Class Jl32£. Book ' /i/ 97 _ CoBiigteN" COPHilGm' DEPOSIT PATEI^TTS AND HOW TO MAKE MOKEY \ OUT OF THEM L^-^ ( BY w. b.'hutchiis^soi^ J. A. E. CRISWEIilj ? MEMBEK8 OF THE NEW YOEK BAR New York FEDEIilTY PUBEISIIIXG COJ^IPAJSY- 95 LiBEHTT StSEET Copyright, 1899, by Hutchinson & Criswell, Pateats and Patent Law, 52 Broadway, New York. ^"l^' 29323 JOHN C. RANKIN CO., PRINTERS 84 CORTLANDT ST., NEW YORK. two esopsEs Rscetveo. PREFACE The main object of this book is to tell how to make money out of inventions and patents. It treats chiefly of the business side of inven- tions. Its authors have had a large experience in matters relating to patents, and believe that a little honest and reliable advice as to how to invent, to patent, to introduce, to sell and to protect an invention will be appreciated by all who have or are likely to have business in this line. I^early all the literature on this subject has been in the nature of text-books on the law of patents, which are practically of no use to the business man, or in the form of adroit ad- vertising matter, the object of which has been to transfer dollars from the pocket of the inventor to that of the advertiser. It is a recognized fact that many ingenious men waste their ingenuity by exercising it in the wrong direction. To such men it is hoped this book will be an aid. Others, through igno- rance of the nature of patents and the proper method of procedure, fall into the hands of incompetent and unscrupulous attorneys and fail to secure that to which the law entitles them, and so see a competency slip from their hands. To such this book, if followed, will prove a blessing. Again, manufacturers and iv PKEFACE. other business men often meet with loss in pur- chasing patents which do not cover the inven- tions to which they relate, or to which the title is in some way defective. To these the book will be of great assistance. Competent lawyers are often unable to advise- their clients as to practical means of selling, licensing or intro- ducing a particular invention. It is hoped that this book will be a help to them. Final- ly, we commend this volume to all people having any connection with patents, and trust that the practical experience which is herein embodied may, in some way, be a help to all. This book is not intended to take the place of an attorney ; it is not published to boom a patent agency ; it is not a collection of legal lore and decisions for the especial use of law- yers, but it is intended as a practical guide for inventors, manufacturers, lawyers and business men generally who have anything to do with patents. We have avoided text-book form in this book and have refrained from using foot notes, as these, to the average reader, are confusing and disconcerting. The reader is asked to take our word for the facts herein, and as to matter of opinion and advice to take it for what it is worth. New York, February, 1899. CONTENTS BOOK I. PATENTS GENERAIiliY. CHAPTEK. PAGE. I. Origin and Nature of Patents — Modern Appli- cation of the Term, 1 II. Importance and Value of Patents — Their Effect on Trade, 5 III. Patents in the Nineteenth Century — A Few Kemarks to Manufacturers, .... 12 IV. What is Patentable 20 V. Caveats, 27 VI. Who May Obtain a Patent, .... 31 VII. Concerning Patentability 38 VIII. Prior Use, Public Use, Experiments, . . 46 BOOK II. PATENT OFFICE PEACTICE, TRADE-MARKS, COPYRIGHTS. I. The Application, .50 II. Appeals, 61 III. Interferences, 64 IV. Disclaimers and Reissues, 71 V. Abandoned, Forfeited, Revived and Renewed Applications, 79 vi CONTENTS. VI. Infringement, Infringing Inventions and Acts — Eemedies for Infringement, ... 82 VII. Trade-marks, Prints and Labels, ... 96 VIII. Copyrights 109 IX. Title, Assignment, Grants, Mortgages and Licenses, 128 X. Foreign Patents 136 BOOK III. PATENTS GOMMERCIAIiliY CONSIDBEED. - I. "What to Invent and How to Invent, . . 140 II. Introduction and Sale of Patented Inventions, 151 III. Sale or Promotion by Joint-Stock Companies or Corporations 164 IV. The Promoter 182 APPENDIX. Forms, 195 Index, .219 PATENTS AND HOW TO MAKE MOl^EY OUT OF THEM BOOK I, CHAPTER I. OEIGIN AND NATURE OF PATENTS— THE MODERN APPLICATION OF THE TERM. Originally patents were monopolies and were more often granted to give the patentee a monopoly in large tracts of land for commer- cial, mining, manufacturing and general busi- ness purposes, such, for example, as the patents granted to the first colonizers in America for immense districts of land, to which the name of the original patentee has, in many cases, been applied. Often at the present time the Grovernment grants to homesteaders and other persons patents for the land which they have pre- empted, purchased or otherwise secured. But in its ordinary application a patent is a Grov- ernment grant giving an inventor the exclusive right to make, sell and use his invention for a term of years. In the United States a patent is granted for seventeen years. 2 ORIGIN AND NATUEE OF PATENTS. A patent, in its modern acceptation, is not a monopoly, but is a consideration offered as an inducement for a person to invent. In other words, it is a prize or reward for his ingenuity, and gives him the exclusive right to make, use and sell the invention for a limited term in con- sideration of the benefits of the invention to society. To secure a valid patent, therefore, the Gov- ernment requires by law that the inventor shall file in the Patent Office drawings and descrip- tions of his inventions, sufficiently clear to enable persons skilled in the art to make and practice the invention, so that at the end of the term of the patent the public can have access to the invention through the records and so reap the benefits thereof. As above remarked, patents were originally monopolies, but in the 21 James I., 1624, the Statute of Monopolies, so called, was passed, by which the granting of special and exclusive privileges in trade were prohibited, but the statute specifically excepted *' letters patent and grants of privileges for the term of one and twenty years or under, heretofore made for the sole work or making of any manner of new manufacture within this realm to the first and true inventor or inventors of such manu- factures." This statute marked the beginning of modern MODERN APPLICATION OF THE TERM. 3 patent laws for the protection of new and useful inventions. In France the first patent law was passed in 1791. In the United States the patent system has grown up under a positive grant in the Federal Constitution and by reason of Statutes, the first of which was passed in 1790, and others from time to time to the present day. A patent is wholly a creature of statute, and other nations have been somewhat slov/ in fol- lowing the lead of Great Britain, the United States and France, and even at the present time there are some countries which have no patent law. Nearly all the civilized nations, however, recognize the importance of a patent system to foster and encourage inventions, and, at the present day, there are patent laws in nearly every civilized country. As a rule, the laws are such that an alien may have practically the same protection for his invention as a native, though in many countries it is stipulated that the invention must be worked within a certain specified time or the patent forfeited. It is contended by many that a provision of this nature should be made in the United States, so as to prevent large corporations from buying and controlling numerous patents for inventions which are never marketed, thus depriving the public of the benefit which it 4 EFFECT OF PATENT SYSTEM. should receive, but it is a question whether the time is ripe for such a change. It is as true now as of old that '* nothing suc- ceeds like success," and it is a fact beyond dis- pute that the patent system of the United States has brought inventions to a wonderful state of efficiency, so that the country leads the world in valuable improvements. CHAPTER II. IMPORTANCE AND VALUE OF PATENTS — THEIR EFFECT ON TRADE. Visit an oculist and, whatever your bodily ailment, he will probably tell you that the diffi- culty originates with the eyes. A skilled sur- geon will likewise conclude that the supreme remedy for every ill is the knife. So, politic- ally, one set of people will attribute the pros- perity of the United States to its natural resources, another to the policy of protection, another to certain financial systems, and so on ad infinitum. But we believe it is a demonstrable fact that the patent system of America has done more to promote its commercial supremacy, its wonder- ful prosperity and general well-being than any other cause. The workings of the patent system are quiet and unobtrusive. The inventor does his work, and is, as a rule, comparatively unknown. He is not greeted with the applause of the fighting man or the orator, but he does and has done 6 IMPORTANCE AND VALUE OF PATENTS. more for tlie world than any other man or set of men. The patent system of America is more liberal to the inventor than that of any other country, and it has been the policy of the Government to do what it could to encourage inventions, not- withstanding the fact that the agricultural communities have usually opposed patents as being in the nature of monopolies. The men who have made American manu- factures famous and have, by their improve- ments, brought the United States to the front rank as a manufacturing and commercial na- tion, would not have brought out their improve- ments and could not have found money to exploit them were it not for the fact that the Government has provided reasonable protection. People do not work for the love of working. It is not human nature. There must be some sort of encouragement and stimulus. The pat- ent system of the United States has provided this stimulus, and has opened almost the only avenue of success on which the poor man can successfully enter. It is generally recognized that patent law forms an important branch of American juris- prudence, still the real value of American patents and of the American patent system is appreciated by comparatively few people, and few know the boundless benefits the world has IMPOKTANCE AND VALUE OF PATENTS. 7 derived from the acMevements of American inventors. Many of them have cut niches in the temple of industrial fame that will last forever. When it is remembered that the richest nation in the world is now the United States, that her improvements and manufactures are fast taking the lea.d, and that the whole volume of manufacturing business in America is or has been based on patents — that is, that the articles made or the machinery for making them are or have been subject to patent — then the enormous value of patents to the public begins to be appreciated. The principle of our patent system was early recognized ; for instance, before the patent law of 1790 Massachusetts granted in 1786 a cash subsidy to Alexander and Robert Barr, of Scot- land, and Mr. Orr, of East Bridgewater, Mass., to encourage the introduction of cotton-manu- facturing machinery. This was done to carry into effect the wonderful inventions of Har- greaves and Arkwright. Aid was also granted later to Almy, Brown and Slater, who first manufactured cotton goods in Rhode Island, and subsequently the inventor Lowell, whose monument is one of the most thriving manufac- turing cities in the Union, made his first loom, the model being completed in 1812. This he patented, and it marks an epoch in the manu- facturing history of America. 8 SOME FAMOUS INVENTORS. Eli Whitney, wliose name has for generations been a household word, was a poor lad ignorant of the cotton industry, and yet he invented the cotton gin in 1793, which made it possible to prepare cotton cheaply for manufacturing pur- poses, to supply the previously invented spin- ning-jenny and the subsequently improved loom, so that thus early, through the aid of the States and the protection of the patent system, was inaugurated an industry the im- portance of which can scarcely be realized. The history of the cotton industry is substan- tially a duplicate of all the other important manufactures of America. The names of McCormack, Heines, Ketchum, Manny, Wood and others are familiar wherever mowing and reaping machines are known and the inventions relating to mowers and reapers and other agricultural instruments which have been fostered by the patent system would not probably be brought to public notice except for it and by reason of this protection. America now supplies agricultural machinery to the world, and not only that, but is able to produce crops at a price which defies competition and which enables American products to be sent to the four corners of the earth. The career of Fulton in connection with steam navigation is well known, and the importance of his inventions is understood by every school- SOME FAMOUS INVENTORS. 9 boy. All know how Singer, Howe, Wheeler, Wil- son and others have made the sewing-machine known in every hamlet, not only in America, but in Europe ; how modern processes, every one of which is or has been patented, have en- abled America to ship iron and steel even to Great Britain, as well as to all other parts of the earth ; how American locomotives are now rolling through the wildernesses of Siberia and over the mountains of Japan ; how American boots and shoes are sold everywhere, and how every one of these industries has been made what it is by reason of improved machinery. Comparatively young people can remember how boots and shoes were made by hand in scattered country districts until the introduc- tion of the McKay machines subsequent to 1860, and immediately thereafter how import- ant cities sprung up because the machinery made it possible to turn out the manufactures cheaply and in small localities. It is as familiar as A, B, C how Morse and Bell and Edison and Thomson and other lesser lights have made the electric phenomena ser- viceable ; have ''harnessed the lightning" and have made what was formerly a superstitious wonder a common vehicle of every-day use. Most, if not all, of the men referred to above, together with others who are well known, would have lived and died poor were it not for the fact 10 EFFECT OF PATENTS. that the patent system has opened to them a laudable source of wealth. It must be remem- bered that while the patent system has been a blessing to these men, still the chief blessing has, after all, been to the American public, to whom the inventors have turned over the won- ders of the nineteenth century, and by whom what were formerly luxuries are now brought to every household. It cannot be contended that these industries would have been promoted by the expenditure of years of toil on the part of those individuals and the expenditures of vast treasures unless the patent system had offered reward for such endeavors and for such expenditures. From these sources have resulted the wonderful manufacturing conditions in America, and it seems clear that the patent system has been of more value to Americans than any other one thing. Not only this, but the beneficent effects are felt in war as well as in peace. Every manu- facturer and almost every firm now knows the difference between the work of a clodhopper from darkest Russia and that of an intelli- gent native American. The vast difference is due, in a great measure, to the fact that almost every American is at the present time more or less familiar with mechanics, owing to the wide distribution of mechanical inventions. As long EFFECT OF PATENTS. 11 ago as the civil war it was found that every company contained men who could, when occa- sion required, rig up a locomotive, repair a telegraph line, send telegrams if necessary, run a printing office, or do anything which the occasion demanded. So, likewise, in the recent Spanish war, the great superiority of the Ameri- can navy is said to lie principally in the fact that it was manned chiefly by mechanics who were familiar with mechanism and who could handle with effect machinery constituting a modern fighting navy. It is, of course, understood that the part any one of the various industries plays or has played in American development is in many instances subject-matter for a volume itself, and the mat- ter is only referred to here in a general way to illustrate the immensity of American manufac- tures and the fact that these manufactures have been introduced primarily by the Ameri- can patent system. 12 CHAPTER III. PATENTS IN THE NINETEENTH CENTURY AND A FEW REMARKS TO MANUFACTURERS. We are apt to forget, surrounded as we are by tlie many comforts and inventions of the last few generations, that the dawn of the ^Nine- teenth Century found mankind in about the same condition, so far as industrial develop- ment is concerned, as he was when the pyramids were built or when Phidias adorned Athens with the artistic treasures which were a copy for posterity. The difference was merely one of degree. The carrying trade of the world was done in ships which were the same in principle as those the hardy !N'orsemen navigated in their early trips to Newfoundland and the American Continent, and with which Columbus made his memorable voyage across the Atlantic. The student did not ''burn the midnight oil," but with diffi- culty perused his after-dark studies by the light of a pine knot or a tallow dip. One modern steam- ship like the "Kaiser Wilhelm Der Grosse" will carry more merchandise in a year than per- PATENTS OF THE NINETEENTH CENTURY. 13 haps the whole commerce of America amounted to at the beginning of the century. Steam did not affect the ocean carrying trade, the land carrying trade or passenger traffic ; New York and Boston were far distant municipalities; Philadelphia was as far from New York as Denver is now. Communication was so slow and uncertain that only the most important events were attempted to be transmitted and the result was often disastrous. As late as the war of 1812, the most important battle was fought long after the treaty of peace had been agreed to. Our late war with Spain was fought and finished in two hemispheres in less time than it took to get a message to Europe and return. Practically everything consumed was of hand manufacture and mostly homemade. The great industries of modern times were as yet undreamed of. It is said that the steel out- put of the United States for 1898 was greater than the steel manufacture from the time of Tubal Cain to the beginning of the Nineteenth Century. Not one of the great enterprises of the present era had been inaugurated. The standard of living was low. Armies could be moved no quicker than in the days when Hannibal marched his legions from Spain to Italy, or when Julius Csesar made his wonderful march across the Alps. The telegraph, the telephone, 14 PATENTS OF THE NINETEENTH CENTURY. the electric light, the typewriter, the sewing machine, the mowing machine, the locomotive, the modern weaving machinery, in fact nearly everything of common and necessary use in the industrial arts, was as yet undiscovered. Alfred Russell Wallace, who cooperated with Darwin in formulating the doctrine of the ** survival of the fittest" and who is conspic- uous as a writer of natural history and a great and scientific observer, says that the Nineteenth Century marks the most important epoch within the whole historic period or, perhaps, since the stone age. He calls it '*The Age of Inven- tion" and compares the beginning of this era with the introduction of fire. To enumerate in these pages the many won- derful inventions or more than hint at their im- portance would require more space than could be given in a book of this character. The im- portance of the Nineteenth Century inventions, scientifically, industrially and socially, are well understood. But what is not understood and what has been generally overlooked is the fact that this supremely important period is due largely to the beneficent patent system of the most progressive nations. Naturally we find the most liberal patent system in the country which leads the procession in inventions. It may be said that the patent system follows inventions, and while it is true that one is de- STIMULUS NECESSAEY. 15 pendent on the other, still it is certain that nearly all the inventions which have done so much for the world and which have raised the standard of living and general intelligence would never have been commercially and prac- tically developed were it not for the initial pro- tection of the patent system. It is not necessary to quote authorities to show that man is inherently selfish, and while he loves approbation, still he would never go to the extent to which most great inventors have had to go, would not have denied himself and his family, would not have labored for years at great expense and at great suffering in some cases, merely to secure the honor of bringing forth a great invention. It has required some- thing in the nature of a pecuniary reward or, at least, something to hold out the hope of reward, to induce the inventor to properly develop his inventions and to exercise his ingenuity to the utmost. It is common to laud the orator or the great general or some philanthropist far more than the inventor, but the real inventor is the king among men. He does not always invent a machine, but his breadth of mind and his sweep of view comprehend everything between heaven and earth. He fears nothing, not even ridicule, but has a mind open to discover truth where- ever it may be found. He does not always in- 16 LITTLE THINGS. vent a macliine. He may, like Homer or Mil- ton, exercise his mental characteristics to pour forth songs to delight the ages. He may, like Galileo or Columbus or Copernicus, change the human idea of the universe, or he may, like Fulton or Morse, use his ingenuity to indus- trially help the race, but in every case the men- tal attitude and characteristics are the same. It is to such men that the world should do homage. Perhaps it may not appear at first view what this has to do with the commercial value of patents, but on an instant's reflection it will be seen that these inventions, which really consti- tute the modern industrial fabric, have all been the means of colossal fortunes for those inter- ested in them, especially in view of the fact that every great invention, instead of closing the avenue of inventive work along that line, has always opened a field which has been filled im- mediately by lesser iaventions worthy, how- ever, of commercial exploitation and, as a rule, profitable. The smaller inventions are frequently in fact the most profitable to one whose means are somewhat limited, because they can be devel- oped and exploited for a comparatively small sum, while the larger affairs usually require modest fortunes to show their worth or the lack of it. LITTLE THINGS. 17 The '' little things" are often '^the big things" in the aggregate. Everyone knows how fortunes have been quickly made out of glove fasteners, shoe eye- lets, and a hundred other '^ little things." A match is a little thing, but yet the match in- dustry is large enough to absorb the attention of one of the great trusts of the country. And the industry is paying dividends on $18,000,000. Everyone may not know that even the wooden toothpicks which are apparently so insignificant are made and sold in carload lots, and that all the machines for making them have been patented, while originally the toothpicks them- selves were subject to patent. Clothespins, shoe nails and even peg wood for boots are all sold in immense quantities. Several fortunes were made in the manufac- ture of paper collars. A good toy will usually realize a fortune for its promoters in a season or two. And so we might go on indefinitely. The point is that, if there is a reasonably large sale for an invention and it is properly pro- tected, it is worthy of attention. If it is not or cannot be patented, it is not ordinarily worthy of attention for competition then reduces the price to practically the cost of the labor and material of which it is made. A device, machine or process which is patented and which to any appreciable extent decreases 18 VALUE OF PATE.NT SYSTEM. the cost of making any staple goods is of self- evident value. Competition is so close that a small saving in cost of goods, or a means of making better goods at a given cost, is of great value, the value depending, of course, on the line of goods and the relative quantity con- sumed. Nothing in the manufacturing line is so good as a good patented invention. Suppose, for in- stance, that the leading manufacturers in a cer- tain line have pooled or formed a trust. Such a trust can easily, by their well-known methods, crush any outsider having only its facilities. But if the outsider gets control of a better article or a cheaper or better machine or process of manufacture, then the trust must make terms with him. It will be seen that the patent protection offers almost the only means of securing large profits on a reasonable investment so far as or- dinary industrial business is concerned, that is, business outside of the great monopolies which have absorbed certain lines of commerce. There are only a few ways of avoiding this destructive competition. One is by combining or pooling all the industries of a certain kind in the form of a trust and another is to manu-. facture some articles on which there can be patent protection, or which have become known VALUE OF PKOPER PKOTECTION. 19 and favored by the trade and are recognized by a lawful trade-mark. This fact should make the manufacturers — and does make them — eager to take up a good invention and it should also cause them to be very careful to see that the invention is prop- erly patented so that they can safely enter into its manufacture. The alert inventor "will also strive to invent along practical lines as pointed out in another chapter. The manufacturer or inventor will likewise be on the lookout for the opportunity which may show itself but once and then momentarily ; and both knowing the many elusive qualities of patent rights and that a patent is a creature of statute, shaped in every instance more or less according to skill, should be careful to see that their interests are properly safeguarded. This can only be done by those skilled in such mat- ters, and many an inventor, when the validity and scope of his patent has been assailed or he wishes to sell his patent, has found that he has little or nothing of value for the reason that his ap- plication for a patent was not properly prepared and prosecuted while pending in the Patent Office. 20 CHAPTER lY. WHAT IS PATENTABLE. In the United States patents are issued for a machine, an article of manufacture, an art or process, a composition of matter, a design. Machine. — The Standard Dictionary defines a machine as any combination of inanimate mechanism for utilizing or applying power. This broad view is the one adopted by the Patent Office and the courts. Any new and useful machine is patentable. As to utility, this may be nominal ; that is to say, if the machine is at all useful and is new, it is patentable, but the machine must be new or an improvement on existing machines. As to novelty, this does not usually consist in a wholly new machine, for it is very seldom that a machine is made with new parts. In fact, it is doubtful if one is ever made in which all the parts are new. Usually a machine consists of a combination of elements old in themselves, but combined in a new way so as to accomplish a new result or MANUFAOTUKE. 21 to accomplisli an old result in a new or better way. The one essential is that there must be some new operative change in the machine. If the difference in construction between the new machine and the old is slight but the dif- ference in results is obvious, then there is in- vention and the novelty contained in the struc- ture is patentpjDle. But let the machine be ever so new, its parts or operative means and not its principle must be claimed, and while a skillful attorney will draw claims broad enough to cover all analogous structures and so secure the field to the inventor, still, within the mean- ing of the United States Patent Law, one cannot claim a principle, as a principle is too indefinite and intangible to come within the scope of the claim. Let it be borne in mind in connection with this subject and those immediately following, that an invention is not necessarily a new crea- tion, but the inventor may simply perceive a means or a way of bettering mechanical con- trivances and accomplish the result by im- proved means which involve sufficient novelty to come within the scope of the term invention and to entitle him to a patent. That is, the im- proved means involve something more than mere mechanical skill. A Manufacture. — A manufacture is any- thing made by industrial art or processes or 22 COMPOSITION OF MATTER. skill, whether it be made by hand or by machinery. Generally speaking, an article of manufacture, as contemplated by the patent law, comprises any vendible article of trade or commerce which is not a machine or a com- position of matter ; for example, a bag, a chair, or a shoe is an article of manufacture. Composition of Matter.— Within the mean- ing of the patent law, a composition of matter is a combination of two or more substances making a substance which has some useful function. A well-known example of this kind is an explosive, a plating compound, a polish- ing substance, a substance for removing hair from hides or grease from leather, et cetera. In applying for a patent as stated in another chapter, the applicant must specify the ingre- dients, the proportions in which they are mingled and the manner of combining them, whether chemically or otherwise, so that any person skilled in the art can, from his descrip- tion, make the new composition. Improvements.— An improvement, as its name indicates, is usually an advance made in an art or the construction of a machine which improves upon one already existing. This is the character of most inventions. Sometimes a person will invent or discover something en- tirely new, like Morse's invention of the tele- graph, or Beir s invention of the telephone, and AKT OR PEOCESS. 23 a multitude of inventors will follow after and improve upon tlie original device ; such im- provements, if tliey are really improvements or if tliey materially affect the function of the device, are patentable. Art or Process. — An art or process, within the meaning of the patent law, is a method of reaching or accomplishing a certain result as distinct from the result itself or from the mech- anism or means for accomplishing the process. An art is the most comprehensive of inven- tions as it may include practically or may really cover both the method or process and the instrumentalities used in the operation. Some means must be described for carrying the process into effect, but in order that the process and the instrumentalities or apparatus may be included in one patent, they should be so de- pendent, one on the other, that they cannot practically be separated. Broadly and generally an art or process is a new operative means for accomplishing a cer- tain result. A patent for an art is usually the broadest kind of a patent. For example, if a process comprises three distinct steps in the treatment of a certain subject-matter, the claim vrill cover those three steps and it will not matter whether the steps are performed by hand, by machinery or in what way they are performed. The mere fact that they are per- 24 DESIGN PATENTS. formed by an unauthorized party will constitute an infringement of the claim. It should be clearly understood that the art or process is entirely distinct from any mechanism employed in carrying the art or process into effect, al- though if the mechanism and the process are dependent one on the other, both may be in- cluded in the same patent and both the process and the apparatus or mechanism covered by independent claims. But though an art com- prises so much, it must be capable of producing tangible, physical results, or else it is too in- definite to come within the purview of the patent law. This subject of what can be included in a claim for an art and what should be included is one requiring the utmost skill and discrimina- tion. The claims should include only what can be rightly claimed under a patent for an art or process. They must not be so broad as to claim an inoperative art, they should not be so narrow as to limit the patentee too much in practicing the art or process, but there are so many nice distinctions relating to this matter of claims that it must be left to the attorney, who will judge by the circumstances of each individual case. Designs.— The statute relating to designs reads : *' Any person who, by his own industry, genius, efforts and expense, has invented and DESIGN PATENTS. 25 produced any new and original design for a manufacture, bust, statue, alto-relievo, or bas- relief; any new and original design for the printing of woolen, silk, cotton or other fabrics ; any new and original impression, ornament, patent (pattern), print, or picture to be printed, painted, cast or otherwise placed on or worked into any article of manufacture ; or any new, useful and original shape or configuration for any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon the payment of the fee prescribed, and other due proceedings had the same as in cases of inventions and discoveries, obtain a patent therefor." Design patents are issued for three and a half, seven and fourteen years and the appli- cant must elect, when he files his application, for which term he will have his patent issue. Inventors frequently have an idea that they can procure design patents cheaply and that they will cover the same ground as a patent for a structure. This is not usually so. Design patents relate exclusively to the shape, outline or configuration of any figure, article, print, fabric and the like. The claim being merely to the configuration, then, it is obvious that any radical departure from such configuration will 26 DESIGN PATENTS. not be an infringement of a patent for a design. Generally speaking, the rule is the same as in regard to an infringement of a trade-mark, that is : Will an ordinary purchaser be de- ceived and mistake one design for the other ? While the claim of a design patent relates exclusively to the coniiguration or shape, out- line or ornamentation, still there are cases where articles of manufacture and even mechan- ical articles are valuable chieHy because of their peculiar shape and in such case a design patent is the proper means of protecting them, because, as a rule, a patent for the structure cannot be obtained. Any new coniiguration can be covered by a design patent even though it may not be purely ornamental. For exam- ple, a man may have a machine frame of a new shape, which shape is advantageous or which increases the value of the machine, and such a frame may be covered by a design patent. Perhaps it may be necessary to cover the frame of a cultivator, the body of a carriage, orna- mental designs of fabrics, such as carpets, laces, and a thousand and one other articles, and so long as the form or configuration is essential, the design patent is usually the proper and often the only means of protection. 27 CHAPTER y. CAVEATS. Caveats, while still allowed by the statute and filed to a certain extent in the Patent Office, are gradually falling into disuse. A caveat is really of little value to the inventor. When a person has an invention, more or less complete, he can file a written description of the inven- tion, together with a drawing, if this can be done, in the Patent Office by paying the pre- scribed fee. The caveat will be in force for a year, and can be renewed from year to year by renewing the fee. Caveats can be filed by citizens of the United States only, though it has been recommended to Congress that this privilege be extended to foreigners. The caveat does not protect the inventor and does not give him any right, as, for example, the right conferred by the issue of a patent, but it merely entitles him to notice in case some other party applies for a patent for substan- tially the same thing while his caveat is in force. 28 CAVEATS. As the caveator has not an exclusive right, the only advantage from such a notice is that he can himself file an application for a patent, and thereupon he will be declared in interfer- ence with the other party who has filed an application for a patent on a similar article and has filed similar claims. This advantage is of a doubtful character, and the caveat really amounts only to evidence ; that is to say, it is good evidence that at the time of filing his caveat he had an invention in as complete a condition as his caveat papers show. If he then files his application, and claims the same matter claimed by the other applicant he has an interference suit on hand. The subject of interferences will be treated hereafter, but as it is mentioned incidentally here, it may be well to say that an interference, so styled, is a con- test between applicants who claim a patent on the same invention, and as the patent obviously cannot be issued to both, this contest has to be first settled, and the patent will be issued to the one who proves to be the first inventor. This matter of interferences is a very important one, the practice concerning which is intricate and not thoroughly well settled in every particular, but the subject will be treated in a separate chapter. Concerning the subject in hand, to wit, ca- veats, it will be clearly seen from the few CAVEATS. 29 remarks relating to them that a caveat is merely evidence, and that the inventor would be as well off if he had merely made a drawing of his invention and had it witnessed by reputable persons who could make oath that they had seen it at a certain time. If instead of filing his caveat, he had made his invention sufficiently complete to enable him to show an operative device, and had filed his application for a patent, he would have been much better off, because the first applicant has a decided advantage in an interference case, and the burden of proof is on the second appli- cant, who must show by strong proof that he was the first to conceive and was using rea- sonable diligence to reduce the invention to practice. There are cases where it may be advisable to file a caveat. Such a case might be, perhaps, where a party has in mind a complex inven- tion, partially completed, and only knows in a general way how he will work out the details and complete the invention. In such case it may be to his advantage to file a caveat for the invention as far as completed, which would be evidence itself of having made the invention at the date of filing the caveat and to the extent disclosed therein. The practice of filing caveats is not recom- mended to the average inventor ; first, because 30 CAVEATS. of the inadequate protection of the caveat, and, second, because of the expense — that is to say, while a caveat is not in itself very expensive, still, if properly filed, it requires the prepara- tion of drawings and specifications by an expert, or, at least, a specification, and the cost of this, taken in connection with the Government fee of ten dollars, is something to the average inventor, who is not supposed to be very wealthy. The fact that caveats are of little value is largely owing to the further fact that while the caveator is entitled to notice in case another files an application for a similar thing, still the Patent Office is not bound to give him such notice, and he has no remedy for the neglect of the Office to notify him. Moreover, as the caveat fees do not apply on the patent fees when the patent application is made, the cost of the caveat seems to be in nearly every instance so much time and money wasted. The better practice is for the inventor to complete his invention at as early a date as possible and make application for letters patent. 31 CHAPTER YI. WHO MAY OBTAIN A PATENT. Section 4886 of the Revised Statutes says that "Any person ^ * '^ may -^ ^ '^ obtain a pat- ent." The words "any person" have been construed to mean a man or woman, whether the woman be married or single ; and a minor, male or female, as well as any person embraced in these classes and also an alien. It has been further held that any number of persons whose combined efforts resulted in bringing forth an invention could make application as joint in- ventors and the patent would issue to them. In many foreign countries, the first to intro- duce an invention can obtain a patent, as, for instance, in Great Britain. But in the United States a valid patent can only issue on the ap- plication of the real inventor or inventors, who must make oath to the invention and if the ap- plication and oath are made by one who is not the real inventor and the patent afterward issues to him the patent will be held invalid if the facts in the case are proved. Further, the 32 WOMEN INVENTOKS. invention and patent to issue may be owned by- some person or corporation other than the in- ventor, but, notwithstanding this fact, the in- ventor must make the application. If the invention has been assigned and the inventor refuses to make the application when under obligation to do so, the owner can apply to the proper court and get an injunction re- straining the inventor from disposing of the invention and can compel him to make the ap- plication. If there is no assignment, but only an agreement to assign, he can be compelled to execute an assignment of the invention to the proper party. Some women are prolific inventors and many of their inventions are and have been of great value. This is true to such an extent that the Patent Ofiice of the United States has published and has for sale pamphlets styled " Women Inventors ' ' and the mere list makes quite a re- spectable volume. In connection with this subject of women in- ventors, it may be of interest to note that one of the first inventions of which there is any record was made by a woman. To quote from a recent reported lecture of Eev. Dr. N. D. Hillis : '* A thousand years ago the race dwelt to the east of the River Jordan. Men came to little caves and these little caves had little doors, and these doors were hung on hinges. WOMEN INVENTOKS. 33 Years before that, a young girl, with a bloom on her cheek, lived with her parents in one of these caves, and one Sunday night came a young man from over the hills to see the girl's father, the first time. The next day she said : 'Now, father, why couldn't this family have two caves, one for home folks and one for com- pany ? ' And the father said yes, and the next Sunday night the young man came over to see the girl's mother, perhaps, and after that the young girl said : ' Father, we ought to have a door between the two caves so that it can be shut.' And she wanted a door hinge, that the door might be closed at will between the two caves. They had never seen hinges, so she set her wits to work to invent a door hinge, and she made one of the first inventions man ever saw. No, she didn' t invent it at all ; she copied it. Here is the model of all the hinges in the world, the hinge in the elbow. The other day a man was digging in the sand to the east of the Jordan and came upon a tablet on which was the image of a young girl ; in her left hand she has a little chisel and in her right hand she has a large hammer. In front of her is a door hinge, and over at this end is the outline of a little elbow. That has been preserved for five thousand years to tell us how this young girl invented the first tool that the world ever 34: JOINT INVENTORS. Joint Inventors.— Where an invention is the joint product of two or more minds work- ing together application must be made by all the parties who contribute to the invention. It is not necessary to make joint inventors, that one should produce or invent a distinct part of a machine, a second, another distinct part, because, if this is the case and the distinct part mentioned constitutes an operative device, each must apply for a patent on his own invention, but if there is a joint contribution, that is to say, if one brings, for instance, the general idea, another contributes certain improved de- tails and they thus work together, one suggest- ing and another improving, they must join as applicants or else the patent, when it issues, will be invalid. It must be understood, however, that there is a distinction between invention and skill. It is very unusual for an inventor who is not a mechanic to employ a skilled workman to carry his ideas into effect, but this does not make the mechanic an inventor. 'Not infre- quently, a skillful mechanic who is in the em- ploy of a great inventor and really does good work, will make the statement, which is given more or less credence, that he is the real in- ventor of such and such a thing. The inventor is not supposed to be capable of doing all things and he has an undoubted right to obtain the WOKKMAN AS INVENTOB. 35 best skill obtainable to carry out his ideas ; that is to say, he will usually get a skilled draughtsman to give his ideas good mechanical shape, and his machine, if it be a machine, suitable design. He will also get good mechan- ics to make the parts, assemble them and make such changes as may suggest themselves to their practical minds, but notwithstanding the fact that the work may be very skillful, still, so long as the inventor brings the ideas to the workman, his invention is not thereby impaired and he has a perfect right to apply for and ob- tain a valid patent. If, however, the workman by his skill con- tributes to the real substance of the invention, as a whole or only as to part, and he carries into effect ideas not thought of by his employer, he must take out the patent himself in the one case or be joined as an applicant in the other. In this case not much skill is exercised, but in- vention. If the patent is to issue to one other than the inventor or to the inventor and some other person not an inventor, this must be ef- fected by a proper assignment. Persons employed to do skilled work have a right on their own time to carry into effect in- dependent inventions, but their ideas must be entirely independent from those of their em- ployers, and must be such improvements or must embrace such changes of mechanism as 36 EMPLOYEE AND EMPLOYEE. would not suggest themselves to an ordinary- skilled mechanic. If the suggestions of the mechanic really constitute the complete ma- chine, and the one posing as the inventor merely suggests that he would like to do certain things, without specifying means by which the result is obtained, and the mechanic's ideas are shaped and made to accomplish the desired result, then the mechanic is the inventor. Employer and Employee.— One has the right to hire a person for the purpose of in- venting, but in such case the employee must sign any application and the patent to issue legally to the employer must be duly assigned to him. If the employee, while in the general employ of the employer, makes an invention on his own time and with his own materials, he has the legal right to the invention and his em- ployer cannot interfere with this invention. If, on the other hand, the employee has made an invention on his employer's time and has used his employer' s materials, in such case, the em- ployee is still the inventor, but the employer has an implied license, not transferable, which a court of competent jurisdiction will enforce and which will give the employer the right to the use of the invention in his business. This implied license, as above remarked, is not transferable and if the employer is a cor- poration, the license is extinguished by the dis- DECEASED INVENTOR. 37 solution of the corporation. It will be seen, then, that the employee, in snch a case, has a perfect right to make any use of the invention he sees fit. He can sell it, lease it or do any act that any inventor and patent owner might do, but he cannot deprive his employer of the rights of a licensee. A Deceased Inventor.— If a person makes an invention and dies before making an appli- cation for a patent, or before the application is completed, the application can be made or prosecuted by the executor or administrator. If the deceased leaves no will, the right to loatent will go to his legal representatives. Patent Office Employees. — Persons in the employ of the Patent Office are barred from procuring patents while in such employment, although an employee may properly obtain a patent after he has left the Patent Office. CHAPTER YII. COI^rCEKN'ING PATENTABILITY. What Constitutes Invention.— The statute requires tliat in order to obtain a patent one must invent or discover something new and use- ful. The popular definition of the word inven- tion is the contriving or bringing out of some- thing which did not before exist ; but the statute requires more than this. Any fairiy resourceful mechanic, such as a machinist, a carpenter, or other artisan, is capa- ble of creating something which did not before exist, because the exigencies of his work re- quire it. One will scarcely find two building exactly alike. Two machinists will hardly do their work in the same way in bringing forth a well-known machine, and so on through the whole realm of mechanics. The workman who has had considerable ex- perience has sufficient skill to enable him to meet the ordinary requirements of his trade and to depart from existing models to a certain ex- tent, but he is not called upon to really create DOUBLE USE. 39 or invent anything ; that is to say, he is not re- quired to use his inventive faculty to put to- gether things in such essentially new ways as to accomplish different results from those here- tofore obtained, or to combine things so that they will have functional differences from things already combined. The real distinction between invention and mere skill is that one is produced by original thought, while mere skill utilizes the discoveries of others, either by imitation or by employing good judgment in selecting and combining them, or in applying them to prac- tical results. If a person uses his inventive faculty, and really gives to the world or to the public some- thing new and useful, something in which the result obtained is real and tangible, he has done the public a service and has given a quid pro quo for the patent which will issue to him, but it is not the intent of the statute to offer a reward merely for skill, no matter how great its order. It frequently happens that a person will dis- cover a new use for an old thing, but this does not amount to invention, even though the result is very important, unless some change is re- quired to adapt the thing to the new use. This is what the Patent Office and courts term Double Use, and it follows that if a person merely dis- covers that a tool previously used for certain ]>iirposes can be used to advantage for another 40 ISSUED PATENTS. purpose lie has not made an invention, but sim- ply has enlarged the use of a well-known object. Moreover, the invention which he makes must Ibe one that is not obvious ; that is to say, that is not the result of mere skill. Issued patents are open to the public and any subsequent inventor is presumed to know oi their existence, even though they may cover subject-matter which has never been put in practical use. The issued patents may cover a machine which has never been made, still the fact that the drawings and description of the invention are on file at the Patent Office is a notice to any subsequent inventor, as if the machine had really been built. If, then, the new invention is one that would readily suggest itself to a person of ordinary skill, after a perusal and examination of existing patents, then the man cannot be held to have invented anything, but he has merely followed out obvious sugges- tions. The application of an old process to manu- facture an article to which it had never before been applied is not a patentable invention, nor does the application of old machinery to a new use involve invention. Aggregations of well- known things do not form inventions within the meaning of the statute. If stove hooks, socket wrenches and screw-drivers be old, as we know they are, then if one provides a single tool hav- AGGEEGATIONS. 41 ing a liook at one end and the v/ ell-known form of a screw- driver of the ordinary kind at the other end and a wrench socket at some con- venient place on the handle, he has invented nothing, even though such combination never before existed. He has merely aggregated and collected a series of well-known things. This illustration serves well to show the difference between the combination of old parts to produce a new result and an aggregation. It will be noticed in the aggregation referred to that the stove hook serves simply as a stove hook, the screw-driver as a screw-driver, and the wrench as a wrench. J^either part cooperates with the other to accomplish any result, but in a legit- imate combination, the several x)arts of the com- bination coact to produce a certain definite and tangible result. It sometimes happens that one part may have an independent function, but it may also have a combined function with the other parts or elements of the combination. In such case a claim may be made for the part having the in- dependent function, and another claim for the part in combination with the other elements, with which it coacts. The examples given of what does not consti- tute invention will perhaps be as good a guide as any as to what does constitute invention. It is a general principle that mere changes in the 42 DISCOVEBY AND INVENTION DEFINED. size or form of a thing or the number of articles composing a whole, or the degree of curvature or other dimension, as the shape of a dye, does not amount to invention. Neither does merely the substituting of one material for another. Supposing wooden door knobs to be common, it would not involve invention to substitute porcelain for wood, even though porcelain had never before been used for a door knob. If the porcelain were a new composition, then the inventor could cover it as a composition of matter without regard to the use to which the composition may be put. Discovery and Invention Defined.— Within the meaning of the Patent Law, a patent- able invention must possess a certain amount of utility, and must have some new feature, or pro- duce some new result, not obvious from any source of information, which makes the inven- tion new or else gives it a function or use not heretofore existing. A patentable discovery consists in first find- ing some principle or law of nature within the range of patentable subject-matter and reducing the same to practice. Tests of Patentable Novelty.— As pre- viously stated, probably one of the best tests of patentable novelty is this : Is there anything existing in the art which would naturally sug- gest to a skilled mechanic the alleged inven- TESTS OF PATENTABLE NOVELTY. 43 tion ? If there is an essential change in func- tion, it would be held as generally true that there is invention. If the change of function is not essentially obvious, but the result achieved is important ; for example, if it is a machine and it makes a given article at a less cost or makes better articles or has essentially better results in any way, this fact of betterment is significant and it is almost conclusive evidence that the new matter involves invention. Or as one judge says: ''While it is true that the utility of a machine, instrument or contrivance, as shown by the generaL public demand for it when made known, is not conclusive evidence of novelty and invention, it is, nevertheless, highly persuasive in that direction, and in the absence of pretty conclusive evidence to the con- trary, will generally exercise controlling in- fluence." A decided advance in the art or in the result, even though accomplished by means quite sim- ilar to something heretofore existing, is ordi- narily good evidence of invention. Some Inventions not Patentable.— It is possible for one to use great ingenuity and in- vent something which has never before existed and which is useful and valuable, and yet may not come within the purview of the patent law. It is not unusual for a person to invent a certain advertising scheme which is an excellent thing, 44 INVENTIONS NOT PATENTABLE. wMcli enables tlie advertiser to do better adver- tising than has been done before and yet the scheme is not patentable because it cannot be put in such tangible shape as to come under the head of a machine, a manufacture, an art or process, or a composition of matter. Many patents are taken out on advertising devices and some of them are very remunera- tive. But there is a difference between a de- vice and a scheme or method of advertising. The latter is not patentable. It is a mental process pure and simple. And so one may have a new business method or scheme which is ever so ingenious, which is valuable, but which can- not be put in such shape as to be patentable or does not come under the classification of patent- able subjects. Likewise, one may have a method of bookkeeping, which would render the work easier or more accurate, but this comes under the head of unpatentable and intangible things. If the invention is in a book and its peculiar arrangement, the book may be patented, but not the method. When one has evolved an idea along these lines all he can do is to get what he can out of it, before other people discover the scheme, but he cannot invoke the protection of the law. Inventions which are against public policy are not patentable, and while a hard and fast rule cannot be laid down as to what inventions INVENTIONS NOT PATENTABLE. 45 are against public policy, still the inventor usually knows whether or not such is the case. It has been held that slot machines used merely for gambling purposes are inventions of this class and as such are not patentable. 46 CHAPTER YIII. PEIOR USE — PUBLIC USE— EXPERIMENTS. The statute provides tliat an invention to be patentable mnst not be known or used before applicant's invention or discovery thereof, or patented or described in any printed publica- tion in any country before his discovery or invention thereof, or more than two years prior to the application, or in public use or on sale in the United States for more than two years prior to the application for the patent, unless the same is proved to have been abandoned. The statute is not quoted, but only its substance given. It is provided further by statute that it is a good defense for an action of infringement of the patent to show that the patentee was not the original and first inventor or discoverer of the invention patented. Such prior use means use by another than the inventor, the knowl- edge and use occurring prior to the patentee's invention. PUBLIC USE. 47 The use or knowledge of the invention abroad will not affect the