dissenting.
I think the decrees should be reversed.
The Court’s conclusion that the employment of Dun-more and Lowell did not contemplate that they should exercise inventive faculties in their service to the government, and that both courts below so found, seems to render superfluous much that is said in the opinion. For it has not been contended, and I certainly do not contend, that if such were the fact there would be .any foundation for the claim asserted by the government. But I think the record does not support the Court's conclusion of fact. I am also unable to agree with the reasoning of the opinion, although on my view of the facts it would lead to the reversal- of the decree below, which I favor.
When originally organized1 as a subdivision of the Department of Commerce, the. functions of the Bureau of Standards consisted principally of the custody, comparison, construction, testing and calibration of standards and the solution of problems arising in connection with standards. But in the course of its investigation of standards of quality and performance it has gradually expanded into, a laboratory for research of the broadest character in various branches of science .and industry and particularly *210in the field of engineering.2 Work of this nature is carried oii for other government departments,3 the general public4 and private industries.5 It is almost entirely supported by public funds,6 and is maintained in the pub-*211lie interest. In 1915, as the importance of radio to the government and to the public increaséd, Congress appropriated funds 7 to the Bureau “for investigation and standardization of methods and instruments employed in radio communication.” Similar annual appropriations have been made since and public funds were allotted by Acts of July 1, 1916, c. 209, 39 Stat. 262, 324 and October 6, 1917, c. 79,.40 Stat. 345, 375, for the construction of a fireproof laboratory building “ to provide additional space to be used for research and testing in radio communication,” as well as “ space and facilities for cooperative research and experimental work in radio communication ” by other departments of the government. Thus, the conduct of research and scientific investigation in the field of radio has been a duty imposed by law upon the Bureau of Standards since 1915.
Radio research has been conducted in the Radio Section of the Electric Division of the Bureau. In 1921 and 1922, when Dunmore and Lowell made the inventions' in controversy, they were employed in this section as members of the scientific staff. They were not, of course, engaged to invent, in the sense in which a cárpenter is employed to build a chest, but they were employed to conduct scientific investigations in. a laboratory devoted principally to applied rather than pure science with full knowledge and expectation of all concerned that their investigations might normally lead, as they did, to invention. The Bureau was as much devoted to the advancement of the radio art by invention as by discovery which falls short of it. Hence, invention in the field of radio was a goal intimately related to and embraced within the purposes of the work of the scientific staff.
*212Both courts below found that Dunmore and Lowell were impelled to make these inventions “ solely by their own scientific curiosity.” They undoubtedly proceeded upon their own initiative beyond the' specific problems upon which they were authorized or directed to work by their superiors in the Bureau, who did not actively supervise their work in its inventive stages. But the evidence leaves no doubt that in all they did they were following the established practice of the Section. For members of the research staff were expected and encouraged to follow their own scientific impulses in pursuing their researches and discoveries to the point of useful application, whether they involved invention or not, and. even though they did ■not relate to the immediate problem in hand. After the inventions had been conceived they were disclosed by the inventors to their chief and they devoted considerable time to perfecting them, with his express approval. All the work was carried on by them in' the government laboratory with the use of government materials and facilities,. during the hours for which they received a government salary, its progress was recorded throughout in weekly and monthly reports which they were required to file, as well as in their laboratory notebooks.; It seems clear that in thus exercising their inventive powers in the1 pursuit of ideas reaching beyond their specific assignments, the' inventors were discharging the duties expected of scientists employed in the laboratory; Dunmore as well as his supervisors, testified that such was their conception of the natureof the work. The conclusion is irresistible that their scientific curiosity was precisely what gave the inventors value as research workers; the government employed it and gave it free rein in performing the broad duty of the Bureau of.advancing the radio art by discovery and invention.
The courts below did not find that, there was any agreement between the government and the inventors as to *213their relative rights in the patents and there was no evidence to support such a finding. They did not find, and úpon the facts, in evidence and within the range of judicial notice, they could not find that the work done by Dunmore and Lowell leading to the inventions in controversy was not within the scope of their employment. Such a ^finding was unnecessary to support the decisions ■below, which proceeded on the theory relied on by the respondent here, that in the absence of an express contract to ¡assign it, an employer is entitled to the full benefit of the patent granted to an employee, only -when it is for á particular invention which the -employee was specifically hired or directed-to make. ‘ The bare references by the court below to the obvious facts that “ research ” and “ invention ” are not synonymous, and that all research work in the Bureau is not concerned with invention, fall far short of a finding that the work in the Bureau did not contemplate invention at all. Those references were directed to a different end, to the establishment of what is conceded here, that Dunmore and Lowell were not specifically hired or directed to make the inventions because in doing so they proceeded beyond the assignments given them by their superiors. The court’s conception of the law, applied to, this ultimate fact, led inevitably to its stated conclusion that the claim of the government is without support in reason or authority “ unless we should regard a general employment for research work as synonymous with a particular employment (or assignment) for inventive work.”
The opinion of this Court apparently rejects the distinction between specific employment or assignment and general employment to invent, adopted by the court below and supported by authority, in favor of the broader position urged by the, government that wherever the •employee’s duties involve the exercise of inventive powers, the employer is entitled to an assignment of the pat*214ent on any invention made in the scope of the general employment. As I view the facts, I think such a rule, to which this Court has not hitherto given explicit support, would require a decree in favor of the government. It would also require* a decree- in favor of a private employer, on the ground staged by the court that as the employee “ has only produced what he is employed to invent,” a specifically enforcible “ term of the agreement necessarily is that what he is paid to produce belongs to his paymaster.” A theory of decision so mechanical is not forced upon us by precedent and cannot, I think, be supported.
What the employee agrees to assign to his employer is always a question of fact. It cannot be said that, merely because an employee agrees to invént, he also agrees to assign any patent secured for the, invention. Accordingly, if an assignment is ordered in such a case it is no inore to be explained and. supported as the specific'enforcement of an agreement to transfer property in the patent than is the shop-right which equity likewise decretes, where the employment does not contemplate invention. AÍ1 the Varying and conflicting language of the books cannot obscure the reality that in any case where the rights of the employer to the invention are not fixed by express contract, and no agreement in fact may fairly be implied, equity determines after the event what they shall be. In thus adjudicating in invitum the consequences of the employment relationship, equity must reconcile the conflicting claims of the employee who has evolved the idea and- the employer who has paid him for his time and supplied the materials utilized in experimentation-and .construction; A task so delicate cannot be performed by accepting the formula advanced by the petitioner any more than by adopting that urged by the .respondent, though both are not- without support in the *215opinions of this. Court. Compare Hapgood v. Hewitt, 119 U.S. 226; Dalzell v. Dueber Mfg. Co., 149 U.S. 315; Solomons v. United States, 137 U.S. 342, 346; Gill v. United States, 160 U.S. 426, 435; Standard Parts Co. v. Peck, 264 U.S. 52.
Where the employment does not contemplate the exercise of inventive^ talent the policy of. the patent laws to stimulate invention by awarding the benefits of the monopoly to the inventor and not to someone else leads to a-ready compromise: a shop-right gives the employer an adequate share in the unanticipated boon.8 Hapgood v. Hewitt, supra; Lane & Bodley, Co. v. Locke, 150 U.S. 193; Dalzell v. Dueber Mfg. Co., supra; Pressed Steel Car Co. v. Hansen, 137 Fed. 403; Amdyco Corp. v. Urquhart, 39 F. (2d) 943, aff’d 51 F. (2d) 1072; Ingle v. Landis Tool Co., 272 Fed. 464; see Beecroft & Blackman v. Rooney, 268 Fed. 545, 549.
But where, as in this case, the employment contemplates invention, the adequacy of such a, compromise is more doubtful not because it contravenes an agreement for an assignment, which may not exist, but because, arguably, as the patent is the fruit of the very work ‘which the employee is hired to do and for which he is paid, it should no more be withheld from the employer, in equity and good conscience, than the product of any other service which the employee engages to. render. This r'esult has been reached where the contract was to devise a means for solving a defined problem, Standard Parts Co. v. Peck, supra, and the decision has been thought to establish the employer’s right wherever the employee is hired or assigned to evolve a process or mechanism for meeting a specific need. Magnetic Mfg. Co. v. Dings Magnetic Separator Co., 16 F. (2d) 739; Goodyear Tire & Rubber *216Co. v. Miller, 22 F. (2d) 353, 356; Houghton v. United States, 23 F. (2d) 386. But the court below and others have thought (Pressed Steel Car Co. v. Hansen, supra; Houghton v. United States, supra; Amdyco Corp. v. Urquhart, supra), as the respondent argues, that only in cases where the employment or assignment is thus specific may the employer demand all the benefits of the employee’s invention. The basis of such a limitation is not articulate in the cases. There is at least a question whether its application may not be attributed, in some instances, to the readier implication of an actual promise to assign the patent, where the duty is to invent a specific thing (see Pressed Steel Car Co. v. Hansen, supra, 415), or, in any case, to the reluctance of equity logically to extend, in this field, the principle that the right to claim the service includes the right to claim its product. The latter alter-' native may find support in the policy of the patent laws to secure to the inventor the fruits of his inventive genius, in the hardship which may be involved in imposing a duty to assign all inventions, see Dalzell v. Dueber Mfg. Co., supra, 323, cf. Aspinwall Mfg. Co. v. Gill, 32 Fed. 697, 700, and in a possible inequality in bargaining power of employer and employee. But compare Goodyear Tire & Rubber Co. v. Miller, supra, 355; Hulse v. Bonsack Mach. Co., 65 Fed. 864, 868; see 30 Columbia Law Rev. 1172, 1176-8. There is no reason for determining now the weight which should be accorded these objections to complete control of the invention by the employer, in cases of ordinary employment for private purposes. Once it is recognized, as it must be, that the function of the Court in every case is to determine whether the employee may, in equity and good conscience retain the benefits of the patent, it is apparent that the present case turns upon considerations which distinguish it from any which has thus far been decided.
*217The inventors were not only employed to engage in work which unmistakably required them to exercise their inventive genius as occasion arose; they were a part of a public enterprise. It' was devoted to the improvement of the art of radio communication for the benefit of the people of the United States, cárried on in a government laboratory, maintained by public funds. Considerations which might favor the employee where the interest of the employer is only in private gain are therefore of slight significance; the policy dominating the research in the Bureau, as the inventors knew, was that of the government to further the interests of the public by advancing the radio art. For the work to be successful, the government must be free to use the results for the benefit of, the public in the most effective way. A patent monopoly^ in individual employees, carrying with it the power to suppress the invention, or at least to exclude others from using it, would destroy this freedom; a shop-right in the government would not confer it. For these employees, in the circumstances, to attempt to withhold from the public and from the government the full benefit of the inventions which it has paid them to produce, appears to me so unconscionable and inequitable as to demand the interposition of a court exercising chancery powers. A court which habitually enjoins a mortgagor from acquiring- and setting up* a tax title adversely to the mortgagee, Middletown Savings Bank v. Bacharach, 46 Conn. 513, 524; Chamberlain v. Forbes, 126 Mich. 86; 85 N.W. 253; Waring v. National Savings & Trust Co., 138 Md. 367; 114 Atl. 57; see 2 Jones on Mortgages (8th ed.), § 841, should find no difficulty in enjoining these employees and the respondent claiming under them from asserting, under the patent laws, rights which would defeat the very object of their employment. The capacity of equitable doctrine for growth and of courts of equity to mould it to *218new situations, was not exhausted with the establishment of the employer’s shop-right. See Essex Trust Co. v. Enwright, 214 Mass. 507; 102 N.E. 441; Meinhard v. Salmon, 249 N.Y. 458; 164 N.E. 545.
If, in the application of familiar principles to the situation presented here, we must advance somewhat beyond the' decided cases, I see nothing revolutionary in the step. We need not be deterred by fear of the necessity, inescapable in the development of the law, of setting limits to the doctrine we apply, as the need arises. That prospect does not require us to shut our eyes to the obvious consequences of the decree which has been rendered here. The result is repugnant to common notions of justice and to policy as well, and the case must turn upon these considerations if we abandon the illusion-that equity is called upon merely to enforce a contract, albeit, one that is “ implied.” The case would be more dramatic if the inventions produced at public expense were important to the preservation of human life, or the public health, or the agricultural resources of the country. The principle is the same here, though the inventions are of importance only in the furtherance of human happiness. In enlisting their scientific talent and curiosity in the performance of the public service in which the Bureau was engaged, Dunmore and Lowell necessarily renounced the prospect of deriving from their work commercial rewards incompatible with it.9 Hence, there is nothing oppressive' or *219unconscionable in requiring them or their licensee to surrender their patents at the instance of the United States, as there probably would be if the inventions had not been made within the scope of their employment or if the employment did not contemplate invention at all.
The issue raised here is unaffected by legislation. Undoubtedly the power rests with Congress to enact a rule of decision for determining the ownership and control of patents on inventions made by government employees in the course of their employment. But I find ñó basis for saying that Congress has done so or that it has manifested any affirmative policy for the disposition of cases of this kind, which .is at variance with the considerations which are controlling here.
The Act of June 25, 1910, 36 Stat. 851, as amended July 1,1918, 40 Stat. 704, 705,. permitted patentees to sue the government' in the Court of Claims for the unauthorized use of their patents. It was'in effect an eminent domain statute by which just compensation was secured to the patentee, whose patent had been used by the government. See Richmond Screw Anchor Co. v. United States, 275 U.S. 331. This statute excluded government employees from the benefits of the Act in. order, as the House Committee Report explicitly points out, to leave unaffected the shop-rights of the government. See H.R. Report No. 1288, 61st Cong.-2d Sess. A statute thus *220aimed at protecting in every case the minimum rights of the government can hardly be taken to deny other and greater rights growing out of the special equity of cases like'the present. ' .
The Act of April 30, 1928, 45 Stat. .467, 468, amending an earlier statute of 1883 (22 Stat. 625), so as to permit a patent to be issued to a government employee without payment of fees, for any invention which the head of a department or independent bureau certifies “ is used or liable to be used in the public service,” and which the application specifies niay, if patented, “ be manufactured and used by or for the Government for governmental purposes without the payment of . . . any royalty,” was passed, it is true, with the general purpose of encouraging government employees to take out patents on their inventions. But this purpose was not, as the opinion of the Court suggests, born .of a Congressional intent that a government employee who conceives an invention in the course of his employment should be protected in his right to exclude'all others but the government from using it. Congress was concerned neither with enlarging nor with narrowing the relative rights of the government and its employees.10 This is apparent from the language of the statute that the patent shall be issued without a fee “ subject to existing law,” as well as from the 'records of its legislative history.11 ■
*221The purpose of Congress in facilitating the patenting of inventions by government employees was to protect the existing right of the government to use all devices invented in the service, whether or not the. patentee was employed to use his inventive powers. 'Experience had shown that this shop-right was jeopardized unless the employee applied for á patent, since without the disclosure incident to the application the government was frequently hampered in its defense of claiins by others asserting priority of invention. But doubt which had arisen whether an application for a patent under the Act of 1883 did not operate to dedicate the patent to the public,12 and reluctance to pay the fees otherwise required, had led government employees- to neglect to make applications, even when they were entitled to the .benefits of the monopoly subject only to the government’s right of use. This doubt the amendment removed. It can hardly be contended that in removing .it in order to aid the government in the protection of its shopright, Congress declared a policy that it should have no greater right to control a patent procured either under this special statute or under the general patent laws by fraud or any other type of inequitable conduct. Had such a policy been declared, it is difficult to see on what' basis we could award the government a remedy, as it seems to be agreed we would, if Dunmore and Lowell had been specifically employed to make the inventions. There is nothing to indicate that- Congress adopted one policy for such a case and a contrary one for this.
*222Other legislation proposed but not enacted,13 requires but a word. Even had Congress expressly rejected a bill purporting to enact into. law the rule of decision which I think applicable here, its failure, to act could not be accorded the force of law. But no such legislation has been proposed to Congress, and that which was suggested may have been and probably was defeated for reasons unconnected with the issue presented in this case. The legislative record does show, as the opinion of the Court states, that it is a difficult question which has been the subject of consideration at least since the war, whether the public, interest is best Served by the *223dedication of an invention to the public or by its exploitation with patent protection under license from the government or the inventor. But the difficulty of resolving the question does not justify a decree which does answer it in favor of- permitting government employees such as these to exploit their inventions without restriction, rather than one which would require the cancellation of their patents or their assignment to the United States.
The decrees should be reversed.
Mr. Justice Cardozo concurs in this opinion.Much of the expansion of the Bureau’s activities in this direction took place during the war. See Annual Report of the Director, Bureau of Standards, for 1919, p. 25; War Work of the Bureau of Standards (1921), Misc. Publicatioiis of the Bureau of Standards No. 46. The scope of the Bureau’s scientific work is revealed by the annual reports of the Director. See also the bibliography of Bureau publications for the years 1901-1925; .Circular of the Bureau of Standards No. 24 (1925).
The Act of May 29, 1920, 41 Stat. 631, 683, 684, permitted other departments to transfer funds to the Bureau of Standards for such purposes, though even b.efore. that time it was one of the major functions of the Bureau "to be of assistance to other branches of the service. See e.g. Annual Reports of the Director for 1915, 1916, 1917, p. 16; Annual Report for 1918, p. IS;- compare Annual Report for 1921, p. 25; for 1922, p. 10.
The consuming public is directly benefited not only by the Bureau’s- work in improving the standards of quality and perform.anee of industry, but also by the assistance which it lends to governmental bodies, state and city. See Annual Reports of the Director for 1915, 1916, 1917, p. 14; Annual Report for 1918, p. 16; National Bureau of Standards, Its Functions and Activity, Circular of the Bureau of Standards, No. 1 (1925), pp. .28, '33.
Cooperation with private industry has been the major method relied upon to make the accomplishments of the Bureau' effective. See Annual Report for 1922, p..7; Annual Report for 1923, p. 3. A system of research associates permits industrial groups to maintain men at the Bureau for research of mutual concern. The plan has facilitated cooperation. See Annual Report,for 1923, p. 4; Annual Report for 1924, p. 35; Annual Report for 1925, p. 38; Annual Reports for 1926, 1928, 1929, 1931, 1932, p. 1; 'Research Associates at the Bureau of Standards, Bureau Circular No. 296 (1926). For a list of cooperating organizations as of December 1, 1926, see Misc. Publications No. 96 (1927).
No fees have been charged except to cover the cost of testing, but the Act of June 30,1932, c. 314, §' 312, 47 Stat. 410, directs that “ for all comparisons, calibrations,- tests or .investigations, performéd ” by the Bureau except those performed for the Government of the United *211States or a State, “ a fee sufficient in each case to compensate the . ' Bureau ... for the entire cost of the services rendered shall be charged. ...”
Act of March 4,1915, c. 141, 38 Stat. 997,1044.-
See the cases collected in 30 Columbia Law Rev. 1172; 36 Harvard Law Rev. 46S.
It has been said that many scientists in the employ of the government regard the acceptance of patent rights leading to commercial rewards in any case as an abasement of their work. Hearings on Exploitation of Inventions by Government Employees, Senate Co’inmittee on Patents, 65th Cong., 3d Sess. (1919), pp. 16, 17; see- also the Hearings before the same Committee, January 23, 1920, 66th Cong., 2d Sess. (1920), p. 5. The opinion of the Court attributes importance to the fact, seemingly irrelevant,, that other employees of the Bureau have in some instances in the past taken out patents on their *219inventions which, so far as appears, the'government has not prevented them from enjoying. The circumstances under which those inventions were made do not appear. But even if they were the same as those in the present case there is no basis for conténding that because the government saw fit not to assert its rights in other cases it has lost them in this. Moreover, there is no necessary inconsistency in the government’s position if it' concluded in those;, cases that the public interest would be served best by permitting the employees to exploif their inventions themselves, and adopted a contrary conclusion here.
Throughout the various speculations in 'cpmmittee as to what those rights' were, it was generally agreed that they were intended to remain unchanged by the bill. See Hearings before the House Committee on Patents, 68th Cong., 2d Sess., on H.R. 3267 and 11403 (1925); Hearings before the same Committee, 70th Cong., 1st Sess. (1928), especially at pp. 8-13. The discussion on the floor of the House, referred to in the opinion of the Court (see note 19) does not indicate the contrary.
In addition to the hearings cited supra, note 10, see H.R. Report No, 1596, 68th Cong., 2d Sess.; H.R. Report No. 871, Senate Report *221No. 765, 70fh Cong., 1st Sess. The bill was originally a companion' proposal to the Federal Trade Commission bill discussed infra, note 13. See the references given there.
See Selden Co. v. National Aniline & Chemical Co., 48 F. (2d) 270, 272; Squier v. American Telephone & Telegraph Co., 7 F. (2d) 831, 832, affirmed 21 F. (2d) 747.
The bill referred to in the opinion of the Court was one sponsored by the executive departments to endow the Federal Trade Commission with the .power to accept assignments of patents from government employees and administer them in the public interest. It passed the Senate on one' occasion and the House on another but failed to become a law. (S. 5265, 65th Cong., 3d Sess-., S. 3223, 66th Cong.,. 1st Sess., H.R. 9932, 66th Cong., 1st Sess., H.R. 11984, 66th Cong., 3d Sess.) In the course of hearings and debates many points of view were expressed. See Hearings on Exploitation of Inventions by Government Employees, Senate Committee on Patents, 65th Cong., 3d Sess. (1919) ; Hearing before the same Committee, 66th Cong., 2d Sess. (1920) ; Senate Report No. 405, H.R. Report No. 595, 66th Cong., 2d Sess., recommending passage. See 59 Cong. Rec., 2300, 2421, 2430, 3908, 4682, 4771, 8359, 8360, 8483, 8490; 60 ibid. 356; Conference Report, H.R. No. 1294, Sen. Doc. No. 379, 66th Cong., 3d Sess. And see 60 Cong. Rec., 2890, 3229, 3264r-3269, 3537. Differences were stressed in the purposes and needs of different agencies of the Government. See especially Hearings (1919), supra, pp. 22, 24-5. The need of commercial incentives to private exploiters, as well as the general desirability of such exploitation were admitted, but the dangers were recognized as well. It was thought that the public interest would best be served by the establishment of a single agency for government control, with the power to determine upon some compensation for the inventor.
After the death of this bill in the Senate, February 21, 1921, the subject was again considered by an Interdepartmental Board estab*223lished by executive order of President Harding, August 9, 1922. Its report was transmitted to Congress by President Coolidge, in December, 1923. Sen. Doc. No. 83, 68th Cong., 1st Sess. The Board found that.there had never been any-general governmental policy established with respect to inventions, that whether public dedication, private exploitation' or governmental control and administration is desirable, depends largely on the nature of the invention. Accordingly, legislation was recommended establishing a permanent Interdepartmental Patents Board with the power tó demand assignments of patents on those inventions thereafter developed in the service which “in the interest of the national defense, or otherwise in the public interest ” should be controlled by the Government. No action was taken upon this proposal.
Since that time the Director of the Bureau of Standards has recommended that a “uniform, equitable policy of procedure” be defined for the government by legislation. (Annual Report for 1925, p.- 40.) In the Report for 1931 it is said (p. 46) that the “ patent policy of this Bureau has always been that patentable devices developed by employees paid out of public funds belong to the public,” and the Report for 1932 adds (p. 40) “ if not so dedicated directly, the vested rights should be held by the Government.”