is not the “original and first inventor” if another person previously made a complete and adequate (enabling) description of the same invention, even if the earlier describer did not claim it.
- An enabling disclosure in an earlier-filed patent application can function as a priority-defeating disclosure against a later applicant asserting a later invention date.
- Failure of an earlier applicant to claim disclosed subject matter may amount to abandonment or dedication of that subject matter, and a later applicant cannot validly patent what has already been disclosed and effectively dedicated.
- The statutory defense that the patentee was not the “original and first inventor” applies where prior disclosure in an earlier application shows the invention was already fully described before the later inventor’s date.

## Conclusion

The Court held that an earlier-filed patent application’s enabling disclosure defeats a later patentee’s claim to be the “first inventor” under Revised Statutes § 4920, even when the earlier application did not claim the invention, and therefore the later patent could not stand.


Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926)