took Publishers AAIN STREET FALO 3, N. Y. r *> 1811 UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY " ,. . ."; **# PATENT LAWS AND PRACTICE OF OBTAINING LETTERS PATENT FOR INVENTIONS IN THE UNITED STATES AND FOREIGN COUNTRIES; INCLUDING COPY-RIGHT AND TRADE-MARK LAWS. BY CHARLES SIDNEY WHITMAN, Ml OF THE BAR Of THE SUPREME COURT OF THE UNITED STATES. 'The end of our foundation is the enlarging of the bounds of human empire to the effecting of all things possible." LORD BACON : New Atlantis. WASHINGTON : W. H & O. H. MORRISON. 1871. Entered according to act of Congress, in the year 1870, by W. H. & O. H. MORRISON, In the Office of the Librarian of Congress, at Washington, D. C, r CAST ON PRESS OF SHERMAN It CO., PHILADELPHIA PEEFACE. The compiler of the following pages lays no claim to the authorship of an original work upon the law of patents. Entertaining the opinion that the speculations even of the most learned are of but little importance to those who are seeking to know simply what the law is, and actuated by a desire to render the work strictly authoritative and practical, he has adopted, almost exclusively, the conclusions of those whose opinions have been dignified with the mantle of official authority. The work is the result of an endeavor to compile from various sources, some of which are not easily accessible, reli- able and practical information, which the author has found to be indispensable in the course of his own professional prac- tice, and which he believes will be useful to others. Although intended to convey practical information to inventors, patentees, manufacturers, and others who have occasion to inform themselves particularly concerning patent matters, it is believed that the work will be found useful to members of the legal profession generally, since it sets forth the state of the law resulting from decisions more recent than those of any other work published up to the present time, and contains the exact text of the late act of Congress, by which the entire legislation in respect to patents and copy- 755621 iv PREFACE. right was repealed, and a more complete and carefully-drawn law substituted. In the preparation of Part II the author has freely availed himself of the publications of the British Patent Office and the standard European authorities. In preparing those portions of the work which relate to the practice of obtaining patents in the United States, he has been greatly indebted to the labors of the late able Commissioner of Patents, Mr. S. S. FISHER, many of whose decisions he has given in extenso. The author is also under obligations to other officers of the Patent Office, as well as to members of the bench and bar of the District of Columbia, for valuable assistance and timely counsel, which he desires most sincerely to acknow- ledge. CHARLES S. WHITMAN. 529 SEVENTH STREET, WASHINGTON, D. C., January 4, 1871. TABLE OF CONTENTS. PATENT, COPYBIGHT, AND TRADE-MARK LAWS OF THE UNITED STATES. CHAPTER I. Of organization, duties, and general provisions 1 CHAPTER II, Of patents 7 CHAPTER III. Of design patents 34 CHAPTER IV. Of trade-marks.. 36 CHAPTER V. Of copyrights 41 CHAPTER VI. Repealing clause and schedule 52 II. SYNOPSIS OF THE LAWS AND PRACTICE OF LETTEES PATENT FOR INVENTION IN THE PRINCIPAL FOREIGN STATES. CHAPTER I. Argentine Republic .................................................................. 59' CHAPTER II. Austria ............. ..................................................................... 61 v VI TABLE OF CONTENTS. CHAPTER III. The Grand Duchy of Baden and petty States of Germany 67 CHAPTER IV. Bavaria , 68 CHAPTER V. Belgium 71 CHAPTER, VI. Great Britain and Ireland 77 CHAPTER VII. Analysis of the British patent laws 84 CHAPTER VIII. Forms and proceedings to obtain a patent, (Great Britain) 102 CHAPTER IX. Patent laws of the Dominion of Canada 112 CHAPTER X. Who may obtain patents, (Canada) 115 CHAPTER XI. Conditions and formalities, (Canada) 117 CHAPTER XII. Contents, duration, surrender, reissue of patents, and disclaimers 120 CHAPTER XIII. Assignment and infringement of patents, (Canada) 123 CHAPTER XIV. Nullity, impeachment, and voidance of patents, (Canada) 126 CHAPTER XV. Patents issued under former laws, (Canada) 128 CHAPTER XVI. Tariff of fees, (Canada) < 129 TABLE OF CONTENTS. Vll CHAPTER XVII. Miscellaneous provisions, (Canada) ^ 131 CHAPTER XVIII. Rales, regulations, and forms of the Canadian Patent Office 137 CHAPTER XIX. Cape of Good Hope. 147 CHAPTER XX. Ceylon 149 CHAPTER XXI. Cuba, Porto Rico, and the Philippine Islands 150 CHAPTER XXII. France 151 CHAPTER XXIII. Greece 156 CHAPTER XXIV. British Guiana 156 CHAPTER XXV. India 158 CHAPTER XXVI. Italy 164 CHAPTER XXVII. Jamaica 169 CHAPTER XXVIII. Mauritius and Dependencies 171 CHAPTER XXIX. Mexico 172 CHAPTER XXX. The Netherlands ... ,. 173 Vlll TABLE OF CONTENTS. CHAPTER XXXI. Newfoundland 175 CHAPTER XXXII. New South Wales 177 CHAPTER XXXIII. New Zealand. 178 CHAPTER XXXIV. Portugal 179 CHAPTER XXXV. Prussia 181 CHAPTER XXXVI. Queensland 183 CHAPTER XXXVII. Russia 183 CHAPTER XXXVIII. Saxony ; 186 CHAPTER XXXIX. Spain 188 CHAPTER XL. Sweden 191 CHAPTER XLI. Tasmania 193 CHAPTER XLII. Trinidad ,... 195 CHAPTER XLIII. Victoria, (Australia,) 195 CHAPTER XLIV. West Indies, (Dutch,) 200 CHAPTER XLV. Wurtemberg...... 201 TABLE OF CONTENTS. IX III. PBOCEDTTBE IN THE UNITED STATES PATENT OFFICE, WITH FOBMS, NOTES, AND AUTHORITIES. CHAPTER I. Caveat ........................ . .................................. .................... 207 CHAPTER II. Subject-matter of the application ................................................ 218 CHAPTER III. Requisites of the application ......................................... ........... 259 CHAPTER IV. The application and petition ...................................................... 270 CHAPTER V. The specification .......................................... ~ ........ ~ ................ 283 CHAPTER VI. Drawings and model ........ w ....................................................... 308 CHAPTER VII. Oath of applicant ..................................................................... 317 CHAPTER VIII. Classification of subjects of invention .......................................... 324 CHAPTER IX. Examination and amendment ..................................................... 329 CHAPTER X. Renewal of an application upon which the final fee has not been paid.. 343 CHAPTER XI. Renewal of withdrawn and rejected applications filed prior to July 8, 1870.... .. 345 X TABLE OF CONTENTS. CHAPTER XII. Appeal to examiners-in-chief 349 CHAPTER XIII. Appeal to the Commissioner in person 365 CHAPTER XIV. Appeal to the supreme court of the District of Columbia 377 CHAPTER XV. Mandamus to the Commissioner 409 CHAPTER XVI. Designs 427 CHAPTER XVII. Trade-marks 446 CHAPTER XVIII. Interference 450 CHAPTER XIX. Affidavits and depositions 494 CHAPTER XX. f Evidence 505 CHAPTER XXI. Reissues 551 CHAPTER XXII. Extension 584 CHAPTER XXIII. Disclaimer 609 CHAPTER XXIV. The patent 616 CHAPTER XXV. Patent Office fees.... .. 617 TABLE OF CONTENTS. XI CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. CHAPTER I. Assignments ........................................................................... 623 CHAPTER II. Licenses and contracts ............................................................... 634 CHAPTER III. British assignments ................................................................... 642 CHAPTER IV. French assignments and powers of attorney ................................... 655 CHAPTER V. Assignment of copyright ............................................................ 660 CHAPTER VI. Forms of procedure in patent causes ............................................ 662 I. PATENT, COPY-RIGHT, AND TRADE-MARK LAWS REVISED, CONSOLIDATED, AND AMENDED BY THE ACT APPROVED JUl^ 8, 1870. PATENT, COPYRIGHT, AND TRADE-MARK LAWS THE UNITED STATES. THE PATENT OFFICE. I. Of Organization, Duties, and General Provisions. SEC. 1. Patent Office established. 2. Officers and employees. 3. Additional employees. 4. Salaries. 5. Oath of Office. 6. Official bonds. 7. Duties of Commissioner. 8. Franking privilege. 9. Annual report. 10. Duties of examiners-in-chief. 11. Acting Commissioner. SEC. 12. Seal of office. 13. Display of models. 14. Restoring models. 15. Library. 16. Employees not to acquire inter- . est in patents. 17. Refusal to recognize agent. 18. Printing papers. 19. Power of the Commissioner to make rules. 20. Printing patents, drawings, &c. 1. There shall be attached to the Depart- Patent pmce es - , . i tablished. meat o the Interior the office, heretofore -r-r-r 4 July, 1836, eh. established, known as the Patent Office, 35 l'^l' T v -^ " wherein all records, books, models, draw- 108 >2 2 > y - 9 >p> 3 95- ings, specifications, and other papers and things pertaining to patents shall be safely kept and preserved. 2. The officers and employees of said office officers and em- shall continue to be one Commissioner of Patents, one Assistant Commissioner, and 357,2 Vv'. sfp-'nai 1 PATENT, COPYRIGHT, AND TRADE-MARK LAWS ^ 1 n t consent of the Senate; one chief clerk, one 47, % 1, 3, v. 9, pp. _ ^ ' 23 3'M 3 ar 18,51 ch examiner in charge of interferences, twenty- 32 3fAug.,i852, G eh.' two principal examiners, twenty-two first "i'lra'/.'is^'c^.^ssi^ant examiners, twenty-two second as- log^ii 3 ' v< 10) pp ' sistant examiners, one librarian, one machin- 175,^10,' vfio, C p'. ist, five clerks of class four, six clerks of is Aug.,i856, ch. class three, fifty clerks of class two, forty- 129, g 9, v. 11, p. 91. ,. 1 -i i? i -i 2 Mar., 1861, ch. five clerks of class one, and one messenger 88,gg2,7,v.l2,pp. . \ Vni 246, 247. and purchasing clerk, all of whom shall be 29 Mar., 1867, eh. \ ,-* 17, g i, v. is, p. 10. appointed by the secretary of the Interior, 121,21, v!io,p.'293. upon nomination of the Commissioner of Patents. Additi io n eL em " ^' l ^^ ie Secretary of the Interior may also ~ s Mar., 1869, ch. appoint, upon like nomination, such addi- i2i,?i,v.i5,p.293.^ ona | QJepj^g o f c l ass es two and one, and of lower grades, copyists of drawings, female copyists, skilled laborers, laborers, and watch- men, as may be from time to time appropri- ated for by Congress. salaries. 4. The annual salaries of the officers and O f the p a tent Oflice shall be as 31 Aug., 1852, ch. f n ll ftw q . 108, | l,v. 10, p. 95. IC 97?if 1,3; v 8 10, p: Of the Commissioner of Patents, four thou- 2C 22 Apr., 1854, ch. sand five hundred dollars. 276.^ lf 2> v ' 10> p ' Of the Assistant Commissioner, three thou- 3 Mar., 1855, ch. T T -i-i 175, gg 10, 25, v. 10, sand dollars. PP 2 Mar., 1861, ch. Of the examiners-m-chicf, three thousand 88, 24, v. 12, p. 247. , ,, , 3 Mar., 1869, ch. dollars each. 287i 293! Of the chief clerk, two thousand five hun- dred dollars. OF THE UNITED STATES. 3 Of the examiner in charge of interferences, two thousand five hundred dollars. Of the principal examiners, two thousand five hundred dollars each. Of the first assistant examiners, one thou- sand eight hundred dollars each. Of the second assistant examiners, one thousand six hundred each. Of the librarian, one thousand eight hun- dred dollars. Of the machinist, one thousand six hun- dred dollars. Of the clerks of class four, one thousand eight hundred dollars each. Of the clerks of class three, one thousand six hundred dollars each. Of the clerks of class two, one thousand four hundred dollars each. Of the clerks of class one, one thousand two hundred dollars each. Of the messenger and purchasing clerk, one thousand dollars. Of laborers and watchmen, seven hundred and twenty dollars each. Of the additional clerks, copyists of draw- ings, female copyists, and skilled laborers, such rates as may be fixed by the acts mak- ing appropriations for them. 5. All officers and employees of the Patent oath of office. Office shall, before entering upon their duties, 4 July, isae, ch. make oath or affirmation truly and faithfully to execute the trusts committed to them. 4 PATENT, COPYRIGHT, AND TRADE-MARK LAWS official bonds. 6. The Commissioner and chief clerk, be- 357 < a l 3 y v 1 'f 3G 'ns'^ ore en tering upon their duties, shall sever- io8 1 A i ug v iifp'os' a ^y &i ve bond, w ith sureties, to the Treasurer of the United States, the former in the sum often thousand dollars, and the latter in the sum of five thousand dollars, conditioned for the faithful discharge of their duties, and that they will render to the proper officers of the Treasury a true account of all money received by virtue of their office. Duties of com- 7. It shall be the duty of the Commissioner, missioner. ^ ' 4juiv 1836 eh" un( ^ er the direction of the Secretary of the 35 3'!iar V 'i849 "h" Interior, to superintend or perform all the IPS, 2, v. o, P . 395. d u ti es respecting the granting and issuing 254. Wc of patents which herein are, or may here- of., 35. a f ter jj^ ky j aw Ji rec ted to be done; and he shall have charge of all books, records, papers, models, machines, and other- things belonging to said office. Franking privi- 8. The Commissioner may send and re- lege. _ * . m 4 jniy 1836 eh ce i ye bj mail, free of postage, letters, printed 35 27 1 May; p i848', matter anc ^ packages relating to the business m* 7> 4) ^ 9 ' p 'of his office, including Patent Office reports. Annual Report., 9. The Commissioner shall lay before Con- p'i95'S ress 5 m ^ e m o n th of January, annually, a p.'^! report, giving a detailed statement of all i5 ) C p; mone y 8 received for patents, for copies of records or drawings, or from any other source whatever; a detailed statement of all expend- itures for contingent and miscellaneous ex- penses; a list of all patents which were granted during the preceding year, designa- OF THE UNITED STATES. i ting under proper heads the subjects of such patents; an alphabetical list of the patentees, with their places of residence; a list of all patents which have been extended during the year; and such other information of the condition of the Patent Office as may be useful to Congress or the public. 10. The examiners-in-chief shall be per- Duties of , ji-ii IT -i iners-in-chief. sons of competent legal knowledge and sci 2 Mar., 1861, ch. entmc ability, whose duty it shall be, on the ss, 2 2, v. 12, p. 2*6. written petition of the appellant, to revise and determine upon the validity of the ad- verse decisions of examiners upon applica- tions for patents and for reissues of patents and in interference cases; and, when required by the Commissioner, they shall hear and report upon claims for extensions, and per- form such other like duties as he may assign them. 11. In case of the death, resignation, ab- Acting commis- 70 ' sioner. sence, or sickness of the Commissioner, his ., . . T-- & July, louo, duties shall devolve upon the Assistant Com- h j 6 | 2 7 - 2 3 . v - 1(5 > inissioner until a successor shall be ap- l 2 wood'.& 8 Min., pointed or such absence or sickness shall ^ H ow., 41. cease. 12. The Commissioner shall cause a seal seal of office. to be provided for said office, with such de- 35 * Juto g 836 '^' vice as. the President may approve, with 4 ' Mc ' Lea p 371 which all records or papers issued from said \f$^^ office, to be used in evidence, shall be authen- ticated. 13. Thp- Commissioner shall cause to be Di8play 6 f mod ' 1* 6 PATENT, COPYRIGHT, AND TRADE-MARK LAWS 35 * July, 1836^ ch. classified and arranged in suitable cases, in ^ the rooms and galleries provided for that purpose, the models, specimens of composi- tion, fabrics, manufactures, works of art, and designs, which have been or shall be depos- ited in said office; and said rooms and gal- leries shall be kept open during suitable hours for public inspection. Restoring mod- 14. The Commissioner may restore to the els. 2 Mar lad ch re8 P ec tive applicants such of the models be- es, 5, v.i2, p-247. i on g m g to rejected applications as he shall not think necessary to be preserved, or he may sell or otherwise dispose of them after the application has been finally rejected for one year, paying the proceeds into the Treas- ury, as other patent moneys are directed to be paid. Library. 15. There shall be purchased, for the use 357, ^w,' 1 vf 6 5, c p'. ^ Sa ^ ffi ce ? a library of such scientific works and periodicals, both foreign and American, as may aid the officers in the dis- charge of their duties, not exceeding the amount annually appropriated by Congress for that purpose. Employees not to 16. All officers and employees of the Pat- acquire interest s\m i -111 in patents. ent Omce shall be incapable, during the pe- 357 J g U 2 y v 5 836 'u8' r ^ 0< ^ f r w hi c h th e . v 8na ll hold their appoint- ments, to acquire or take, directly or indi- rectly, except by inheritance or bequest, any right or interest in any patent issued by said office. 17. For gross misconduct the Commis- OF THE UNITED STATES. 7 sioner may refuse to recognize any person as 2 Mar.,i86i, ch. J . . 88, g 8, v. 12, p. 247. a patent agent, either generally or in any i* HOW., 575. particular case; but the reasons for such refusal shall be duly recorded and be subject to the approval of the Secretary of the Inte- rior. 18. The Commissioner may require all priptin 8 papers. papers filed in the Patent Office, if not cor- 8 ** T v >^ rectly, legibly, and clearly written, to be printed at the cost of the party filing them. 19. The Commissioner, subject to the ap- Power, of com- * * missioner to proval of the Secretary of the Interior, may make rule9 - from time to time establish rules and regu- 6pet>> 218 - lations, not inconsistent with law, for the conduct of proceedings in the Patent Office. 20. The Commissioner may print or cause Printing patents, * drawings, v- 12> p< same, and copies of the claims of current issues, and copies of such laws, decisions, rules, regulations, and circulars as may be necessary for the information of the public. II. Of Patents. SEC. 21. Issuing, signing, and recording patents. 22. Contents and grant of patents. 23. Date of patents. 24. What may be patented. 25. Foreign inventions may be pat- ented. 28. Description and specification. SEC. 27. Drawings. 28. Specimen of ingredients. 29. Model. 30. Oath of applicant ; before whom taken. 31. Examination of application. 32. Time to complete and prosecute applications. PATENT, COPYRIGHT, AND TRADE-MARK LAWS SEC. 33. Patents may issue to assignees. 34. Patents may issue to legal rep- resentatives. 35. Renewed application in lapsed, withdrawn, andrejectedcases. 36. Assignments, grants, and con- veyances. 37. Right of purchasers before pat- ent. 38. Patented articles to be marked. 39. False marking. 40. Caveats. 41. References upon rejection. 42. Interferences. 43. Affidavits and depositions. 44. Duty of clerk of court. 45. Fees and rights of witnesses. 46. Appeal to examiners-in-chief. 47. Appeal to Commissioner. 48. Appeal to Supreme Court of Dis- trict of Columbia. 49. When to court, duty of appel- lant. 50. Duty of court. 51. Duty of appellant and Commis- sioner. 52. Bill in equity. 53. Reissues. SEC. 54. Disclaimers. 55. Actions ; where cognizable. 56. Appeal to Supreme Court of United States. 57. Copies of records and foreign patents. 58. Proceedings in equity in inter- fering patents. 59. Damages for infringement. 60. Actions for infringement prior to disclaimer. 61. Notice of special matter. 62. Prior knowledge or use in for- eign country. 63. Extension of patent; duty of applicant. 64: Notice of application to be pub- lished. 65. Case to be referred to exam- iner. 66. Hearing of case; granting of extension. 67. Extension ; how far for the ben- efit of assignees. 68. Patent fees. 69. Patent fees; to whom paid; who to disburse money. 70. Money paid by mistake. issuing, signing, 21. All patents shall be issued in the name patents. _ of the United States of America, under the 357 J ? U 5 ly v 5 836 'i c i8' sea l of the Patent Office, and shall be signed 108 f2 ar v 9 49 '395' ky tne Secretary of the Interior and coun- tersigned by the Commissioner, and they shall be recorded, together with the specifi- cation, in said office, in books to be kept for that purpose. OF THE UNITED STATES. 9 22. Every patent shall contain a short title contents and ..,,. . ,. grant of pat- or description of the invention or discovery, ents. correctly indicating its nature and design, and 35 * ^/'^'f' ^ a grant to the patentee, his heirs or assigns, "3'^., 1837> ch . for the term of seventeen years, of the exclu- 45 ^^^;^; 1 ^; sive right to make, use, and vend the said 88 ' 10 ' v ; 12 ' p - 240 - invention or discoverv throughout the United 4oh!o,3ia ' " 7 Pet 319 States and the Territories thereof, referring iswend.,395. t '^ , e ii ' .' i ^ ? 2 McLean, 178. to the specification for the particulars thereof ; a McLean, 297. . f 2 Blatchf., 23. and a copy of said specifications and of the 2 wash., 126. r no, 120. any new and useful improvement thereof, 3 Mar., 1339, ch, ll J V 4.1. ' 88, i, v. 5, p. 354. not known or used by others in this country, 29 Aug., 1342, i ., , . . , eh. 263, g 3, v. 6, and not patented or described in any printed PP- 543, 544. . . . . 2 Mar -> 1861 > ch - publication in this or any foreign country, ^ g 11, v. 12, p before his invention or discovery thereof, and Pet c c 341> not in public use or on sale for more than two ^ wash, 12. years prior to his application, unless the same L^ow'., 2 ^. is proved to have been abandoned, may, upon iG^uT'4 8 o 96 ' payment of the craty required by law, and 10 PATENT, COPYRIGHT, AND TRADE-MARK LAWS H low.; 175. other due proceedings had, obtain a patent 2Wall.,'jr.,3GO. tV,p rp f nT , 3 Sum., 518. lut or ' Brightly 99. 4 McLean, 180, 461. 4 Wash., 52. 1 Blatchf., 248, 463, 494. 1 Wash., 171. 3 Wash., 198. 1 Gall., 439, 479. 2 Gall., 53. Foreign inven- 25. ~No person shall be debarred from re- tions may be . . . patented. ceivmg a patent for his invention or discov- 357 J g u s y 'v 18 s 6 ' pp' er ^' nor 8 kaU an y P ate nt be declared invalid 12 3 > M 2 a 1 r. issg ch ^ v reason f its having been first patented or ss, 6, v.5, P- 354- caused to be patented in a foreign country; 80 5 McLean> 78> provided the same shall not have been intro- iow., 112. duced i n p u blic use in the United States for more than two years prior to the applica- tion, and that the patent shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than seventeen years. Description and 26. Before any inventor or discoverer shall specification. . //?! , j- ' 4 July 1836 ch receive a patent tor his invention or discov- 357, g e, y. 5, p. 119. erv ^ kg ghaji make application therefor, in Pet.?c. c! 9 4 8 6i. writing, to the Commissioner, and shall file 1 Mass., 187, 476. . ,-, -r> , r\^r -^ i . 2 Mass., 118. in the latent Office a written description 4 Wash., 14, 73. - , i Paine, 207, 450. of the same, and of the manner and process 7 Wheat., 434. n . -,. i i story, 285, 292. of making, constructing, compounding, and 3 McLean, 260, & ' 6 ' 5" 441.444.447. using it, in such full, clear, concise, and exact 3Q 3 wood. &Min., terms as to enable any person skilled in the ' ar * or 8C i ence to which it appertains, or with 19 ' 267 ' which it is most nearly connected, to make, sbgf' construct, compound, and use the same ; and, 24How!*i68. i n case f a machine, he shall explain the 22 S How > ., 4 i39. principle thereof, and the best mode in which i curt?, 26'3? 78 ' he has contemplated applying that principle, so as to distinguish it from other inventions; OF THE UNITED STATES. 11 and lie shall particularly point out and dis- tinctly claim the part, improvement, or com- bination which he claims as his invention or discovery; and said specification and claim shall be signed by the inventor and attested by two witnesses, 27. "When the nature of the case admits Drawings. of drawings, the applicant shall furnish one * J^y. 1 5 836 ' 1 c j^- copy, signed by the inventor or his attorney 45 3 **{. ai ^ ^w*^; in fact and attested by two witnesses, which 4 Ma! , s 9 shall be filed in the Patent Ofiice ; and a copy | sJ$ a ' of said drawings, to be furnished by the Pat- ent Office, shall be attached to the patent as part of the specification. 28. When the invention or discovery is specimen of in- . .' , ,. gredients. of a composition of matter, the applicant, 4 Jul 1836 ch if required by the Commissioner, shall fur- ^7, e,' v. i, P . nish specimens of ingredients and of the com- position, sufficient in quantity for the purpose of experiment. 29. In all cases which admit of representa- Model - tion by model, the applicant, if required byj^.i^r.^m the Commissioner, shall furnish one of con- 6 HOW., 435. venient size to exhibit advantageously the 2o a How., 409. several parts of his invention or discovery. 30. The applicant shall make oath or af- ^f^^wS firmation that he does verily believe himself taken - ,1,1 -i j r , T 4 Julv, 183G, ch. to be the original and first inventor or dis- 357, g e.V. 5. P . no. n . , i . * 3 Mar., 1837, ch. coverer of the art, machine, manufacture, 45, 13, v. 5, p. 194. ,, i-ii 29 Aug., 1842, Ch. composition, or improvement for which he 253, 34, v. 5, p. 544. solicits a patent; that he does not know, and \ H a dw. 4 48i does not believe, that the same was ever be- 3 Fi^esi. 12 PATENT, COPYRIGHT, AND TRADE-MARK LAWS fore known or used ; and shall state of what country he is a citizen. And said oath or affirmation may be made before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any min- ister, charge d'affaires, consul, or commercial agent holding com*mission under the Gov- ernment of the United States, or before any notary public of the foreign country in which the applicant may be. Examination of 31. On the filing of any such application, - and the payment of the duty required by law, 4 July, 1836, ch. . . . 357, g 7, v. 5, pp. the Commissioner shall cause an examination 119, 120. - 2pet ]8 to be made of the alleged new invention or i waH Cl jr'' 349 discovery; and if on such examination it i Biatciif. 509. shall appear that the claimant is justly enti- tled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor. Time to complete 32. All applications for patents shall be and prosecute * applications, completed and prepared for examination 2 Fio r '' 18 io l> ch ' within two vears after the filing of the peti- oo, g L t V. LZ t pp. *> 248,249. tion, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice' shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable. 33. Patents may be granted and issued or OF THE UNITED STATES. 13 reissued to the assignee of the inventor or a Mar., 1337, eh. & . 45, 6, v. 5, p. 193. discoverer, the assignment thereof being first ' a B iatchf 509 ' entered of record in the Patent Office; but ii,43o. in such case the application for the patent s^ 11 -. 343 - shall be made and the specification sworn to by the inventor or discoverer; and also, if he be living, in case of an application for reissue. 34. When any person, having made any Patents may is- J f ? * sue to legal rep- new invention or discovery for which a patent resentatives. might have been granted, dies before a patent 3 _;J i is granted, the right of applying for and ob- 2 Fialu> 499 . taining the patent shall devolve on his execu- tor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate; or if he shall have left a will, disposing of the same, then in trust for his devisees, in as full manner and on the same terms and conditions as the same might have been claimed or enjoyed by him in his life- time; and, when the application shall be made by such legal representatives, the oath or affirmation required to be made shall be so varied in form that it can be made by them. 35. Any person who has an interest in an Renewed applies- . . * tion in lapsed, invention or discovery, whether as inventor, withdrawn, and ' ' rejected eases. discoverer, or assignee, for which a patent 2 5June,iso4,ch. was ordered to issue upon the payment of^'Ku^w^^h. the final fee, but who has failed to make 1 All payment thereof within six months from the 2 Filh'.', i! 7 ' time at which it was passed and allowed, and 3 Fish'.', 134. notice thereof was sent to the applicant or 2 14 PATENT, COPYRIGHT, AND TRADE-MARK LAWS his agent, shall have a right to make an ap- plication for a patent for such invention or discovery the same as in the case of an orig- inal application: Provided, That the second application be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent, as afore- said, was ordered to issue, prior to the issue thereof: And provided further. That when an application for a patent has been rejected or withdrawn, prior to the passage of this act, the applicant shall have six months from the date of such passage to renew his application or to file a new one; and, if he omit to do either, his application shall be held to have been abandoned. Upon the hearing of such renewed applications abandonment shall be considered as a question of fact. Assigm'ts,grants, 36. Every patent, or any interest therein, and conveyances. ,,,. .,, . 4Ju] 1836 ch shall be assignable in law, by an instrument 357, g 11, v. 5, p. j n writing; and the patentee, or his assigns a McLean, 428. or l e gal representatives, may, in like manner, iJ. Blatchf " 50> grant and convey an exclusive right under io^ow*494. 32 ' his patent to the whole or any specified part is HOW!; 294! of the United States; and said assignment, 4 Mass., 15. iiii'i 2 story, 542, 615. grant, or conveyance shall be void as against 3 Story, 131. , , ,-, 4 HOW., 711. any subsequent purchaser or mortgagee for a 15 Barb S C 315. ' valuable consideration, without notice, unless 19 How 221 j 17 HOW.',' 451! it is recorded in the Patent Office within '> 1 Fish., 327. three months from the date thereof. OF THE UNITED STATES. 15 37. Every person who may have purchased Right of J * r t . , . , ers before pat- of the inventor, or with his knowledge and ent - _ consent may have constructed, any newly-in- 88 3 -> > c ; vented or discovered machine, or other pat- ^ _ eutable article, prior to the application by i now^aig 2 . 54 ' the inventor or discoverer for a patent, or zcnrt.', &&.' sold or used one so constructed, shall have i wood. & kin. the right to use, and vend to others to be 21 HOW., 330. , * . ,, . , , -, 1 Blatchf., 250. used, the specific thing so made or purchased, without liability therefor. 38. It shall be the duty of all patentees, patented articles -t .1 111 to be marked. and their assigns and legal representatives, - , , . ,. 2 Mar., 1861, ch. and of all persons making or vending anyss, ^13, v. 12, p. patented article for or under them, to give" sFish., 249,374. sufficient notice to the public that the same is patented, either by fixing thereon the word "patented," together with the day and year the patent was granted; or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label contain- ing the like notice; and in any suit for in- fringement, by the party failing so to mark, no damages shall be recovered by the plain- tiff, except on proof that the defendant was duly notified of the infringement, and con- tinued after such notice to make, use, or vend the article so patented. 39. If any person shall, in any manner, False marking. mark upon anything made, used, or sold by 29 Aug., 1342, J Y . eh. 888, jo, Y. 8, p. him, for which he has not obtained a patent, 5 j^ _ the name or any imitation of the name of 2Curt -' 606 - 16 PATENT, COPYRIGHT, AND TRADE-MARK LAWS i Fish., 647. any person who has obtained a patent there- 3 Fish., 72. J * *. for, without the consent or such patentee or his assigns or legal representatives; or shall in any manner mark upon or affix to any Buch patented article the word "patent" or "patentee," or the words "letters patent," or any word of like import, with intent to imitate or counterfeit the mark or device of the patentee, without having the licenseyor consent of such patentee or his assigns or legal representatives; or shall in any manner mark upon or affix to any unpatented article the word "patent," or any word importing that the same is patented, for the purpose of deceiving the public, he shall be liable for every such offense to a penalty of not less than one hundred dollars, with costs; one moiety of said penalty to the person who shall sue for the same, and the o.ther to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offense may have been committed, caveats. 40. Any citizen of the United States who 4 July, isae, ch. shall have made any new invention or dis- 357, $ 8, 12, v. 6, -I n -I i PP. i-jo,i2i. covery, and shall desire further time to ma- 2 Mar., 1801, ch. J ' 247 2 9> v - 12> P-ture the same, may, on payment of the duty e McLean, 304. required by law, file in the Patent Office a .'m'' 9 ' caveat, setting forth the design thereof and of its distinguishing characteristics, and pray- ing protection of his right until he shall have matured his invention; and such caveat shall OF THE TJKITED STATES. <". 17 be filed in the confidential archives of tlie office and preserved in secrecy, and shall be operative for the term of one year from the filing thereof; and if application shall be made within the year by any other person for a patent with which such caveat would in any manner interfere, the Commissioner shall deposit the description, specification, drawings, and model of such application in like manner in the confidential archives of the office, and give notice thereof, by mail, to the person filing the caveat, who, if he would avail himself of his caveat, shall file his description, specification, drawings, and model within three months from the time of placing said notice in the post office in Wash- ington, with the usual time required for trans- mitting it to the caveator added thereto, which time shall be indorsed on the notice. And an alien shall have the privilege herein granted, if he shall have resided in the United States one year next preceding the filing of his caveat, and made oath of his intention to become a citizen. 41. Whenever, on examination, any claim References upon f ' J f -U rejection. for a patent is reiected for any reason what- - J J 4 July, 1836, ch. ever, the Commissioner shall notify the ap-^.o, v. s, PP. plicant thereof, giving him briefly the reasons for such rejection, together with such infor- mation and references as may be useful in judging of the propriety of renewing his application or of altering his specification; 2* 18 PATENT, COPYRIGHT, AND TRADE-MARK LAWS and if, after receiving such notice, the appli- cant shall persist in his claim for a patent, with or without altering his specifications, the Commissioner shall order a re-examina- tion of the case, interferences. 42. "Whenever an application is made for 4 July, 1836, ch. a patent which, in the opinion of the Com- 357, g8,' V. 5, pp. 5 . . ' . * . 120, 121. missioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And -the Commissioner may issue a patent to the party who shall be ad- judged the prior inventor, unless the adverse party shall appeal from the decision of the primary examiner, or of the board of exam- iners-in-chief, as the case may be, within ,such time, not less than twenty days, as the Commissioner shall prescribe. Affidavits and de- 43. The Commissioner may establish rules 3 M ^ or taking affidavits and depositions required 12> Y ' 5> p ' i n cases pending in the Patent Office, and i% 18 i2 C p' suc h affidavits and depositions may be taken before any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where the officer resides. Duty of eierk of 44. The clerk of any court of the United 2 Mar., 1861, ch. States, for any district or Territory wherein 88^8 1, v. 12, p. testimony is to be taken for use in any con- 355 OF THE UNITED STATES. 19 tested case pending in the Patent Office, shall, upon the application of any jfarty thereto, or his agent or attorney, issue sub- poena for any witness residing or being within said district or Territory, commanding him to appear and testify before any officer in said district or Territory authorized to take depositions and affidavits, at any time and place in the subpoena stated; and if any wit- ness, after being duly served with such sub- poena, shall neglect or refuse to appear, or, after appearing, shall refuse to testify, the judge of the court whose clerk issued the subprena may, on proof of such neglect or refusal, enforce obedience to the process, or. punish the disobedience as in other like cases. 45. Every witness duly subpoenaed and in Fees and rights of ^ _. .. witnesses. attendance shall be allowed the same fees as 2 Mar 1861 ch are allowed to witnesses attending the courts ^8 J > v - 12 > P- of the United States, but no witness shall be required to attend at any place more than forty miles from the place where the sub- poena is served upon him, nor be deemed guilty of contempt for disobeying such sub- poena, unless his fees and traveling expenses in going to, returning from, and one day's attendance at the place of examination, are paid or tendered him at the time of the ser- vice of the subpoena, nor for refusing to dis- close any secret invention or discovery made or owned by himself. 20 PATENT, COPYRIGHT, AND TRADE-MARK LAWS Appeal to exam- 46. Every applicant for a patent or the re- mers-m-chief. . " . ** 2 Mar 1861 ch 188ue f a patent, any of the claims of which lies 2> v ' 12> p- ha ve been twice rejected, and every party to 45?Tv75?p!'i93.' an interference, may appeal from the decision ch 2 . 7 i43, u g e i, v. 8 i4l f the primary examiner, or of the examiner PP. 76, 77. j n change o f interference, in such case to the board of examiners-in-chief, having once paid the fee for such appeal provided by law. Appeal to com- 47. If such party is dissatisfied with the missioner. . . J . . --decision of the exammers-in-chief, he may, 2 Mar., 1861, ch. * ' 246 2 2> v ' 12> p> on payment of the duty required by law, appeal to the Commissioner in person. Appeal to su- 48. If such party, except a party to an in- reme court of . ,. . , istrict of Co- terierence, is dissatisfied with the decision lumbia. 3 Mar 1839 ch * ^e Commissioner, he may appeal to the PP tli 10 ^ 1 ' >v ' 5 ' 8u P r eme court of the District of Columbia so Aug.,i852, ch. s ifti n o- in hano 107, 1, V.10,p.75. H1LL1U & 1U Ud - uc ' when to court; 49. When an appeal is taken to the su- iant " ' preme court of the District of Columbia, the a Mar., issg, ch. appellant shall give notice thereof to the 88, g 11, v. 5, pp. J 354, 355. Commissioner, and file in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal, specifically set forth in writing. Duty of court. 50. It shall be the duty of said court, on 35 4 July, 1836. ch. petition, to hear and determine such appeal, 12 s'Mar 1838 ch an( ^ * rev i se tbe decision appealed from in a 354 \ll' v ' 5> pp ' summary way, on the evidence produced be- ch^ io7, u i''i, 1 2 8 , 5 v!^ ore * ne Commissioner, at such early and 10, P. 75. convenient time as the court may appoint, notifying the Commissioner of the time and place of hearing; and the revision shall be OF THE UNITED STATES. 21 confined to the points set forth in the reasons of appeal. And, after hearing the case, the court shall return to the Commissioner a cer- tificate of its proceedings and decision, which shall be entered of record in the Patent Office, and govern the further proceedings in the case. But no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be 'called in question. 51. On receiving notice of the time and Duty of appellant . * -1-I/-N a pd Commis- place ot hearing such appeal, the Commis- sioner. _ sioner shall notify all parties who appear to 88 3 ^[-'^ 83 5 9 ' ch - be interested therein, in such manner as the 354 - 355 - court may prescribe. The party appealing shall lay before the court certified copies of all the original papers and evidence in the case, and the Commissioner shall furnish it with the grounds of his decision, fully set forth in writing, touching all the points in- volved by the reasons of appeal. And at the request of any party interested, or of the court, the Commissioner and the examiners may be examined under oath, in explanation of the principles of the machine or other thing for which a patent is demanded. 52. Whenever a patent on application is BUI in equity. refused, for any reason whatever, either by a Mar., 1339, ch. * 88, g 10. the Commissioner or by the supreme court 2Fish 83 - of the District of Columbia upon appeal from the Commissioner, the applicant may have 22 PATENT, COPYRIGHT, AND TRADE-MARK LAWS remedy by bill in equity; and the court hav- ing cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, accord- ing to law, to receive a patent for his inven- tion, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent, on the applicant filing in the Patent Office a copy of the adjudication, and otherwise com- plying with the requisitions of law. And in all cases where there is no opposing party a copy of the bill shall be served on the Com- missioner, and all expenses of the proceed- ing shall be paid by the applicant, whether the final decision is in his favor or not. Reissues. 53. Whenever any patent is inoperative or 4 July, isse, eh. invalid, by reason of a defective or insuffi- 357, 13, v. 5, p. 122. . . ,. , ,, , 3 Mar., 1837, ch. cient specification, or by reason ot the pat- 45, g 8, v. 5, p. 193. i I- A - J. entee claiming as his own invention or dis- 6 Pet,, 242. i4 P pet 3 4G2 covery more than he had a right to claim as altor^'m'voa new J if the error has arisen by inadvertence, 4 1" w n> 402 8 688 acc ident, or mistake, and without any fraud- 220? H w '' L12> ulent or deceptive intention, the Commis- "w^odl'&Min., 8 i ner shall, on the surrender of such patent 12 i'wood.&Min., an( l the payment of the duty required by 26 i'B?atchf.,i6n. law, cause a new patent for the same inven- i38. W d ' &Min ''tion, and in accordance with the corrected 2 Wall., jr., 102. .,, ,. , , , , ,, 2 McLean, 37, specifications, to be issued to the patentee, ', ice. or, in the case of his death or assignment of OF THE UNITED STATES. 23 2 Fish., 643. 2 Fish., 499. 3 Fish., 294. 3 Fish., 343. 8 Wall., 445. 9 Wall., . the whole or any undivided part of the orig- n cush., 571. J r . & 1 Fish., 133. inal patent, to his executors, administrators, or assigns, for the unexpired part of the term of the original patent, the surrender of which shall take effect upon the issue of the amended patent; and the Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the appli- cant, and upon payment of the required fee for a reissue for each of such reissued letters patent. And the specification and claim in every such case ^hall be subject to revision and restriction in the same manner as orig- inal applications are. And the patent so reissued, together with the corrected specifi- cation, shall have the effect and operation in law, on the trial of all actions for causes thereafter arising, as though the same had been originally filed in such corrected form; but no new matter shall be introduced into the specification, nor, in case of a machine patent, shall the model or drawings be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proof satis- factory to the Commissioner that such new matter or amendment was part of the orig- inal invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid. 54. Whenever, through inadvertence, acci- Disclaimers. 24 PATENT, COPYRIGHT, AND TRADE-MARK LAWS 3 Mar., 1837, ch. dent, or mistake, and without any fraudu- 45, $ 7. 9, v. 5, pp. . ' . . J WV194. _ lent or deceptive intention, a patentee has ? story 1 -^ GOO c ^ a i rae( i more than that of which he was the ^3 McLean, 349, original or first inventor or discoverer, his I Dennis 56 ' patent shall be valid for all that part which ^2 whar. Dig.,j s truly and justly his own, provided the 45o.i atchf '' 245 'same is a material or substantial part of the 3 Blatchf , 199. , i , , -i i -, i . 2Biatchf..i98. thing patented; and any such patentee, his is HOW!', 121. heirs or assigns, whether of the whole or 19 How., 106. . , . , 20 HOW., 387. any sectional interest therein, may, on pay- 3Fish.,197. _ -Til 13- 3 Fish., 400. ment of the duty required by law, make dis- claimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent; said disclaimer shall be in writing, attested by one or more witnesses, and re- corded in the Patent Office, and it shall thereafter be considered as part of the orig- inal specification to the' extent of the inter- est possessed by the claimant and by those claiming under him after the record thereof. But no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unrea- sonable neglect or delay in filing it. Action3 where 55. ^n actions, suits, controversies, and cognizable. 4 July 1836, ch cases arising under the patent laws of the States shall be originally cognizable, J. crauc h h%27?' as well in equity as at law, by the circuit 4Ma'ss.fi5i courts of the United States, or any district 4 Wash., 584. . , ., -...,.,. e 2 Paine, 246. court having the powers and jurisdiction 01 OF THE UNITED STATES. 25 a circuit court, or by the supreme court of i wood. & Min., the District of Columbia, or of any Terri- 63 j Biatchr., c, tory; and "the court shall have power, upon ^^''g^ bill in equity filed by any party aggrieved, * How^oefak to grant injunctions according to the course and principles of courts of equity, to pre- vent the violation of any right secured by patent, on such terms as the court may deem reasonable; and upon a decree being ren- dered in any such case for an infringement, the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the claimant [complainant] has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction, and the court shall have the same powers to increase the same in its discretion that are given by this act to increase the damages found by verdicts in actions upon the case; but all actions shall be brought during the term for which the letters patent shall be granted or extended, or within six years after the ex- piration thereof. 56. A writ of error or appeal to the Su- Appeal to the su- . TT . -Tn T preme Court of preme Court of the United States shall he united states. from all judgments and decrees of any cir- 35 ^ g^'; 1 ! 30 '^- cuit court, or of any district court exercising ^l^-^ 1 ;^- the jurisdiction of a circuit court, or of the 1Blat3hf 544 _ supreme court of the District of Columbia 7 HOW!', 637! /? m ' L i- -A. 10How.,101,:MG. or or any lerntory, in any action, suit, con- i5iio\v.,4;5.537. . , . .. , 10 How., 1(. troversy, or case, at law or in equity, touch- 20 HOW., oo, 204. 3 26 PATENT, COPYRIGHT, AND TRADE-MARK LAWS 14 HOW., 220. ing patent rights, in the same manner and under the same circumstances as in other judgments and decrees of such circuit courts, without regard to the sum or value in con- troversy. C a p ndfo reign p r a d t- ^' Written or printed copies of any rec- _ ents< ords, books, papers, or drawings belonging 357,Hv.5?p 6 ii8 h 'to the Patent Office, and of letters patent 88fgrv!i2. b p.'249! under the signature of the Commissioner or 227^3! v y 15, p.'ies! Acting Commissioner, with the seal of office 3 McLean, 434. affixed, shall be competent evidence in all 2 Blatchf., 12. r f M, cL f a n. 371. cases wherein the originals could be evi- 1 Wood. & Mm., 26 uHow 583 dence, an d any person making application 9 wend., 44. therefor, and paying the fee required by law, shall have_ certified copies thereof. And copies of the specifications and drawings of foreign letters patent, certified in like manner, shall be prima facie evidence of the fact of the granting of such foreign let- ters patent, and of the date and contents thereof. Proceedings in 58. Whenever there shall be interfering equity in inter- . , . ,. fering patents, patents, any person interested in any one or 4 July. i83c, eh. such interfering patents, or in the working 357, g 16, v. 5, pp. _ of the invention claimed under either of such 3 Fish!', 522! patents, may have relief against the interfer- ing patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court having cognizance thereof, as hereinbefore provided, on notice to adverse parties, and other due proceedings had according to the course of OF THE UNITED STATES. 27 equity, may adjudge and declare either of the patents void iri whole or in part, or inopera- tive, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention pat- ented. But no such judgment or adjudica- tion shall affect the rights of any person ex- cept the parties to the suit and those deriving title under them subsequent to the rendition of such judgment. 59. Damages for the infringement of anyi>amages tor m- J fringement. patent may be recovered by action on the J J 4 July, 1830, ch. case in any circuit court of the United States, 357,gu,v.5.p.i23. or district court exercising the j urisdictiou of a circuit court, or in the supreme court of the i 4 7. Uood ' * Mm>1 District of Columbia, or of any Territory, in^. BIatchf " ^ the name of the party interested, either as pat- 201. 494 atehf '' 38> entee, assignee, or grantee. And whenever uHow^m in any such action a verdict shall be rendered i Fish^'sao.' for the plaintiff, the court may enter judg- 2 Fish'.; 02.' J . J & 2 Fish., 154. ment thereon for any sum above the amount 2 Fish., 207. ,. , , 2 Fish., 088. found by the verdict as the actual damages sFisb^na. sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs. 60. Whenever, through inadvertence, ac- Actions for in- cident, or mistake, and without any willful todfseiaimer. or default or intent to defraud or mislead the *"., MST, ch. 45, g 4 McLean, i79, 8 p ec i a i matters: ut J. O O. * bo First. That for the purpose of deceiving i 4 Wan'.',jr a ,'i95. tne public the description and specification 6 ' filed by the patentee in the Patent Office was OF THE UNITED STATES. 29 made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired ef- fect; or, Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or, Third. That it had been patented or de- scribed in some printed publication prior to his supposed invention or discovery thereof: or, Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or, Fifth. That it had been in public use or on sale in this country for more than two years before his application for a patent or had been abandoned to the public. And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and resi- dences of the persons alleged to have invented or to have had the prior knowledge of the thing patented and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defenses 3* 15 How., 110,141. 23 How., 7. 5 McLean, 61. 17 How.. 84. 2 Story. 441. 1 Fish.. 465. 1 Fish., 615. 2 Fish., 52. 3 Fish., 464. 30 PATENT, COPYRIGHT, AND TRADE-MARK LAWS may be pleaded in any suit in equity for re- lief against an alleged infringement; and proofs of the same may be given upon like notice in the answer of the defendant, and with the like effect. Pnor knowledge 62. "Whenever it shall appear that the pat- eign country, entee, at the time of making his application 4 July, isse, ch. for the patent, believed himself to be the 357, 15, v. 5, p. . . x ' 123, _ ^original and first inventor or discoverer of e McLean' si's ^ e thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country before his invention or discovery thereof, if it Had not been patented or described in a printed publication. Extension of pa<> 63. Where the patentee of any invention ent. Duty of r > applicant. or discovery, the patent for which was grant- m^iia'/lfVp. e( ^ P r i r * * ne second day of March, eighteen 12 2'Mar, 1861, eh. hundred and sixty-one, shall desire an exten- pp. Hsfm' v ' 12 'sion of his patent beyond the original term of its limitation, he shall make application therefor, in writing, to the Commissioner, setting forth the reasons why such exten- sion should be granted; and he shall also furnish a written statement under oath of the ascertained value of the invention or dis- covery, and of his receipts and expenditures on account thereof, sufficiently in detail to exhibit a true and faithful account of the loss and profit in any manner accruing to him by reason of said invention or discovery. OF THE UNITED STATES. 31 And said application shall be filed not more than six months nor less than ninety days before the expiration of the original term of the patent, and no extension shall be granted after the expiration of said original term. 64. Upon the receipt of such application, Notice of appiiea- * * A tion to be pub- and the payment of the duty required by Hshed. law, the Commissioner shall cause to be pub- 35 J ? u }|' l ^ cl lished in one newspaper in the city of Wash- 12 ;^ Mar-> 1861) ch . ington, and in such other papers published ^ 12 ' v ' 12> p ' in the section of the country most interested adversely to the extension of the patent as he may deem proper, for at least sixty days prior to the day set for hearing the case, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. 65. On the publication of such notice the case to be refer- /-v i 11 r> i F ec ^ * exam " Commissioner shall refer the case to the *"er. principal examiner having charge of the class 47 27 ? a v' of inventions to which it belongs, who shall make to said Commissioner a full report of the case, and particularly whether the inven- tion or discovery was new and patentable when the original patent was granted. 66. The Commissioner shall, at the time Hearing of case, and place designated in the published notice, fio tmi hear and decide upon the evidence produced, 35* J g u both for and against the extension; and if it 12 27 May)1848>ch . '' 47, 21, v9, p.as 32 PATENT, COPYRIGHT, AND TRADE-MARK LAWS 2 Fish., 499. shall appear to his satisfaction that the pat- 3 Fish., 536. 9 wan, -. entee, without neglect or fault on his part, has failed to obtain from the use and sale of his invention or discovery a reasonable re- muneration for the time, ingenuity, and ex- pense bestowed upon it, and the introduction of it into use, and that it is just and proper, having due regard to the public interest, that the term of the patent should be extended, the said Commissioner shall make a certifi- cate thereon, renewing and extending the said patent for the term of seven years from the expiration of the first term, which certifi- cate shall be recorded in the Patent Office, and thereupon the said patent shall have the same effect in law as though it had been originally granted for twenty-one years. Extension, how @7. The benefit of the extension of a pat- far for the bene- nt of assignees. en t shall extend to the assignees and grant- ssT/^fs/v^Vp- ees f the right to U8e the thing patented to l!i the extent of their interest therein. 4 How., 682. 3 Fish., 0. 3 Fish., 410. 4 McLean. 355. Patent fees. 68. The following shall be the rates. for 2 Mar., 1861, ch. rflf pnt fpps 88. 10, v. 12, p. P* 24 27 June, 1866, O n filing each original application for a ch.i43, i, v. i*. patent, fifteen dollars. On issuing each original patent, twenty dollars. On filing each caveat, ten dollars. On every application for the reissue of a patent, thirty dollars. OF THE UNITED STATES. 33 On filing each disclaimer, ten dollars. On every application for the extension of a patent, fifty dollars. On the granting of every extension of a patent, fifty dollars. On an appeal for the first time from the primary examiners to the examiners-in-chief, ten dollars. On every appeal from the examiners-in- chief to the Commissioner, twenty dollars. For certified copies of patents and other papers, ten cents per hundred words. For recording every assignment, agree- ment, power of attorney, or other paper, of three hundred words or under, one dollar; of over three hundred and under one thou- sand words, two dollars; of over one thou- sand words, three dollars. For copies of drawings, the reasonable cost of making them. 69. Patent fees may be paid to the Com- Patent fees, to m /> whom paid; missioner, or to the Treasurer or any of the who to dis- ' burse money. assistant treasurers of the United States, or - C Aug., 1846, ch. to any of the designated depositaries, Ba tional banks, or receivers of public money, ^ $ 7> v - 15> p - designated by the Secretary of the Treasury i 2 i,fi*v'. if flag's. for that purpose, who shall give the depos- itor a receipt or certificate of deposit there- for. And all money received at the Patent Office, for any purpose or from any source whatever, shall be paid into the Treasury as received, without any deduction whatever; 3 34 PATENT, COPYRIGHT, AND TRADE-MARK LAWS and all disbursements for said office shall be made by the disbursing clerk of the Interior Department. Money paid by 70. The Treasurer of the United States is mistake. , authorized to pay back any sum or sums o 29 Aug., 1842, ch. ^ J J 203,3 i,v. s, p;5*3. money to any person who shall have paid the same into the Treasury, or to any re- ceiver or depositary, to the credit of the Treasurer, as for fees accruing at the Patent Office through mistake, certificate thereof being made to sa'id Treasurer by the Com- missioner of Patents. III. Of Design Patents. SEC. 71. Designs may be patented. 72. Models of designs. 73. Term of design patents. SEC. 75. Fees for design patents. 76. Other provisions to apply to design patents. 74. Extension of design patents. Designs may be 71. Any person who, by his own industry, patented. .' genius, efforts, and expense, has invented or 29 Aug.. 1842, ch. MS! Itl' v< 5> pp - produced any new and original design for a b ust > statue, alto-relievo, or , * 4 McLean, 180. bas-relief '> any new and original design for th e printing of woolen, silk, cotton, or other fabrics; any new and original impression, ornament, 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 of any article of manufacture, OF THE UNITED STATES. 35 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 payment of the duty required by law, and other due proceedings had, the same as in cases of in- ventions or discoveries, obtain a patent therefor. 72. The Commissioner may dispense with Models of de- . , signs. models of designs when the design can be ' ch sufficiently represented by drawings or pho-ss, 5,v.'i2,p.'247. tographs. 73. Patents for designs may be gran ted Term ^ design for the term of three years and six months, 2Mar 1861 ch or for seven years, or for fourteen years, as 8 '? 11 ^- 12 '?- 248 - the applicant may, in his application, elect. 74. Patentees of designs issued prior to Extension of de- * sign patents. March two, eighteen hundred and sixty-one, J ' 2 Mar., 1861, ch. shall be entitled to extension of their respect- 88,gii,v.i2, p.2. ive patents for the term of seven years, in the same manner and under the same restric- tions as are provided for the extension of patents for inventions or discoveries issued prior to the second day of March, eighteen hundred and sixty-one. 75. The following shall be the rates of fees Fees for design i . patents. in design cases: TH It. J -L-U j ^ 2 Mar., 1801, ch. ior three years and six months, ten dol-88, 10, n,v. 12, - p. 248. lars. For seven years, fifteen dollars. For fourteen years, thirty dollars. For all other cases in which fees are re- 36 PATENT, COPYRIGHT, AND TRADE-MARK LAWS quired, the same rates as in cases of inven- tions or discoveries, other provisions 76. That all the regulations and provisions to apply to de- sign patents, which apply to the obtaining or protection , 20 Aug., 1842, ch. of patents for inventions or discoveries, not 203, g o, V. 5, p. 543. inconsistent with the provisions of this act, shall apply to patents for designs. IV. Of Trade-Marks. SEC. 77. Who entitled to trade-marks, and requirements concerning the same. 78. Term for which trade-marks shall remain in force. 79. Remedy for wrongful use of trade-marks. 80. Proof of registration. SEC. 81. Rules for transfer of trade- marks. 82. Penalty for fraudulent regis- tration. 83. Common law remedies pre- served. 84. No action to be sustained on fraudulent or deceptive trade- marks. who entitled to 77. Any person or firm domiciled in the trade-marks, / and require- United States, and any corporation created ments concern- 7 " * ing the same, by the authority of the United States, or of any State or Territory thereof, and any per- son, firm, or Corporation resident or located in any foreign country which by treaty or convention aifords similar privileges to citi- zens of the United States, and who are enti- tled to the exclusive use of any lawful trade- mark, or who intend to adopt and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark by complying with the following requirements, to wit: OF THE UNITED STATES. 37 First. By causing to be recorded in the Patent Office the names of the parties and their residences and place of business who desire the protection of the trade-mark. Second. The class of merchandise and the particular description of goods comprised in such class, by which the trade-mark has been or is intended to be appropriated. Third. A , description of the trade-mark itself, with fac similes thereof, and the mode in which it has been or is intended to be applied and used. Fourth. The length of time, if any, dur- ing which the trade-mark has been used. Fifth. The payment of a fee of twenty- five dollars, in the same manner and for the same purpose as the fee required for patents. Sixth. The compliance with such regula- tions as may be prescribed by the Commis- sioner of Patents. Seventh. The fi ling of a declaration, under the oath of the person, or of some member of the firm or officer of the corporation, to the effect that the party claiming protection for the trade-mark has a right to the use of the same, and that no other person, firm, or corporation has the right to such use, either in the identical form or having such near resemblance thereto as might be calculated to deceive, and that the description and fac similes presented for record are true copies of the trade-mark sought to be protected. 4 38 PATENT, COPYRIGHT, AND TEADE-MARK LAWS Term for which 78. Such trade-mark shall remain in force trade-marks shaii remain in for thirty years from the date of such regis- tration, except in cases where such trade- mark is claimed for and applied to articles not manufactured in this country, and in which it receives protection under the laws of any foreign country for a shorter period, in which case it shall cease to have any force in this country, by virtue of this act, at the same time that it becomes of no effect else- where ; and during the period that it remains in force it shall entitle the person, firm, or corporation registering the same to the ex- clusive use thereof, so far as regards the description of goods to which it is appropri- ated in the statement filed under oath as aforesaid, and no other person shall lawfully use the same trade-mark, or substantially the same, or so nearly resembling it as to be cal- culated to deceive, upon substantially the same description of goods: Provided, That six months prior to the expiration of said term of thirty years application may be made for a renewal of such registration, under regulations to be prescribed by the Commis- sioner of Patents, and the fee for such re- newal shall be the same as for the original registration; certificate of such renewal shall be issued in the same manner as for the orig- inal registration, and such trade-mark shall remain in force for a further term of thirty years: And provided further, That nothing in OF THE UNITED STATES. 39 this section shall be construed by any court as abridging or in any manner affecting un- favorably the claim of any person, firm, cor- poration, or company to any trade-mark after the expiration of the term for which such trade-mark was registered. 79. Any person or corporation who shall Remedy for <* r > wrongful use of reproduce, counterfeit, copy, or imitate any trade-marks, such recorded trade-mark, and affix the same to goods of substantially the same descriptive properties and qualities as those referred to in the registration, shall be liable to an ac- tion on the case for damages for such wrong- ful use of said trade-mark, at the suit of the owner thereof, in any court of competent jurisdiction in the United States, and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of his trade-mark and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful use. The Commissioner of Patents shall not receive and record any pro- posed trade-mark which is not and cannot become a lawful trade-mark, or which is merely the name of a person, firm, or cor- poration only, unaccompanied by a mark suf- ficient to distinguish it from the same name when used by other persons, or which is identical with a trade-mark appropriate to the same class of merchandise and belonging to a different owner, and already registered 40 PATENT, COPYRIGHT, AND TRADE-MARK LAWS or received for registration, or which so nearly resembles such last-mentioned trade- mark as to be likely to deceive the public : Provided, That this section shall not prevent the registry of any lawful trade-mark right- fully used at the time of the passage of this act. Proof of registra- 80. The time of the receipt of any trade- mark at the Patent Office for registration shall be noted arid recorded, and copies of the trade-mark and of the date of the receipt thereof, and of the statement filed therewith, under the seal of the Patent Office, certified by the Commissioner, shall be evidence in any suit in which such trade-mark shall be brought in controversy. Kuiesfortransfer 81. The Commissioner of Patents is au- of trade-marks. thorized to make rules, regulations, and pre- scribe forms for the transfer of the right to the use of such trade-marks, conforming as nearly as practicable to the requirements of law respecting the transfer and transmission of copyrights. Penalty for fraud- 82. Any person who shall procure the the r a " registry of any trade-mark, or of himself as the owner thereof, or an entry respecting a trade-mark, in the Patent Office, under this act, by making any false or fraudulent repre- sentations or declarations, verbally or in writing, or by any fraudulent means, shall be liable to pay damages, in consequence of any such registry or entry, to the person in- OF THE UNITED STATES. jured thereby, to be recovered in an action on the case before any court of competent jurisdiction within the United States. 83. Nothing in this act shall prevent, lessen, c e ^ d e g ^ impeach, or avoid any remedy at law or in 8erved - equity, which any party aggrieved by any wrongful use of any trade-mark might have had if this act had not been passed. 84. ISfo action shall be maintained under NO action to be .-, .. ^> .LI LI sustained on the provisions of this act by any person fraudulent or , . . , , i - 3 deceptive trade- claiming the exclusive right to any trade- marks. mark which is used or claimed in any unlaw- ful business, or upon any article which is injurious in itself, or upon any trade-mark which has been fraudulently obtained, or which has been formed and used with the design of deceiving the public in the pur- chase or use of any article of merchandise. ' V. Of Copyrights. SEC. 85. Librarian of Congress to have charge of copyrights. 86. What may be copyrighted. 87. Term of copyright. 88. Extension of copyright. 89. Assignment of copyrights to be recorded. 90. Recording copyright; duty of applicant. 91. Recording copyright; duty of Librarian. 92. Fees. 93. Library of Congress to have copyright articles. 4* SEC. 94. Penalty for not delivering. 95. May be sent to Library by mail free. 96. Duty of postmaster in regard to. 97. Notice of copyright. 98. Penalty for false notice. 99. Infringement of copyrightbook. 100. Infringement of copyright map, &c. 101. Infringement of copyright dra- matic composition. 102. Infringement of manuscripts. 103. Foreign works may be printed or imported. 42 PATENT, COPYRIGHT, AND TRADE-MARK LAWS SEC. 104. Limitation of time of action. .. 105. Pleading. 106. Actions cognisable by circuit court. SEO. 107. Appeals to Supreme Court U. S. 108. Full cost to be allowed. 109. Transfer of books, &c., to Li- brary of Congress. sa Shall have seal. Librarian of con- 85. All records and other things relating gross to have . .111 i charge of copy- to copyrights, and required by law to be pre- b Fob 1859 eh 8erve ^> shall be under the control of the Li- ' v ' n>> pp< brarian of Congress, and kept and preserved in the Library of Congress; and the Libra- rian of Congress shall have the immediate care and supervision thereof, and, under the supervision of the Joint Committee of Con- gress on the Library, shall perform all acts and duties required bylaw touching copy- rights. The Librarian shall cause a seal to be provided for said office, with such device as the Joint Committee on the Library may approve, with which all records or papers issued from said office, and to be used in evidence, shall be authenticated. He shall also give an additional bond, with sureties, to the Treasurer of the United States, in the sum of five thousand dollars, with the con- dition that he will render to the proper officers of the treasury a true account of all moneys received by virtue of his office. He And make annual shall also make an annual report to Congress . of the number and description of copyright publications for which entries have been made during the year. And the Librarian of Congress shall receive a yearly compensa- Give bond. report. OF THE UNITED STATES. 43 tion of four thousand dollars, to commence when this act shall take effect. 86. Any citizen of the United States, or what may be copyrighted resident therein, who shall be the author, in- 3Feb 1831 f . h ventor, designer, or proprietor of any book, 1C ^| l <^> P-J- map, chart, dramatic or musical composi-^ \^^ T-11 ' tion, engraving, cut, print, or photograph or 12 * l | a jj'*f^ c ^; negative thereof, or of a painting, drawing,^!: chromo, statue, statuary, and of models or u HOW., 530. designs intended to be perfected as works of i Btaabt/aeiJ the fine arts, and his executors, administra- 3 story! 778. . , ,, . , 4 McLean, 316, tors, or assigns, shall, upon complying with 517. ' ' the provisions of this act, have the sole lib- 2 wood. A Mm, erty of printing, reprinting, publishing, com- ^ ^ atchf 46 > pleting, copying, executing, finishing, and 2Paine,383. vending the same; and in the case of a dra- matic composition, of publicly performing or representing it, or causing it to be performed or represented by others; and authors may reserve the right to dramatize or to translate their own works. 87. Copyrights shall be granted for the Term of copy- term of twenty-eight years from the time of . , 3 Feb., 1831, cb. recording the title thereof, in the manner 16 > 2 * v - * P- 43G - hereinafter directed. 88. The author, inventor, or designer, if Extension of . copyright. he be still living and a citizen of the United 3Feb ]831 ch ' States or resident therein, or his widow orJMy, v - 4pp - children, if he be dead, shall have the same 2 Wood A Min ( exclusive right continued for the further term of fourteen years, upon recording the title of the work or description of the article 44 PATENT, COPYRIGHT, AND TRADE-MARK LAWS BO secured a second time, and complying with all other regulations in regard to orig- inal copyrights, within six months before the expiration of the first term. And such per- son shall, within two months from the date of said renewal, cause a copy of the record thereof to be published in one or more news- papers, printed in the United States, for the space of four weeks. Assignment of 89. Copyrights shall be assignable in law copyrights to. . ,, . . ., - be recorded, by any instrument of writing, and such as- 3ojune,i834ch. s iffnment shall be recorded in the office of 157,gl,v.4,p.728. => 8 wend 565 ^6 Librarian of Congress within sixty days 42?5u>? od:& * Iin " after its execution, in default of which it shall s Potfcoi! 41 * ^ e V i^ as a g a i ng t any subsequent purchaser is HOW., 171. Qr mor tgagee for a valuable consideration, without notice. Recording copy- 90. No person shall be entitled to a copy- ap g p iicant! y right unless he shall, before publication, 3 Fob., 1831, ch. deposit in the mail a printed copy of the 1C, g 4, V. 4, p. 437. L 2Biatchf 83 ^ e f *ke kk or other article, or a de- 5McLem',m scription of the painting, drawing, chromo, statue, statuary, or model or design for a work of the fine arts, for which he desires a copyright, addressed to the Librarian of Congress, and, within ten days from the pub- lication thereof, deposit in the mail two copies of such copyright book or other article, or, in case of a painting, drawing, statue, statu- ary, model or design for a work of the fine arts, a photograph of the same, to be ad- OF THE UNITED STATES. 45 dressed to said Librarian of Congress, as hereinafter to be provided. 91. The Librarian of Congress shall re- Recording copy- . , , , right; duty of cord the name or such copyright book, or Librarian. other article, forthwith in a book to be kept, A F ,f b -' i 831 ', .-' 1 1G, g 4, v. 4, p. 4^,1. for that purpose, in the words following: "Library of Congress, to wit: Be it remem- bered that on the - day of - , anno Domini - , A. B., of - , hath depos- ited in this office the title of a book, (map, chart, or otherwise, as the case may be, or description of the article,) the title or descrip- tion of which is in the following words, to wit : (here insert the title or description,) the right whereof he claims as author, origin- ator, (or proprietor, as the case may be,) in conformity with the laws of the United States respecting copyrights. C. D., Librarian of Congress." And he shall give a copy of the title or description, under the seal of the Li- brarian of Congress, to said proprietor, when- ever he shall require it. 92. For recording the title or description Fees. of any copyright book or other article, the a Feb.. mi, ch. * r>/ 16. 4, v. 4, p. 437. Librarian of Congress shall receive, from Ch 3() 1 ..^ u , n | V 4 834 ' the person claiming the same, fifty cents ; 7i! |. Fe ' b ^ ^ h and for every copy under seal actually given 80 - 2 I.V.IO.P. ica. to such person or his assigns, fifty cents: and for recording any instrument of writing for the assignment of a copyright, fifteen cents for every one hundred words; and for every copy thereof, ten cents for every one 46 PATENT, COPYRIGHT, AND TRADE-MARK LAWS hundred words, which moneys, so received, shall be paid into the Treasury of the United States. Library of Con- 93. The proprietor of every copvright gress to have "- - 1 " L * copyright arti- book or other article shall mail to the Libra- cles. 3 Mar i860, ch. r ^ an ^ Congress at Washington, within ten pp G '54o, MI.' v ' 13> days after its publication, two complete ch. 8 43,^ v. I*, 6 ?' P rm ted copies thereof, of the best edition issued, or description or photograph of such article as hereinbefore required, and a copy of every subsequent edition wherein any sub- stantial changes shall be made. Penalty for not 94. In default of such deposit in the post office, said proprietor shall be liable to a 18 Feb., 1867, ch g . 43, i,v. u, p. p ena ity of twenty-five dollars, to be collected by the Librarian of Congress, in the name of the United States, in an action of debt, in any district court of the United States within the jurisdiction of which the delin- quent may reside or be found. May be sent to 95. Any such copyright book or other Library by mail J rj t=> free. article may be sent .to the Librarian of Con- ifp'g 1 ' 688 by mail, free of postage, provided the words "Copyright matter" are plainly writ- ten or printed on the outside of the package containing the same. Duty of postmas- 96. The postmaster to whom such copy- ter in regard to. , . i , .,.,,. , lg Feb right book, title, or other article is delivered 3^- 43>?2>v - u ' p ' shall, if requested, give a receipt therefor; and, when so delivered, he shall mail it to its destination without cost to the proprietor. Notice righ f t. copy " 97. No person shall maintain an action for OF THE UNITED STATES. 47 the infringement of his copyright unless he3Feb.,i83i,^h. shall give notice thereof, hy inserting in the ^ B iltch, 620. several copies of every edition published, on the title-page or the page immediately fol- lowing, if it be a book; or, if a map, chart, musical composition, print, cut, engraving, photograph, painting, drawing, chromo, statue, statuary, or model or design intended to be perfected and completed as a work of the fine arts, by inscribing upon some por- tion of the face or front thereof, or on the face of the substance on which the same shall be mounted, the following words, viz: "Entered according to act of Congress, in the year , by A. B., in the office of the Librarian of Congress, at Washington." 98. If any person shall insert or impress Penalty for false such notice, or words of the same purport, in or upon any book, map, chart, musical ie, gn,v.4, P .'448. composition, print, cut, engraving, or pho- i Biatchf., 154. tograph, or other articles herein named, for which he has not obtained a copyright, every person so offending shall forfeit and pay one hundred dollars; one moiety thereof to the person who shall sue for the same, and the other to the use of the United States, to be recovered by action in any court of compe- tent jurisdiction. 99. If any person, after the recording of infringement of ,-,,.,, r 11 i_ -j j i n copyright book. the title oi any book as herein provided, shall - J * 3 Feb., 1831, eh. within the term limited, and without the]M6,v.4, P p.437, consent of the proprietor of the copyright, ~~i story, 19. 48 PATENT, COPYRIGHT, AND TRADE-MARK LAWS 2 S Biatehf 5 ' 47 ^ Fst obtained in writing, signed in presence 85 i McLean 315 ^ two or more witnesses, print, publish, or 7 How h '8ii' i m P or ^ or knowing the same to be so printed, published, or imported, shall sell or expose to sale any copy of such book, such offend- er shall forfeit every copy thereof to said proprietor, and shall also forfeit and pay such damages as may be recovered in a civil action by such proprietor in any court of compe- tent jurisdiction. infringement of 100. If any person, after the recording of copyright map, * r &c - _ the title of any map, chart, musical composi- iefg F 7? v.'4, 8 p!'4 C 38! ti n 5 P rm t> cut > engraving, or photograph, or 1 story, is. chromo, or of the description of any paint- is Biatchf! ,47. ing, drawing, statue, statuary, or model or 2 wood. & Mm., design intended to be perfected and executed 4' McLean, 301, as a work of the fine arts, as herein provided, 309 shall, within the term limited, and without the consent of the proprietor of the copy- right first obtained in writing, signed in presence of two or more witnesses, engrave, etch, work, copy, print, publish, or import, either in whole or in part, or by varying the main design with intent to evade the law, or, knowing the same to be so printed, pub- lished, or imported, shall sell or expose to sale any copy of such map or other articl e, as afore- said, he shall forfeit to the said proprietor all the plates on which the same shall be copied, and every sheet thereof, either copied or printed, and" shall further forfeit one dol- lar for every sheet of the same found in his OF THE UNITED STATES. 49 possession, either printing, printed, copied, published, imported, or exposed for sale; and in case of a painting, statue, or statuary, lie shall forfeit ten dollars for every copy of the same in his posession, or which have by him been sold or exposed for sale; one moiety thereof to the proprietor and the other to the use of the United States, to be recovered by action in any court of compe- tent jurisdiction. 101. Any person publicly performing or infringement of J J r . copyright dra- representmg any dramatic composition for matte composi- which a copyright has been obtained, with- 18 Au ^^ out the consent of the proprietor thereof, or- i^y, v - n ' his heirs or assigns, shall be liable for dam- ages therefor, to be recovered by action in any court of competent jurisdiction; said damages in all cases to be assessed at such sum, not less than one hundred dollars for the first, and fifty dollars for every subse- quent performance, as to the court shall ap- pear to be just. 102. Any person who shall print or pub- infringement of . , i i manuscripts. lish any manuscript whatever, without the ' * \ 3 Feb., 1831, ch. consent of the author or proprietor first ob- 1G '2-J> v - 4 > p- 43 *- 5 McLean, 41, tained, (if such author or proprietor be a cit- 33 | 2How Pr ^ izen of the United States or resident therein,) I ^Lean 301. shall be liable to said author or proprietor for all damages occasioned by such injury, to be recovered by action on the case in any court of competent jurisdiction. 103. Nothing herein contained shall be Foreign works 5 50 PATENT, COPYRIGHT, AND TRADE-MARK LAWS may be printed construed to prohibit the printing, publish- er imported. . 5 '. .J 3 Feb., 1831, eh. in g> importation, or sale of any book, map, IB, g 8, v.' K, p.' 438. chart, dramatic or musical composition, print, cut, engraving, or photograph, written, com- posed, or made by any person not a citizen of the United States nor resident therein. Limitation of 104. !N"o action shall be maintained in any Feb 1 31 eh cas<3 ^ f r f e it ure or penalty under the copy- i6,i3,v'.4,p.'439. right laws unless the same is commenced within two years after the cause of action has arisen. Pleading. 105. In all actions arising under the laws 3 Feb., issi, ch. respecting: copyrights the defendant may 16, 10, V. 4, p. 438. ^ & *V ^ f J plead the general issue, and give the special matter in evidence. Actions cogniza- 106. All actions, suits, controversies, and ble by circuit . . , , . , , , court. cases arising under the copyright laws of the 15 Feb., 1819, United States shall be originally cognizable, ch. 19, 1, v. 3, p. J & 48i. as well in equity as at law, whether civil or ^5 McLean, ss, penal in their nature, by the circuit courts 27 2Wood.&Min., of the United States, or any district court nliow^ljf 01 ' having the jurisdiction of a circuit court, or 4Duer,'382. in the 8Upreme court Q f tne District of Co- lumbia, or any Territory. And the court shall have power, upon bill in equity filed by any party aggrieved, to grant injunctions to prevent the violation of any right secured by said laws, according to the course and principles of courts of equity, on such terms as the court may deem reasonable. Appeals to Su- 107. A writ of error or appeal to the Su- u r niTed states. 'preme Court of the United States shall lie OP THE UNITED STATES. 51 from all judgments and decrees of any court, w Fet>.^ wei, in any action, suit, controversy, or case touch- 130. ing copyrights, in the same manner and under the same circumstances as in other judgments and decrees of such courts, with- out regard to the sum or value in contro- versy. 108. In all recoveries under the copyright Ful1 a ^* e ^ be laws, either for damages, forfeitures, or pen- 3 Feb ^ 1831) ch alties, full costs shall be allowed thereon. g^S T< 4> pp * 109. All books, maps, charts, and other Transfer of , books, Ac., to publications, of every nature whatever, here- Library of con- tofore deposited in the Department of the Interior, according to the laws regulating copyrights, together with all the records of said department, and all records concerning the same which were removed by the De- partment of the Interior from the Depart- ment of State, shall be removed to and be under the control of the Librarian of Con- gress, who is hereby charged with all the duties pertaining to copyrights required by law. 110. The clerk of each of the district courts of the United States shall transmit forthwith to the Librarian of Congress all books, maps, prints, photograp[h]s, music, and other pub- lications, of every nature whatever, deposited in the said clerk's office, and not heretofore sent to the Department of the Interior, at Washington, together with all records of copyright in his possession, including the 52 PATENT, COPYRIGHT, AND TRADE-MARK LAWS titles so recorded, and the dates of record: Provided, That where there are duplicate copies of legal, scientific, or mechanical works, one copy of each may be deposited in the library of the Patent Office, for which a receipt shall be given by the Commis- sioner of Patents to the Librarian of Con- gress. VI. Repealing Clause and Schedule. 111. Repeal and its effect. Repeal and its 111. The acts and parts of acts set forth effect. in the schedule of acts cited, hereto annexed, are hereby repealed, without reviving any acts or parts of acts repealed by any of said acts, or by any clause or provisions therein : Provided, however, That the repeal hereby en- acted, shall not affect, impair, or take away any right existing under any of said laws; but all actions and causes of action, both in law and in equity, which have arisen under any of said laws, may be commenced and prosecuted, and, if already commenced, may be prosecuted to final judgment and execu- tion in the same manner as though this act had not been passed, excepting that the re- medial provisions of this act shall be appli- cable to all suits and proceedings hereafter commenced : And provided also, That all ap- plications for patents pending at the time of the passage of this act, in cases where the OF THE UNITED STATES. 53 duty lias been paid, shall be proceeded with and acted on in the same manner as though filed after the passage thereof: And provided further. That all offenses which are defined and punishable under any of said acts, and all penalties and forfeitures created thereby and incurred before this act takes effect, may be prosecuted, sued for, and recovered, and such offenses punished, according to the pro- visions of said acts, which are continued in force for such purpose. Schedule of statutes cited and repealed, as printed in the Statutes at Large, including such por- tions only of the appropriation bills referred to as are applicable to the Patent Office. PATENTS. Act of July 4, 1836, chapter 357, volume 5, page 117. Act of March 3, 1837, chapter 45, volume 5, page 191. Act of March 3, 1839, chapter 88, volume 5, page 353. Act of August 29, 1842, chapter 263, vol- ume 5, page 543. Act of August 6, 1846, chapter 90, vol- ume 9, page 59. Act of May 27, 1848, chapter 47, volume 9, page 231. Act of March 3, 1849, chapter 108, vol- ume 9, page 395. 5* 54 PATENT, COPYRIGHT, AND TRADE-MARK LAWS Act of March 3, 1851, chapter 32, volume 9, page 617. Act of August 30, 1852, chapter 107, vol- ume 10, page 75. Act of August 31, 1852, chapter 108, vol- ume 10, page 76. Act of March 3, 1853, chapter 97, volume 10, page 209. Act of April 22, 1854, chapter 52, volume 10, page 276. Act of March 3, 1855, chapter 175, volume 10, page 643. Act of August 18, 1856, chapter 129, vol- ume 11, page 81. Act of March 3, 1859, chapter 80, volume 11, page 410. Act of February 18, 1861, chapter 37, vol- ume 12, page 130. Act of March 2, 1861, chapter 88, volume 12, page 246. Act of March 3, 1863, chapter 102, vol- ume 12, page 796. Act of June 25, 1864, chapter 159, volume 13, page 194. Act of March 3, 1865, chapter 112, volume 13, page 533. Act of June 27, 1866, chapter 143, volume 14, page 76. Act of March 29, 1867, chapter 17, volume 15, page 10. Act of July 20, 1868, chapter 177, volume 15, page 119. OF THE UNITED STATES. 55 Act of July 23, 1868, chapter 227, volume 15, page 168. Act of March 3, 1869, chapter 121, volume 15, page 293. COPYRIGHTS. Act of February 15, 1819, chapter 19, vol- ume 3, page 481. Act of February 3, 1831, chapter 16, vol- ume 4, page 436. Act of June 30, 1834, chapter 157, volume 4, page 728. Act of August 18, 1856, chapter 169, vol ume 11, page 138. Act of February 5, 1859, chapter 22, vol- ume 11, page 380. Act of February 18, 1861, chapter 37, vol- ume 12, page 130. Act of March 3, 1865, chapter 126, volume 13, page 540. Act of February 18, 1867, chapter 43, vol- ume 14, page 395. Approved July 8, 1870. II. SYIDTOIPSIS OF THE LAWS AND PRACTICE OF LETTERS PATENT FOE INVENTION THE PEINCIPAL FOBEIGN STATES. 67 SYNOPSIS OF THE LAWS OF LETTERS PATENT FOE INVENTION THE PRINCIPAL FOREIGN STATES. I. The Argentine Republic. SEC. 1. Law and date. 2. Kinds of patents. 3. Previous examination. 4. Duration. 5. Government fees. 6. Documents required. SEC. 7. Working. 8. Assignment. 9. Specifications, &c., inspection and publication of. 10. Infringements. 11. Other legal provisions. 1. LAW AND DATE. 28th September, 1864. Promul- gated llth October, 1864. (See Commissioners of Patents' Journal, [vide infra, 71,] Nos. 1393, 1394, and 1453, An., 1867.) 2. KINDS OF PATENTS. Patents of inventions granted to inventors or their assignees. Reissue of foreign pat- ents. Certificates of addition or improvement. Provis- ional patents. 3. PREVIOUS EXAMINATION. By the sub-commission- ers. The following are not patentable : Pharmaceutical compositions; financial schemes; discoveries or inven- tions known or published abroad, or in the Republic; theoretical schemes; and inventions contrary to morals and to law. 4. DURATION. Patents of inventions, five, ten, or fif- teen years. Reissues of foreign patents limited to ten 59 60 FOREIGN PATENT LAWS. years, and never to exceed the term of the original for- eign patent. Provisional patents one year, and renew- able each subsequent year. 5. GOVERNMENT FEES. According to article 26 of the patent regulations, a stamp duty of twenty-five pesos (dollars) for the letters patent, and by yearly installments ; eight pesos for patents of five years; ten pesos for patents of ten years; and for patents of fifteen years eleven pesos during the first five years, and twelve pesos during the remaining ten years. According to article 6 of the patent law, eighty pesos fuertes for a patent of five years; two hundred pesos for a patent often years; and three hundred and fifty pesos for a patent of fifteen years, one half to be paid at the time of application, and the other half by successive yearly installments. Patentees to accept and sign bills in common with another person (to be approved of by the commissioner) as collateral* security for the payment of the annual installments. Cer- tificates of addition subject to the same formalities as patents, original patentees paying only one fourth of the patent fees, but others than the patentee one half. Pro- visional patents fifty pesos, to be deducted in case letters patent or certificates of addition for said invention are taken out subsequently. 6. DOCUMENTS REQUIRED. A petition to the Com- missioner of Patents, (twenty-five pesos stamp duty,) a description, (in the Spanish language,) with proper draw- ings on a metrical scale, patterns, (models or chemical samples,) all in duplicate, and a list of the objects present- ed. A deposit of one half of the Government fees, one half only of which is returned in case of refusal ; and when, in the latter case, an appeal is made to the Minister of AUSTRIA. 61 the Interior, (within ten days,) and the refusal is upheld by him, the whole deposit becomes forfeited. 7. WORKING. Within two years, and not to be inter- rupted for the same period, except by showing good cause for delay. 8. ASSIGNMENT. By notarial act of registration at the Patent Office. Payment of the entire fees required. 9. SPECIFICATIONS, ETC., INSPECTION AND PUBLICATION OF. Open to public inspection at the Patent Office, (ex- cept provisional patents.) Published yearly. Copies obtained by paying the stamp duty on paper. 10. INFRINGEMENTS. Punishable by a fine of from fifty to five hundred pesos, or by imprisonment of from one to six months, and the forfeiture of the counterfeit articles, besides damages. Participators subject to the same penalty. In case of a second oifense within five years, said penalty to be doubled. All fines to be divided between the treasury and the informers. 11. OTHER LEGAL PROVISIONS. Patent actions to be instituted by the interested parties before the sectional tribunals. Decisions summary. Longest term granted for showing cause, (in exceptional cases,) six months. Within ten days of the expiration of the term allowed, judge to deliver judgment and to award costs. Appeals to the superior court (for final decision) to be entered within three days. II. Austria. SEC. 12. Law, date, and where recorded. 13. Kinds of patents. 14. Previous examination. 15. Duration. 6 SEC. 16. Government fees. 17. Documents required, and where to be left. 18. Working and prolongation. 62 FOREIGN PATENT LAWS. SEC. 19. Assignments. 20. Other legal provisions. 21. Specifications, inspection, copies. SEC. 22. List of patents delivered. 23. Specifications published. 24. Proceedings to obtain a patent. 12. LAW, DATE, AND WHERE RECORDED. Imperial de- cree of 15th August, 1852. (See Commissioners of Pat- ents' Journal, [vide infra, 71,] !No. 291, An., 1856.) 13. KINDS OF PATENTS. Exclusive privileges for new discoveries, inventions, or improvements granted to na- tives or foreigners residing or represented in Austria. 14. PREVIOUS EXAMINATION. None as to novelty or utility. Wo guaranty by the Government. ISTo patents are granted for preparations of food, beverages, and medicines, or for such inventions as cannot be worked for reasons of public health, morals, or safety, or as being contrary to the general interest of the State. 15. DURATION. Fifteen years at most from the date of the exclusive privilege. Imported inventions for the unexpired term of the foreign patent. The latter grants are made to the foreign patentee only, or his proxy, pro- vided the invention has not yet been worked in the empire. 16. GOVERNMENT FEES. Twenty florins for each of the first five years; thirty florins sixth ^year; thirty-five florins seventh year; forty florins eighth year; forty-five florins ninth year; fifty florins tenth year; sixty florins eleventh year; seventy florins twelfth year; eighty flor- ins thirteenth year; ninety florins fourteenth year; one hundred florins fifteenth year equals seven hundred florins for fifteen years, or one hundred florins for the first five years, two hundred florins for the following five years, and four hundred florins for the last five years. AUSTRIA. 63 (Ten florins equal one pound.) The fees paid for pat- ents, which subsequently have been annulled on public grounds, are to be repaid in proportion to the unex- pired term. 17. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. A petition of the inventor or his proxy; power of attorney, (in the latter case;) the Government fees or receipt for the same; a specification, sealed, and in German, or the language of the respective State of the empire; draw- ings, models, or patterns; statement whether the inven- tion is to be kept secret or n<- and, if the former, for how long. In the case of importations, the original letters patent or an authenticated copy of the same. De- posited at the offices of the governors of provinces or of the authorities of districts. Specifications may be amended. 18. WORKING AND PROLONGATION. To be worked within one year, and not to be interrupted for two years. The longest term extended by special grant of the Em- peror. 19. ASSIGNMENTS. Registered at the Ministry of Com- merce and Trades, and published in the Vienna Gazette, monthly. 20. OTHER LEGAL PROVISIONS. The following cases are to be considered as infringements: 1. Imitating the object of a patent; 2. Importing counterfeit articles; 3. Selling such counterfeit articles. Infringements of pat- ents with specifications kept secret not punishable in the first instance. Fines, which are to be paid into the poor-box, from fifty shillings to one hundred pounds. Imprisonment at the rate of one day for ten shillings. 21. SPECIFICATIONS, INSPECTION, AND COPIES OF. In the 64 FOREIGN PATENT LAWS. record office of patents, at the Ministry of Commerce and Trades, Vienna. Copies to be had of specifications which are not to be kept secret or which belong to an extinct patent. 22. LIST OF PATENTS DELIVERED. Monthly and annual synoptical tables of privileges granted, prolonged, as- signed, and become void. ( Vienna Gazette, monthly, and Commissioners of Patents' Journal, [vide infra, 71.] ) 23. SPECIFICATIONS PUBLISHED. In various technical periodicals and official publications kept at the Public Free Library of the Patent Office. 24. PROCEEDINGS TO OBTAIN A PATENT. Petitions for patent may be addressed by the applicant or his agent to the governors of provinces or to the different author- ities of districts. They must contain the Christian and surname, profession, and residence of the applicant; and, if not resident in the empire, the name, profession, and residence of a proxy domiciled there. If the process is intended to be worked by a firm bearing a different name, that name must also be stated. The comprehen- sive title of the invention must be given, and the num- ber of years for which the patent is demanded, which must not exceed fifteen, except by special grant of the Emperor. Foreign patents are limited in duration to that of the original. Applicant must also state whether he desires that the invention shall be kept secret or not. The tax may be paid to a public treasurer, and his receipt must be given in with the application. If made by an agent, a power of attorney must be put in ; and if there be a foreign patent, the original or an authenti- cated copy must be produced. The description of the invention must be under a sealed cover, indorsed with AUSTRIA. 65 the title of the invention, and the address of applicant or his agent. Specifications must be written in German or in the language of the province where the application is made, and must contain such a clear, unambiguous, and com- plete detail of the invention as to enable any competent man to manufacture the article. Should the authority to whom an application is made think the invention unfit to be patented, he is to inform the petitioner thereof, requiring him to withdraw it, and give a receipt for the sealed specification. An appeal is allowed to the Minister of Commerce and Trades. A defective specification may be amended. No examination of the novelty or merit of the inven- tion is made, the patent being delivered at the mere risk and expense of the applicant. The privilege of a patent extends to the whole of the Austrian dominions; that is to say, to Austria proper, Bohemia, Austrian Italy, the Polish provinces, Istria, Salzburg, Styria, Silicia, Moravia, and the Tyrol. Form of Petition for a Patent. [Insert address of the authorities of the respective district or province. I [or we, as the case may be, Christian and surname, pro- fession, and domicil] beg to state that have made a new discovery, [invention, improvement,'] consisting essen- tially in [insert the comprehensive title.] The complete specification, drawn up according to the provisions of section twelve of the patent law of is subjoined in the appendix. 6* 66 FOREIGN PATENT LAWS. {Insert whether the specification is to be kept secret, and state the exact number of the drawings, models, patterns, c., if any.'] For this discovery [invention, improvement], announced and duly specified,- which the undersigned petitioner believe , to the best of knowledge, to be patentable and new, according to the provisions of the said patent law, and legal for obtaining an exclusive privilege at own risk and responsibility, solicit such a privilege for the stated discovery, [invention, improvement,] in the manner as represented in the an- nexed sealed specification, under the legal clauses and conditions, for the term of years, for which pur- pose pay the entire patent tax of florins, due according to section eleven of the said patent law, and request the delivery of an official certificate for securing prior claims. [Address and date.'] [Signature.'] Where not the money, but the receipt of a public pay office is tendered with the application for patent, such receipt must contain the name of petitioner, the title of the invention, the number of years for which the tax has been paid, and the amount in words at length. Any deficiency or defect in this document must be remedied before the petition can be received. The tax being paid, and the petition being found worded and directed according to prescription, the par- ties being present, an official memorandum is to be inscribed on the cover of the sealed specification, stating the day and hour when the petition was delivered and the amount of tax paid, and the applicant or his agent BADEN AND THE PETTY GERMAN STATES. 67 must also sign it. Of this formality an official certifi- cate is to be delivered to the applicant. These formalities being fulfilled, the petition is to be forwarded within three days to the governor of the respective province, unless the delivery took place in the chief town of the province, whence, if found cor- rect, all the documents are to be forwarded to the Min- ister of Commerce and Trades, with a report from the governors. The petition having been found correct, or its defects having been corrected, and the article having been deemed patentable, letters patent are then issued, the minister having the power to impose on the working of the patent such conditions or restrictions as may be con- sidered necessary. III. The Grand Duchy of Baden, and Petty States of Germany. 25. No special patent legislation. 25. No SPECIAL PATENT LEGISLATION. The Minister of the Interior, however, grants privileges for inventions, after an examination as to novelty and utility by compe- tent commissioners. The Government fees amount to 40 or 50 florins, (12 fls. 1.) The term for which pat- ents are granted is five and ten years. (Annual lists of patents published in the Commissioners of Patents' Journal, vide infra, 71.) In the following States there is no special legislation, but the respective Governments grant privileges to in- ventors for the exclusive use or working of their inven- tions: 68 FOREIGN PATENT LAWS. Anhalt-Dessau. Anhalt-Bernberg. Anhalt-Cothen. Brunswick. Bremen. Frankfort. Hamburgh. Hesse-Cassel. Hesse-Darmstadt. Hesse-Homburg. Hohenzollen-Sigmarigen. Lippe-Detmold. Lippe-Schaumburg. Lubeck. Mecklenburg-Schwerin. Mecklenburg-Strelitz. Nassau. Oldenburgh. Reuss-Schleitz. Reuss-Ebersdorf. 9 Reuss-Greiz. Sachsen-Altenburg. Sachsen-Coburg-Gotha. Sachsen-Meinengen. Sachsen-Weimar-Eisenacli. Schwarzburg-Rudolstadt. Schwarzburg-Sonderhausen. Waldeck. IV. Bavaria. SEC. 26. Law, date, and where recorded. 27. Kinds of patents. 28. Previous examination. 29. Duration. 30. Annulment. 31. Government fees. 32. Documents required and where to be left. SEC. 33. Working and extension. 34. Assignments. 35. Other legal provisions. 36. Specifications, inspection and copies of. 37. List of patents delivered. 38. Specifications published. 39. Proceedings to obtain a patent. 26. LAW, DATE, AND WHERE RECORDED. Royal ordi- nance of llth September, 1825, and organic law for the regulation of trades, dated 17th December, 1853. (See Commissioners of Patents' Journal, [vide infra, 71,] No. 262, An., 1856.) 27. KINDS OF PATENTS. Patents for inventions, im- provements, and importations granted to natives and BAVARIA. 69 foreigners residing or represented in Bavaria. ISTo guar- anty as to novelty. 28. PREVIOUS EXAMINATION. By the Minister of Com- merce and Public "Works, as to novelty, utility, and for sanitary reasons. 29. DURATION. From one to fifteen years. Imported inventions according to duration of original patent. 30. ANNULMENT. In case of the invention not being new, or the description thereof having been published in German or foreign works. 31. GOVERNMENT FEES. Two guineas for one year; 2 105. for two years; 3 7s. for three years; four guin- eas for four years; 5 for five years; 6 for six years; 7 10s. for seven years; 9 for eight years; 10 17s. for nine years ; 12 10s. for ten years ; 14 12s. for eleven years ; 16 14s. for twelve years ; 18 for thirteen years ; 21 for fourteen years ; 23 for fifteen years ; besides a stamp duty of five shillings. 32. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition of the inventor or his proxy, (with power of attorney,) addressed to the Minister of Commerce and Public Works ; the fees and stamp duty ; a description, with drawings, models, or patterns. In cases of import- ation, the original patent, (or a legalized copy thereof.) 33. WORKING AND EXTENSION. Original terms extend- ed to fifteen years at most. Patents for less than six years to be worked within the first half of the period allowed ; patents for six years and more, within three years ; patents of importation, within one year. Work- ing not to be interrupted for two years. 34. ASSIGNMENTS. To be recorded at the Ministry of Commerce and Public Works within three months. 70 FOREIGN PATENT LAWS. 35. OTHER LEGAL PROVISIONS. Infringement punish- able by a fine of from 8 to 41, (half to the poor-box.) Counterfeits confiscated. Injuries done unknowingly and in good faith punishable by the interdiction only of the illegal undertaking. 36. SPECIFICATIONS, INSPECTION AND COPIES OF. Spe- cifications of patents that have become extinct, or such as are not to be kept secret, may be inspected at the above ministry. 37. LIST OF PATENTS DELIVERED. In the official ga- zette, in a register at the above ministry, and in every chief provincial town; in the Commissioners of Patents' Journal. 38. SPECIFICATIONS PUBLISHED. At the expiration of the patent, if deemed interesting, (mostly in the Bay- rische Kunst und Gewerbeblatt.} May be consulted at the Public Free Library of the Patent Office. 39. PROCEEDINGS TO OBTAIN A PATENT. The petition for a patent must be addressed to the Minister of Com- merce and Public Works; it must contain the Christian and surname of the applicant, his calling and place of abode, and, if a foreigner, those of his agent in Bava- ria, the general but characteristic designation, of the in- vention, and must state the number of years for which the patent is demanded. The petition must be accom- panied by a detailed, complete, and true description, in German, or accompanied by a German translation, of the invention, with drawings, models, &c., when neces- sary. The specification may be open, or under cover, at the option of the petitioner. The documents must be indorsed with the exact day and hour of the deposit, and a certificate to the same effect must be given to the peti- BELGIUM. 71 tioner. The application must always be accompanied with the amount of the tax and stamp duty of three florins. "Where the specification is found defective, it will be returned for correction. V. Belgium. SEC. 40. Law, date, and where recorded. 41. Kinds of patents. 42. Previous examination. 43. Duration. 44. Government fees. 45. Documents required, &c. 46. Working and extension. 47. Assignments. 48. Specifications, copies of. 49. List of paients delivered. SEC. 50. Specifications published. 51. Originals of specifications. 52. Legal proceedings. 53. Causes of nullity. 54. Proceedings to obtain a patent. 55. Declaration. 56. Form of a patent. 57. Form of transfer of patent. 58. Form of certificate of reception of a patent by transfer. 40. LAW, DATE, AND WHERE RECORDED. Royal de- crees of 24th May, 1854, and 27th March, 1857. (See Commissioners of Patents' Journal, [vide infra, 71,] Nos. 292 and 348.) " 41. KINDS OF PATENTS. Patents of invention, import- ation, and improvement granted to natives or foreign- ers residing or represented in Belgium. 42. PREVIOUS EXAMINATION. None. 43. DURATION. Twenty years at most from the date of the deposit. Foreign inventions according to the longest term granted abroad. 44. GOVERNMENT FEES. Ten francs the first year, twenty francs the second year, and so on till the twen- tieth year, when the fees are two hundred francs, (one franc, equal ten pence.) Original patentees exempt from fees for patents of improvement. Patentees having 72 FOREIGN PATENT LAWS. forfeited their rights by not making the annual payment in due time may recover them within six months follow- ing the expiration of their patent, by paying a penalty of ten francs, (eight shillings.) 45. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT.- A petition of the inventor, or his proxy, on stamped paper, to the Minister of the Interior; a specification, (two cop- ies,) in French, Flemish, or German, (foreign specifica- tions, however, only in French;) drawings (two copies) on a metrical scale, models or patterns; an acknowledg- ment of the receipt of ten francs paid to the receveur- general; a memorandum of the various documents. Deposited at the registrar's office of the respective pro- vincial governments, or at the office of the commissary of a district, or at the Ministry of the Interior at Brus- 46. WORKING AND EXTENSION. The working of the invention must take place within one year from its hav- ing been worked abroad, and not be interrupted, without good reason, for one year. Prolongations granted for one year, by applying two months previously. Patents of improvement, taken out by others than by the pat- entee of the original invention, cannot be worked together with the original invention without the consent of the original inventor, and vice versa. 47. ASSIGNMENTS. By notarial act, registered at the Ministry of the Interior on payment of ten francs, and published quarterly in the official publication of specifi- cations, together with the list of patents annulled or expired. 48. SPECIFICATIONS, INSPECTION AND COPIES OF. In- spection free at the Ministry of the Interior three months BELGIUM. 73 after the delivery of the patent. Copies on payment of costs. 49. LIST OF PATENTS DELIVERED. Published every fortnight in the Moniteur Beige and in the Commissioners of Patents' Journal. Lists of patents that have become void published quarterly in the Moniteur Beige. 50. SPECIFICATIONS PUBLISHED. Three months after the grant of the patent in full, or in the form of extracts. At all events, patentees may have their specifications published in full, at their own expense, by giving pre- vious notice thereof to the administration one month at least before the expiration of said term. Said publica- tions are kept at the library of the United States Patent Office. 51. ORIGINALS OF SPECIFICATIONS, (MODELS.) Depos- ited at the expiration of the patent in the Museum of Industry, Brussels. 52. JURISDICTION AND LEGAL PROCEEDINGS. The Tri- bunal de l re Instance. Legal proceedings to be ruled by article 587 of the Code Civil. 53. CAUSES OF NULLITY. Want of novelty; non-pay- ment of the annual fees ; fraudulent or defective descrip- tion; previous publication, except official foreign pub- lications of inventions patented abroad, and for which patents of importation are sought in Belgium. 54. PROCEEDINGS TO OBTAIN A PATENT. The applicant for a patent, or his agent, must make application to one of the provincial governments of the kingdom, or at the office of one of the district commissioners, if situated at a distance from the chief town of the province. To this application must be added in a sealed envelope 1. A specification of the objects invented. 7 74 FOREIGN PATENT LAWS. 2. The drawings, patterns, or specimens necessary to understand the specification. 3. A duplicate, certified as being in conformity with the specification and drawings. 4. A list of the objects deposited. All these documents must be signed by the applicant or his agents. A receipt, showing that the first year's fee of ten francs has been paid, must be deposited with the above. The application must be on stamped paper, and con- tain the Christian and surname of the inventor, his pro- fession, and his address, real or elected, in the kingdom, and it must express the object of the invention distinctly and concisely. It must be confined to one principal in- vention, with its details and applications. If a patent of importation, it must state the duration of the original patent and the country where granted. An agent must produce a power to act. (The decree says this must be in due legal form, but the practice is not to require that the power be legalized by notaries, magistrates, or consuls.) The specifications must be in French, Flemish, or German, and, if not in French, with a French translation. When the inventor is not resident in Belgium, the spec- ification should be without interlineation or erasure, and any words interlined or erased should be counted, certi- fied, and the pages and references indicated. The speci- fication must be clear and distinct, and conclude with a summary of the matter of which it consists. The drawings should be in ink, to a metrical scale, properly indicating the invention in plan, sections, and elevations, and the parts which contain the invention patented should be of a different color to the rest. BELGIUM. 75 A statement must be drawn up and signed by the ap- plicant and the registrar of the provincial government, or by the commissioner of the district, containing the day and hour of the deposit and the title of the invention, the inventor's Christian and surname, calling, and address, or those of his agent. If a patent of importation, that fact must be mentioned, with the date and duration of the patent in the country where it originated, and the name of the patentee. This document must also con- tain an acknowledgment of the payment of the first an- nual fee, and be attached to the packet containing the specification and drawings. A copy gratis will be given to the applicant. The offices for registration of patents are open daily from 10 a. m. to 2 p. m. A register of all documents secured at the offices will be open to public inspection at the office of the Minister of the Interior. In case of omissions or irregularity of form, rectifica- tions may be made, and a note of such alterations men- tioned in the register. A certificate of the Minister of the Interior will be given to the applicant without delay, stating that the prescribed formalities have been complied with. This certificate will constitute his patent right. The first copy will be given gratis, but all others must be paid for. 55. DECLARATION. PEOVINCE OP This day, [day of the month, 18 ,] at o'clock, Mr. has deposited in our hands the present package, sealed with his seal, which he has informed us contains all the descriptive documents of [title of patent], for which he solicits a patent of invention [or importation] for five, ten, or fifteen years, as is indicated in the petition annexed. Mr. 76 FOREIGN PATENT LAWS. has declared to us that he is the inventor [or importer of the said ob- ject.] Done at the secretarial of the provincial government the day of 56. FORM OF A PATENT OF INVENTION, IMPORTATION, OR IMPROVEMENT. We, Leopold, King of the Belgians, to all present and to come, greet- ing : Seeing the demand of Mr. , domiciled , tending to obtain, according to the law of 25th January, 1817, a patent of for years, for [the title], of which he declares himself to be the invent- or, [or importer,] as appears by the proems-verbal made on the deposit of the documents at the secretarial of the province of , the Seeing the drawings and descriptions, as follows : We have decreed and decree : A patent of years is granted to Mr. for the above described. This patent guaranties the following rights to its possessor : 1. To make and sell exclusively in the whole kingdom, during the whole term of the patent, the patented objects, or to cause them to be made or sold by others whom he may authorize. 2. To pursue in the courts of law those who in any way infringe on the exclusive rights which have been accorded him, and to proceed against them at law for the purpose of obtaining confiscation for his profit of the objects made according to Lis pattern model, but not yet sold, and of the amount for which any such objects may have been sold, as likewise to insti- tute actions for damages and interest, if there be any. The Government guaranties in nowise the novelty or the merits of the invention, and it may declare the present patent null, and publish the invention for one of the causes named in article 8 of the law of 25th January, 1817. The objects patented shall be made in the country, and the patentee or his assigns shall (at the expiration of the delay fixed by letter C of article 8 of the law, and earlier if the patent so stipulates) be required to produce" to the Minister of Interior, at any time he may require it, a sufficient proof of the patented object having been put into activity in an established and regular way, so that it may be considered as being usefully in activity in the country. The Government reserves to itself the faculty of quashing the patent and giving the object to the public if these obligations be not strictly complied with. Given the GREAT BRITAIN AND IRELAND. 77 57. FORM OP ACT OF TRANSFER OF PATENT. This day, . ,184 , Mr. presented himself at our secretarial of the provincial government, to require a procSs-verbal to be made up of the transfer which he has made to Mr. by notarial act, of the whole or part of the patent which was granted to him the for , which procds-verbal the parties interested have signed with us, after having paid the dues indicated in the arrangement for the delivery of the patent. Done at the secretarial of the province of the 58. FORM OF CERTIFICATE OF RECEPTION OF A PATENT BY TRANSFER. This day, , 184 , Mr. presented himself at our secretarial, to obtain a procSs-verbal of the acquisition which he has made, as proved by act of the notary by right of succession, of the whole or part of a patent of invention which we delivered the , for to Mr. , deceased. Which procSs- verbal the interested party has signed with us, after hav- ing paid the dues indicated in the tariff of the arrangement for the delivery of patents. Done at the secretarial of the province of , the Enacted by his Majesty the 26th March, 1817. The Secretary of the Department of Instruction of the Arts and Sciences. VI. Great Britain and Ireland. SEC. 59. Law, date, and where recorded. 60. Kinds of patents. 61. Previous examination. 62. Duration. 63. Stamp duties to bepaid. 64. Documents required at the Pat- ent Office. 65. Assignments and licenses. 66. List of patents at different stages. 67. Specifications, disclaimers, alter- 7* SEC. ations, provisional specifica- tions, assignments, licenses. 68. Specifications, disclaimers, al- terations, and indexes. 69. Originals of specifications, etc. 70. Free Public Library of the Commissioners of Patents. 71. Commissioners of Patents' Jour- nal. 72. Infringements. 73. Other legal provisions. 78 FOREIGN PATENT LAWS. 59. LAW, DATE, AND WHERE RECORDED. Acts 15 and 16 Viet., cap. 83; 16 Viet., cap. 5; 16 and 17 Viet., cap. 115. In operation since 1st October, 18S-2. (Pat- ent Law Amendment, Patent Office 25 Southampton Buildings, Chancery Lane.) 60. KINDS OP PATENTS. Letters patent, disclaimers, and memoranda of alteration issued to British subjects and aliens residing or represented in the United King- dom. Provisional protection during six months. Valid for the whole of the United Kingdom, the Channel Islands, and the Isle of Man. Medicines vended under a Government stamp as "patent medicines" have never been the subject of letters patent. 61. PREVIOUS EXAMINATION. None as to novelty or utility. 62. DURATION. Patents are issued for fourteen years, subject to prolongation by Privy Council. Patents ex- pire at the end of the third or seventh year, if the requi- site payments in stamp duties are not made. Letters patent are dated from the day of application, and when antedated are to be of the same validity as if sealed on the day of the date. Letters patent for patented foreign inventions according to the term of foreign patent. 63. STAMP DUTIES TO BE PAID. On petition, 5; on certificate of record on notice to proceed, 5; on war- rant for letters patent, 5; on the sealing of letters pat- ent, 5 ; on specification, 5 ; on the letters patent before the expiration of the third year, 50; on the letters pat- ent before the expiration of the seventh year, 100: i. e., 175 for a patent of fourteen years; on certificate of record on notice of objections, 2; for every search and inspection, Is.; for entry of assignment or license, 5s.; GREAT BRITAIN AND IRELAND. 79 on certificate of assignment or license, 5s. ; on applica- tion for disclaimer, 5; on caveat against disclaimer, 2; on office copies of documents, for every seventy-two words, 2d. The payments for the above stamp duties are made at Somerset House, (Inland Revenue Depart- ment,) and the certificates for such payments are deliv- ered at the Patent Office, (gratis.) Fees to be paid to the law officers and to their clerks : By the person opposing a grant of letters patent, 3 10s. ; by the petitioner on the hearing of the case of opposition, 3 10s. ; by the peti- tioner for the hearing previous to the first allowing a disclaimer or memorandum of alteration in lettei -d patent and specification, 3 5s.; by the person opposing the allowance of such disclaimer, 3 5s.; by the petitioner for the first allowing a disclaimer or memorandum of alteration in letters patent and specification, 3 15s. 6d. 64. DOCUMENTS REQUIRED AT THE PATENT OFFICE. A petition to the Queen by the inventor or his agent ; a declaration of the inventor or his agent, made before a master in chancery, or justice of the peace, or a British consul abroad; a provisional or complete specification, (two copies of the latter, one on parchment,) together with the necessary drawings, (two copies on parchment,) one inch to a foot recommended ; an abridgement (two copies) of provisional specification, or of complete speci- fication, when filed with the petition and declaration; notice to proceed, eight weeks clear before the expira- tion of six months ; warrant and great seal, twelve clear days before the expiration of six months, (upon special circumstances the Lord Chancellor may allow a further extension of time;) notice of opposition to be given witbm twenty-one days after the date of notice to pro- 80 FOREIGN PATENT LAWS. ceed in the gazette, or, in case of opposition to great seal, twelve days before the expiration of provisional protection. (N. B. Application by letter cannot be en- tertained.) For the Great Seal Patent Office, the initials are W. C., the district being western central. In the direction of a letter, these initials should be legibly writ- ten in a separate line, and should in all cases end the address, thus: THE COMMISSIONERS OF PATENTS, Great Seal Patent Office, 25 Southampton Buildings, London, W. C. 65. ASSIGNMENTS AND LICENSES. Recorded in the Reg- ister of Proprietors at the Patent Office. Entries may be expunged. 66. LIST OF PATENTS AT THEIR DIFFERENT STAGES. Published in the London Gazette and in the Commis- sioners of Patents' Journal, within five days of the appli- cation and notice to proceed and within a fortnight of the sealing of the Patent; also, List of Patents on which the stamp duty of 50 and 100 has been paid, &c. (Com- pare Commissioners of Patents' Journal, [vide infra, 71.]) 67. SPECIFICATIONS, DISCLAIMERS, MEMORANDA OF AL- TERATIONS, PROVISIONAL SPECIFICATION, ASSIGNMENTS, AND LICENSES. Open to the inspection of the public at the Patent Office, London ; at the Enrollment Office of the Court of Chancery, in Dublin; and at the office of the Directory of Chancery in Scotland. (K. B. Not within the term of provisional protection.) 68. SPECIFICATIONS, DISCLAIMERS, MEMORANDA OF AL- TERATIONS, AND INDEXES. Published by the Commission- GREAT BRITAIN AND IRELAND. 81 era of Patents, and sold at cost price, at the Patent Office, within a month of the issue of the letters patent. All old specifications have been published likewise, and are sold at cost price. In course of publication and partly published, (thirty-six classes,) Abridgments (in classes and chronologically arranged) of all Specifications of Patented Inventions, from the earliest enrolled to those published under the act of 1852. 69. ORIGINALS OF SPECIFICATION, ETC., (MODELS.) Kept at the Patent Office. Models are not required, but when presented or lent, they are deposited in the Museum of the Commissioners of Patents, South Kensington, which is open daily to the public free of charge. 70. FREE PUBLIC LIBRARY OF THE COMMISSIONERS OF PATENTS. The Reading-Room in the office of the Com- missioners of Patents is open daily from 10 till 4 o'clock. In addition to the printed specifications, indexes, and other publications of the Commissioners of Patents, the Library includes the official publications of foreign patents and a collection of the leading British and foreign scientific journals and text-books, in the various departments of science and art, (about sixty thousand volumes.) The Commissioners of Patents' publications may be consult- ed at the public libraries of the chief continental States, the British Colonies, and America. 71. COMMISSIONERS OF PATENTS' JOURNAL. Published on Tuesdays and Fridays : price, 2d ; by post, 3d. Con- tents : 1. Applications for letters patent ; 2. Grants of provisional protection for six months ; 3. Inventions pro- tected for six months by the deposit of a complete spe- cification; 4. Notices to proceed; 5. Patents sealed ; 6. Patents extended; 7. Patents canceled; 8. Patents on 82 FOREIGN PATENT LAWS. which the third year's stamp duty has been paid ; 9. Pat- ents which have become void by non-payment of the stamp duty of 50 before the expiration of the third year; 10. Patents on which the seventh year's stamp duty has been paid ; 11. Patents which have become void by non-payment of the stamp duty of 100 before the expiration of the seventh year; 12. Colonial patents and patent law; 13. Foreign patents and patent law; 14. Weekly price lists of printed specification, &c.; 15. Official advertisements and notices of interest to patent- ees and inventors generally. The patent laws of the colonies of Great Britain and of foreign States are published in full in about eighty numbers of the Commissioners of Patents' Journal, the official organ of the British Patent Office, which should be found, as well as all other publications of the British Commissioners, in the Patent Office, "Washington ; Pea- body Institute, Baltimore ; Franklin Institute and Phil- adelphia Library, Philadelphia; Astor Library, New York ; Free Library, Boston ; Young Men's Association Library, Chicago; Wisconsin Historical Society, Madi- son ; and Cornell University, Ithaca, New York, to which institutions they have been presented by the British Gov- ernment. The following is a list of the foreign States the laws of which have been published in the Commissioners of Patents' Journal: Argentine Republic, Nos. Bavaria, 262. 1393, 1394, 1453. Belgium, 292, 348. Austria, 291. British Guiana, 798. Baden and petty States of Canada, 279, 625, 856, Germany, 325. 1106, 1188, 1629. GREAT BRITAIN AND IRELAND. 83 Cape of Good Hope, 727. Ceylon, 648. % Cuba, 498. Dutch West Indies, 322. France, 228, 229, 947, 948, 949, 1386. Germany, 435. Greece, 325. Hanover, 321. India, 240, 348, 552, 578. Italy, 1061, 1064, 1656. Jamaica, 660. Lucca, 321. Mauritius, 1282. Mexico, 496. Netherlands, 289, 1643. Newfoundland, 858. New South Wales, 386. New Zealand, 861, 1639. Parma, Piacenza, and Gu- astalla, 321. Poland, 335. Portugal, 325, 1026. Prussia, 313, 329. Queensland, 859. Roman States, 319. Russia, 334, 508. Sardinia, 233, 235, 636, 637, 639, 640. Saxony, 236. Sicilies, (the Two,) 316. South Austria, 1442. Spain, 323. Sweden, 327, 354. Tasmania, 860. Trinidad, 883, 1698. Victoria, 186, 359, 1622. Wurtemburg, 314, 995. Norway, 665. 72. INFRINGEMENTS. In actions for infringement of letters patent particulars are to be delivered, and no evi- dence allowed not mentioned therein. Courts of com- mon law may grant injunction in case of infringement. Particulars to be regarded in taxation of costs. 73. OTHER LEGAL PROVISIONS. Letters patent grant- ed to the first inventor not to be invalidated by protec- tion obtained in fraud of the first inventor. Specification and objections to be referred to law officer. Power of law officer to order by or to whom costs shall be paid. Nothing to affect the prerogative of the Crown in grant- ing or withholding grant of letters patent. Nothing to 84' FOREIGN PATENT LAWS. give effect to any letters patent granted in any colony. Letters patent may be granted to personal representa- tives of the applicant during the term of protection, or within three months after applicant's decease. If letters patent be destroyed or lost other letters patent may be issued. Letters patent not to prevent the use of inven- tions in foreign ships resorting to British ports, except ships of foreign States in whose ports British ships are prevented from using foreign inventions. Certified copies of specifications, &c., as printed by Queen's printers, to be evidence. Copies or extracts of letters patent, &c., certified and sealed, filed at Commissioners' office, to be received in evidence. Power for more than twelve per- sons to have a legal interest in letters patent. Falsifica- tion or forgery of entries a misdemeanor. VII. Analysis of the British Patent Laws. SEC. 74. Acts of Parliament; rules. "75. Commissioners. 76. Seal. 77. Petition and declarations. 78. Only one invention to be in- cluded in a patent. 79. Copy of specification with appli- cation. 80. Petitions, &c., to be left at office ; size. 81. Size of drawings. 82. Applications referred. 83. Law officer may amend title. 84. Applicant may not amend pro- visional specification. 85. Nature of invention. 86. Pee on leaving petition. SEC. 87. Provisional protections. 88. Complete specifications. 89. Fraud. 90. Complete specification adver- tised. 91. Complete specification stamp 5. 92. Notice to proceed. 93. Notice to proceed advertised. 94. Opposition. 95. Applications for or against seal- ing. 96. Notice to proceed fee 3. 97. Objections to be referred. 98. Law officer to decree cost. 99. Warrant for sealing patent. 100. Complete specification filed. GREAT BRITAIN AND IRELAND. 85 SEC. 101. Patent fee 5; stamp 5. 102. ^Future payments. 103. Issue of letters patent. 104. Issued three months from war- rant. 105. Accidental delay. 106. Case of death. 107. If lost, new patent may issue. 108. Date of letters patent. 109. Patents for foreign inventions. 110. Foreign ships. 111. Copy of drawings. 112. Size of specifications. 113. Size of drawings and scale. 114. Extra copy of specification. 115. Documents to be legibly signed. SEC. 116. Period of notice. . 117. Public inspection of documents. 118. Documents to be printed. 119. Documents evidence in courts. 120. Chronological register; copy of license may be had and is evidence. 121. Number of persons interested. 122. Falsification of register. 123. Entries in register expunged. 124. Disclaimers. 125. Confirmation of prolongation. 126. Infringement. 127. Judge's order. 128. Taxing costs. 129. Schedules of fees and stamps 74. ACTS OF PARLIAMENT; RULES. The following is an analysis of the patent law amendment act, 1852, (15 and 16 Viet, ch. 83,) with which are embodied the rules which have been made from time to time by the Lord Chancellor and the Commissioners, also such parts of the 5 and 6 William IV., ch. 83, and 7 and 8 Viet, ch. 89, and 12 anfl 13 Viet, ch. 109, as are retained as forming part of the present law by the act of 1852, and the act of the 16 and 17 Viet, ch. 115, to amend the act of 1852: 75. COMMISSIONERS. The Lord Chancellor. The Master of the Rolls. The Attorney General and Solicitor General for England. The Lord Advocate and Solicitor General for Scotland. The Attorney General and Solicitor General for Ireland. The Crown has power to appoint other persons as Com- missioners. The powers of the act may be exercised by any three 8 86 FOREIGN PATENT LAWS. Commissioners, the Lord Chancellor or Master of the Rolls being one. ( 1.) . 76. SEAL. They are authorized to have a seal made for sealing patents, and to vary such seal from time to time. ( 2.) They may make rules (not inconsistent with this act) for conducting the business of the office, and for the purpose of the act may provide officers and employ clerks. ( 3, 4, 5.) 77. PETITION AND DECLARATIONS. The petition for the grant of letters patent and the declarations required to accompany such petition shall be left at the office of the Commissioners, and also a statement in writing, called the provisional specification, signed by or on behalf of the applicant, and describing the notion of his inven- tion. The day of the delivery of these documents at the office is to be indorsed upon them, and a certificate to that effect given to the depositor. ( 6.) 78. ONLY ONE INVENTION TO BE INCLUDED IN A PATENT. Every application for letters patent, and every title of invention and provisional specification, must be limited to one invention only, and no provisional protection will be allowed or warrant granted where the title or the provisional specification embraces more than one inven- tion. (3d Set of Rules, December 12, 1853.) The title of the invention must point out distinctly and spe- cifically the nature and object of the invention. (16.) The expression "invention" shall mean any manner of new manufacture in the meaning of the act 21 James L, ch.3. (6,7.) 79. COPY OF SPECIFICATION, &c., TO ACCOMPANY APPLI- CATION. A true copy, under the hand of the patentee, or applicant, or his agent, of every specification and com- GREAT BRITAIN AND IRELAND. 87 plete specification, with the drawings accompanying the same, if any, shall be left at the office on filing such specification or complete specification. (16 and 17 Viet., ch. 115.) 80. PETITIONS, &c., TO BE LEFT AT OFFICE; SIZE. All petitions for letters patent, and all declarations and pro- visional specifications, are to be left at the office. They are to be written on sheets of paper twelve inches in length and eight and a half inches in breadth, leaving a margin of one and a half inch on each side of each page. (1st Set of Rules, October 1, 1852.) 81. SIZE OF DRAWINGS. Drawings to accompany pro- visional specifications to be on sheets of paper, parch- ment, or cloth, twelve inches long, eight and a half inches broad, or twelve inches broad and seventeen inches long, leaving a margin of one inch on every side of each sheet. (1st Set of Rules, October 1, 1853.) 82. APPLICATIONS REFERRED TO A LAW OFFICER, WHOSE CERTIFICATE FOR FILING GIVES PROVISIONAL PROTECTION FOR Six MONTHS. The application for letters patent shall be referred by the Commissioners to one of the law officers, (who are the attorneys and solicitors general for England and Ireland, and lord advocate and solicitor general for Scotland.) ( 55.) The law officer may call to his aid a scientific or other person and fix his remuneration, which is to be paid by the applicant. If satisfied with the provisional specification, the law officer shall give a certificate to that effect, to be filed at the Patent Office, and thereupon the invention may be used and published during a term of six months, the protec- tion thus afforded being termed provisional protection. 83. LAW OFFICER MAY AMEND TITLE. The law officer 88 FOREIGN PATENT LAWS. has the power to cause the title of the invention to be amended, if too large or insufficient. ( 7, 8.) 84. APPLICANT MAY NOT AMEND PROVISIONAL SPECIFI- CATION. No amendment or alteration at the instance of the applicant will be allowed in a provisional specifica- tion after the same has been recorded, except for the correction of clerical errors or of omissions made per in curiam. 85. PROVISIONAL SPECIFICATION MUST STATE DIS- TINCTLY NATURE OF INVENTION. The provisional speci- fication must state distinctly and intelligibly the whole nature of the invention, so that the law officer may be apprized of the improvement and of the means by which it is to be carried into effect. -(2d Set of Rules, October 15, 1852.) 86. FEE ON LEAVING PETITION 5. The fee to be paid on leaving petition for grant of letters patent is 5. (Schedule of Act.) 87. PROVISIONAL PROTECTIONS TO BE ADVERTISED IN GAZETTE. Provisional protections are to be advertised in the London Gazette, with the name and address of the petitioner, the title of his invention, and the date of the application. (1st Set of Rules, Oct. 1, 1852.) 88. COMPLETE SPECIFICATION MAY BE AT ONCE DEPOS- ITED. The applicant may, instead of the provisional specification, deposit with the petition and declaration an instrument, under his hand and seal, called a complete specification, particularly describing the nature of his invention, the same to be mentioned in such declaration, and the day of delivery of these documents at the office shall be registered there and indorsed on the petition, declaration, and specification, ^and a certificate thereof GREAT BRITAIN AND IRELAND. 89 shall be given to the applicant or his agent. This pro- ceeding shall afford protection to the applicant in the use of his patent for six months. ( 9.) 89. PREVIOUS PATENTS NOT INVALIDATED BY SUBSE- QUENT PROTECTION OBTAINED BY FRAUD. Letters patent granted to the first inventor shall not be invalidated by reason of provisional or other protection obtained in fraud by any other person. ( 10.) 90. COMPLETE SPECIFICATION TO BE ADVERTISED IN GA- ZETTE. Every invention protected by the deposit of a complete specification shall be forthwith advertised in the London Gazette, the advertisement setting forth the name and address of the petitioner, the title of the in- vention, the date of the application, and that a complete specification has been deposited. (1st Set of Rules, Oct. 1, 1852.) 91. COMPLETE SPECIFICATION STAMP 5. The stamp duty on a complete specification is 5. (Schedule of Act.) 92. AFTER PROTECTION OBTAINED APPLICANT MAY GIVE NOTICE TO PROCEED; How APPLICATION MAYBE OPPOSED. The applicant, after obtaining a provisional protection or depositing a complete specification, may give notice to the Commissioners of his intention to proceed with his application for letters patent, which notice the Commissioners shall advertise. Any person having an interest in opposing the grant of such letters patent may do so in writing, at such time and place, and according to such regulations, as the Commissioners may appoint. 93. NOTICE TO PROCEED TO BE ADVERTISED IN GA- ZETTE. "When, after provisional protection or the deposit of a complete specification, the petitioner shall give no- 8* 90 FOREIGN PATENT LAWS. tice in writing, at the office, of his intention to proceed with his application for letters patent, the same is to be forthwith advertised in the London Gazette, with the name and address of the petitioner, and the title of his inven- tion. 94. OPPOSITION MUST BE IN WRITING WITHIN TWENTY- ONE DAYS. Any person may, within twenty-one days thereafter, leave particulars in writing, at the office, of objections to the application. 95. APPLICATIONS FOR OR AGAINST SEALING TO BE BY NOTICE IN WRITING LEFT AT OFFICE. Every application to the Lord Chancellor against or in relation to the seal- ing of letters patent shall be by notice, and such notice shall be left at the Commissioners' office, and shall con- tain particulars in writing of the objections to the sealing of such letters patent. (Chancellor's Order, Oct. 15, 1852.) 96. NOTICE TO PROCEED FEE 5. The fee on giving notice to proceed is 5. (Schedule of Act.) 97. OBJECTIONS TO BE REFERRED TO LAW OFFICER. The time for making objection having expired, the provis- ional or complete specification, with the particulars of the objections, (if any,) shall be referred to the law officer to whom the original application had been referred. 98. LAW OFFICER TO DECREE COST AND BY WHOM PAID. The law officer, in case of objection, is to order the costs incurred thereby to be paid by such person as he shall fix, and has power to enforce payment. ( 13, 14.) 99. LAW OFFICER MAY . THEN ISSUE WARRANT FOR SEALING PATENT. After such hearing, the law officer may issue a warrant, sealed with the Commissioners' seal, for sealing the letters patent, setting forth their GREAT BRITAIN AND IRELAND. 91 tenor and effect, and directing the insertion of such restrictions and conditions as he may deem proper pur- suant to the act. ( 15.) 100. PROVISION INSERTED THAT COMPLETE SPECIFICA- TION SHALL BE FILED WITHIN Six MONTHS. A provision is to be inserted in all letters patent, in respect whereof a provisional and not a complete specification shall be left on the application for the same, requiring the specifica- tion to be filed within six months from the date of appli- cation. (2d Set of Rules, Oct. 15,- 1852.) 101. PATENT FEE 5, AND STAMP 5. The fee for the law officer's warrant is 5, and the stamp on letters patent is also 5. (Schedule of Act.) 102. LETTERS PATENT VOID IF BEFORE EXPIRY OF THREE YEARS 50 BE NOT PAID, AND IF BEFORE EXPIRY OF SEVEN YEARS 100 BE NOT PAID. Letters patent thus granted shall be subject to the condition of becoming void, unless before the expiration of three years a further fee of 40 and a stamp duty of 10 (in all 50) be paid, and unless before the expiration of seven- years a further fee of 80 and stamp duty of 20 (in all 100) be paid. Memo- randa of such payments shall be indorsed on the war- rant for the letters patent, and a certificate of the same given, and also indorsed on the letters patent. 103. ISSUE OF LETTERS PATENT, THEIR EXTENT AND LIMIT. The Commissioners, when required by the appli- cant, shall then cause letters patent to be prepared ac- cording to the warrant, which shall be sealed with the great seal of the United Kingdom. Such letters patent shall extend to the whole of England, Scotland, and Ire- land, to the Channel Islands, and to the Isle of Man. Should the warrant so direct, the letters patent may also 92 FOREIGN PATENT LAWS. apply to any colonies or plantations abroad which may be specified. But they will have no authority in any colonies where the law in force in such colonies would render them invalid. A transcript of the letters patent is to be transmitted to the director of chancery in Scot- land, which transcript is to be received in evidence in all Scottish courts of law. ( 18.) 104. MUST BE ISSUED WITHIN THREE MONTHS FROM WARRANT, AND DURING PROVISIONAL PROTECTION, UNLESS DELAYED BY CAVEAT. Patents cannot be issued unless applied for within three months from the date of the warrant, and during the six months of provisional pro- tection or complete specification, unless delayed by a caveat, or application to the Lord Chancellor against sealing the letters patent. In such case they may be sealed at such time as the Lord Chancellor may direct. (See Instruction 41, 19, 20.) 105. BUT LORD CHANCELLOR MAY ALLOW MONTH'S LIMIT IF DELAY BE PURELY ACCIDENTAL. But by the sixth clause of the act of the 16 and 17 Viet., ch. 115, the Lord Chancellor may seal letters patent after the expiration of provisional protection, provided the delay in such sealing has arisen from accident, and not from the neglect or willful default of the applicant, the sealing to be dated as of any day before the expiring of provis- ional protection, and in like manner he may extend the time for filing the specification; such extension, how- ever, is not to exceed one month. 106. IN CASE OF DEATH PATENT GRANTED TO REPRE- SENTATIVES WITHIN THREE MONTHS. In case of the death of the applicant during the period of protection, letters patent may be granted to the personal representatives GREAT BRITAIN AND IRELAND. 93 during such period, or within three months of the death of the applicant. ( 21.) 107. IF LOST, NEW PATENT MAY ISSUE ACCORDING TO COMMISSIONERS' REGULATIONS. In case letters patent he lost or destroyed, others of like effect may be issued, subject to such regulations as the Commissioners may make. ( 22.) 108. DATE> OF LETTERS PATENT. Letters patent are to be dated as of the day of the application for the same, and if bearing date prior to the day of actual sealing, are to be equally valid. ( 23, 24.) 109. PATENTS FOR FOREIGN INVENTIONS EXPIRE WITH ORIGINAL FOREIGN PATENT. Patents for foreign inven- tions, previously patented abroad, shall only continue in force iu the United Kingdom as long as they shall be valid in the foreign country where the patent is already obtained, and where more than one patent is taken out abroad, the termination of the British patent shall take place when the first of such foreign patents shall expire. ( 25.) 110. PATENTS NOT TO PREVENT FOREIGN SHIPS USING THE INVENTION. Letters patent granted under this act shall not prevent the use of the invention thereby se- cured on board of foreign ships resorting to British ports, except when the government to which such ships belong shall forbid the use by British ships of foreign patented inventions. ( 26.) 111. SPECIFICATIONS TO BE FILED WITH COPY OF DRAW- INGS. Specifications are to be filed at the office with an extra copy of any drawings. ( 27, 28.) But by the 16 and 17 Viet., ch. 115, a true copy of every speci- fication and complete specification, with the drawings 94 FOREIGN PATENT LAWS. accompanying them, are to be left at the office on filing such specification or complete specification. 112. SIZE OF SPECIFICATIONS. All specifications, in pursuance of the conditions of letters patent, and all complete specifications accompanying petitions for the grant of letters patent, shall be respectively written bookwise upon a sheet or sheets of parchment, each of the size of twenty-one and a half inches long by four- teen and three-quarter inches broad. The same may be written on both sides of the sheet, but a margin must be left of one and a half inch on every side of each sheet. 113. SIZE OF DRAWINGS AND SCALE. The drawings accompanying such specifications shall be on a sheet or sheets of parchment, each twenty-one and a half inches long by fourteen and three-quarter inches broad, or twenty-one inches broad by twenty-nine and a half inches long, with a margin of one and a half inch on every side of each sheet. [It is recommended to applicants and patentees to make their elevation drawings according to the scale of one inch to a foot. Lord Chancellor's order, October 1, 1852.] 114. EXTRA COPY OF SPECIFICATION TO BE LEFT WITH ORIGINAL; SIZE, &c. An extra copy of the provisional specification or complete specification is to be left at the office with the original. It is to be written on sheets of brief or foolscap paper, briefwise, and on one side only. The extra copy of drawings must be according to the directions given above. (See Instruction 36.) (3d Set of Rules, Dec. 12, 1853.) 115. DOCUMENTS TO BE LEGIBLY SIGNED. All specifica- GREAT BRITAIN AND IRELAND. 95 tions, copies of specifications, provisional specifications, petitions, notices, and other documents left at the office of the Commissioners, and the signatures of petitioners or agents, must be written in a large and legible hand. 116. NOTICE TO PROCEED MUST BE GIVEN EIGHT WEEKS, AND APPLICATION FOR WARRANT TWELVE CLEAR DAYS BEFORE END OF PROVISIONAL PROTECTION. The notice of the applicant to proceed for letters patent must be left at the office eight weeks at least before the expiration of the provisional protection, and the application for the warrant of the law officer and for the letters patent must be made at the office twelve clear days at least before the expiration of the provisional protection. But the Lord Chancellor reserves to himself the power to grant a further extension of time under the special cir- cumstances provided for by the 6th of the 16 and 17 Viet., ch. 115. (See Instruction 29, ib.} 117. PROVISIONAL SPECIFICATIONS, AFTER Six MONTHS, AND ALL OTHER DOCUMENTS OPEN FOR PUBLIC INSPECTION. True copies of provisional specifications, after the expira- tion of six months, and of all other specifications, dis- claimers, and memoranda of alterations, are to be open to public inspection at the offices in London, Edinburgh, and Dublin. 118. DOCUMENTS TO BE PRINTED AND SOLD AND INDEXES OPEN FOR PUBLIC INSPECTION. Specifications, disclaim- ers, and memoranda of alterations are to be printed and sold at such prices as the Commissioners shall direct. [This price is fixed by the Commissioners' rules at two- pence for every ninety words.] Indexes of all patents and documents relating thereto are also to be prepared, 96 FOREIGN PATENT LAWS. and to be open for public inspection and for sale, and printed copies of patents and other documents are to be received as evidence in courts of law. ( 30, 32, 33.) 119. PRINTED OR MANUSCRIPT COPIES, &c., WITH COMMISSIONERS' SEAL, AND DOCUMENTS EECORDED AND FILED, EVIDENCE IN COURTS OF LAW. Bat by the 4th of the 16 and 17 Viet., ch. 115, it is declared that printed or manuscript copies, or extracts certified and sealed with the seal of the Commissioners, specifications, disclaimers, and all other documents recorded and filed at the office, are to be received as evidence in all the courts of the United Kingdom, and other places to which the patent shall extend, without the production of the originals. 120. CHRONOLOGICAL REGISTER OF DOCUMENTS TO BE KEPT, INCLUDING LICENSES ; COPY OF LICENSE MAY BE HAD, SUCH COPY TO BE EVIDENCE. A chronological register of patents and other documents shall be kept and be open to public inspection, and also a register of proprietors, to include the assignment of any patent or share thereof, any license under letters patent, with the district to which such license relates, and any other matter affecting the proprietorship of letters patent; and a copy of such entry, properly certified, shall be given to any applicant on pay- ment of a fee, the copy to be evidence. Until such entry shall have been made, the grantee of the patent is to be considered the sole proprietor. Copies of the registers are to be kept at Edinburgh and Dublin. ( 34, 35.) 121. ANY NUMBER OF PERSONS MAY BE INTERESTED IN A PATENT. A larger number than twelve may have a legal interest in a patent. ( 36.) 122. FALSIFICATION OF REGISTER A MISDEMEANOR. GREAT BRITAIN AND IRELAND. 97 ' Falsification of the register of proprietors is a misde- meanor. ( 37.) 1 123. ENTRIES IN REGISTER MAY BE EXPUNGED BY JUDGE'S ORDER. Entries in the registry of proprietors may be expunged by application to Master of the Rolls, or any common law court. The costs of such applica- tion to be paid as the judge shall decree. ( 38.) 124. DISCLAIMERS. The provisions of the 5 and 6 Wm. .IV, ch. 83, and 7 and 8 Viet., ch. 69, relating to disclaim- ers and memoranda of alterations in letters patent and specifications, to apply to this act, except as hereafter provided. By the common law, letters patent became wholly void for any partial defect; for instance, the want of novelty in a very small part. The act of 5 and 6 Wm. IV, ch. 83, allows a patentee to put in a disclaimer of any part of either the title or specification, stating the reason for such disclaimer, or enter a memorandum of alteration; but any other person may enter a caveat against such disclaimer or memorandum of alteration, the caveat giving the objector a right to be heard in op- position to the disclaimer or alteration. In case of no opposition, or of the disallowance of any caveat, the dis- claimer or memorandum of alteration may be filed and enrolled, and be deemed part of the letters patent and specification. ( 39.) But the disclaimer or alteration is not to affect any action pending at the time, and the law officer to whom the case shall be referred may re- quire the party applying to advertise such disclaimer or alteration. (Ib.} The 7 and 8 Viet, allows a patentee the same faculty of disclaimer or alteration in concert with any party to whom he may have wholly or in part transferred a property in his patent. 9 98 FOREIGN PATENT LAWS. 125. CONFIRMATION AND PROLONGATION OF A PATENT. The provisions of the 5 and 6 Wm. IV, ch. 83, and the 2 and 3 Viet, ch. 67, and the 7 and 8 Viet., ch. 69, as to confirmation and prolongation of patents, are to apply to patents under this act. The new letters patent are to be available only for such places as the original pat- ent extended to, and are to bear date on the day after the expiration of the term of the original letters patent. ( 40.) The fourth section of the act of William en- acts, that any patentee may advertise three times in the London Gazette, and in three London papers, and three times in some country paper, of or near the town where he may reside or carry on his manufacture, (or in some paper published in the county where he carries on his manufacture or lives, in case there should be no paper in the town,) his intention to petition the Privy Council for a prolongation of his patent, and that any other per- son may enter a caveat at the council's office. There- upon the case may be heard before the judicial commit- tee of the Privy Council, and should the report of the committee be in favor of the patentee, the patent may be prolonged for seven years. The second section of the 2 and 3 Viet., ch. 67, allows a patentee to obtain an ex- tension of his patent, though the application for such extension may not have been prosecuted with effect before the expiration thereof. But the petition must be presented six calendar months at least before the expi- ration of the original patent. The second section of the 7 and 8 Viet,, ch. 69, extends the term for which a pat- ent may be prolonged to fourteen years. 126. INFRINGEMENT. In actions for infringement of patents the plaintiff is to deliver with his declaration the GREAT BRITAIN AND IRELAND. 99 particulars of the breaches complained of, and the de- fendant shall also deliver with his pleas particulars of any objection on which he means to rely, and at the trial no evidence shall be allowed not contained in such particu- lars. Similar particulars are obligatory on any prosecu- tor seeking to repeal the patent. The prosecutor must also particularize the place or places where, and the man- ner in which, the invention is alleged to have been used prior to the date of the letters patent. But the judge may allow the plaintiff, defendant, or prosecutor to amend his particulars. The defendant, in any suit for repealing his patent, has a right to begin and give evidence of his case, and be entitled to reply. ( 41.) 127. JUDGE'S ORDER IN CASE OF INFRINGEMENT. The judge of any court where an action may be brought for infringement of patent to make order for injunction, inspection, or account, and give such directions respect- ing the action, &c., as the court or judge may see fit. ( 42.) 128. TAKING COSTS IN CASE OF INFRINGEMENT. In tax- ing costs in actions for infringement regard is to be had to the particulars delivered in such actions, and costs are only to be allowed on such particulars as the judge may certify to. Other enactments are also made respecting taxed costs. ( 43.) 129. SCHEDULES OF FEES AND STAMP DUTIES. Fees and stamp duties are to be paid according to schedule annexed to the act. The stamp duties are to be under the man- agement of the Commissioners of Inland Revenue, and the fees to be paid into the Exchequer, and form part of the consolidated fund. ( 44, 45, 46.) 100 FOREIGN PATENT LAWS. , \ SCHEDULE TO WHICH THE ACT REFERS, CONSOLIDATED. s. d. On leaving the petition for grant of letters patent 500 On notice of intention to proceed with the application 500 On warrant of law officer for letters patent 500 On sealing of letters patent 500 On filing specifications 500 At or before expiration of the third year 50 At or before expiration of the seventh year 100 On leaving notice of objections 200 Every search and inspection 010 Entry of assignment or license 059 Certificate of assignment or license 005 Filing application for disclaimer 500 Caveat against disclaimer 200 The fees to be paid to the law officers and to their clerks shall be By a person opposing a grant of letters patent: s. d. To the law officer 2 12 6 To his clerk 12 6 To his clerk for summons.... 050 3 10 By the petitioner on the hearing of the case of oppo- sition : s. d. To the law officer 2 12 6 To his clerk , 12 6 To his clerk for summons..., 050 3 10 By the petitioner for the hearing, previous to the fiat of the law officer allowing a disclaimer or memorandum of alteration in letters patent or specification : GREAT BRITAIN AND IRELAND. 101 s. d. To the law officer 2 12 6 To his clerk... , 12 6 350 By the person opposing the allowance of such dis- claimer or memorandum of alteration on the hearing of the case of opposition. s. d. To the law officer 2 12 6 To his clerk.. . 12 6 350 By the petitioner for the fiat of the law officer allow- ing a disclaimer or memorandum of alteration, or letters patent and specification. s. d. To the law officer 330 To his clerk..., , 12 6 3 15 6 NOTE. The following is an abstract of the compara- tive cost of patents in the principal foreign States in British currency: France, 4 per annum for fourteen years. Great Britain, (provisional protection,) 5. Sealed, 25. At the end of three years, 50 additional. At end of seven years, 100 additional. Belgium, 8s. first year, and increasing progressively for twenty years tip to 8 for last year. Austria, 10 for first five years. 20 for second five years. 40 for third five years. 9* 102 FOREIGN PATENT LAWS. Italy,' 8s. 4:d. per year, paid at once. 1 12s. per annum first three years. 2 12s. per annum second three years. 3 12s. per annum third three years. 4 12s. per annum fourth three years. 5 12s. per annum fifth three years. Saxony, 4 10s. for first five years. 8 for second five years. Sweden, fees not fixed, and expenses of advertising. Victoria, (Australia,) 7 4s. Qd. for first three years. Prussia, 20 and upwards from six months to fifteen years. Bavaria, 2 for first year, increasing by degrees annually to 23 for fifteen years. Netherlands, 12 10s. for five years. From 25 to 33 for ten years. From 50 to 62 for fifteen years. Eussia, 14 10s. for three years. 24 10s. for five years. 72 10s. for ten years. VIII. Forms and Proceedings to obtain a Patent. SEC. 130. Form of petition. 131. How to be written, and stamp. 132. Declaration to accompany peti- tion. 133. Petition and declaration, ac- companied by specification. 134. Reference indorsed on petition. 135. Form provisional specification. SEC. 136. Form of complete specification. 137. Reference to law officer. 138. Notice to proceed to be made two months before end of provisional term. 139. Form of warrant. 140. Form of letters patent. 141. The specification. 130. FORM OF PETITION FOR LETTERS PATENT. No.. To the Queen's Most Excellent Majesty The humble petition of , of , in the county of , showeth That your petitioner is in possession of an invention for [here insert the GREAT BRITAIN AND IRELAND. 103 title of the invention,] which invention he believes will be of great public utility ; that he is the first and true inventor thereof, [if the invention be a communication from abroad, here insert the words, "within the realm,"] and that the same is not in use [if from abroad, insert the word "therein "] by any other person or persons, to the best of his knowledge and belief. Your petitioner therefore humbly prays that your Majesty will be pleased to grant unto him, his executors, administrators, and assigns, your royal letters patent, for the United Kingdom of Great Britain and Ireland, the Channel Islands, and the Isle of Man, for the term of fourteen years, pur- suant to the statutes in that case made and provided. And your petitioner will ever pray. 131. How TO BE WRITTEN, AND STAMP. This petition must be written distinctly, or printed, on a 5 stamp, specially provided for the purpose by the Stamp Office, and care must be taken to conform exactly to the in- structions given in the act, respecting the dimensions, payments, and other details. 132. DECLARATION TO ACCOMPANY PETITION. No. . I, , of , in the county of , do solemnly and sincerely declare, that I am in possession of an invention for, &c., [the title as in the petition,] which invention I believe will be of great public utility ; that I am the true and first inventor thereof; and that the same is not in use by any other person or persons, to the best of my knowledge and belief, [vihere a complete specification is to be filed with the petition and declaration, insert these words, "and that the instrument in writing under my hand and seal, hereunto annexed, particularly describes and ascertains the nature of said invention, and the manner in which the same is per- formed ; "] and I make this declaration conscientiously, believing the same to be true ; and by virtue of the provisions of an act made and passed in the session of Parliament, held in the fifth and sixth years of the reign of his late Majesty King William the Fourth, intituled "An act to repeal an act of the present session of Parliament, intituled 'An act for the more effectual abolition of oaths and affirmations taken and made in various departments of the State, and to substitute declarations in lieu thereof, and for the more entire suppression of voluntary and extra-judicial oaths and affidavits,' and to make other provisions for the abolition of unnecessary oaths." A. B. 104 FOREIGN PATENT LAWS. Declared at , this day of , A. D. , before me, = , A Commissioner to Administer Oaths in Chancery, or Justice of the Peace. 133. PETITION AND DECLARATION MUST BE ACCOMPANIED BY SPECIFICATION. The petition and declaration must be accompanied by either a provisional specification or a complete specification, at the option of the inventor. A provisional specification need only give the general prin- ciple of the invention, but it must be stated with sufficient distinctness to enable the law officer to whom it is referred to judge of the nature of the improvements discovered, and of the manner in which they are to be carried into effect. The inventor will then have an interval of six months for maturing his invention, and may introduce into his complete specification any improvements or de- velopment not inconsistent with the title, or with the principle enounced in the provisional specification. 134. REFERENCE TO BE INDORSED ON THE PETITION. The following is to be indorsed on the petition : "Her Majesty is pleased to refer this petition to [name of law officer,] to consider what may be properly done therein." 135. FORM OF PROVISIONAL SPECIFICATION. No.. I, , do hereby declare the nature of the said invention for [insert title as in petition] to be as follows [here insert description]: Dated this day of , A. D. [ To be signed by applicant or his agent.] [It will be for the inventor to judge whether it will be most to his interest to content himself with a provisional specification or proceed at once to a complete specifica- tion ; by following the former course he will have abund- ant leisure to perfect his discovery; by adopting the latter he will be able the sooner to bring it into commercial GREAT BRITAIN AND IRELAND. 105 operation, a point worthy of consideration, since the six months of provisional protection form part of the term for which the patent is granted.] 136. FORM OF COMPLETE SPECIFICATION. To all to whom these presents shall come : I, , of , send greeting: Whereas I am in possession of an invention for (here insert title), and have petitioned Her Majesty to grant unto me, my executors, administra- tors, and assigns, her royal letters patent for the same, and have made solemn declaration that I really believe myself to be the first and true inventor thereof: Now, know ye that I, the said , do hereby declare that the following complete specification, under my hand and seal, Tally describes the nature of my said invention and the manner in which the same is to be performed (that is to say) : [Here in&ert description.} Dateithis day of , A. D. [ To be signed by applicant or his agent.] [The drawing up of the complete specification is an operation which requires the utmost care, skill, and at- tention on the part of the person undertaking so delicate a duty, for the validity of the patent will depend on this document being clear, explicit, and circumstantial. Few inventors will venture to assume a task which is calcu- lated to try the capacity and experience of the most able professional man. "In the specification the invention must be accurately ascertained and particularly described ; it must be set forth in the most minute detail. The dis- closure of the secret is considered as the price which the patentee pays for this limited monopoly, and therefore it ought to be full and correct, (for the benefits thus secured to him are great and certain,) in order that the subject of his patent may, at its expiration, b$ well known, and that the public may reap from it the same advantages as have accrued to him." (Godson on Patents, ch. iv.) 106 FOREIGN PATENT LAWS. In the case of mechanical inventions drawings are almost always necessary, but they are merely intended" to illustrate the description, so as to make it more clearly understood; but the law requires that the specification itself should be so explicit^ that any one acquainted with the subject should be able to carry out the invention without any other aid. "Want of sufficient exactness in this respect would therefore be a ground for invalidating a patent.] 137. REFERENCE TO LAW OFFICER, (EITHER ATTORNEY OR SOLICITOR GENERAL FOR ENGLAND.) Having complied with the requirements of the act in all these respects, the application is then referred to one of the law officers, (practically either the Attorney or Solicitor General for England,) and, if he is satisfied with the accuracy and propriety of the description, he grants a certificate of protection for six months, which is generally published in the London Gazette on the Friday after. 138. NOTICE TO PROCEED TO BE ON 5 STAMP, AND MADE Two MONTHS BEFORE END OF PROVISIONAL PROTECTION. The next step is the notice to proceed, which must be on a 5 stamp, and be deposited at the office at least two months before the expiration of the six months' protec- tion. This is usually published in the ensuing Tuesday's Gazette, accompanied by a notice, " that all parties hav- ing an interest in opposing such application are at lib- erty to leave particulars in writing of their objections to such application at the office of the Commissioners within twenty-one days after the date of the Gazette in which the notice is issued." Should no opposition ap- pear within this period, application may be made for the GREAT BRITAIN AND IRELAND. 107 warrant for letters patent. This must be done at least twelve days before the protection expires. The warrant will be issued in due course. 139. FORM OF WARRANT. In humble obedience to Her Majesty's command, referring to^me the petition of , of , to consider what may be properly done therein, I do hereby certify as follows : That the said petition sets forth that the petitioner [here follow the allegations of the petition], and the petitioner prays [prayer of the petitioner] : That in support of the allegations contained in the said petition the declaration of the petitioner has been laid before me, whereby he solemnly declares that [here follow the allegations of the declaration] : That there has also been laid before me [a provisional specification, signed , and also a certificate ,] or [a complete specification, and a certificate of the filing thereof], whereby it appears that the said invention was provisionally protected [or protected] from the day of , A. D. , in pursuance of the statute. That it appears that the said application was duly advertised. Upon consideration of all the matters aforesaid, and as it is entirely at the hazard of the said petitioner whether the said invention is new or will have the desired success, and as it may be reasonable for Her Majesty to encourage all arts and inventions which may be for the public good, I am of opinion that Her Majesty may grant her royal letters patent unto the petitioner, his executors, administrators, and assigns, for his said invention, within the United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, [colonies to be mentioned, if any,] for the term of fourteen years, according to the statute in that case made and provided, if Her Majesty shall be graciously pleased so to do, to the tenor and effect following : [See next form.] Given under my hand this day of , A. D. 140. FORM OF LETTERS PATENT. Victoria, by the grace of God of the United Kingdom of Great Britain and Ireland Queen, Defender of the Faith : To all to whom these presents shall come, greeting: Whereas hath by his petition humbly represented unto us that he is in possession of an invention for , which the peti- tioner conceives will be of great public utility ; that he is the true and first inventor thereof; and that the same is not in use by any other person or 108 FOREIGN PATENT LAWS. person's, to the best of his knowledge and belief. The petitioner therefore most humbly prayed that we would be graciously pleased to grant unto him, his executors, administrators, and assigns, our royal letters patent for the sole use, benefit, and advantage of his said invention, within our United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, [colonies to be mentioned, if any,] for the term of fourteen years, pur- suant t<3 the statutes in that case made and provided: [And whereas the said hath particularly described and ascertained the nature of the said invention, and in what manner the same is to be performed, by an instrument in writing under his hand and seal, and has caused the same to be duly filed in ] : And we, being willing to give encouragement to all arts and inventions which may be for the public good, are graciously pleased to condescend to the petitioner's request: Know ye, therefore, that we, of our especial grace, certain knowledge, and mere motion, have given and granted, and by these presents, for us, our heirs and successors, do give and grant unto the said , his executors, administrators, and assigns, our especial license, full power, sole privilege and authority, that he, the said , his executors, administrators, and assigns, and every of them, by himself and themselves, or by his and their deputy or deputies, servants or agents, or such others as he, the said , his executors, administrators, or assigns, shall at any time agree with, and no others, from time to time, and at all times hereafter during the term of years herein expressed, shall and lawfully may make, use, exercise, and vend his said invention within our United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, in such manner as to him, the said , his executors, administrators, and assigns, or any of them, shall in his or their discretion seem meet ; and that he, the said , his executors, administrators, and assigns, shall and lawfully may have and enjoy the whole profit, bene- fit, commodity, and advantage, from time to time coming, growing, accru- ing, and arising by reason of the said invention, for and during the term of years herein mentioned; to have, hold, exercise, and enjoy the said licenses, powers, privileges, and advantages, hereinbefore granted or men- tioned to be granted, unto the said , his executors, administrators, and assigns, for and during and unto the full end and term of fourteen years from the day of , A. D. , next and immediately ensuing, according to the statute in such case made and provided ; and to the end that he, the said , his executors, administrators, and assigns, and every of them, may have and enjoy the full benefit and the sole use and exercise of the said invention, according to our gracious inten- GREAT BRITAIN AND IRELAND. 109 tion hereinbefore declared, we do by these presents, for us, our heirs and successors, require and strictly command all and every person and persons, bodies politic and corporate, and all other our subjects whatsoever, of what estate, quality, degree, name, or condition soever they be, within our United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, [colonies to be mentioned, if any.] that neither they nor any of them, at any time during the continuance of the said term of fourteen years hereby granted, either directly or indirectly, do make, use, or put in*prac- tice the said invention, or any part of the same, so attained unto by the said as aforesaid, nor in any wise counterfeit, imitate, or resemble the same, nor shall make, nor cause to be made, any addition thereunto or subtraction from the same, whereby to pretend himself or themselves the inventor or inventors, deviser or devisers thereof, without the consent, license, or agreement of the said ' , his executors, administrators, or assigns, in writing, under his or their hands and seals, first had and ob- tained in that behalf, upon such pains and penalties as can and may be justly inflicted on such offenders for their contempt of this our royal com- mand, and further to be answerable to the said , his executors, administrators, and assigns, according to law, for his and their damages thereby occasioned. And, moreover, we do by these presents, for us, our heirs and successors, will and command all and singular the justices of the peace, mayors, sheriffs, bailiffs, constables, headboroughs, and all other officers and ministers what- soever, of us, our heirs and successors, for the time being, that they or any of them do not, nor shall at any time during the said term hereby granted, in anywise molest, trouble, or hinder the said , his executors, administrators, or assigns, or any of them, or his or their deputies, servants, or agents, in or about the due and lawful use or exercise of the aforesaid invention or anything relating thereto : Provided always, and these our letters patent are and shall be upon this condition, that if, at any time during the said term hereby granted, it shall be made to appear to us, our heirs or successors, or any six or more of our or their Privy Council, that this our grant is contrary to law, or prejudicial or inconvenient to our sub- jects in general, or that the said invention is not a new invention as to the public use and exercise thereof, or that the said is not the true and first inventor thereof within this realm as aforesaid, these our letters patent shall forthwith cease, determine, and be utterly void, to all intents and purposes, anything hereinbefore contained to the contrary thereof in anywise notwithstanding: Provided also that these our letters patent, or anything herein contained, shall not extend or be construed to extend to 10 110 FOREIGN PATENT LAWS. give privilege unto the said , his executors, administrators, or assigns, or any of them, to use or imitate any invention or work whatso- ever which hath heretofore been found out or invented by any other of our subjects whatsoever, and publicly used or exercised, unto whom our like letters patent or privileges have been already granted for the sole use, exer- cise, and benefit thereof: It being our will and pleasure that the said , his executors, administrators, or assigns, and all and every other person and persons to whom like letters patent or privileges have been already granted as aforesaid, shall distinctly use and practice their several inventions, by them invented and found out, according to the true intent and meaning of the same respective letters patent and of these pres- ents : Provided likewise, nevertheless, and these our letters patent are upon this express condition, [that if the said shall not particularly describe and ascertain the nature of his said invention, and in what man- ner the same is to be performed, by an instrument in writing under his hand and seal, and cause the same to be filed in within calendar months next and immediately after the date of these our letters patent;] [and also if the said instrument in writing, filed as aforesaid, does not particularly describe and ascertain the nature of the said invention, and in what manner the same is to be performed;] and also if the said , his executors, administrators, or assigns, shall not pay or cause to be paid at the office of our Commissioners of Patents for inventions, that is to say, the sum of 50 stamp duty before the expiration of three years from the date hereof, and also 100 stamp duty before the expiration of seven years from the date of these our letters patent, and produce these our letters patent stamped with a proper stamp to these amounts respect- ively, pursuant to the provisions of the act of the sixteenth year of our reign, chapter 5; and also if the said , his executors, adminis- trators, or assigns, shall not supply, or cause to be supplied, for our service all such articles of the said invention as he or they shall be required to supply by the officers or commissioners administering the department of our service for the use of which the same shall be required, in such manner, at such times, and at and upon such reasonable prices and terms, as shall be settled for that purpose by the said officers or commissioners requiring the same, that then, and in any of the said cases, these our letters patent, and all liberties and advantages whatsoever hereby granted, shall utterly cease, determine, and become void, anything hereinbefore contained to the contrary thereof in anywise notwithstanding : Provided that nothing herein contained shall prevent the granting of licenses in such manner and for such considerations as they may by law be granted ; and, lastly, we do by GREAT BRITAIN AND IRELAND. Ill these presents, for us, our heirs and successors, grant unto the said , his executors, administrators, and assigns, that these our letters patent, on the filing thereof, shall be in all and by all things, good, firm, valid, suffi- cient, and effectual in the law, according to the true intent and meaning thereof, and shall be taken, construed, and adjudged in the most favorable and beneficial sense for the best advantage of the said , his exe- cutors, administrators, and assigns, as well in all our courts of record as elsewhere, and by all and singular the officers and ministers whatsoever of us, our heirs and successors, in our United Kingdom of Great Britain and Ireland, the Channel Islands, and the Isle of Man, [colonies to be mentioned, if any,] and amongst all and every the subjects of us, our heirs and suc- cessors, whatsoever and wheresoever, notwithstanding the not full and cer- tain describing the nature or quality of the said invention, or of the mate- rials thereunto conducting and belonging. In witness whereof we have caused these our letters" to be made patent, this day of , A. D. , and to be sealed and bear date as of the said day of , A. D. , in the year of our reign. 141. THE SPECIFICATION. Should the applicant have preferred in the first instance to file a provisional speci- fication, his next step will be the complete specifica- tion. To all to whom these presents shall come: I, , of , send greeting: Whereas Her most Excellent Majesty Queen Victoria, by her royal letters patent, bearing date the day of , A. D. , in the year of her reign, did for herself, her heirs and successors, give and grant unto me, the said , her special license, that I, the said , my executors, administrators, and assigns, or such others as I, the said , my executors, administrators, and as- signs, should at any time agree with, and no others, from time to time, and at all times thereafter during the term therein expressed^ should, and lawfully might, make, use, exercise, and vend, within the United Kingdom of Great Britain and Ireland, the Channel Islands, and the Isle of Man, [the colonies to be mentioned if, any,] an invention for [insert title as in let- ters patent], upon the condition (amongst others) that I, the said , by an instrument in writing under my hand and seal, should particularly describe and ascertain the nature of the said invention, and in what man- ner the same was to be performed, and cause the same to be filed in 112 FOREIGN PATENT LAWS. within calendar months next and immediately after the date of the said royal letters patent: Now, know ye that I, the said , do hereby declare the nature of my said invention, and in what manner the same is to he performed, to be particularly described and ascertained in and by the following statement, that is to say: [Describe the invention.] In witness whereof I, the said , have hereunto set my hand and seal, this day of , A. D. [Signed by the applicant.] This will complete all the proceedings necessary for obtaining a patent in cases where no opposition is made. Patentees are reminded that unless before the expira- tion of the third year a further sum of 50, and before the expiration of the seventh year a further sum of 100, be paid at the Patent Office, the letters patent will be- come void. IX. Patent Laws of the Dominion of Canada. SEC. 142. Patent Office constituted. 143. Seal. 144. Rules and regulations. SEC. 145. Deputy Commissioner. 146. Eeport. [NOTE. The new patent law of the Dominion came in force on the 1st of July, 1869, and abrogated the local provincial laws which previously to that time had been in force in the different provinces. Patents granted under those late^laws will, however, still continue in force in the provinces for which they were granted for the unex- pired periods they have to run. It will also be seen that, under certain conditions, those local patents may be extended over the entire Dominion. Daring the passage of the patent bill through Parlia- DOMINION OF CANADA. 113 ment strong efforts were made to obtain a more liberal law thai/ the one we now publish a law which would assimilate with those of other civilized countries, in not demanding residence as a necessary preliminary to the application for a patent, and also in extending the right of a patent to all inventors, irrespective of nationality. This last condition was carried, but the first failed. Prior residence of one year, immediately before making the application, being required, but without reference to na- tionality of the inventor or applicant; the Government holding out a promise that prior residence would also be dispensed with on the passage of the reciprocity treaty with the United States, then in contemplation.] 142. PATENT OFFICE CONSTITUTED. There shall be attached to the Department of Agriculture, as a branch thereof, an office to be named the Patent Office; and the Minister of Agriculture for the time being shall be the Commissioner of Patents of invention; and it shall be the duty of the said Commissioner to receive all applications, fees, papers, documents, and models for patents, and to perform such acts and things respecting the granting and issuing of patents for new and useful inventions, discoveries, and improvements as are herein provided for; and he shall have the charge and custody of the books, records, papers, models, machines, and other things belonging to the said office. ( 1.) 143. SEAL. The Commissioner shall cause a seal to be made for the purpose* of this act, and may cause to be sealed therewith letters patent and other instru- ments and copies proceeding from the Patent Office; and all courts, judges, and other persons whomsoever 10* 114 FOREIGN PATENT LAWS. shall take notice of such seal, and receive impressions thereof in evidence, in like manner as impressions of the great seal are received in evidence, and shall also take notice of and receive in evidence, without further proof and without production of the originals, all copies or extracts certified under the seal of the said office to be copies of or extracts from documents deposited in such office. ( 2.) 144. RULES AND REGULATIONS. The Commissioner may from time to time, subject to the approval of the Governor in council, make such rules and regulations, and prescribe such forms, as may appear to him necessaiy and expedient for the purposes of this act, and notice thereof shall be given in the Canada Gazette; and all documents executed after the same and accepted by the Commissioner shall be held valid so far as relating to proceedings in the Patent Office. ( 3.) 145. DEPUTY COMMISSIONER. The Deputy of the Min- ister of Agriculture shall be the Deputy Commissioner of Patents of Invention; and the Governor may from time to time appoint such clerks and officers under him as may be necessary for the purpose of this act, and such clerks and officers shall hold office during pleasure. ( 4.) 146. REPORT. The Commissioner shall cause a report to be prepared annually and laid before Parliament of the proceedings under this act, and shall from time to time, and at least once in a year, publish in the Canada Gazette a list of patents granted, and may, with the approval of the Governor in tbouncil, cause such speci- fications and drawings as may be deemed of interest, or essential parts thereof, to be printed from time to time for distribution or sale. ( 5.) DOMINION OF CANADA. 115 X. "WTio may Obtain Patents. SEC. 147. Who may obtain a patent. 148. An original inventor, having foreign patent, must apply within six months. 149. Right of assignment. SEC. 150. A resident may obtain, but not vend a patent. 151. Joint applications to be made by joint inventors, and pat- ents issue accordingly. 147. WHO MAY OBTAIN A PATENT. Any person having been a resident of Canada for at least one year next before his application, and having invented or discov- ered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improve- ment on any art, machine, manufacture, or composition of matter, not known or used by others before his inven- tion or discovery thereof, or not being at the time of his application for a patent in public use or on sale in any of the provinces of the Dominion, with the consent or allowance of the inventor or discoverer thereof, may, on a petition to that effect presented to the Commissioner and on compliance with the other requirements of this act, obtain a patent, granting to such person an exclus- ive property therein ; and the said patent shall be under the seal of the Patent Office and the signature of the Commissioner, or the signature of another member of the Privy Council, and shall be good and valid to the grantee, his heirs, assigns, or other legal representatives, for the period mentioned in such patent; but no patent shall issue for an invention or discovery having an illicit object in view, nor for any mere scientific principle or abstract theorem. ( 6.) 116 FOREIGN PATENT LAWS. 148. AN ORIGINAL INVENTOR, HAVING FOREIGN PATENT, MUST APPLY WITHIN Six MONTHS. An original and true inventor or discoverer shall not be deprived of the right to a patent for his invention or discovery by reason of his having, previously to his application, taken out a patent therefor in any other country, at any time within six months next preceding the filing of his specification and drawing, as required by this act. ( 7.) 149. RIGHT OF ASSIGNMENT. The patent may be granted to any person to whom the inventor or dis- coverer entitled under the sixth section to obtain a patent has assigned or bequeathed the right of obtain- ing the same and the exclusive property in the inven- tion or discovery in Canada, or, in default of such as- signment or bequest, to the executor or administrator of the deceased inventor or discoverer, or other legal representative. ( 8.) 150. A RESIDENT MAY OBTAIN, BUT NOT VEND^A PATENT. Any person, having been a resident of Canada for at least one year next before his application, and who has invented or discovered any improvement on any patented invention or discovery, may obtain a patent for such improvement, but shall not thereby obtain the right of vending or using the original invention or discovery, nor shall the patent for the original invention or discov- ery confer the right of vending or using the patented improvement. ( 9.) 151. JOINT APPLICATIONS TO BE MADE BY JOINT INVENT- ORS AND PATENTS ISSUE ACCORDINGLY. In cases of joint applications, the patent shall be granted in the names of all the applicants; and in such cases any assignment from one of the said applicants or patentees to the other DOMINION OF CANADA. 117 shall be registered in the manner of other assignments. ( 10.) XI. Conditions and Formalities. SEC. 152. Oath or affirmation as to inven- tion must be made by appli- cants. 153. Applicants to elect a domicil in Canada. 154. Nature of petition and specifi- cations. SEC. 155. Drawings to be furnished in duplicate, with references. 156. Working model of invention, or samples of ingredients, if a discovery, required. 152. OATH OR AFFIRMATION AS TO INVENTION MUST BE MADE BY APPLICANTS. Every applicant for a patent, before he can obtain the same, shall make oath, or, when entitled by law to make an affirmation instead of an oath, shall make an affirmation, that he verily believes that he is, or that the person whose assignee or representative he is, is or was the true inventor or discoverer of the invention or discovery for which the patent is solicited, and that he, or the person whose assignee or representative he is, was a resident of Can- ada for one year next before the application, or, in case of death of the inventor or discoverer, for one year next before such death. Such oath or affirmation may be made before any justice of the peace in Canada; but if the applicant is not at the time in Canada, the oath or affirmation may be made before any minister plenipotentiary, charg'e. d'affaires, consul or consular agent, holding commission under the Government of the United Kingdom, or any judge of the country in which the applicant happens at the time to be. ( 11.) 153. APPLICANT TO ELECT A DOMICIL IN CANADA. The 118 FOREIGN PARENT LAWS. petitioner for a patent shall, for all the purposes of this act, elect his domicil at some known and speci- fied place in Canada, and mention the same in his petition for a patent, and he shall in the same petition state the place or places in Canada at which he, or, if his application be as assignee or representative, the person whose assignee or representative he is, was resident during the year of residence required by this act, and the period of residence at each such place. ( 12.) 154. NATURE OF PETITION AND SPECIFICATIONS. The applicant shall in his petition for a patent insert the title or name of his invention or discovery, its object, and a short description of the same, and shall dis- tinctly allege all the facts which are necessary under this act to entitle him to a patent therefor, and shall, with the petition, send in a written specification, in duplicate, of his invention or discovery, describing the same in such full, clear, and exact terms as to distinguish it from all contrivances or processes for similar purposes. ( 13.) 155. DRAWINGS TO BE FURNISHED IN DUPLICATE, WITH REFERENCES. The specification shall correctly and fully describe the mode or modes of operating contemplated by the applicant, and shall state clearly and distinctly the contrivances and things which he claims as new, and for the use of which he claims an exclusive property and privilege; it shall bear the name of the place where it is made, the date, and be signed by the applicant and two witnesses. In the case of a machine, the specification shall fully explain the principle and the several modes in which it is intended to apply and work out the same; in the case of a machine, or in any other case where the invention or discovery admits of illustration by means DOMINION OF CANADA. 119 of drawings, the applicant shall also with his applica- tion send in drawings in duplicate, showing clearly all parts of the invention or discovery, and each drawing shall bear the name of the inventor or discoverer, and shall have written references corresponding with the specification, and a certificate of the applicant that it is the drawing referred to in the specification; but the Commissioner may require any greater number of draw- ings than those above mentioned, or dispense with any of them, as he may see fit; one duplicate of the specifi- cation and of the drawings, if any drawings, shall be annexed to the patent of which it forms an essential part, and the other duplicate shall remain deposited in the Patent Office. ( 14.) 156. WORKING MODEL OF INVENTION, OR SAMPLES OF INGREDIENTS, IF A DISCOVERY, REQUIRED. The appli- cant shall also deliver to the Commissioner, unless specially dispensed from so doing for some good rea- son, a neat working model of his invention or discov- ery, on a convenient scale, exhibiting its several parts in due proportion, whenever the invention or discovery admits of such model; and shall deliver to the Com- missioner specimens of the ingredients and of the composition of matter sufficient in quantity for the pur- pose of experiment, whenever the invention is a compo- sition of matter, provided such ingredients and compo- sition are not of an explosive character or otherwise dangerous, in which case they are to be furnished only when specially required by the Commissioner, and then with such precautions as shall be prescribed in the said requisition. ( 15.) 120 FOREIGN PATENT LAWS. XII. Contents, Duration, Surrender,' Reissue of Pat- ents, and Disclaimers. SEC. 157. Contents of the patent and powers granted thereby. 158. Duration -of patent. 159. Patent to be examined and cer- SEC. tified by minister of justice before delivery. 160. New patent in case of error. 161. Patentee may make disclaimer. 157. CONTENTS OP THE PATENT AND POWERS GRANTED THEREBY. Every patent granted under this act shall recite briefly the substance of the petition on which it is granted,, and shall contain the title or name of the in- vention or discovery and a short description of the same, referring for a fuller detail to the specification, and shall grant to the patentee, his assigns and legal representa- tives, or in trust, as the case may be, for the period therein mentioned from the granting of the same, the exclusive right, privilege, and liberty of making, con- structing, and using, and vending to others to be used, the said invention or discovery, and shall contain a con- dition that it is nevertheless subject to adjudication be- fore any court of competent jurisdiction. ( 16.) 158. DURATION OF PATENT. Patents of invention or discovery issued by the Patent Office shall be valid for a period of five years; but at or before the expiration of the said five years the holder thereof may obtain an extension of the patent for another period of five years, and after those second five years may again obtain fur- ther extension for another period of five years; and the instrument delivered by the Patent Office for such ex- tension of time shall be in the form which may be from time to time adopted, and shall be made in duplicate, DOMINION OF CANADA. 121 one duplicate to remain of record and be duly registered, and the other to be attached, with reference, to the pat- ent, under the seal of the Patent Office and signature of the Commissioner, or any other privy councillor in case of absence of the Commissioner. ( 17.) 159. PATENT TO BE EXAMINED AND CERTIFIED BY MIN- ISTER OF JUSTICE BEFORE DELIVERY. Every such patent, and every instrument for granting a further extension of any patent, shall, before it is signed by the Commissioner or any other member of the privy council, and before the seal hereinbefore mentioned is affixed to it, be ex- amined by the Minister of Justice, who, if he finds it conformable to law, shall certify accordingly, and such patent or instrument may then be signed and the seal affixed thereto, and, being duly registered, shall avail to the grantee thereof and be delivered to him. ( 18.) 160. IN CASE OF ERROR THE COMMISSIONER MAY CAUSE NEW PATENT TO BE ISSUED. AVhenever any patent shall be deemed defective or inoperative by reason of insuffi- cient description or specification, or by reason of the patentee claiming more than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident, or mistake, without any fraudulent or deceptive intention, the Commissioner may, upon the surrender of such patent and the payment of the further fee hereinafter provided, cause a new patent, in accordance with an amended description and specifi- cation to be made by such patentee, to be issued to him for the same invention or discovery, for any part or the whole of the then unexpired residue of the five years period for which the original patent was or might have been, as hereinbefore directed, granted. In case of the 11 122 FOREIGN PATENT LAWS. death of the original patentee, or of his having assigned the patent, a like right shall vest in his assignee or legal representative: The new patent and the amended de- scription and specification shall have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the same had been originally filed in such corrected form before the issue of the original patent. ( 19.) 161. PATENTEE MAY MAKE DISCLAIMER. Similarly, whenever, by any mistake, accident, or inadvertence, and without any willful intent to defraud or mislead the public, a patentee has made his specification too broad, claiming more than that of which he or the party through whom he claims was the first inventor or discoverer, or has in the specification claimed that he or the party through whom he claims was the first in- ventor or discoverer of any material or substantial part of the invention or discovery patented, of which he was not the first inventor or discoverer, and had no legal right thereto, the patentee may, on payment of the fee hereinafter provided, make disclaimer of such parts as he shall not claim to hold by virtue of the patent or the assignment thereof; such disclaimer shall be in writing arid in duplicate, and attested in the manner hereinbe- fore prescribed for a patent, one copy to be filed and recorded in the office of the Commissioner, the other copy to be attached to the patent and made a part thereof by reference, and such disclaimer shall thereafter be taken and considered as part of the original specification. Such disclaimer shall not affect any action pending at the time of its being made, except in so far as may relate to the question of unreasonable neglect or delay in mak- DOMINION OF CANADA. 123 ing it. In case of the death of the original patentee, or of his having assigned the patent, a like right shall vest in his assigns or legal representatives respectively, any of whom may make disclaimer. The patent shall thereafter be deemed good and valid for so much of the invention or discovery as is truly the disclaimant's own and not disclaimed, provided it be a material and substantial part of the invention or discovery, and definitely distinguished from other parts claimed without right; and the dis- claimant shall be entitled to maintain a suit for such part accordingly. ( 20.) ' XIII. Assignment and Infringement of Patents. SEC. 162. Government of Canada may use any patented invention by making reasonable compen- sation. 163. Patents to be assignable. SEC. 1Q4. Penalty for infringement. 165. Prosecution for infringement. 166. Court may discriminate in cer- tain cases. 167. Defense in such cases. 162. GOVERNMENT OF CANADA MAY USE ANY PATENTED INVENTION BY MAKING REASONABLE COMPENSATION. The Government of Canada may always use any patented invention or discovery, paying to the patentee such sum as the Commissioner may report to be a reasonable com- pensation for the use thereof. ( 21.) 163. PATENTS TO BE ASSIGNABLE. Every patent for an invention or. discovery, whensoever issued, shall be assign- able in law, either as to the whole interest or as to any part thereof, by any instrument in writing; but such assignment, and also every grant and conveyance of any exclusive right to make and use, and to grant to others 124 FOREIGN PATENT LAWS. the right to make and use, the invention or discovery patented, within and throughout the Dominion of Canada, or within and throughout any one or more of the Prov- inces of Ontario, Quebec, Nova Scotia, or New Bruns- wick, or any part of any of such Provinces or of the Dominion, shall be registered in the office of the Com- missioner; and every assignment affecting a patent for invention or discovery shall be deemed null and void against any subsequent assignee, unless such instrument is registered, as hereinbefore prescribed, before the reg- istering of the instrument under which such subsequent assignee may claim. ( 22.) 164. PENALTY FOR INFRINGEMENT OF PATENT. Every person who, without the consent in writing of the pat- entee, makes, constructs, or puts in practice any inven- tion or discovery for which a patent has been obtained under this act, or procures such invention or discovery from any person not authorized to make or use it by the patentee, and uses it, shall be liable to the patentee in an action of damages for so doing; and the judgment shall be enforced, and the damages and costs as may be ad- judged shall be recovered, in like manner as in other cases in the court in which the action is brought. ( 23.) 1-65. PROSECUTION FOR INFRINGEMENT. An action for the infringement of a patent may be brought before any court of record having jurisdiction to the amount of dam- ages asked for, and having its sittings within the Prov- ince in which the infringement is said to- have taken place, and being at the same time, of the courts of such jurisdiction within such Province,. the one of which the place of holding is nearest to the place of residence or of business of the defendant, and such court shall decide DOMINION OF CANADA. 125 the case and determine as to costs. In any action for the infringement of a patent, the court, if sitting, or any judge thereof in chambers if the court be not sitting, may, on the application of the plaintiff or defendant re- spectively, make such order for an injunction restraining the opposite party from further use, manufacture, or sale of the subject matter of the patent, and for his punish- ment in the event of disobedience to such order, or for inspection or account, and respecting the same and the proceedings in the action, as the court or judge may see fit; but from such order an appeal shall lie under the same circumstances and to the same court as from other judgments or orders of the court in which the order was made. ( 24.) 166. COURT MAT DISCRIMINATE IN CERTAIN CASES. Whenever the plaintiff fails to sustain his action, because his specification and claim embrace more than that of which he was the first inventor or discoverer, and it ap- pears that the defendant used or infringed any part of the invention or discovery justly and truly specified and claimed as new, the court may discriminate, and the judgment may be rendered accordingly. ( 25.) 167. DEFENSE IN SUCH CASES. The defendant in any such action may specially plead as matter of defense any fact or default which by this act or by law would render the patent void; and the court shall take cognizance of that special pleading and of the facts connected there- with, and shall decide the case accordingly. ( 26.) 11* 126 FOREIGN PATENT LAWS. XIV. Nullity, Impeachment, and Yoidance of Patents. SEC. 168. Patents to be void in certain cases, or only valid for part. 169. Patents to be conditioned on manuiacture in Canada with- in three years ; importing the article patented. SEC. 170. Proceedings for impeachment of patent. 171. Certificate of judgment voiding patent to be entered. 172. Judgment to be subject to ap- peal. 168. PATENT TO BE VOID IN CERTAIN CASES, OR ONLY VALID FOR PART. A patent shall be void if any mate- rial allegation in the petition or declaration of the appli- cant be untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, such omission or addi- tion being willfully made for the purpose of misleading; but if it shall appear to the court that such omission or addition is simply an involuntary error, and it is proved that the patentee is entitled to the remainder of his pat- ent pro tanto, the court shall render a judgment in accord- ance with the facts, and determine as to costs, and the patent shall be held valid for such part of the invention described, and two office copies of such judgment shall be furnished to the Patent Office by the patentee, one to be registered and to remain of record in the office, and the other to be attached to the patent and made a part of it by a reference. ( 27.) 169. PATENTS TO BE CONDITIONED ON MANUFACTURE IN CANADA WITHIN THREE YEARS; IMPORTING THE ARTICLE PATENTED. Every patent granted under this act shall be subject, and expressed to be subject, to the condition that such patent, and all the rights and privileges thereby DOMINION OP CANADA. 127 granted, shall cease and determine and the patent shall be null and void at the end of three years from the date thereof, unless the patentee shall, within that period, have commenced, and shall after such commencement carry on in Canada, the construction or manufacture of the invention or discovery patented, in such manner that any person desiring to use it may obtain it, or cause it to be made for him, at a reasonable price, at some man- ufactory or establishment for making or constructing it in Canada, and that such patent shall be void if, after the expiration of eighteen months from the granting thereof, the patentee or his assignee or assignees, for the whole or a part of his interest in the patent, imports or causes to be imported into Canada the invention or dis- covery for which the patent is granted. ( 28.) 170. PROCEEDINGS FOR IMPEACHMENT OF PATENT. Any person desiring to impeach any patent issued under this act may obtain a sealed and certified copy of the patent, and of the petition, declaration, drawings, and specifica- tion thereunto relating, and may have the same filed in the office of the prothonotary or clerk of the superior court for the Province of Quebec, or of the court of queen's bench or common pleas for the Province of On- tario, or of the supreme court in the Province of Nova Scotia, or of the court of queen's bench in the Province of New Brunswick, according to the domicil elected by the patentee as aforesaid, which courts shall adjudicate on the matter and decide as to costs. The patent and documents aforesaid shall then be held as of record in such court, so that a writ of scire facias under the seal of the court, grounded upon such record, may issue for the repeal of the patent for legal cause as aforesaid, if upon 128 FOREIGN PATENT LAWS. proceedings had upon the writ in accordance with the meaning of this act the patent be adjudged to be void. ( 29.) 171. CERTIFICATE OF JUDGMENT VOIDING PATENT TO BE ENTERED. A certificate of the judgment voiding any- patent shall, at the request of any person or party filing it to be of* record in the Patent Office, be entered on the margin of the enrollment of the patent in the office of the Commissioner, and the patent shall thereupon be, and be held to have been, void and of no effect, unless and until the judgment be reversed on appeal, as herein- after provided. ( 30.) 172. JUDGMENT TO BE SUBJECT TO APPEAL. The judg- ment declaring any patent void shall be subject to appeal to any court of appeal having appellate jurisdiction in other cases over the court by which the same was ren- dered. ( 31.) XV. Patents Issued under Former Laws. SEC. Existing provincial patents to remain in force. SEC. 174. Handing over records of pat- ent offices to Commissioner. 173. EXISTING PROVINCIAL PATENTS TO EEMAIN IN FORCE.; All patents issued under any act of the legisla- ture of the late Province of Canada, or of Nova Scotia, or of New Brunswick, and all patents issued for the Provinces of Ontario and Quebec, under the act of the late Province of Canada, to the date of the coming into operation of the present act, shall remain in force for the same term and for the same extent of territory as if the act under which they were issued had not been re- DOMINION OF CANADA. 129 pealed, but subject to the provisions of this act in so far as applicable to them. 2. And it shall be lawful for the Commissioner, upon the application of the patentee named in any such patent, being the inventor or discoverer of the subject-matter of the patent and a British subject, or a resident in any Province of Canada for upwards of a year, if the subject- matter of the patent had not been known or used, nor with the consent of the patentee on sale in any of the other Provinces of the Dominion, to issue, on payment of the proper fees in that behalf, a patent under this act, extending such provincial patent over the whole of the Dominion, subject to the provisions of the seventeenth section; but no patent so issued shall extend beyond the remainder of the term mentioned in the provincial pat- ent. (32.) 174. HANDING OVER OF RECORDS OF PROVINCIAL PAT- ENT OFFICE TO THE COMMISSIONER. All the records of the Patent Offices of the late Province of Canada, and of the Provinces of Ontario and Quebec, of fova Scotia and New Brunswick, shall be handed over by the offi- cers in charge of them to the Commissioner of Patents of invention or discovery, to form part of the records of the Patent Office for the purposes of this act. ( 33.) XVI. Tariff of Fees. SEC. 175-178. With reference to fees, how and to whom to be paid. SEC. 179. The Commissioner to have the power of returning one half of the Government fee. 175. FEES How AND TO WHOM TO BE PAID. The fol- lowing fees shall be payable to the Commissioner before 130 FOREIGN PATENT LAWS. an application for any of the purposes hereinafter men- tioned shall be entertained, that is to say: On petition for a patent for five years--- $20 00 On petition for extension from five to ten years- 20 00 On petition for extension from ten to fifteen years 20 00 On lodging a caveat 5 00 On asking to register a judgment pro tanto 4 00 On asking to register an assignment 2 00 On asking to attack a disclaimer to a patent 4 00 On asking for a copy of patent with specification- 4 00 On petition to reissue a patent after surrender and on petition to extend a former patent to the Dominion the fee shall be at the rate of-- 4 00 for every un expired year of duration of such patent. On office copies of documents, not above mentioned, the following charges shall be exacted : For every single or first folio of certified copy-- 50 For every subsequent hundred words, (fractions from and under fifty being not counted, and over fifty being counted for one hundred) 25 (34.) 176. FEES, &c. For every copy of drawings the party applying shall pay such, sum as the Commissioner con- siders a fair remuneration for time and labor expended thereon by an officer of the department or person em- ployed to perform such service. ( 35.) 177. FEES, &c. The said fees shall be in full of all services performed under this act in any such case by the Commissioner or any person employed in the Pat- ent Office. ( 36.) DOMINION OF CANADA. 131 178. FEES, &c. All fees received under this act shall he paid over to the Receiver General, and form part of the consolidated revenue fund of Canada, except such sums as may he paid for copies of drawings when made by per- sons not receiving salaries in the Patent Office. ( 37.) 179. COMMISSIONER HAS POWER TO RETURN ONE HALF OF GOVERNMENT FEE. No fee shall be made the subject of exemption in favor of any person ; and no fee, once paid, shall be returned to the person who paid it, except: 1. When the invention is not susceptible of being pat- ented ; 2. When the petition for a patent is withdrawn. And in every such case the Commissioner may return one half of the fee paid; And in the case of withdrawal, a fresh application shall be necessary to revive the claim, as if no proceeding had taken place in the matter. ( 38.) XVII. Miscellaneous Provisions. SEC. 180. Applicant may file a caveat. 181. Causes why Commissioner may refuse to grant a patent. 182. Commissioner to notify appli- cant of rejection. 183. Appeal to Governor in Council. 184. Interfering applications. 185. Documents in Patent Office to be open to inspection of the public, except caveats. 186. Clerical errors. 187. Lost or destroyed patent may be replaced. 188. Use of patented inventions al- lowed in foreign ships. SEC. 189. Patent not to affect previous purchaser of invention. 190. Patented articles to be stamped with date of patent. 191. Punishment of parties who stamp an article as patented when such is not the case. 192. Punishment of offenders for making false entry or copy. 193. All acts inconsistent with pres- ent act repealed. 194. Title of act: The Patent Act of 1869. 195. Act to commence and take effect July 1, 1869. 132 FOREIGN PATENT LAWS. 180. INTENDING APPLICANT MAY FILE A CAVEAT. An intending applicant for a patent, who has not yet per- fected his invention or discovery and is in fear of being despoiled of his idea, may file in the Patent Office a de- scription of his invention or discovery so far, with or without plans, at his own will; and the Commissioner, on reception of the fee hereinbefore prescribed, shall cause the said document to be preserved in secrecy, with the exception of delivering copies of the same whenever required by the said party or by any judicial tribunal the secrecy of the document to cease when he obtains a patent for his invention or discovery; and such docu- ment shall be called a caveat. Provided always that if application shall be made by any other person for a pat- ent for any invention or discovery with which such caveat may in any respect interfere, it shall be the duty of the Commissioner forthwith to give notice by mail to the person who has filed such caveat, and such person shall within three months after the date of mailing the notice, if he would avail himself of the caveat, file his petition and take the other steps necessary on an application for patent, and if, in the opinion of the Commissioner, the applications are interfering, like proceedings may be had in all respects as are by this .act provided in the case of interfering applications. Provided further, that unless the person filing any caveat shall, within four years from the filing thereof, have made application for a patent, the caveat shall be void. ( 39.) 181. CAUSES WHY COMMISSIONER MAY REFUSE TO GRANT A PATENT. The Commissioner may object to grant a patent in the following cases : DOMINION OF CANADA. 133 1. When he is of opinion that the alleged invention or discovery is not patentable in law; 2. When it appears that the invention or discovery is already in the possession of the public with the consent or allowance of the inventor; 3. When it appears that the invention or discovery has been described in a book or other printed publication before the date of the application, or otherwise in the possession of the public; 4. When it appears that the invention or discovery has already been patented, except, however, when the case is one within the seventh section of this act, or one in which the Commissioner has doubts as to whether the patentee or the applicant is the first inventor or discoverer. ( 40.) 182. COMMISSIONER TO NOTIFY APPLICANT OF REJEC- TION. Whenever the Commissioner objects to grant a patent, as aforesaid, he shall notify the applicant to that effect, and shall state the ground or reason therefor with sufficient detail to enable the applicant to answer, if he can, the objection of the Commissioner. ( 41.) 183. APPEAL TO GOVERNOR IN COUNCIL. Every appli- cant who has failed to obtain a patent by reason of the objection of the Commissioner, as aforesaid, may, at any time within six months after notice thereof has been ad- dressed to him or his agent, appeal from the decision of the Commissioner to the Governor in Council. ( 42.) 184. INTERFERING APPLICATIONS. In cases of inter- fering applications for a patent the same shall be submit- ted to the arbitration of three skilled persons, one of whom shall be chosen \>y each of the applicants, and the third person shall be chosen by the Commissioner, or by his deputy, or the person appointed to perform the duty 12 134 FOREIGN PATENT LAWS. of that office; and the decision or award of such arbi- trators, or any two of them, delivered to the Commis- sioner in writing, and subscribed by them, or any two of them, shall be final as far as respects the granting of the patent. 2. If either of the applicants refuses or fails to choose an arbitrator, when required so to do by the Commis- sioner, the patent shall issue to the opposite party; and when there are more than two interfering applicants, and the parties applying do not all unite in appointing three arbitrators, the Commissioner .or his deputy, or person appointed to perform the duty of that office, may appoint the three arbitrators for the purposes aforesaid. ( 43.) 185.. DOCUMENTS IN PATENT OFFICE TO BE OPEN TO IN- SPECTION OF THE PUBLIC, EXCEPT CAVEATS. All specifi- cations, drawings, models, disclaimers, judgments, and other papers, except caveats, shall be open to the inspec- tion of the public at the Patent Office, under such regu- lations as may be adopted in that behalf. ( 44.) 186. CLERICAL ERRORS. Clerical errors happening in the framing or copying of any instrument of the Patent Office shall not be construed as invalidating the same, but when discovered they may be corrected under the authority of the Commissioner. (45.) 187. LOST OR DESTROYED PATENT MAY BE REPLACED. In case any letters patent shall be destroyed or lost, others of the like tenor, date, and effect may be issued in lieu thereof, on the party paying the fees hereinbefore pre- scribed for office copies of documents. ( 46.) 188. USE OF PATENTED INVENTIONS ALLOWED IN FOR- EIGN SHIPS. No letters patent shall extend to prevent the use of any invention or discovery in any foreign ship DOMINION OF CANADA. 135 or vessel, where such invention or discovery is not so used for the manufacture of any goods to be vended within or exported from Canada. ( 47.) 189. PATENT NOT TO AFFECT PREVIOUS PURCHASER OF INVENTION. Every person who, before the issuing of a patent, has purchased, constructed, or acquired any inven- tion or discovery, for which a patent has been obtained under this act, shall have the right of using and vending to others the specific art, machine, manufacture, or com- position of matter patented, so purchased, constructed, or acquired before the issue of the patent therefor, with- out being liable to the patentee or his representatives for so doing; but the patent shall not be held iu valid as regards other persons by reason of such purchase, con- struction, or acquisition, or use of the invention or dis- covery by the person first aforesaid, or by those to whom he may have sold the same, unless the same was pur- chased, constructed, or acquired, or used for a longer period than one year before the application for a patent therefor. ( 48.) 190. PATENTED ARTICLES TO BE STAMPED WITH DATE OF PATENT. Every patentee under this act shall stamp or engrave on each patented article sold, or offered for sale, by him, the year of the date of the patent applying to such article, thus : "Patented 1869," or as the case may be ; and any such patentee selling or offering for sale any such patented article not so marked, shall be liable to the punishment of a fine not to exceed $100, and in default of the payment of such fine to imprisonment not to exceed two months. ( 49.) 191. PUNISHMENT OF PARTIES WHO STAMP AN ARTICLE AS PATENTED WHEN SUCH is NOT THE CASE. Whosoever 136 FOREIGN PATENT LAWS. writes, paints, prints, molds, casts, carves, engraves, stamps, or otherwise marks upon anything made or sold by him, and for the sole making or selling of which he is not the patentee, the name, or any imitation of the name, of any patentee for the sole making or selling of such thing, without the consent of such patentee, or without the consent of the patentee Writes, paints, prints, molds, casts, carves, engraves, stamps, or otherwise marks upon anything not purchased from the patentee, the words "patent," "letters patent," "Queen's patent," " patented," or any word or words of like import, with the intent of counterfeiting or imitating the stamp, mark, or device of the patentee, or of deceiving the public and inducing them to believe that the thing in question was made or sold by or with the consent of the patentee, shall be deemed to have committed a misdemeanor, and shall, on conviction, be punished therefor by fine or by imprison- ment, or both, in the discretion of the court before which the conviction shall be had; but the fine shall not exceed $200, nor shall the imprisonment exceed three months. ( 50.) 192. PUNISHMENT OF OFFENDERS FOR MAKING FALSE ENTRY OR COPY. Any person willfully making or causing to be made any false entry in any register or book, or any false or altered copy of any document relating to the pur- poses of this act, or who shall produce or tender any such false or altered document, knowing the same to be such, shall be guilty of a misdemeanor, and shall be punished by fine and imprisonment accordingly. ( 51.) 193. ALL ACTS INCONSISTENT WITH PRESENT ACT RE- PEALED. Chapter thirty-four of the Consolidated Stat- utes of the late Province of Canada, respecting patents DOMINION OF CANADA. 137 for inventions, chapter one hundred and seventeen of the Kevised Statutes of Nova Scotia, (third series,) chapter one hundred and eighteen of the Revised Statutes of New Brunswick, and any act amending any of the said chapters or any other act, are hereby repealed, in so far as they or any of them may be inconsistent with this act, or make any provision in any matter provided for by this act, except only as respects all rights acquired and pen- alties or liabilities incurred under the said laws, or any of them, before the coming into force of this act. ( 52.) 194. TITLE OF ACT: THE PATENT ACT OF 1869. "When citing this act it shall be sufficient to call it " The Patent Act of 1869." ( 53.) 195. ACT TO COMMENCE AND TAKE EFFECT JULY 1, 1869. This act shall commence and take effect on the first day of July, 1869. ( 54.) XVIII. Rules, Regulations, and Forms of the Canadian Patent Office. SEC. 196. Date of approval. 197. Personal appearance. 198. Applicant responsible. 199. Correspondence. 200. Clerical requirements. 201. Address. 202. Forms. 203. Petition. 204. Joint application. 205. Oath. 206. Specification. 207. Drawings. SEC. 208. Extension. 209. Form of patent. 210. Model. 211. Fees. 212. Time for perfecting application. 213. Separate inventions cannot be claimed in one application. 214. Protest. 215. Cases of doubt. 216. Caveat. 217. Intricate cases. 218. General remarks. 196. DATE OF APPROVAL. The following rules were 12* 138 FOREIGN PATENT LAWS. approved by the Governor in Council on the 2d of July, 1869, under the patent act of 1869. 197. PERSONAL APPEARANCE. There is no necessity for any personal appearance at the Patent Office, unless specially called for hy order of the Commissioner or the Deputy Commissioner, every transaction being car- ried on by writing. (Rules of 2d July, 1869.) 198. APPLICANT RESPONSIBLE. In every case the ap- plicant or depositor of any paper is responsible for the merits of his allegations, and of the validity of the instru- ments furnished by him or his agent. (Ib.} 199. CORRESPONDENCE. The correspondence is carried on with the applicant, or with the agent who has remit- ted or transmitted the papers to the office, but with one person only. (Ib.} 200. CLERICAL REQUIREMENTS. All papers to be clearly and neatly written on foolscap paper, and every word of them is to be distinctly legible, in order that no difficulty should be met with in taking cognizance of and in registering and copying them. (Ib.} 201. ADDRESS. All communications are to be ad- dressed in the following words: "To the Commissioner of Patents, Ottawa." (Ib.} 202. FORMS. As regards proceedings not specially provided for in the following forms, any form being con- formable to the letter and spirit of the laws will be ac- cepted, and if not so conformable will be returned for correction. (Ib.} 203. PETITION. The petition asking for the granting of a patent of invention shall be made after the follow- ing form: (Ib.) DOMINION OF CANADA. 139 To the Commissioner of Patents, Ottawa: The petition of [Christian name or names in full of inventor, inventors, assignee, or other legal representative of inventor], of the [city, town, or other locality, as the case may be], in the Province of [as the case may be], [trade or profession], showeth : That your petitioner has been a resident of Canada for at least one year next before the present application [mention to be made of place, and changes of residence]; that he hath discovered [or "in- vented," as the ease may be] a certain new and useful [art, "machine," "manufacture," or "composition of matter," as the case may be, or certain new and useful "improvements"], on a certain [art, "machine" "manufac- ture," or "composition of matter," as the case may be], now in ordinary use for [stating the use or object of the art, &c., as the case may be], to be called or known as ["name of invention or improvement"], and that such his dis- covery [or "invention" as the case may be], was and is not known or used by others before his discovery [or "invention," as the case may be] thereof, and was and is not, at the time of this application, in public use or for sale with his consent or allowance as such inventor [or discoverer, as the case may be]; and that the oath or affirmation, drawings, descriptions, and specifications thereof, in duplicate, are transmitted herewith, pursuant to the statute in such case made and provided; the said invention being [in- sert here a very short description of the invention and of its object]. Your petitioner, being desirous of obtaining an exclusive property in the said invention or discovery [as the case may be], therefore prays that a patent may be granted to your petitioner therefor for the term allowed by law ; and, for the purposes of the patent act of 1869, your petitioner elects his domicil in the [city, town, or locality, as the case may be], in the county of [name of county], in the Province of [name of Province]. [Signature of inventor:] [Place and date.] 204. JOINT APPLICATION. In case of joint applications, in cases of applications from assignees, heirs, or other legal representatives, the petition should, otherwise being made after the above given form, be altered, according to the circumstances of the case, to meet the require- ments of the statute, particularly of 8, 10, 11, 12. ( Vide supra pp. 116, 117, 118.) 205. OATH. The oath to be subscribed by an appli- 140 FOREIGN PATENT LAWS. cant for a patent of invention shall be made after the following form : (Ib.) Canada, Province of , county of I, , of , in the county of , in the Province of , make oath and solemnly swear, that I verily believe that I am the inventor [or discoverer] of the invention which I call [name of the in- vention], and for which I solicit a patent by my petition to the Commis- sioner of Patents, dated the [insert date of petition], and I further make oath that I have been a resident of Canada for one year next before my application. [Signature of deponent.] Sworn and signed before me this [day of month and year], at [name of place]. [Signature of J. P.], Justice of the Peace. The same general form is to be adopted, with such alterations as may be necessitated by circumstances, where the application is made abroad, or by joint invent- ors, by assignees, heirs, or other legal representatives, in conformity with the patent act, 11. (Ib.} 206. SPECIFICATION. The specification accompanying a petition for a patent of inventions shall be made in duplicate, and after the following form : (Ib.) To all whom it may concern : Be it known that I, [name of inventor or discoverer, as the case may be,] of [place of residence and trade or profession; if more than one inventor, add his or their names, place of residence, and trade or profession, and word the specification throughout according to circumstances], have invented a new and useful [art, "machine," &c., same as in petition], and I do hereby declare that the following is a full, clear, aud exact description of the con- struction and operation of the same. [Reference being had to the annexed drawings, where the nature of the case admits of drawings ; describe the sev- eral drawings, and refer to the parts by letters. Here describe the principle, and the several modes in which the applicant contemplates the application of that principle or character, by which the invention or discovery may be dis- DOMINION OF CANADA. 141 tinguished from other inventions or discoveries.] What I claim in my inven- tion is, [here express the nature and character of the invention in short, without reference to its advantages, and identify the parts claimed, separately or in combination. If the specification is for an improvement or improve- ments, the original invention should be disclaimed, and the improvement or improvements clearly and separately enumerated, as distinguished from the original object so improved.] [Place, date, and year.] [Signature of inventor.] Signed in the presence of [Signatures of two witnesses, and to be the same as those who attest the drawing.] 207. DRAWINGS. The drawings illustrating the speci- fication filed with an application for a patent of inven- tion shall be made in accordance with the following directions and form, and furnished in duplicate: The drawings are to be made on tracing linen, each sheet to be of the size. of a foolscap sheet of paper, and the said sheets as few in number as possible. The dif- ferent figures of the drawings are to be marked thus : Fig. 1, front view; fig. 2, side view, &c., &c. ; and the separate parts are to be marked with letters in the spec- ification and on the drawing sheet itself; the drawing must bear the name of the invention, and be signed by the inventor and the two same witnesses who signed the specification, all after the following general form. The drawings are to be neatly executed, and without colors : [Title of the invention.] Fig. 1, front view. [Drawing.] Fig. 2, side view. [Drawing.] Fig. 3, cross section. [Drawing.] Fig. 4, wheel. [Drawing.] 142 FOREIGN PATENT LAWS. Reference for example: a. Shaft; b. Valve;. c. Regulator; &c., &c., &c. Certified that this is the drawing deferred to in the specification here- unto annexed. [Signature of the applicant.] [Place and date.] [Signature of inventor.] 208. EXTENSION. An application to obtain the exten- sion of a former patent to the whole of the Dominion must be accompanied with the former patent itself, with neat duplicate copies of the original specification and drawing, certified by the inventor before the same two witnesses signing the petition; and the said petition shall be made after the following form : (Ib.) To the Commissioner of Patents, Ottawa : I, [names,] of the [locality of residence], in the county of [name of county], in the province of [or elsewhere, as the case may be], being a British sub- ject, [or a resident of Canada for upwards of a year,] and being the discov- erer [or inventor] of the subject-matter of a patent granted to me on [day, month, and year], in the province of [Nova Scotia, New Brunswick, or former Province of Canada, or for the Provinces of Ontario and Quebec, as the case may be], which I now produce, and the said subject-matter of my said invention and patent called [name of invention] being not, with my consent, known or used nor on sale in any of the other Provinces of the Dominion, I hereby therefore pray that a patent, under the " Patent Act of 1869," be granted to me, extending the privileges of my former patent over the whole of the Dominion for the remainder of the term mentioned in my former patent, namely, to the [insert day, month, and year at which the former patent was to expire.] In testimony thereof I have signed in the presence of the two under- signed witnesses at the place and date hereunder mentioned. [Place and date.] [Signature of the applicant.] [Signatures of the two witnesses.] DOMINION OF CANADA. 143 209. FORM OF PATENT. A patent of invention will be made after the following form : (Ib.} Canada, Patent of Invention. TSEAL 1 Whereas in accordance with an act of the Parliament of Can- ada, called " The Patent Act of 1869," [names of patentee}, of the [name of locality], in the province of [name of province], being i resident of Canada, having elected his domicil, for the purpose of the present pat- ent, in [designation in full of domicil elected], having otherwise complied with the requirements of the said act to obtain a patent, and having fur- nished specification and drawings, one duplicate of each being hereunto annexed as part essential of this present patent, the said specification and drawings being the description and illustration of the said invention called [name of the invention or improvement}, of which the said [names] declares himself to be the inventor. The present patent is granted to him, his heirs, assigns, or other legal representatives, for the period of five years from the date thereof, subject to extension of further periods, in accordance with " The Patent Act of 1869," to confer on the said patentee all the privileges intended to be conferred by the said act, or by the patentee complying with the further obligations required by the said act. Provided always that the validity of this present patent rests on the truthfulness of the allegations, description, and specification of the said patentee. The present patent, however, shall cease and determine and be null and void at the end of three years from the date thereof, unless the patentee shall within that period have commenced, and after such commencement carry on, in Canada the construction or manufacture of the said invention, and shall cease and determine and be null and void at the end of eighteen months from the granting thereof, if the patentee or his legal representa- tives import, or cause to be imported, into Canada the invention for which the patent is granted. In testimony whereof the present patent has been signed according to the said act, sealed with the seal of the Patent Office, and countersigned in the Department of Agriculture, on the [date, month, and year written in full and prominently.] [Signature of the Commissioner of Patents or of a member of the Privy Council.] Countersigned : j Deputy Commissioner. ) 144 FOREIGN PATENT LAWS. This specification will be attached to the patent to form an essential part thereof, and the first folio of the said specification will be sealed at one corner with the seal of the Patent Office. (76.) The present form, otherwise remaining the same, will be altered in some particulars to meet the circumstances of the case when the patent is given to joint inventors, to an assignee or assignees, to legal representatives, or when it is a patent extending a former patent to the whole of the Dominion, or is a reissue, or in any other special case. (76.) 210. MODEL. The models required by law must be neat and substantial working models, the dimensions of which are not to exceed, in any case, eighteen inches in their longest side, unless otherwise allowed by special permission previously obtained. Such models must be BO constructed as to show exactly every part of the inven- tion and its mode of working. In cases where samples of ingredients and samples of the composition made of such ingredients (neither of which being dangerous or explosive substances) are required by law, they must be contained in glass bottles, properly arranged. Both mod- els and bottles must bear the name of the inventor, the title of the invention, and the date of the application ; and they must be furnished to the Patent Office free of every charge, and delivered in good order. ' 211. FEES. All fees required by law shall be trans- mitted with the application to which they appertain in values not subject to any discount, and be better made, whenever practicable, in post-office money-orders, inclos- ed in registered letters. (76.) 212. APPLICATIONS TO BE PERFECTED WITHIN Two DOMINION OF CANADA. 145 YEARS. All applications must be proceeded with and perfected within two years after the lodging of the peti- tion, in default of which it will be regarded as aban- doned, and all previous proceedings and payment of fees will be held at the expiration of that period as of no avail. (Ib.) 213. SEPARATE INVENTIONS CANNOT BE CLAIMED IN ONE APPLICATION. Two or more separate inventions cannot be claimed in one application, nor patented in one pat- ent, unless they are so dependent of and connected with each as to be necessarily taken together to obtain the end sought for by the inventor; and in this latter case the Commissioner of Patents is the judge as to whether or not the pretensions of the applicant are founded in fact and reason. (Ib.) 214. PROTEST. The filing of a protest against the issu- ing of a patent shall not be taken in itself as a sufficient reason to withhold the granting of such patent to an ap- plicant. (Ib.} 215. CASES OF DOUBT. In cases of doubt, and in ac- cordance with the letter and meaning of the law, patents may be issued for an invention already patented, a trial before a judicial tribunal being in such cases the only means of discovering who is the real or first inventor. 216. CAVEAT. A caveat must be composed of a speci- fication, (and drawings,) and as long as it remains unin- terfered with, and that the filer is not called upon to lodge his application in due form on account of an interfering application, the said proprietor thereof can lodge with it additional papers, provided these papers are relevant ex- clusively to the perfecting of the same invention in prog- ress of completion. (Ib.) la 146 FOREIGN PATENT LAWS. 217. INTRICATE CASES. All cases connected with the intricate and multifarious proceedings issuing from the working of a law of patents of invention, which are not specially defined and provided for in these rules, shall be decided, in accordance with the merits of each case, by authority of the Commissioner of Patents, and the de- cision shall be communicated to the interested parties through the departmental correspondent of the Patent Office. (Ib.) 218. GENERAL REMARKS. The correspondence with the department is carried through the Canadian mail free of postage. The forwarding of any paper should always be accompanied by a letter, and a separate letter should be written in relation to each distinct sub- ject. It is particularly recommended that reference should be made to the law before writing on any subject to the department, in order to avoid unnecessary explanations and useless loss of time and labor; and it is also recom- mended in every case to have the papers and drawings prepared by a competent person, for the interest both of the applicant and of the public service. A sufficient margin should be left on paper, and espe- cially on specifications and assignments, for the insertion of references or certificates and for the affixing of the seal thereto. Although it is optional for the applicant to annex draw- ings to the specification of a caveat or not, still it is im- portant in the party always to attach drawings to the said specification. It must be remembered, that the better papers are ex- ecuted the sooner the work is dispatched at the office, CAPE OF GOOD HOPE. 147 and the surer the regularity of the proceedings is guar- antied. It must be remembered, when drawing the petition for a patent of inventions, that if a change in the residence mentioned has taken place during the year next to the date of the petition, the change or changes should be mentioned, in accordance with the twelfth section of the patent act of 1869. (76.) XIX. Cape of Good Hope. SEC. 219. Law, date, and where recorded. 220. Kinds of patents. 221. Duration. 222. Government fees. SEC. 223. Documents, where to be left. 224. Assignments. 225. Specifications and drawings. 226. Other legal provisions. 219. LAW, DATE, AND WHERE RECORDED. Act No. 17, of 1860, dated 30th August, 1860. (See Commissioners of Patents' Journal, vide supra 71, No. 727, An., 1860.) 220. KINDS OF PATENTS. Letters patent granted to the true and first inventor. Disclaimer and alterations. English patents granted before the 1st July, 1860, to be valid in the colony. 221. DURATION. Fourteen years. Patents to expire at the end of the third or seventh year, if the requisite pay- ments are not made. Letters patent for foreign inven- tions not to continue after expiration of foreign patent. Extension for a term not exceeding fourteen years after the expiration of the first term. 222. GOVERNMENT FEES. On deposit of specification, 2 105.; to the Attorney General for any appointment, 2 4s. 6d. ; on obtaining letters patent, 2 105. ; at or 148 FOREIGN PATENT LAWS. before the "expiration of third year, 10; at or before the expiration of seventh year, 20 ; to the Attorney General with particulars of objections, 2 4s. 6d.; on presenting petition for examination or confirmation, 2 10s. ; every search and inspection, Is.; entry of assignment or license, 10s.; certificate of assignment or license, 10s.; filing memorandum of alteration or disclaimer, 2 10s. ; en- tering any caveat, 2 10s. ; copy or extract of any writing, per common law folio, Is. 223. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. A complete specification (two copies) and drawings and models, if any, to be deposited at the office of the Colo- nial Secretary. Notice to proceed to be given to the Attorney General for publication in the government gazette and two local papers. Grant for letters patent issued by Attorney General after one month's notice. Letters patent, bearing date of deposit of specification, to be issued within three months after said warrant, or during the protection. 224. ASSIGNMENTS. Registered as above, and legal copies thereof to be had. More than twelve persons may have a legal and beneficial interest in one patent. 225. ORIGINALS OF SPECIFICATIONS AND DRAWINGS, DIS- CLAIMERS, &c. To be filed at the end of six months, at a proper office, with indexes, registers, &c., for public inspection. 226. OTHER LEGAL PROVISIONS. Patent of true in- ventor not to be affected by specification of pretended inventor. Letters patent may be repealed or withheld and sjrocification canceled by writ of the supreme court, in the nature of a writ of scire facias in England. Let- ters patent not to prevent the use of invention in foreign CEYLON. 149 ships resorting to ports in the colony. Penalty for un- authorized uses of word "patent," 100. XX. Ceylon. SEC. 227. Law, date, and where recorded. 228. Kinds of patents. 229. Duration. 230. Government fees. SEC. 231. Documents, where to be left. 232. Specification, inspec'n, copies. 233. Assignments. 234. Other legal provisions. 227. LAW, DATE, AND WHERE RECORDED. Inventions ordinance, 1859. (See Commissioners of Patents' Journal, vide supra 71, No. 684, An., 1860.) 228. KINDS OF PATENTS. Patents for invention and importation. English patents granted prior to the date of this ordinance admissible. Prerogative of Crown saved. 229. DURATION. Fourteen years. Extension of four- teen years more on petition presented not more than one year and not less than six months before the expira- tion of original term. 230. GOVERNMENT FEES. Stamp of petition, 10. 231. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. Petition of the inventor, or his authorized agent, ad- dressed to the Government, for leave to file specification, to be left with the Colonial Secretary of Government. Crown to refer petition for inquiry and report. Specifi- cation and declaration signed by inventor or his proxy. 232. SPECIFICATION, INSPECTION AND COPIES OF. At the office of the Colonial Secretary. Fee, 55. Certificate copies to be prima facie evidence. 283. ASSIGNMENTS. Registered at the office of the 13* 150 FOREIGN PATENT LAWS. Colonial Secretary, and open to public inspection without fee. 234. OTHER LEGAL PROVISIONS. False statement in declaration punishable as perjury. Invention not pub- licly used or known before application to file specifica- tion, or known only by fraudulent means, to be deemed new invention. Exclusive jurisdiction vested in the district court of Colombo. Causes of forfeiture : Inven- tion not new; petitioner not the inventor; invention not described in specification; fraud in petition or specifica- tion; false statement in petition ; fraudulent misdescrip- tion of part of invention in specification. Actual in- ventors entitled to assignment of an exclusive privilege fraudulently obtained. XXI. Cuba, Porto Rico, and the Philippine Islands. SEC. 235. Law, date, and where recorded. 236. Kinds of patents. 237. Duration. 238. Documents, where to be left. SEC. 239. Government fees. 240. Specifications, inspection of. 241. Assignments. 242. Working. 235. LAW, DATE, AND WHERE RECORDED. Royal decree of the 30th July, 1833. (See Commissioners of Patents' Journal, vide supra 71, N"o. 498, An., 1858.) 236. KINDS OF PATENTS. Letters patent for inventions, improvements, and importation, (the latter under certain restrictions when relating to agriculture.) Letters pat- ent to be taken up by their owner within three months of application. 237. DURATION. Patent for invention, five, ten, and fifteen years; patent for importation, five years; exten- FRANCE. 151 sion, five years for patent of invention of five years, to be reckoned from the day of delivery. 238. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition of the inventor, or his agent, addressed to the Governor General of Cuba, together with a correct de. scription, plan, or model, (all sealed up.) Grants of pat- ents to be published in the government papers and in the Madrid Gazette. 239. GOVERNMENT FEES. Patent of five years, $70 (pesos;) patent of ten years, $210 (pesos;) patent of fif- teen years, $420 (pesos ;) patent of importation, $210 (pe- sos ; besides $8 for delivery of letters patent. 240. SPECIFICATIONS, INSPECTION OF. Public register at the chambers of commerce. Specification and models open to the public after expiration of patent. 241. ASSIGNMENTS. Certificates of assignments to be delivered within sixty daj-s from their date. 242. WORKING. Not to be interrupted for one year and one day. XXII. France. SEC. 243. Law, date, and where recorded. 244. Kinds of patents. 245. Previous examination. 246. Duration. 247. Government fees. 248. Documents required, and where to be left. 249. Working and prolongation. 250. Assignments. SEC. 251. Specifications, inspection and copies of. 252. List of patents delivered. 253. Specifications published. 254. Originals of specifications, (models.) 255. Jurisdiction, local proceedings. 256. Proceedings to obtain a patent. 257. Form of French letters patent. 243. LAW, DATE, AND WHERE RECORDED. Royal decree 152 FOREIGN PATENT LAWS. of 5th July, 1844. (See Commissioners of Patents' Jour- nal, vide supra 71, Nos. 228, 229, 947, 948, and 949.) 244. KINDS OF PATENTS. Patents of invention and cer- tificates of addition for France and the French Colonies granted to natives or foreigners residing or represented in France. (Certificates of addition preferably to the original patentee within the first year.) 245. PREVIOUS EXAMINATION. None. Neither medi- cines nor financial schemes can be patented. Patent ar- ticles to bear the mark " S. g. d. G.," (without guaranty of the Government,) under a penalty of from 2 to 40. 246. DURATION. Five, ten, or fifteen years from the date of deposit. Foreign inventions according to the term of the original foreign patent. 247. GOVERNMENT FEES. One hundred francs each year. In case of transfer, the whole term originally de- manded must be paid at once. Certificates of addition, twenty francs. (1 fr.=10d.) 248. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition of the inventor, or his proxy, to the Minister of Commerce and Public Works; a* specification, (two copies,) drawings, (two copies,) on a metrical scale, or spe- cimens ; an acknowledgment of the receipt of one hun- dred francs paid to the Receveur General ; a memoran- dum of the various documents deposited at the secretariat of the respective prefecture ; at Paris, at the Hotel de Ville. In the Colonies, three copies of said documents to be delivered to the Director of the Interior. 249. WORKING AND PROLONGATION. Working within two years; not to be interrupted for two years. Pro- longation only by a special law. 250. ASSIGNMENTS. Made before notary public and FKANCE. 153 registered at the prefecture ; a register also kept at the Ministry of Agriculture and Commerce. In the Colonies, assignments are registered at the office of the Director of the Interior. 251. SPECIFICATIONS, INSPECTION AND COPIES OF. In- spection fee, at the Ministry of Commerce and Public Works ; copies on payment of twenty-five francs ; draw- ings extra; copies of certificates of addition twenty francs. 252. LIST OF PATENTS DELIVERED. Published monthly within six months of the date of application; also in the Commissioners of Patents' Journal. 253. SPECIFICATIONS PUBLISHED. After payment of the second annual fee, in full or in the form of extracts. Kept at the Secretariat of the Prefecture of each Depart- ment, also at the Public Free Library of the Patent Office, together with alphabetical and subject-matter in- dexes of all the specifications published under the old law of 1791 and new law of 1844. 254. ORIGINALS OF SPECIFICATIONS, (MODELS.) Depos- ited, at the expiration of the patent, in the library of the Conservatoire des Arts et Metiers. 255. JURISDICTION AND LOCAL PROCEEDINGS. Actions to be tried before the Tribunaux Civils de Premiere In- stance, according to article 405 and following of the Code Civil; in the Colonies, before the court of appeal. Fines for infringement, from 4 to 80, with seizure of the goods or machines, damages to the patentee, and costs of publication of judgment; in case of a second offense, imprisonment of from one to six months, according to article 463 of the Penal Code. 256. PROCEEDINGS TO OBTAIN A PATENT. The appli- 154 FOREIGN PATENT LAWS. cant must deposit at the office of the Secretary of the Prefect of the Seine, (au Secretariat de la Prefecture^) or in the provinces at the departmental prefectures, a sealed packet, containing the following documents, which must be in the French language, and without alterations or interlineations; any words erased must be counted and verified with the initials of the applicant and references to the pages; and when stating weights or measures those only must be employed which are decreed by the law of the 4th July, 1837: 1. A letter to the Minister of Agriculture and Com- merce, containing a request for a patent. 2. A description of the discovery, invention, or appli- cation forming the subject of the patent. 3. A duplicate of the same. 4. The drawings or patterns necessary for understand- ing the description. 5. A duplicate of the same. 6. A list of the above documents. The request for a patent must be limited to one prin- cipal object, with its constituent details and proposed application. It shall mention the number of years for which the patent is solicited, and contain neither restrictions, con- ditions, nor reserves. It shall indicate by a title the summary and precise designation of the object invented. The drawings must be traced in ink, according to a metrical scale. All the documents must be signed by the applicant or his agent. An agent must be authorized by a written power of attorney. This power ought, according to the FRANCE. 155 regulations, to be legalized, but in practice this is not required. Besides the sealed packet containing the above docu- ments, the applicant must hand in a receipt for one hundred francs, being the first year's payment of the patent tax. The Paris office, at which these payments are to be made, is that of the Receveur Central, Rue Neuve des Mathurins, ~No. 36. These requirements fulfilled, the applicant receives a certificate stating the day and hour of depositing the documents. The patent commences from this date. The documents are then transmitted by the prefect to the Minister of Agriculture and Commerce, and the pat- ent is returned to the applicant in regular order. The patent consists in a decree of the minister declaring the regularity of the patent, accompanied by one of the copies of the description and drawings, duly certified. The patent is delivered at the risk of the applicant, and without guaranty from the Government either as to the reality, the novelty, or the merit of the invention, or the accuracy of the description. 257. FORM OF FRENCH LETTERS PATENT. Patent of Invention without guaranty of the Government. The Minister Secretary of State, at the Department of Agriculture, Com- merce, and Public Works, considering the law of the 5th July, 1844, con- sidering the declaration made on the , at forty minutes past three, at the office of the Secretary General of the Preference of the Department of , and which establishes the delivery made by , of an application for a patent of invention for [title of the patent], decrees as follows : ART. 1. A patent of invention for - years, to begin from , for [title] is herewith delivered to , without previous examina- tion, at his own risk, and without guaranteeing either the reality, novelty, or merit of the invention, or the correctness of the description. 156 FOREIGN PATENT LAWS. AET. 2. The present decree constituting letters patent is delivered to prove his title. This decree will be accompanied with one of the dupli- cates of the description delivered in support of the application, the con- formity between the descriptive documents having been duly established. PAEIS, the For the Minister and by Delegation the Director of the Commerce of the Interior. [Signed] E. JULIEN. For true copy, [L. 8.] The Chief Clerk, L. SMITH. XXIII. Greece. 258. Government may grant privileges for inventions. 258. GOVERNMENT MAY GRANT PRIVILEGES FOR INVEN- TIONS. According to a law passed in 1843 the Govern- ment is empowered to grant privileges for inventions, subject to the approbation of the Senate. XXIV. British G-uiana. SEC. 259. Law, date, and where recorded. 260. Kinds of patents. 261. Previous examination. 262. Duration. 263. Government fees. SEC. 264. Documents required, and where to be left. 265. Assignments. 266. Originals of specifications, &c. 267. Other legal provisions. 259. LAW, DATE, AND WHERE RECORDED. Ordinance No. 13, of the year 1861. (See Commissioners of Patents' Journal, vide supra 71, No. 798, An., 1861.) 260. KINDS OF PATENTS. Letters patent to the true and first inventor; disclaimer and alterations; under the seal of the colony. English patents not to be affected by this ordinance. BRITISH GUIANA. 157 261. PREVIOUS EXAMINATION. By the Attorney Gen- eral as to correctness of description. 262. DURATION. Fourteen years. Patents to expire if before the end of the first seven years the required stamp duty has not been paid. Letters patent for foreign invention not to continue after expiration of foreign pat- ent. Extension of original to another term not exceed- ing seven years by six months' previous notice. 263. GOVERNMENT FEES. To be paid at the Attorney General's office: On examining provisional specification to be paid on filing petition, $25; on reporting an appli- cation for letters patent after notice to proceed, $25 ; on giving notice of disclaimer or alterations, $25 ; on enter- ing caveat, $25. Stamp duties to be paid at the Government Secretary's office: On notice to proceed, $5; on the seal- ing of the letters patent, $20; on the letters patent or a duplicate thereof before the expiration of the seventh year, $100; on petition for confirmation or prolongation of patent, $50; on the sealing of grant confirming or prolonging letters patent, $100. Fees to be paid at the Register office: On recording letters patent, 5 cents; on depositing complete specification, including copy, $15; on entering disclaimer or alteration, including copy and notification in the official gazette, $10 ; on entering ca- veat, including copy and notification in the official ga- zette, $10. For copy of any of the before-mentioned documents, or of any provisional specification deposited, per page, 25 cents. On inspecting register of patents, for each patent and all documents connected therewith, 48 cents. (N. B. For copies of drawing, extra.) 264. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. Petition, affidavit, and provisional (or complete) specifi- 14 158 FOREIGN PATENT LAWS. cation, by inventor or his proxy, to "be left at the office of the Government Secretary for provisional protection during twelve months. Provisional protection and no- tice to proceed to be advertised in the official gazette. Warrant to be issued after one month's notice. 265. ASSIGNMENTS. Registered as above. 266. ORIGINALS OF SPECIFICATIONS, DISCLAIMERS, DRAW- INGS, &c. To be copied in the register of patents at the end of twelve months, and kept at a proper office, with indexes, &c., for public inspection. 267. OTHER LEGAL PROVISIONS. Letters patent not to prevent the use of invention in foreign ships resorting to ports in the colony, (provided English ships enjoy the same privilege in the respective foreign ports.) XXV. India. SEC. 268. Law, date, and where recorded. 269. Kinds of patents. 270. Duration. 271. Government fees. 272. Documents, where to be left. 273. Extension. 274. Disclaimer. 275. Specification, inspection, copies. 276. Assignments. 277. List of patents delivered. SEC. ' 278. Jurisdiction. 279. Chief legal provisions. 280. Proceedings to obtain a patent. 281. Form of petition. 282. Form of declaration to accom- pany petition. 283. Form of declaration to accom- pany specification. 284. Form of declaration by agent. 285. Form of petition. 268. LAW, DATE, AND WHERE RECORDED. Act XV, An., 1859. Dated Osborne, 19th March, 1859. Promul- gated in India on the 21st May, 1859. (See Commission- ers of Patents' Journal, vide supra 71, !S"os. 552 and 578.) 269. KINDS OF PATENTS. Exclusive privileges granted to the original inventor, whether a native or alien, or his INDIA. 159 authorized agent in India, subject, however, to any such conditions and restrictions as the Governor General may think expedient. 270. DURATION. Fourteen years from the date of filing the specification. 271. GOVERNMENT FEES. A stamp duty of one hun- dred rupees on the petition for leave to file a specifica- tion, and a reasonable fee for an inquiry and report, if any, on the petition. 272. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition of the inventor, or his authorized agent in India, to the Governor General of India in Council, for leave to file a specification ; a declaration of the original inventor, or, if absent, of his agent; a specification, with drawings, (five copies,) within six months of the order authorizing the filing of the specification. To be left with the Secretary to the Government of India in the Home Department. 273. EXTENSION. By the Governor General in Coun- cil, for a further term, not exceeding fourteen years from the expiration of the fourteen years, upon petition, to be presented at any period not more than one year and not less than six calendar months before the expiration of the exclusive privilege. 274. DISCLAIMER. Petitioner, after the filing of his specification, may apply for leave to file amended speci- fication, having the same effect as the specification first filed. 275. SPECIFICATIONS, INSPECTION AND COPIES OF. At the Government of India in the Home Department, of Bengal, of Fort St. George, of Bombay, of the North- western Provinces. Open to public inspection on pay- 160 FOREIGN PATENT LAWS. ment of one rupee. Copies to be had at the office of the Secretary to the Government of India on paying the expense of copying. 276. ASSIGNMENTS. Original inventors have power to assign their patents to other parties. Patents, however, fraudulently obtained, must, on the complaint of the original or actual inventor, made within two years of the filing of specification, be assigned to the latter, the profits thereof, at the same time, having to be accounted for and paid over to the said original or actual inventor. 277. LIST OF PATENTS DELIVERED. Open at the office of the Secretary to the Government of India on payment of one rupee. Published in the Commissioners of Patents' Journal. 278. JURISDICTION. Her Majesty's courts of judica- ture. 279. CHIEF LEGAL PROVISIONS. No person is entitled to an exclusive privilege if the invention is of no utility, if invention is not new, if the petitioner is not the invent- or, if the specification does not describe the invention, if petition or specification contains fraudulent mis-state- ments (false statements in declaration being punishable as perjury.) Exclusive privilege to cease if the Govern- ment declares it mischievous, &c., to the public, or if the Government, upon breach of condition proved, declares that it shall cease. Importer of an invention, if not the actual inventor, not to be deemed the inventor. An in- vention not publicly used or known in the United King- dom or in India, before the application for leave to file the specification, to be deemed a new invention, (the right of the original inventor being still reserved during the first six months.) Defect in specification or petition, or INDIA. : ^o 161 want of novelty in invention, &c., no defense to action for infringement. The actual use of an invention in In- dia or the United Kingdom, before date of petition, a defense to such action. Amendment of specification may be ordered by the court. Certified copy to be prima facie evidence. 280. PROCEEDINGS TO OBTAIN A PATENT. The inventor of any new manufacture may petition the Governor Gen- eral of India in Council for leave to file a specification. The petition must be in writing, signed by the petitioner, or, iu case of his absence from India, by his authorized agent, and shall state the name, addition, and place of abode of petitioner, and the nature of the invention. ( 1.) 281. FORM OF PETITION. To the Governor General of India in Council: The petition of [here insert name, addition, and place of residence], for leave to file a specification under act No. Showeth, That your petitioner is in possession of an invention for [state title of in- vention], which invention he believes will be of public utility ; that he is the inventor thereof, [or, as the case may be, the assignee, or the executor or * L ' t7 7 administrator of the inventor;] and that the same is not publicly known or used in India or any part of the United Kingdom of Great Britain and Ireland, to the best of his knowledge and belief. The following is a description of the invention, [here describe it.] Your petitioner therefore prays for leave to file a specification of the said invention, pursuant to the provision of Act No. And your petitioner, &c. The day of [Signed.] On such a petition the Governor General may make an order authorizing the petitioner to file a specification. Before making such order the Governor General in Council may refer the petition to any person or persons for inquiry and report, the fee for which is to be paid, the 14* 162 FOREIGN PATENT LAWS. amount of which, in case of dispute, to be settled by one of the courts of judicature in a summary manner. ( 3.) On obtaining such order the petitioner may, within six months, cause a specification of his invention to be filed, and, having done so, he and his legal representatives shall have a right to the exclusive use, &c., of his invention for fourteen years, and for a further term of not exceeding fourteen years, should the Governor General in Council so direct, upon petition from inventor, presented not more than a year nor less than six calendar months before the expiration of the first period of privilege. ( 4.) The order may be made subject to such restrictions as the Governor General in Council may think expedient. (5.) The specification shall be in writing, it shall be signed by petitioner, and shall particularly describe the nature of the invention and in what manner the same is to be performed. ( 6.) The petition and specification shall be left with the Sec- retary to the Government of India in the Home Depart- ment, and each petition and specification shall be accom- panied by a declaration in writing in the following forms : 282. FORM OF DECLARATION TO ACCOMPANY PETITION. I, [name, addition, and place of residence,] do solemnly and sincerely declare, that I am in possession of an invention for [title] ; that I believe the said invention will be of public utility ; that I am the inventor there- of, [or the assignee, or executor, or administrator of the inventor,] and that the same is not publicly known or used in India or in any part of the United Kingdom of Great Britain and Ireland, to the best of my knowl- edge and belief; and that, to the best of my knowledge and belief, my said invention is truly described in my petition for leave to file a specification thereof. The day of [Signed,] INDIA. 163 283. FORM OF DECLARATION TO ACCOMPANY SPECIFICA- TION. I, [name, addition, and residence,] do solemnly and sincerely declare, that I am in possession of an invention for [nature of invention] ; which inven- tion I believe will be of public utility ; that I am the inventor thereof, [or the assignee, executor, or administrator of the inventor,] and that the same is not publicly known or used in India or in any part of the United Kingdom of Great Britain and Ireland, to the best of my knowledge and belief; and that, to the best of my belief, the instrument in writing under my hand, herewith annexed, particularly describes and ascertains the nature of the said invention and in what manner the same is to be per- formed. The day of " ;". , [Signed.] If the inventor be absent from India, the petition and specification are to be accompanied also by a declaration from the agent, to the effect that he verily believes that the declaration was signed by the inventor and that the contents are true. The agent's declaration is to be in similar form to that of the inventor, and the date of de- livery of the petition and specification is to be indorsed on them and recorded at the office of the secretary. Any false statement in such declaration is punishable as per- jury. (7,8.) 284. FORM OF DECLARATION BY AGENT WHEN AN IN- VENTOR is ABSENT FROM INDIA. I, , of , do solemnly and sincerely declare, that I have been appointed by the said his agent, for the purpose of ; and I verily believe that the declaration purport- ing to be the declaration of the said , marked ( ), was signed by him, and that the contents thereof are true. The day of [Signed.] The fees under the act, and also the fees (if any) of the person to whom the petition may have been referred, 164 FOREIGN PATENT LAWS. must be paid before filing the specification. ( 9.) No fee is mentioned in the act, the only stipulation being that the petition for the original grant of exclusive privi- lege or for its extension must be written on stamped paper of the value of- 100 rupees, (10.) ( 37.) An inventor having obtained letters patent in the United Kingdom may, within twelve calendar months from the date of the letters patent, petition the Governor General for the exclusive privilege in India. He must state in his petition that such letters patent have been granted, with the date and term during which they are to be in force. The Indian privilege will cease in case of the revocation of the original letters patent, and shall not exceed the original term, unless the same be renewed. ( 20.) 285. FORM OF PETITION. That your petitioner [or that A. B., of whom your petitioner is the as- signee, or executor, or administrator] has obtained Her Majesty's letters pat- ent, dated the day of , for [title of invention], and that such letters patent are to continue in force for years ; that your petitioner believes that the said invention is not now and has not hitherto been publicly known or used in India. The following is a description of the invention, [here describe it.] Your petitioner therefore prays for leave to file a specification of the said invention, pursuant to the provisions of act No. And your petitioner, &c. The day of [Signed.] XXVI. Italy SEC. 286. Law, date, and where recorded. 287. Kinds of patents. 288. Previous examination. 289. Duration. SEO. 290. Government fees. 291. Documents required, and where to be left. 292. Working and prolongation. ITALY. 165 SEO. SEC. 293. Annulment. 298. Specifications published. 294. Infringements. 299. Proceedings to obtain a patent. 295. Assignments. 300. Petition. 296. Specifications, inspection and 301. Description. copies of. 302. Memorandum. 297. List of patents delivered. 286. LAW, DATE, AND WHERE RECORDED. Koyal decree of 31st January, 1864. (See Commissioners of Patents' Journal, vide supra 71, Nos. 1061, 1064, 636, 1656. 287. KINDS OF PATENTS. Patent certificates, (letters patent;) certificates of addition; certificates of reduc- tion, (disclaimers;) certificates of prolongation; delivered to natives or aliens residing or represented in Italy. 288. PREVIOUS EXAMINATION. None as to novelty and utility, except with regard to inventions concerning bev- erages and food, which are to be referred to the board of health. 289. DURATION. From one to fifteen years, to begin from the last day of either March, June, September, or December which follows nearest to the day of applica- tion. Foreign patents not to exceed their term allowed abroad. Original term of less than fifteen years pro- longed to fifteen years. 290. GOVERNMENT FEES. A proportional tax of as many 10 lire as there are years in the duration of the re- spective patent, and an annual tax of 40 lire for each of the first three years; 65 lire for each of the fourth, fifth, and sixth years; 90 lire for each of the seventh, eighth, and ninth years; 115 lire for each of the tenth, eleventh, and twelfth years; and 140 lire for each of the last three years. The first annuity and proportional tax to be paid at the time of application. Certificates of addition, 20 166 FOREIGN PATENT LAWS. lire; certificates of prolongation, 40 lire; certificates of reduction, (disclaimers to be filed within the first six months,) 40 lire; extra copy of any certificate, 15 lire; (1 lira=8rf.) 291. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. An application of the inventor, or his proxy, to the Min- ister of Finances; a description, in French or Italian, and drawings, (three copies,) or a model and two draw- ings; a receipt for the fees paid into the treasury. Orig- inal or legalized copy of foreign letters patent. A mem- orandum of the documents and objects delivered. To be left at the Ministry of Finances, at Florence. Certifi- cates of addition granted within the first six months, in preference to original patentees. Deficiencies in docu- ments to be made good within fifteen daj^s. Appeals (50 lire) to be submitted to a special commission. 292. WORKING AND PROLONGATION. Patents of five years and less to be worked within one year, and the working not to be interrupted for one year. Patents of more than .five years to be worked within two years, and the working not to be interrupted for two years, except by showing good cause for delay. 293. ANNULMENT. By summary process before the provincial tribunals, with experts, (if desired.) 294. INFRINGEMENTS. Punishable by a fine up to 500 lire, and confiscation of counterfeit machines, goods, &c., for the benefit of the patentee, who besides may claim damages. Actions not to be delayed beyond a week. 295. ASSIGNMENTS. Registered at the Central Patent Office, and published in the ofiicial gazette, on the pay- ment of 5 lire. The whole patent fees to be paid pre- vious to registration. ITALY. 167 296. SPECIFICATIONS, INSPECTION AND COPIES OF. At the Central Patent Office, three months after the deliv- ery of certificates. Copies to be had by paying for stamped paper, and 2 cents per line. Drawings extra. 297. LIST OF PATENTS DELIVERED. E very three months, in the official gazette and in the Commissioners of Patents' Journal. ^ 298. SPECIFICATIONS PUBLISHED. Every six months, in full or in the form of extracts. Kept at the Public Free Library of the Patent Office. 299. PROCEEDINGS TO OBTAIN A PATENT. Applications for patent are to be addressed to the head of an office in the Ministry of Finance specially appointed for the pur- pose. They must be presented by the inventor or his agent, and contain 1. The Christian and surname of the inventor, the place of his birth and abode, and of his agent, if any. 2. A summary and precise designation of the nature and object of the invention, to form the title of it. 3. The number of years for which the patent is solic- ited. Each application must be for one patent only, and one patent cannot include several inventions. The following documents must accompany the appli- cation : 1. The description of the invention or discovery. 2. The drawings, if they can be made, as well as the models which the inventor may judge useful to explain his invention. 3. A receipt for the payment into the public treasury of the tax due on the patent. 4. The original or copy in due form of the foreign 168 FOREIGN PATENT LAWS. patent, when the invention shall already have been pat- ented abroad. 5. The power of attorney of the agent, (if any,) which must be drawn up by an authentic deed, or, if by pri- vate deed, the signature of the inventor must be certi- fied by a notary or by the syndic of his place of resi- dence. 6. A list of the documents thus presented. The description must be in French or Italian, and con- tain a clear and complete description, such as will enable a person conversant with the subject to put the inven- tion into practice. The description and drawings are to be in triplicate, the applicant alone being answerable for their correct- ness; when the application is accompanied by a model, the copies of drawings must also be sent in, or at least drawings of such parts of the model as constitute the invention. [NOTE. A recent rule requires the drawings filed with the specification to be executed in India ink, on the smallest practical metrical scale. The prescribed sizes are: First, 5| inches by 7| inches; second, 7| inches by llf inches; and third, llf inches by 15f inches, accord- ing to the character of the invention. Drawings made to a larger scale than the officials deem necessary will be returned to the applicant for reduction, and in the meantime the application will be suspended.] 300. PETITION. [Stamp, cent. 50.] To the Minister of Agriculture, Industry, and Commerce: Mr. Annibale Ugazzi, born in Turin, and residing in Milan, [represented, as the case may be, by his special attorney, Antonio Arrisabini, of Bologna, and residing at Naples,} begs to apply for a patent of six years for his JAMAICA. 169 invention, entitled [machine for carding cotton], with a view of acquiring the legal right of exclusively using his invention or industry, and also of exclusively manufacturing and selling the same. [Date of application.] [Signature of applicant.] 301. DESCRIPTION. [Stamp, 50 cent.] \ Description of the invention entitled [machine for carding cotton]. [Here follows description.] [Signature of applicant.] The Secretary. 302. MEMORANDUM. [Stamp, 50 cent.] Memorandum of the papers and objects delivered by Mr. Annibale Ugazzi, [represented, as the case may be, by his special attorney, Mr. Alfonso Reccaboni,] at the office of the secretary of the prefecture of , for the purpose of obtaining a patent for an invention entitled [machine for carding cotton]. 1st. The application. 2d. Three copies of the description. 3d. Three copies of drawings in six sheets, or two copies of drawings in four sheets, and a model. 4th. The receipt for the due payment of the tax. 5th. The present memorandum. [If other documents are filed, state them.] [Date of application.] [Signature of the applicant.] XXVII. Jamaica. SEC. 303. Law, date, and where recorded. 304. Kinds of patents. 305. Previous examination. 306. Documents required, and where to be left. 307. Working. 308. Duration. 15 SEC. 309. Assignments. 310. Specifications, inspection and copies of. 311. Penalty for use, or for imita- $ion, or counterfeit without^ consent. 312. Government fees. 170 FOREIGN PATENT LAWS. . 303. LAW, DATE, AND WHERE RECORDED. The patent law amendment act, 1857. (See Commissioners of Patents' Journal, vide supra 71, No. 660.) 304. KINDS OF PATENTS. Patents for invention or im- provement and addition granted by the Governor to the true inventor or his attorney; disclaimer; patent for amended specification; caveats against disclaimers or alterations, entered at the Office of the Island Secretary. 305. PREVIOUS EXAMINATION. By the Attorney Gen- eral himself, or aided by other persons. 306. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. Declaration in writing before a justice of the peace. Pe- tition to the Governor. Written description or specifica- tion, drawings, and models, (if possible,) attested by two witnesses. Deposit of 5 by way of fee to the Attorney General. Notice to be given of application, with descrip- tion in general terms, in the Jamaica Gazette and another newspaper, for at least four weeks. Letters patent to be applied for within three months after filing of petition, and in case of death of applicant within three months after his death. 307. WORKING. Within two years. 308. DURATION. Fourteen years. Foreign invention according to the term of the original patent. 309. ASSIGNMENTS. Recorded in the Office of the Island Secretary and open to the public. Assignments of foreign patents (for a good consideration) recorded at the same place. 310. SPECIFICATIONS-, INSPECTION AND COPIES OF. Lodged, filed, and preserved in the Office of the Island, with proper indexes thereto, and all other documents. Copies (certified) to be evidence in all courts. MAURITIUS AND DEPENDENCIES. 171 311. PENALTY FOE, USE, OR FOR IMITATION, OR COUNTER- FEIT WITHOUT CONSENT. Treble damages, and for using the name of a patentee for the sale of an unpatented in- vention, 50; one half to Her Majesty, and the other to any person who shall 'sue for the sum. 312. GOVERNMENT FEES. Letters patent, 5 ; petition, Is. Qd. ; declaration, Is. Qd. ; specification, 5s. ; reference, certificate, or warrant of Attorney General, disclaimer or memorandum of alteration, Is. Qd. ; assignment, 105. XXVIII. Mauritius and Dependencies. SEC. 313. Law, date, and where recorded. 314. Kinds of patents. 315. Government fees. 316. Documents required. SEC. 317. Specification, &c., copies. 318. Duration. 319. Annulment. 320. Working. 313. LAW, DATE, AND WHERE RECORDED. Ordinance, Ko. 11, of 1835, respecting letters patent. (See Com- missioners of Patents' Journal, vide supra 71, No. 1,282, An., 1866.) 314. KINDS OF PATENTS. Letters patent granted by the Government for home and foreign inventions and improvements. 315. GOVERNMENT FEES. Duty to he fixed hy Gov- ernment, but not to exceed 100. 316. DOCUMENTS REQUIRED. An application, with an exact description, drawings, and plans. 317. SPECIFICATION, INSPECTION AND COPIES OF. To be published after the expiration of or annulment of patent. 318. DURATION. Term not to exceed fourteen years. 172 FOREIGN PATENT LAWS. 319. ANNULMENT. Patents may be annulled for omis- sion or unfaithful description; for previous discovery; for non-exercise of privilege; if patent should be ob- tained for the same object in a foreign country; if inven- tion should appear to be dangerous. 320. WORKING. Within two years of grant. XXIX. Mexico. SEC. 321. Jurisdiction of patents. 322. Applications to Government or local authorities. SEC. 323. Prolongation of patents. 324. Fees. 425. Who patentee may employ. 321. JURISDICTION OF PATENTS. Patents for new in- ventions and improvements are granted for all the States of the Confederation. Patents for inventions shall be in vigor for ten years, and those for improvements for six years. Importers of any branch of industry, which the General Congress might think of great importance, may obtain an exclusive privilege by making an applica- tion through the Government to the Congress. ( 1.) 322. APPLICATION TO GOVERNMENT OR LOCAL AUTHORI- TIES. Application for patents may be made 'directly to Government or else to the local authorities. A precise description of the invention, with drawings, models, or whatever may be considered necessary for distinctly ex- plaining the invention, is to be signed by applicant and delivered to the authorities. The petition is to be pub- lished three times in the gazette, to enable other parties to raise claims of priority. The patent may then be granted at the risk of the applicant as to the novelty and utility of the invention. ( 2.) THE NETHERLANDS. 178 323. PROLONGATION OF PATENTS. Patents may be pro- longed by application to Congress through the Govern- ment. ( 3.) 324. FEES. The patent fees vary between $10 and $300, (2 guineas and 60 guineas.) ( 4.) 325. WHO MAY BE EMPLOYED BY PATENTEE. Half the number of men employed by the patentee in mechanical works must be citizens of the United States of Mexico, if such may be had. ( 5.) XXX. The Netherlands. SEC. 326. Law, date, and where recorded. 327. Kinds of patents. 328. Previous examination. 329. Duration. 330. Government fees. 331. Documents, where to be left. SEC. 332. Working and extension. 333. Assignments. 334. Annulment. 335. List of patents delivered. 336. Specifications published. 337. Proceedings to obtain patent. 326. LAW, DATE, AND WHERE RECORDED. Decree of 25th January, 1817. (See Commissioners of Patents' Jour- nal, vide supra 71, No. 289.) 327. KINDS OF PATENTS. Patents of invention, im- provement, or importation granted to natives or foreign- ers represented in the- Netherlands. No guaranty as to priority or merit. 328. PREVIOUS EXAMINATION. By the Commissioner General of Instruction, Arts, and Sciences, and some- times also by the Royal Institute of the Netherlands. 329. DURATION. Five, ten, and fifteen years. Foreign inventions according to the duration of the foreign pat- ent. 15* 174 FOREIGN PATENT LAWS. 330. GOVERNMENT PEES. 12 10s., (150 fl.,) for five years; from 25 to 33 105., (accordance to importance,) for ten years; from 50 to 62 10s., for fifteen years. To be paid to the Treasurer of the Province, at the de- livery of the patent by the respective Governors. The remainder of taxes on patents annulled to be returned. 331. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. A petition to the King. A specification and drawings. To be left with the Registrar of the States for the Com- missioner General of Instruction, Arts, and Sciences. 332. WORKING AND EXTENSION. Original term pro- longed by applying to the Commissioner General of In- struction, Arts, and Sciences. To be worked within two years. 333. ASSIGNMENTS. By authorization of the King. To be registered at the Record Office of the Province, and at the Ministry of Instruction, Arts, and Sciences. Fees, 15s. 334. ANNULMENT. In case of, 1st, deficient or fraud- ulent specification; 2d, previous publication; 3d, not being worked within two years; 4th, obtaining a foreign patent at a posterior date; 5th, for reasons of public safety. 335. LIST OF PATENTS DELIVERED. At the Ministry of Public Instruction, in the official gazette, in the Com- missioners of Patents' Journal. 336. SPECIFICATIONS PUBLISHED. At the expiration or annulment of patents, except there be political or commercial reasons for withholding such publication. 337. PROCEEDINGS TO OBTAIN A PATENT. Application must be by petition, stating general object of the inven- tion, giving applicant's name, domicil, &c., naming the NEWFOUNDLAND. 175 term for which the patent is demanded, with an exact and detailed specification, under sealed cover, annexed with the necessary drawings, &c. These shall be pub- lished at the expiration of the patent, unless the Govern- ment shall, for important reasons, postpone such publi- cation. The Commissioner General shall send patents of in- vention, importation, or improvement, granted and signed by the King, to the Governor of the Province where the applicant resides, the patent to be delivered to applicant on his proving that he has paid to the receiver of the Province the tax fixed by the tariff". [NOTE. The Dutch patent laws were repealed by the law of the 15th of July, 1869, enacting the abrogation of grants of exclusive rights for inventions and improve- ments of objects of art and industry. The law is as fol- lows : ART. 1. From and after the day of the promulgation of the present law, no more patents for inventions and improvements, or importation of objects of art and in- dustry, will be granted, except such as may have been applied for previous to this date.] (See Commissioners of Patents' Journal, vide supra 71, No. 1,643.) XXXI. Newfoundland. SEC. 338. Law, date, and where recorded. 339. Documents required, and where to be left. 340. Duration. 341. Kinds of patents. SEC. 342. Specifications, copies of. 343. Assignments. 344. Working. 345. Government fees. 346. Other legal provisions. 176 FOREIGN PATENT LAWS. 338. LAW, DATE, AND WHERE RECORDED. An act to repeal the patent acts of this colony, and to make other provisions in lieu thereof, passed 12th May, 1856. (See Commissioners' of Patents' Journal, vide supra 71, No. 858, An., 1862.) 339. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. Petition to the Governor, with description. Declaration as to novelty (in foreign parts before a British consul.) Drawings, models, (if not too costly,) or specimens of ingredients. To be left at the office of the Colonial Sec- retary. Notice, with description, in the royal gazette and one local paper. 340. DURATION. Term not exceeding fourteen years. Extension seven years. Foreign patents according to original term. 341. KINDS OF PATENTS. Letters patent for invention and improvements under the great seal of the Island. Disclaimer, reissue patents granted in England and ex- tending to the colonies, to be filed or lodged (in copies) in the office of the Colonial Secretary for obtaining cer- tificate thereof. 342. SPECIFICATIONS, COPIES OF. To be obtained at the office of the Colonial Secretary. 343. ASSIGNMENTS. To be recorded in the office of the Colonial Secretary. Real assignees of foreign in- ventors patented abroad may obtain letters patent. 344. WORKING. Within two years. 345. GOVERNMENT FEES. 5, besides the usual fees charged on documents issued under the great seal of the Island. 346. OTHER LEGAL PROVISIONS. Infringers liable to forfeit and pay to the patentee a sum equal to three NEW SOUTH WALES. 177 times the actual damage sustained by him, together with costs. XXXII. New South Wales. SEC. 347. Law, date, and where recorded. 348. Kinds of patents. 349. Government fees. SEC. 350. Duration. 351. Documents required. 352. Proceedings to obtain a patent. 347. LAW, DATE, AND WHERE RECORDED. Act of the Legislative Council, assented to 6th December, 1852. (See Commissioners of Patents' Journal, vide supra 71, No. 386, An., 1857.) 348. KINDS OF PATENTS. Letters of registration for invention and improvement granted to inventors, their agents or assignees. Letters of registration may be re- pealed by writ of scire facias. 349. GOVERNMENT FEES. 20, payable to Colonial Treasurer. 350. DURATION. Not less than seven, and not more than fourteen years. 351. DOCUMENTS REQUIRED. Petition to the Govern- ment by the inventor, agent, or assignees, with descrip- tion and receipt from Colonial Treasurer. 352. PROCEEDINGS TO OBTAIN A PATENT. The appli- cant for patents is to present a petition to the Governor, setting forth that he is the author or designer of a cer- tain invention, or his agent, or his assignee, stating the particulars of the invention, and that he has deposited the patent fee with the Colonial Treasurer. The petition is then to be referred to one or more competent persons, and, their report being favorable, the letters of registra- 12 178 FOREIGN PATENT LAWS. tion may be granted, the same to be registered within three days, at the supreme court, on pain of nullity. XXXIII. New Zealand. SEC. 353. Law, date, and where recorded. 354. Kinds of patents. 355. Duration. 356. Government fees. SEC. ' 357. Documents required, where left. 358. Assignments. 359. Specifications, inspection, &c. 360. Other legal provisions. 353. LAW, DATE, AND WHERE RECORDED. Patents act, 1860. (See Commissioners of Patents' Journal, vide supra 71, Nos. 861, 1639, An., 1862.) 354. KINDS OF PATENTS. Letters patent; letters of registration (for foreign patents) ; disclaimer ; memo- randa of alteration ; additional patent; royal prerogative saved. 355. DURATION. Fourteen years. Patents of inven- tion patented abroad according to the term of the for- eign patent. 356. GOVERNMENT FEES. 10 to be deposited with the Colonial Treasurer at the time of filing petition. Costs of examiners, if called in by the Government and in case of objections being raised, extra. Amended specifica- tion, 105. Additions to former inventions, 10. Letters of registration for English or foreign patents, 10. 357. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. A petition to the Governor. Specification in duplicate and drawings, or specimens of the ingredients or of the composition of matter, (for experiment.) Notice to be inserted in the Government gazette and in one local PORTUGAL. 179 paper. Objections to be raised within four months of said notice. 358. ASSIGNMENTS. Assignments and licenses to be recorded within six months from the execution thereof, in the office of the Colonial Secretary. Fees 10s. More than twelve persons may have a legal and beneficial in- terest in letters patent. 359. SPECIFICATIONS, INSPECTION AND COPIES OF. At the office of the Colonial Secretary. Certified copies received in evidence in all courts. 360. OTHER LEGAL PROVISIONS. Letters patent may be repealed by writ of wire facias. Penalty for counter- feiting, 50. If in any action or suit a verdict or decree shall pass for the patentee, the judge may grant a cer- tificate, which shall entitle the patentee, upon a verdict in his favor, to receive treble costs. Plaintiff in any ac- tion shall file with declaration notice of objections on which he means to rely at trial. Judge at chambers on summons may allow other objections at his discretion. XXXIV. Portugal. SEC. 361. Law, date, and where recorded. 362. Kinds of patents. 363. Previous examination. 364. Duration. 365. Government fees. 366. Documents, where to be left. SEC. 367. Working and prolongation. 368. Assignments. 369. Annulment. 370. Other provisions. 371. Specifications, inspection and copies of, (models.) 361. LAW, DATE, AND WHERE RECORDED. Royal decree of 31st December, 1852. (See Commissioners of Patents' Journal, vide supra 71, No. 1026. An., 1863.) 180 FOREIGN PATENT LAWS. 362. KINDS OF PATENTS. Patents of invention, im- provement, and importation granted to natives and for- eigners. Food, drugs, theoretical principles, and orna- mentation excluded. Government may buy up patent rights by private contract. Patents subject to expropri- ation for public utility. Original inventors to have a prior right to patents of importation during one year. 363. PREVIOUS EXAMINATION. No guaranty as to truth, priority, or merit. No opposition or forfeiture at the expiration of the first half of the term for which the patent was granted. 364. DURATION. Fifteen years at most for patents of invention, five years at most for patents of importation; the latter granted by open competition. Term of patent to reckon from date of patent, priorit} 7 from date of de- posit. 365. GOVERNMENT FEES. Five thousand reis per an- num. To be applied to industrial improvements. 366. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. Deposit at the respective Civil Governor of a description, (in Portuguese,) drawings on a metrical scale and in ink, models, and duplicate of the same, (all sealed;) the latter to be returned to the patentee. A petition to the Secre- tary of State for Commerce, or a certificate stating that no other similar patent has been recorded. A receipt for the Government fees. 367. WORKING AND PROLONGATION. Within one year. Prolongation of five years far patents of invention only. 368. ASSIGNMENTS. At the Ministry of Commerce. 369. ANNULMENT. For reasons of public safety and for being contrary to law; for defective or false description ; PRUSSIA. 181 for want of novelty; for not being worked within the prescribed time. 370. OTHER PROVISIONS. Revivals of industrial pro- cesses lost sight of to be considered as discoveries. New means of producing known articles held to be an inven- tion. Inventions known abroad or in Portugal not pat- entable in Portugal, but when not worked in Portugal at the time of application they may be protected by a pat- ent of importation. 371. SPECIFICATIONS, INSPECTION AND COPIES OF, (MOD- ELS.) At the Ministry of Commerce. At the Museum of Industry. XXXV. Prussia. SEC. 372. Law, date, and where recorded. 373. Kinds of patents. 374. Previous examination. 375. Duration. 376. Government fees. 377. Documents required, and where to be left. 378. Working. SEC. 379. Assignments. 380. Other legal provisions. 381. Specifications, inspection and copies of. 382. List of patents delivered. 383. Specifications published. 384. Proceedings to obtain a pat- ent. 372. LAW, DATE, AND WHERE RECORDED. Royal ordi- nance of 14th October, 1815 and 18th September, 1828. Convention between the States of the Zollverein of 29th June, 1843. (See Commissioners of Patents' Journal, vide supra 71, Nos. 313, 329, and 231.) 373. KINDS OF PATENTS. Patents of invention, im- provement, and importation delivered by the Minister of Commerce and Public Works to Prussians and for- eigners naturalized or represented by Prussians. 16 182 FOREIGN PATENT LAWS. 374. PREVIOUS EXAMINATION. By the Royal Polytech- nic Commission as to the novelty and peculiar character of the invention, without any consideration as to its util- ity and appropriateness, except in cases of patents for a real improvement of existing apparatus or methods. The Minister of Commerce may order a new examination to take place. No guaranty by Government. Parts of in- ventions already known not protected by patent. Pat- ents are annulled whenever the supposition of the inven- tion being new and peculiar is shown to be unfounded. 375. DURATION. Six months at least and fifteen years at most. 376. GOVERNMENT FEES. A stamp duty of Is. 6d. (15 sgr.) besides the legal trade tax. 377. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. An application to the respective Provincial Administra- tion ; a description, drawings, or models. Statement as to whether the patent is to be granted for the entire mon- archy or not. 378. WORKING. Before the expiration of six months, at the latest, from the day of the delivery of the patent. 379. ASSIGNMENTS. To Prussian citizens. 380. OTHER LEGAL PROVISIONS. Cases of infringement to be settled by the Provincial Administration of the place where the infringer resides, with option of appeal to the Minister of Commerce. Infringers to pay the costs of inquiry only, but not subject to confiscation of tools, &c., or damages, except in case of a second offense. 3&1. SPECIFICATIONS, INSPECTION AND COPIES OF. At the Ministry of Commerce and Public "Works. 382. LIST OF PATENTS DELIVERED. A summary notice in the Prussian Gazette, and in the official provincial pa- RUSSIA. 183 pers, within six weeks after the delivery of the patent. (Titles in the Commissioners of Patents' Journal.] 383. SPECIFICATIONS PUBLISHED. In the Verhandlun- gen des Gcwcrbe-Vereins and other technical periodicals. Kept at the Public Free Library of the Patent Office. 384. PROCEEDINGS TO OBTAIN A PATENT. Applications must be accompanied by a precise description and illus- tration by models, drawings, or writings, and, if possi- ble, by all these three means. Applicants must state if the patent is required for the whole or only part of the kingdom, and for how long a period. Experts are to ex- amine the applications, and report thereon to the Minister of Commerce and Public "Works as to the object, the ex- tent, and duration of the patent. This minister is to execute and deliver the patent, and to control the custody of models, drawings, and specifications. The shortest term for a patent is six months, the longest fifteen years. XXXVI. Queensland. 385. (See Commissioners of Patents' Journal, No. 859.) No patent laws have been enacted in the Colony of Queensland since its separation from New South Wales, but the colonial act, (New Soutli Wales,) 16 Viet., No. XXIV., (see No. 386 of the Commissioners of Patents' Journal,} was continued in force in the Colony by an order in Council of the 6th November, 1859. XXXVIII. Russia. SEC. 386. Law, date, and where recorded. 387. Kinds of patents. 388. Previous examination. SEC. 389. Duration. 390. Government fees. 391. Documents, where to be left. 184 FOREIGN PATENT LAWS. SEC. 392. Working and prolongation. 393. Assignments. 394. Specification, inspection, copies. SEC. 395. Lists of patents delivered. 396. Specifications published. 397. Proceedings to obtain patent. 386. L A w,"D ATE, AND WHERE RECORDED. Statutes of the Russian Empire, vol. iv., book 1, part 3, chap. 3. (See Commissioners of Patents' Journal, vide supra 71, No. 334.) 387. KINDS OF PATENTS. Exclusive privileges and pat- ents of invention, improvement, and importation granted to natives and aliens. 388. PREVIOUS EXAMINATION. By the Board of Man- ufactures, as to novelty, legal or technical forms, and public utility. No guaranty by the Government. Rea- sons for refusal published in the Moscow and St. Peters- burg newspapers. 389. DURATION. Three, five, and ten years at most from the day on which the patent has been signed. Six years at most for patents of importation. 390. GOVERNMENT FEES. Patents of invention : 90 sil- ver roubles for three years ; 150 s. r. for five years ; 450 s. r. for ten years. Patents of importation : 60 s. r. for one year; 120 s. r. for two years; 180 s. r. for three years ; 240 s. r. for four years; 300 s. r. for five years; 360 s. r. for six years. (1 s. r.=3.9. 8d.) The surplus accruing from patent fees to be applied to the purchase of books, models, &c. 391. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. A petition to the Board of Commerce and Trades ; a de- scription, (in Russian,) and, in case of a patent of import- ation, (also in the original language,) drawings and mod- els. Payment of the fees. Defective specifications may be amended. 392. WORKING AND PROLONGATION. No prolongation. RUSSIA. 185 To be worked within the first quarter of the term speci- fied. A certificate from the local administration to he sent to the respective ministry within six months of the working. No company to work patents without special grant of the Government. 393. ASSIGNMENTS. To be reported to the respective department to which the patent belongs and published, 394. SPECIFICATIONS, INSPECTION AND COPIES OF. At the respective ministry. 395. LISTS OF PATENTS DELIVERED. In the Moecow and St. Petersburg papers. 396. SPECIFICATIONS PUBLISHED. In the journal of the respective ministry, in the reports of the Senate, and the Moscow and St. Petersburg papers. 397. PROCEEDINGS TO OBTAIN A PATENT. Applicants may apply personally, or through an agent authorized by power of attorney. Such agent is to undertake to pay the tax in case the privilege be granted. Petitions for patents are examined by the Board of In- dustry, to ascertain whether a previous patent had not been granted for the same object; whether the descrip- tion be full, clear, and exact; whether any public benefit be derivable from the invention ; whether it contain any- thing injurious to human health and safety. The invention being found free from these objections, the patent may be issued. When two parties apply for a patent for the same in- vention, neither can obtain it without establishing by decree of a court of law his prior right. "When patents are refused the tax is refunded. 16* 186 FOREIGN PATENT LAWS. XXXVIII. Saxony. SEC. 398. Law, date> and where recorded. 399. Kinds of patents. 400. Previous examination. 401. Duration. 402. Government fees, stamps, &c. 403. Documents, where to be left. SEC. 404. Working and extension. 405. Assignments. 406. Annulment. 407. Lists of patents delivered. 408. Specifications. 409. Proceedings to obtain a patent. 398. LAW, DATE, AND WHERE KECORDED. Royal decree of 20th. January, 1853. (See Commissioners of Patents' Journal, vide supra 71, No. 236. 399. KINDS OF PATENTS. Patents for new or unpub- lished (abroad or in Germany) inventions and improve- ments granted to natives, naturalized citizens of the German States, or foreigners residing or represented in Saxony. Drugs, food, and scientific principles excluded. Patent articles, other than machines or manufacturing tools, may be imported, used, and sold by third parties. 400. PREVIOUS EXAMINATION. Technical examina- tion. 401. DURATION. Five years; extended to ten years by applying four weeks at the latest before the expiration of the original term. 402. GOVERNMENT FEES, STAMPS, AND TAXES. 3 105. for five years. 7 10s. on applying for extension to ten years. 1 4s. for technical examination on applying for patent. 12s. on apply ing for extension of time for work- ing, besides the usual stamp duty (on papers.) 403. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. An application to the Minister of the Interior ; a speci- SAXONY. 187 fication and drawings or models, (all papers stamped;) the cost of technical examination. 404. WORKING AND EXTENSION. Within one year from the date of grant; subject to trade regulations. Term extended, on showing good cause for delay, by applying to the Minister of the Interior four weeks at the latest before the expiration of the year. 405. ASSIGNMENTS. To natives or naturalized citizens of Saxony or other German States. 406. ANNULMENT. By the Minister of the Interior. For want of novelty, (partly or entirely;) false statement as to nationality, or being the original inventor or his assignee; defective specification; for not being worked in due time. 407. LISTS or PATENTS DELIVERED. In the Leipzig Gazette and in the Commissioners of Patents' Journal. 408. SPECIFICATIONS. Published in the Polytechnische Centralblatt and other technical periodicals. Originals kept at the Ministry of the Interior. 409. PROCEEDINGS TO OBTAIN A PATENT. Applications for the grant or extension of a patent must be made in writing, addressed to the Minister of the Interior, accom- panied by a specification and drawings or models so dis- tinct that any skilled person may work the invention by such instruction. The novel points must be clearly indi- cated. The tax No. 1 is to be paid at the same time. The applicant will then learn whether the application can be granted and when he is to pay the tax No. 2. The payment is immediately followed by the announcement of the grant of the patent. 188 FOREIGN PATENT LAWS. XXXIX. Spain. SEC. 410. Law, date, and where recorded. 411. Kinds of patents. 412. Previous examination. 413. Duration. 414. Government fees. 415. Documents, where to be left. 416. Working and extension. 417. Infringements. SEC. 418. Assignments. 419. Specifications, inspection and copies of. 120. List of patents delivered. 421 . Originals of specifications (mod- els.) 422. Proceedings to obtain a patent. 423. Form of petition to the king. 410. LAW, DATE, AND WHERE RECORDED. Royal decree of 27th March, 1826, 14th June, 1829, 23d December, 1829. (See Commissioners of Patents' Journal, vide supra 71, No. 323.) 411. KINDS OF PATENTS. Patents for inventions and importations to natives and foreigners. 412. PREVIOUS EXAMINATION. None as to novelty or utility. 413. DURATION. Five, ten, or fifteen years for patents of invention; five years for patents of importation, pro- longed to ten years. To begin from the date of the patent. 414. GOVERNMENT FEES. 1,000 reis for fiveyears; 3,000 reis for ten years ; 6,000 reis for fifteen years ; 3,000 reis for patents of importation for five years, besides 80 reis on the delivery of the patent in addition to the above sums. (1 real =5d.) 415. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. An application of inventor or his attorney to the Queen; a description and plan of model, (sealed,) with an annex- ed memorandum pointing out the chief claims of the inventor. SPAIN. 189 416. WORKING AND EXTENSION. To be worked within and not to be interrupted for one year and one day. 417. INFRINGEMENTS. Punishable by confiscation of machines, utensils, apparatus, and manufactured goods, and by a fine of three times their value, for the benefit of the patentee. 418. ASSIGNMENTS. Registered at the Royal Conserv- atory of Arts within thirty days of date. 419. SPECIFICATIONS, INSPECTION AND COPIES OF. Open to the public at the Royal Conservatory at the expiration of the patent. 420. LIST OF PATENTS DELIVERED. In the Madrid Ga- zette; in a public register at the Conservator^ of Arts. 421. ORIGINALS OF SPECIFICATIONS, (MODELS.) At the Royal Conservatory of Arts. 422. PROCEEDINGS TO OBTAIN A PATENT. Patents must be solicited by the applicant or his agent by means of a memorial (in Spanish) in the following form : To the Governor of the Province of N. domiciled [or residing] at , [state prof ession], begs respect- fully to state, that for the purpose of securing the property of a machine [instrument, apparatus, process, method] invented [imported] by him for [state object], and conformably to the royal regulations, he presents to you the required memorial for his Majesty, and a closed and sealed packet, [or case,] and the following inscription [copy of inscription.] I request you to sign the said packet [or case], to deliver the proper cer- tificate to me, and to let me have the required official letter to his excel- lency the Secretary of State and of the Exchequer, that I may deliver the whole into his hands, according to the regulations. [Address and date.] [Signature.] This memorial is to be accompanied by a petition to the King, on stamped paper, mentioning the object of the patent, whether original or imported, and its dura- 190 FOREIGN PATENT LAWS. tion. Each application must not contain more than one object. 423. FORM OF PETITION TO THE KING. N. domiciled [or residing] at , [state profession], submits to your Majesty, with profound respect, hat for the purpose of securing the property of a machine [instrument, apparatus, process, method] invented [imported] by him [state object], and conformably to the regulations made by your Majesty, he solicits from your Majesty the delivery of letters pat- ent for years ; and he will ever pray, &c. [Signature.] There must likewise be sent with the memorial and petition a plan or model, with the description and ex- planation q the mechanism or process, clearly and cor- rectly, so that no doubt may ever arise of its object or particular nature, with a declaration that the invention has never been worked in that form before. Models must be in a sealed case and plans and descriptions in a sealed cover, both bearing the following inscription : Application for letters patent presented by N. domiciled at , to the Governor of , for [insert title of invention, as mentioned in the petition to his Majesty, month, year, day, and hour.] [Signature of Governor.] [Name of the Applicant.] [Number of Register. ] The petition, having been examined by the General Commission of Commerce, Money, and Mines, and ap- proved, is granted, and letters patent are delivered on the production of a receipt showing that taxes have been paid to the Royal Conservatory of Arts. After delivery of the patent the closed and sealed doc- uments shall be deposited in a room of the Royal Con- servatory of Arts, and shall only be opened in case of litigation, and by order of the judge. Grants of patent SWEDEN. 191 are to be published in the Royal Gazette. A register of patents is to be kept open to public inspection. A note is to be annexed to the description and explan- ation which accompany the petition for a patent, point- ing out clearly, distinctly, and solely that part, mechan- ism, substance, or process which is the object of the patent and which the applicant desires to secure, and the letters patent shall apply only to the contents of the said note. This note is to be verified by the Council of the Exchequer. XL. Sweden. SEC. 424. Law, date, and where recorded. 425. Kinds of patents. 426. Previous examination. 427. Duration. 428. Government fees. 429. Documents required and where to be left. 430. Working and extension. SEC. 431. Assignments. 432. Other legal provisions. 433. Specifications, inspection, and copies of. 434. List of patents delivered. 435. Specifications published. 436. Originals of specifications,(mod- els.) 424. LAW, DATE. AND WHERE RECORDED. Royal ordi- nance, dated 19th August, 1856, in force since October 1, 1856. (See Commissioners of Patents' Journal, vide supra 71, No. 354, and for Norway, No. 655.) 425. KINDS OF PATENTS. Patents of invention and improvement granted to the original inventor only, whether a native or alien, residing or represented in the country. No patents are granted for pharmaceutical preparations, or for invention contrary to existing laws, to public safety, or morality. 426. PREVIOUS EXAMINATION. By the Chamber of 192 FOREIGN PATENT LAWS. Commerce, as to the invention being contrary to exist- ing laws, to public safety, or morality. Official publica- tions of foreign inventions do not prevent grants of patents. No guaranty as to novelty or utility. 427. DURATION. Three years at least, and fifteen years at most, according to the nature and importance of the' invention. Patents for foreign inventions not to exceed the term granted abroad. 428. GOVERNMENT FEES. None except the costs of publishing the specification in the "Post $ Inrikes Tid- ningar." 429. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition to the Chamber of Commerce, (Kommers-Kolle- gium;} a declaration as to whether the invention be new or an improvement; a full description of the means of working the invention, drawings or models, (if required.) N". B. A month's time is allowed, if applied for, for de- livering the complete specification. 430. WORKING AND EXTENSION. To be worked within one, two, or four years of the date of patent, according to the nature and importance of the invention, such working not to be interrupted for one year. 431. ASSIGNMENTS. To parties residing in the king- dom, by permission of the Chamber of Commerce. 432. OTHER LEGAL PROVISIONS. Infringements pun- ishable by a fine of from 100 to 200 rix-dollars (23 to 46) for the first offense, and from 200 to 400 rix-dollars (46 to 92) for the second offense; besides by damages, half of which belong to the patentee, and the other going towards the relief of the poor of the parish. 433. SPECIFICATIONS, INSPECTION, AND COPIES OF. In the records of the Chamber of Commerce. TASMANIA. 193 434. LIST OF PATENTS DELIVERED. Placarded in the Hall of the Chamber of Commerce, and published in the "Post $ Inrikes Tidningar" 435. SPECIFICATIONS PUBLISHED. Three times within two months of the grant, in the "Post $ Inrikes Tid- ningar" 436. ORIGINALS OF SPECIFICATIONS, (MODELS.) In the records of the Chamber of Commerce, Stockholm. XL I. Tasmania. SEC. 437. Law, date, and where recorded. 438. Kinds of patents. 439. Duration. 440. Government fees. SEC. 441. Documents required, Ac. 442. Assignments. 443. Originals of specifications, &c. 444. Other legal provisions. 437. LAW, DATE, AND WHERE RECORDED. Act 22 Viet., dated 5th November, 1858. (See Commissioners of Pat- ents' Journal, vide supra 71, No. 860, An., 1862.) 438. KINDS OF PATENTS. Lettej-s patent and grants of privilege to the true and first inventor, under the seal of the colony; disclaimer and alteration; English pat- ent granted before the 30th June, 1859, to be valid in the colony. 439. DURATION. Fourteen years. Patents to expire at the end of the third or seventh year, if the required grant-fees are not paid. Letters patent for foreign in- vention not to continue after expiration of foreign patent. Extension for a term not exceeding fourteen years after the expiration of the first term. 440. GOVERNMENT FEES. On depositing specification, 2 10s. ; to the law oflicer for any appointment, 2 45. 17 194 FOREIGN PATENT LAWS. 6d. ; on obtaining letters patent, 2 10s. ; at or before the expiration of third year, 15; at or before the expiration of seventh year, 20; to the law officer with particulars of objection, 2 4s. Qd.; on presenting petition for exten- sion or confirmation, 2 10s. ; every search and inspec- tion, Is.; entry of assignment or license, 10s. ; certificate of assignment or license, 10s. ; filing disclaimer or mem- orandum of alteration, 2 10s.; entering any caveat, 2 10s.; copy or extract of any writing, per common law folio, Is. 441. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. Petition to the Government; declaration of being the first inventor, with annexed specification (and copy) of a certain size, and drawings, if any, for provisional protec- tion of six months. Notice to proceed to be published in the Government gazette and two local papers. "War- rant for letters patent issued by Attorney General after one month's notice. Letters patent bearing date of de- posit of specification to be issued within three months after said warrant, and during the protection. 442. ASSIGNMENTS. Registered as above, and legal copies thereof to be had. 443. ORIGINALS OF SPECIFICATIONS, DISCLAIMERS, DRAW- INGS, &c. To be filed at the end of six months, at a proper office, with indexes, registers, &c., for public in- spection. 444. OTHER LEGAL PROVISIONS. Letters patent may be repealed or withheld, and specifications canceled by writ of the supreme courts, in the nature of a writ of scire facias in England. Letters patent not to prevent the use of invention in foreign ships resorting to ports in the colony, (provided there be reciprocity in this VICTORIA. 195 behalf.) Penalty for unauthorized use of word patent, 100. XLII. Trinidad. SEC. 445. Law, date, and where recorded. 446. Duration. 447. Government fees. SEC. 448. Kinds of patents. 449. Documents required, &c. 450. Specifications. 445. LAW, DATE, AND WHERE RECORDED. Separate or- dinance. (See Commissioners of Patents' Journal, vide supra 71, No. 883, An., 1862.) 446. DURATION. Fourteen years. 44tf. GOVERNMENT FEES. On presentation of bill, $50; government printer's charge, $10=$60, (12 105.) 448. KINDS OF PATENTS. Bill for granting for a lim- ited time the exclusive benefit of a certain invention. 449. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. Petition to the Government. Specifications to be deliv- ered within six months after the passing of ordinance to the Registrar General. 450. SPECIFICATIONS. Recorded in the office of the Registrar General. XLIII. Victoria, (Australia.) SEC. 451. Law, date, and where recorded. 452. Kinds of patents. 453. Previous examination. 454. Duration. 455 Government fees. 456. Documents, where to be left. SEC. 457. Assignments. 458. Specifications and indexes. 459. Lists of patents delivered. 460. Penalties and fines. 461. Proceedings to obtain a patent. 462. Form of application. 451. LAW, DATE, AND WHERE RECORDED. Act of the 196 FOREIGN PATENT LAWS. Lieutenant Governor of the Colony of Victoria, Anno Decimo Septimo Victories Reginse. Assented to 31st March, 1854. Repealed llth March, 1857, and super- seded by act Anno Vicesimo Victories Reginee. Dated llth March, 1857. (See Commissioners of Patents' Jour- nal, vide supra 71, Nos. 186 and 359.) 452. KINDS OF PATENTS. Letters patent for inventions and for imported inventions granted by the Queen to the true and first inventor of manufactures. Letters patent granted in the United Kingdom of Great Britain and Ireland, on or before the 31st December, 1857, to be also valid in Victoria. (N. B. Letters patent not to prevent the use of inventions in foreign ships resorting to^Dorts in Victoria, except reciprocal rights be denied to British ships in such foreign ports as they belong to.) 453. PREVIOUS EXAMINATION. By the Law Officer, and, if required, by one or more competent person or persons appointed by him, in case of opposition raised within one month of the notice to proceed, inserted in the Government gazette and two other papers, both ap- plicant and opponent being present. 454. DURATION. Original inventions fourteen years. Imported inventions according to the duration of the foreign patent, or, if more than one, according to the shortest duration. Letters patent may be repealed by scire facias. Extension of term, not exceeding fourteen years, by petition to Government six months before the expiration of the patent. 455. GOVERNMENT FEES. On depositing specification, '2 10s. ; to the Law Officer for any appointment, <2 4s. 6d. ; on obtaining letters patent, <2 105. ; at or before the expiration of the third year, 15; at or before the expi- VICTORL,, 197 ration of the seventh year, 20; to the Law Officer with particulars of objections, 2 4s. 6d.; on presenting peti- tion for extension or confirmation, 2 10s. ; every search and inspection, Is./ entry of assignment or license, 10s./ certificate of assignment or license, 10s./ filing memo- randum of alteration or disclaimer, 2 10s. / entering any caveat, 2 10s. / copy or extract of any writing, per com- mon law folio, Is. 456. DOCUMENTS REQUIRED, AND WHERE TO BE LEFT. An instrument in writing (and copy) describing inven- tion, (with drawing, if any,) and deposited at the office of the Chief Secretary at Melbourne for provisional pro- tection for six months. Such specification, on parch- ment, twenty inches by fifteen, may be amended within said term. Notice to proceed within six months of de- posit. Opposition open for one month, before the Law Officer appointed to hear applications and objections and to award costs. Warrant for letters patent issued by said Law Officer. Letters patent to be sealed within three months after the date of said warrant and during the term of provisional protection ; said term may be prolonged for one month by the Governor. Disclaimer or memorandum of alteration entered with or without public notice. 457. ASSIGNMENTS. Entered in the Register of Pro- prietors. 458. SPECIFICATIONS AND INDEXES TO SPECIFICATIONS. Open to the public at all reasonable times. Certified copies to be evidence. 459. LISTS OF PATENTS DELIVERED. Applications pub- lished in the Government gazette; also in the Registry of Patents and Proprietors, open to the public. 17* 198 FOREIGN PATENT LAWS. 460. PENALTIES AND FINES. Falsification or forgery of entries punishable as a misdemeanor by labor on the roads or other public works, for any term not exceeding five years, or by fine and imprisonment. Penalty for unauthorized uses of the word patent 100 ; one half to her Majesty and the other half, with full costs of suit, to any person who shall sue for the said penalty by action of debt. 461. PROCEEDINGS TO OBTAIN A PATENT. The appli- cant is to deposit at the office of the Chief Secretary an instrument under his hand seal, a particular description of his invention, with a copy of the instrument, and of drawings, if any, by doing which he obtains six months' protection, with the privilege of letters patent for that period. The specification may be amended during the six months. The specification is to be on skins of parchment, writ- ten on both sides, twenty-one inches long by fifteen broad, with a margin of an inch and a half on each side. The drawings may be on larger sheets of parchment, with a margin of an inch and a half. The copies of specifica- tion and drawings are to be on sheets of paper of the same size as the parchment. After making a deposit of these documents he is to give notice, at the chambers of the Attorney or Solicitor General, of his intention to proceed for a patent, stating the title of the invention and date of deposit, and produce at the same time the certificate of the deposit. The Law Officer is then to give the applicant an appointment in due form, which he is to publish in the Government ga- zette and in some Melbourne newspaper, and twice in VICTORIA. 199 some newspaper published at or near where the appli- cant uses the invention or resides. The letters patent are to be issued by the Chief Secre- tary within three months after the Law Officer's warrant and during the protection; but if the sealing has been delayed by accident, and not by the willful neglect of the applicant, it may be done within one month after the expiration of the protection, with the sanction of the Governor. 462. FORM OF APPLICATION FOR PATENT. I, , of , [state address and profession,] send greeting. Whereas I am desirous of obtaining royal letters patent for se- curing unto me her Majesty's special license, that I, my executors, admin- istrators, and assigns, and such others as I or they should at any time agree with, and no others, should, and lawfully might, from time to time, and at all times during the term of fourteen years, (to be computed from the day on which this instrument shall be left at the office of the Chief Secretary,) make, use, exercise, and vend, within the Colony of Victoria and its depend- encies, an invention for [insert the title of the invention] and in order to obtain the said letters patent I must, by an instrument in writing, under my hand and seal, particularly describe and ascertain the nature of the said invention, and in what manner the same is to be performed, and must also enter into the covenant hereafter contained. Now, know ye, that the motive of the said invention, and the manner in which the same is to be performed, is particularly described and ascertained in and by the follow- ing statement, that is to say, [describe the invention.] And I do hereby, for myself, my heirs, executors, and admistrators, covenant with her Majesty, her heirs and successors, that I believe the said invention to be a new inven- tion as to the public use and exercise thereof, and that I do not know or believe that any other person than myself is the true and first inventor of the said invention, and that I will not deposit these presents at the ofhce of the Chief Secretary with any such knowledge or belief as last aforesaid. In witness, &c. 200 FOREIGN PATENT LAWS. XLIV. "West Indies, (Dutch.) SEC. 463. Law, date, and where recorded. 464. Kinds of patents. 465. Duration. 466. Government fees. 467. Documents required, &c. 468. Working. SEC. 469. Assignments. 470. Annulment. 471. List of patents delivered. 472. Specifications published. 473. Originals of specifications, (models.) 463. LAW, DATE, AND WHERE RECORDED. Decree of 4th July, 1844. (See Commissioners of Patents' Journal, vide supra 71, No. 322.) 464. KINDS OF PATENTS. Patents of invention, im- provement, and of importation. 465. DURATION. Five, ten, and fifteen years at most. Original term prolonged. Foreign inventions according to the duration of the original patent. 466. GOVERNMENT FEES. ,15 for five years; from 30 to 40 (according to importance) for ten years; from 60 to 70 for fifteen years. Inventions already pat- ented in the Netherlands are subject only to the usual stamp duties. The remainder of taxes of patents an- nulled returned. 467. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. An application to the Governor General, at Paramaribe; a description and drawings, &c., (sealed;) an undertaking to supply the patent article within two years, and to take up the patent within three months of its date, and to pay the fees thereon. 468. WORKING. "Within two years from the date of patent. 469. ASSIGNMENTS. By consent of the Governor Gen- eral. Registration fee, 2. WURTEMBERG. 201 470. ANNULMENT. In case of 1. Defective or false specification; 2. Previous publication; 3. Itfot being worked within two years ; 4. Obtaining patents abroad, except the Netherlands and their colonies; 5. Not sup- plying the patent article within two years at a moderate price; 6. For reasons of public safety; 7. For neglecting to register assignments. 471. LIST OF PATENTS DELIVERED. In the Surinam Courant, and in a special register, open to applicants for patents. 472. SPECIFICATIONS PUBLISHED. At the expiration or annulment of patents, unless it be found advisable to delay such publication. 473. ORIGINALS OF SPECIFICATIONS, (MODELS.) At the Governor General's, at Paramaribe. A copy at the Co- lonial Ministry at the Hague. XLY. Wurtemberg. SEC. 474. Law, date, and where recorded. 475. Kinds of patent. 476. Previous examination. 477. Duration. 478. Government fees. 479. Documents required and where to be left. 480. Working and prolongation. SEC. 481. Assignments. 482. Specifications, inspection, and copies of. 483. Annulment. 484. List of patents delivered. 485. Specifications published. 486. Other provisions. 487. Proceedings to obtain a patent. 474. LAW, DATE, AND WHERE RECORDED. Royal decree of 5th August, 1836. Law of the 29th June, 1842. (See Commissioners of Patents' Journal, vide supra 71, Nos. 314, 995.) 202 FOREIGN PATENT LAWS. 475. KINDS OF PATENTS. Patents of invention and importation granted to natives of Wurtemberg and of the Zollverein. 476. PREVIOUS EXAMINATION. For novelty. No guar- anty as to priority or utility. 477. DURATION. Ten years at most. Prolonged by legislative act. Patents of importation become extinct at the expiration of the foreign patent. 478. GOVERNMENT FEES. From 8s. 4d. to 1 14s. an- nually. 479. DOCUMENTS REQUIRED AND WHERE TO BE LEFT. A petition of inventor or importer to the Minister of the Interior; a description, drawings, and models, or pat- terns. To be left with the magistrate of the district. 480. WORKING AND PROLONGATION. To be worked within and not to be interrupted for two years, except patentee shows good cause for delay. Original terms prolonged to ten years, if applied for before the begin- ning of the last year, and in cases of importation before the expiration of the first half of the original term. 481. ASSIGNMENTS. Published. 482. SPECIFICATIONS, INSPECTION AND COPIES OF. By natives and by consent of the patentee in the last year of the legal term of the patent. Patents of importation in the latter half of their legal term. Free when expired. At the Ministry of the Interior. 483. ANNULMENT. For want of novelty; for having been known or worked abroad or in Wurtemberg; for false statements and incorrect descriptions, whereby pat- entees, moreover, incur a penalty. 484. LIST OF PATENTS DELIVERED. In the Wurtem- berg Gewerbeblatt. WURTEMBERG. 203 485. SPECIFICATIONS PUBLISHED. In the Wurtemberg G-ewerbeblatt and other technical periodicals. 486. OTHER PROVISIONS. Parties using a patent pro- cess in complete ignorance of the patent right of a third party are liable to confiscation and damages. Patent articles may be imported without consent of the patentee. 487. PROCEEDINGS TO OBTAIN A PATENT. Applicants must deliver a petition to the authorities of the district in which they reside or intend to carry on their works, with a complete and true specification, and the required drawings, models, or plans. Specifications must be under a sealed cover, not to be opened by the district authorities. The authorities are then to give to appli- cants a certificate stating the day and hour when the delivery took place, and forward the documents to the Minister of the Interior. FA.RT III. IN THE WITH FOKMS, NOTES, AND AUTHOEITIES. 18 206 PROCEDURE IN UNITED STATES PATENT OFFICE, WITH FORMS, NOTES, AND AUTHORITIES. I. Caveat. SEC. 1. Eequisites and term of caveat. 2. Proceedings in case of an inter- fering application. 3. When an alien may file a caveat. 4. No notice given of pending ap- plications. 5. Renewal. 6. Description. 7. Drawings. 8. Purpose of caveat. SEC. 9. Omission to give notice. 10. Effect of a caveat upon a subse- quent patent. 11. Papers not to be withdrawn, copies. 12. Caveat as evidence. 13. Notice to the Commissioner only. 14. Petition. 15. Description. 16. Oath. 1. REQUISITES AND TERM OF CAVEAT. Any citizen of the United States who shall have made any new inven- tion or discovery, and shall desire further time to mature the same, may, on payment of the duty required by law, ($10,) file in the Patent Office a caveat, setting forth the de- sign thereof, and of its distinguishing characteristics, and praying protection of his right until he shall have ma- tured his invention ; and such caveat shall be filed in the confidential archives of the office and preserved in se- 207 208 PROCEDURE IN THE PATENT OFFICE. crecy, and shall be operative for the term of one year from the filing thereof. (Act of July 8, 1870, 40.) 2. PROCEEDINGS IN CASE OF AN INTERFERING APPLICA- TION. If application shall be made within the year by any other person for a patent with which such caveat would in any manner interfere, the Commissioner shall deposit the description, specification, drawings, and model of such application in like manner in the confi- dential archives of the oiSce, and give notice thereof, by mail, to the person filing the caveat, who, if he would avail himself of his caveat, shall file his description, spec- ifications, drawings, and model within three months from the time of ^placing said notice in the post office in Washington, with the usual time required for transmit- ting it to the caveator added thereto, which time shall be indorsed on the notice. (Ib.) 3. WHEN AN ALIEN MAY FILE A CAVEAT. An alien shall have the privilege of filing a caveat if he shall have resided in the Ujiited States one year next preceding the filing of his caveat, and made oath of his intention to become a citizen. (Ib.} 4. No NOTICE GIVEN OF PENDING APPLICATIONS. The caveator will not be entitled to notice of any application pending at the time of filing his caveat, nor of any appli- cation filed after the expiration of one year from the date of filing tho caveat. (Patent Office Rules, July, 1870.) 5. RENEWAL. The caveator may renew his caveat at the end of one year by paying a second caveat fee of $10^ which will continue it in force for one year longer, and so on from year to year as long as the caveator may de- sire. (Ib.) 6. DESCRIPTION. A caveat need not contain as partic- CAVEAT. 209 ular a description of the invention as is requisite in a spec- ification ; but still the description should be sufficiently precise to enable the office to judge whether there is a probable interference when a subsequent application is filed. (Ib.) It is to set forth the " design and purpose " of the in- vention and its " distinguishing characteristics ;" but it is not necessary that it should explain the principle involved, or the modes in which it can be applied, nor how it is distinguished from other inventions. (11 Opinions of Attorneys General, 65.) Nor is it necessary to accompany the caveat with spec- imens of ingredients, or compounds, or model. (Ib.) It is not required to be specific in its terms, nor is il presumed to describe the whole invention of the party but is filed in the office rather as a warning that the in ventor is in the exercise of due diligence in the pursui and perfection of his discovery. (Collins v. White, MS Appeal Cases, D. C., 1860.) 7. DRAWINGS. "When practicable, the caveat must b* accompanied by drawings or sketches. (Patent Office Rules, July, 1870.) 8. PURPOSE OF CAVEAT. A caveat answers a double purpose : first, to give notice of the inventor's claim ; and, second, to prevent a patent from issuing to another for the same thing. (Allen v. Hunter, 6 McLean, 304.) Its office is to save the discoverer of an invention from the effect of the rule of law, that gives to the in- ventor who first adapts his invention to practical use the right to the grant of a patent ; and if the Commissioner complies with the terms of 12 of the act of -1836, as to giving the caveator notice of any interfering application, ~ 18* 210 PROCEDURE IN THE PATENT OFFICE. it is to secure him against the effect of the rule. (Phelps, Dodge <$ Co. v. Brown Bros., IS How., Pr. 8.) The effect of a caveat is to protect the claim of an in- ventor from all interfering applications made within one year after its filing, by requiring the office to notify him of such applications, that he may resist the interference if he chooses. But if, during the time which elapses between the filing of his caveat and his application, he allows his invention to go into public use, his caveat will not protect him. (Bell v. Daniels, 1 Fish., 372.) 9. OMISSION TO GIVE NOTICE. If the Commissioner accidentally omits to give the caveator the notice requir- ed, his rights will not be prejudiced thereby. (Phelps, Dodge $ Co. v. Brown Bros., 18 How., Pr. 8.) A patent should not operate to the prejudice of a sub- sequent applicant, if he had a caveat on file embracing the invention when the application was filed on which the patent issued. (Hamilton v. Foster, Commissioner's Decisions, 1869, p. 30.) _ And if a conflicting caveat is in force when an appli- cation is filed, though the application is rejected, and the rejection is not set aside until after the caveat has ex- pired, yet the caveator is then entitled to be notified. (Kenney ex parte, Commissioner's Decisions, 1869, p. 97.) In the case of Kenney ex parte the Commissioner says: "The application in this case was filed August 19, 1869, was rejected by the examiner and examiners-in- chief and allowed by the Commissioner. The examiner now reports ' that a caveat covering the same device, ap- parently, was filed September 23, 1868.' The year would, therefore, expire September 23, 1869, or thirty-five days after the filing of Kenney's application. No notice of CAVEAT. 211 Kenney's application was given to the caveator. The act of July 4, 1836, 12, provides that 'if an application be made by any other person (than the caveator) within one year from the time of filing said caveat, * " * * it shall be the duty of the Commissioner to give notice to the person filing such caveat.' "T3ut it has not been the practice of the office to give this notice, unless the device presented was deemed pat- entable. In any other case the caveator would be put to unnecessary expense; for the ofiice would not inform him in advance that the device was not considered novel. Such a notice would, in fact, constitute a preliminary examination. "When the device is, prima facie, novel and patenta- ble, the notice has been given, if an application has been filed even within the last moment of the prescribed year. " The question presented by the examiner for consid- eration under the foregoing state of facts is, should no- tice now be given to the caveator, and three months be allowed him to complete his invention? " It is obvious that at the time of the filing of Ken- ney's application the caveator was entitled to notice of it; for it is now decided that the invention was pat- entable. This made a clear case, under the statute, of an application made within one year from the time of filing said caveat. The fact that the three months' no- tice could not be given within the year was not mate- rial, for the language of the section is so unequivocal that, if an application were filed on the last day of the year, the caveator would be entitled to notice, and to three months for the purpose of completing his inven- 212 PROCEDURE IN THE PATENT OFFICE. tion, although the effect would be to extend the protec- tion given by the caveat to fifteen months instead of twelve. " But" it is said that when this application was filed it was not believed that the invention was patentable, and that, therefore, under the practice of the office, notice was properly withheld; that, meanwhile, the year has expired, and the caveat, not having been renewed or fol- lowed by an application, can now afford no protection, nor can notice be now given to the caveator. The answer is, that while the office practice of withholding notice until the question of patentability is determined is wise, yet that practice must not be used to work a wrong instead of a benefit to the caveator. When the question of patentability is finally determined in favor of the applicant, it relates back to the filing of the appli- cation. It is a determination that there was then a pat- entable subject-matter, and one that interfered with the caveat. It is a judgment that the case was one in which the caveator ought to have been notified when the appli- cation was filed. "It must not be forgotten that the caveator is no party to the delay. He knows nothing of the interfering ap- plication, nothing of the disputed question of patent- ability. He is helpless, except as his rights are protected by the statute, which ought, therefore, to be liberally construed in his favor. "If the application had been filed a few days after the caveat, and the question of patentability had been dis- cussed for the remainder of the year, being finally deter- mined only a few days after its expiration, it would be thought a very harsh rule that should deprive the cave- CAVEAT. 213 ator of notice. He would be justified in saying that, if he had been notified at the time of filing the application, he would, under the spur of the interference, have com- pleted his invention long before, and that the law, in pro- viding for notice, and three months afterward for the completion of the invention, intended to give him the benefit of that spur. "But the case is not relieved from any of its difficulty by the fact that the invention was filed just before the year covered by the caveat expires. On the contrary, the lapse of time increases the presumption that the cave- ator, and not the applicant, was the first inventor. At all events, whether first or second, he is entitled to the notice provided for by law, to which the practice of the office, however expedient, must always be subordinate. "I am of opinion that the caveator in this case must be notified to complete his application within three months, and the case must be suspended to await his action." (Commissioner's Decisions, 1869, p. 97.) 10. EFFECT OF A CAVEAT UPON A SUBSEQUENT PATENT. In the case of Johnson v. Root the ruling of Sprague, J., was as follows : "It is contended, on the part of the defendant, that the caveat itself is conclusive evidence that the inven- tion was not perfected. You will observe that the appli- cation, which is in the caveat before you, made to the Patent Office by Mr. Johnson for leave to file a caveat, sets forth that he has made a certain new and useful improvement in the sewing machine, and that he is then making experiments to perfect it, and he asks leave to file a caveat to secure it. The defendant insists that that application is of itself conclusive evidence that he has 214 PROCEDURE IN THE PATENT OFFICE. not perfected it. We will look at it, gentlemen, and see. I do not instruct you that it is conclusive evidence, but it is evidence for you to take into view in connection with the other evidence, and in connection with the other parts of the same instrument, in which he begins by saying that he has made a new and useful invention in the sewing machine. Now, gentlemen, although a caveat is understood to be, and in this instance is, filed in order to allow the party to perfect his machine, yet if, in point of fact, the invention had been perfected in the eye of the law, as I have explained to you, then, if you are satisfied of that from the evidence, you may deem it, for the purposes of this trial, as perfected. Or it may happen that a person may choose to file a caveat while he is going on and making improvements upon an inven- tion which he has already completed, so as to be of prac- tical utility. Therefore, gentlemen, I would say to you that you will take into consideration the declaration of the plain tiff himself in the application, that he had made a new and useful improvement in sewing machines, and the further declaration that he is making experiments in order to perfect his invention, and the subsequent dec- laration that he has made a new and useful improve- ment, and the other evidence in relation to the case that is, what is described in the caveat and the model made in 1848 and see if that exhibits to you a perfect machine; and then such farmer evidence as you have as of the actual operation of the machine that will be before you. "Now, gentlemen, if he had perfected it, then he had a right to embrace it in a patent that he should after- wards take out. If he had not perfected it, then another CAVEAT. 215 question will arise, and that is, had he invented the feed- ing mechanism at that time, and did he use due diligence to perfect that and put it into a perfect machine, so as to make it of some practical utility? "If the invention was perfected, as I have already said, or, if not perfected, if Mr. Johnson used reasonable dil- igence to perfect it, then he had a right to have it incor- porated into his patent, and to supersede those that had intervened between his first discovery and his subsequent taking out of the patent. If he had not perfected it, and did not use due diligence to carry it into effect, and, in the mean time, before he got his patent, some one else had invented and used and incorporated into a prac- tical useful machine that mode of feeding, then he could not, by subsequent patent, appropriate to himself what was embraced in the former machine between his caveat and the obtaining of his patent." (1 Fish., 351.) The fact that a patent is granted to one person while another has a caveat pending and in force will not of itself vacate the patent granted nor authorize the Com- missioner to grant a patent to the caveator. (Cochrane v. Waterman, MS. Appeal Ca.ses,D. C., 1844.) 11. CAVEAT PAPEKS CANNOT BE WITHDRAWN FROM THE OFFICE nor undergo alteration after they have once been filed; but the caveator, or any person properly author- thorized by him, can at any time obtain copies of the caveat papers at the usual rates. (Patent Office Rules, July, 1870.) 12. CAVEAT AS EVIDENCE. A caveat may be resorted to to assist in construing a patent. (Smith v. Downing, 1 Fish., 64.) And it is evidence as to an invention, so far as it ex- 216 PROCEDURE IN THE PATENT OFFICE. tends to the description of the invention and the machin- ery which was then constructed. (Jones v. Wetherell, MS. Appeal Cases, D. C., 1855.) But a caveat is not conclusive evidence that an inven- tion is not perfected. (Johnson v. Root, 1 Fish., 351.) A filed a caveat in the Patent Office April 17, 1854. B made application for a patent for the same invention November, 1854. JSTo notice was given to A of this ap- plication, but a patent was granted to B January 9, 1855. A patent was subsequently granted to A. In a suit of the assignees of B against the assignees of A, held that the omission to give notice to A might be set up as one of the defenses under 15 of the act of July 4, 1836, as proof that B "had surreptitiously or unjustly obtained the patent for that which was in fact discovered by an- other," &c. (Phelps v. Brown Bros., 1 Fish., 479.) 13. CAVEAT NOTICE TO THE COMMISSIONER ONLY. The caveat gives no notice to the world or even to the inter- fering applicant. It is notice to the Commissioner only. (Hildreth v. Heath, MS. Appeal Cases, D. C., 1841.) But the Commissioner can perform no act upon a ca- veat but filing it, nor in consequence of it, except to give the caveator notice of a conflicting application when made. (11 Opinions Attorneys General, 65.) 14. FORM OF PETITION. The petition of Frank Foresight, of Brandenberg, in the county of Mead, and State of Kentucky, respectfully represents That he has made certain improvements in velocipedes, and that he is now engaged in making experiments for the purpose of perfecting the same, preparatory to applying for letters patent therefor. He therefore prays that the subjoined description of his invention may be filed as a caveat in the confidential archives of the Patent Office. FRANK FORESIGHT. CAVEAT. 217 15. DESCRIPTION. The following is a description of my newly-invented velocipede, which is as full, clear, and exact as I am able at this time to give, reference being had to the drawing hereto annexed: This invention relates to that class of velocipedes in which there are two wheels connected by a beam, forming a saddle for the rider, the feet being applied to cranks that revolve the front wheel. The object of m^ invention is to render it unnecessary to'turn the front wheel so much as heretofore, and at the same time to facilitate the turning of sharp curves. This I accomplish by fitting the front and the hind wheels on vertical pivots, and connecting them by means of a diagonal bar, as shown in the drawing, so that the turning of the front wheel also turns the back wheel with a position at an angle with the beams, thereby enabling it easily to turn a curve. In the drawing A is the front wheel, B the hind wheel, and C the stand- ards extending from the axle of the front wheel to the vertical pivot a in the beam b, and D is the cross-bar upon the end of a, by which the steer- ing is done. The hind wheel B is also fitted with jaws c and a vertical pivot d. FEAITK FORESIGHT. Witnesses: ANDBEW AXLE. WILLIAM WHEELWRIGHT. 16. OATH. Xo caveat can be filed in the secret ar- chives of the office unless accompanied by an oath of the caveator that he is a citizen of the United States, or, if he is an alien, that he has resided for one year last past within the United States and has made oath of his inten- tion to become a citizen thereof; nor unless the appli- cant also states, under oath, that he believes himself the original inventor of the art, machine, or improvement set forth in his caveat. (Patent Office Rules, July, 1870.) The form of oath will be substantially that provided for original applications, except that, as a caveat can only be filed by a citizen, or an alien who has resided for one year last past in the United States, and made oath of his intention to become a citizen, the oath should be modi- fied accordingly. (Ib., vide infra, 323.) 19 218 PROCEDURE IN THE PATENT OFFICE. II. Subject-Matter of the Application. SEO. 17. What may be patented. 18. Inventions patented abroad. 19. Abstract principle. 20. Application of a law of nature. 21. Effect. 22. New application ; double use. 23.. Mechanical equivalents. 24. Mechanical skill. 25. Discovery. 26. Novelty. 27. Presumption of novelty. 28. Utility. 29. Harmful inventions not patent- able. 30. Art. SEO. 31. Process. 32. Machine. 33. Machines classified. 34. Form. 35. Manufacture. 36. Identity of principle. 37. Composition of matter. 38. Improvement. 39. Priority of invention. 40. Lost art. 41. Prior experiments. 42. Prior publication. 43. Prior foreign patent. 44. Unity or diversity of invention. 45. Division of the application. 17. WHAT MAY BE PATENTED. Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his applica- tion, unless the same is proved to have been abandoned, may, upon payment of the duty required by law and other due proceedings had, obtain a patent therefor. (Act of JulyS, 1870, 24.) 18. INVENTIONS FIRST PATENTED ABROAD MAY BE PAT- ENTED IN THE UNITED STATES. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by SUBJECT-MATTER OF APPLICATION. 219 reason of its having been first patented or caused to be patented in a foreign country, provided the same shall not have been introduced into public use in the United States for more than two years prior to the application, and that the patent shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than seventeen years. (/&., 25.) 19. AN ABSTRACT PRINCIPLE NOT PATENTABLE UNLESS REDUCED TO PRACTICE. A discovery of some new princi- ple, theory, or elementary truth, abstracted from its application, is not a new invention, and cannot be pro- tected by a patent. To entitle himself to a patent the applicant must reduce it to practice, must embody it in some practical machine or method of rendering it avail- able or useful. ( Whitney v. Emmett, Bald., 311 ; Evans y. Eaton, Pet. C. <7., 341, 342.) And when the discovery is reduced to practice by any means, old or new, resulting usefully, it is patentable, independent of the machinery by which the application is made. (Foote v. Silsby, 2 Blatchf., 265.) 20. APPLICATION OF A LAW OF NATURE. He who first discovers that a law of nature can be applied, and, having devised machinery to make it operative, introduces it in practical form to his fellow-men, is the inventor not merely of the mechanism, but of the force which oper- rates through the mechanical medium. He may assert and establish his property not only in the formal device for which mechanical ingenuity can at once, as soon as the principle is known, imagine a thousand substitutes, but in the essential principle which his machine was the first 220 PROCEDURE IN THE PATENT OFFICE. to embody and announce to mankind. (Parker v. Hulme, 1 Fish., 44.) Thus, where a patentee claimed the application of the expansive and contractive power of a metallic rod, by different degrees of heat, to open and close a damper which governs the admission of air into a stove, it was held, that it was a valid claim, not being for a principle, and that the patent was good. (Silsby v. Foote, 20 How., 385.) 21. A PATENT CAN IN NO CASE BE FOR AN EFFECT ONLY, but for an effect produced in a given manner or by a peculiar operation. No patent can be obtained for the admeasurement of time or the expansive operations of steam, but only for a new mode or new application of machinery to produce these effects; and therefore if new effects are produced by an old machine in its unaltered state, no patent can be legally supported, for it is a pat- ent for an effect only. (Whittemore v. Cutter, 1 Gall., 480.) The application of ether to surgical purposes was an effect produced by old agents, operating by old means upon old subjects. The effect alone was new, and was a mere discovery, which, however novel and important, is not patentable. (Morton v. New York Eye Infirmary, 2 Fish., 320.) An end -to be accomplished is not the subject of a pat- ent; only the new and useful means to accomplish it. (Carver v. Hyde, 16 Pet., 519.) But the discovery of the application of some property in nature never before known or in use, by which is pro- duced a new and useful result, is the subject of a patent, independently of any peculiar or hew arrangement of SUBJECT-MATTER OF APPLICATION. 221 machinery for the purpose of applying such new prop- erty. (Mote v. Sttsby, 2 Blatchf., 264.) And the inventor has the right to use any means, new or old, in the application of the new property to produce the new and useful result, to the exclusion of all other means. (Ib.} Where a result is in a greatly improved manufacture, it may become the test of invention, and from which in- vention may be inferred. (Treadwell v. Fox, MS. Appeal Cases, D. C., 1859.) 22. NEW APPLICATION ; DOUBLE USE. The application of an old thing to a new purpose is not patentable. The thing itself which is patented must be new, and not a mere application of it to a new purpose or object. (Bean v. Smallwood, 2 Story, 411.) The inventor of a machine has made it for all the uses to which it is applicable, and no one can obtain a second patent for the machine by applying it to a new use. ( Woodman v. Simpson, 3 Fish., 98.) But a new adaptation and arrangement of applying and using old articles for a certain purpose for example, using old parts of a caster adapted to furniture in a man- ner before unknown may be the subject of letters pat- ent, (Blake v. Sparry, 2 N. Y. Legal Obs., 251.) And though a combination of machinery is not new in the abstract, yet it is patentable if used and applied in connection with the practical development of a newly discovered principle producing^ new and useful result. (Tatham v. LeEoy, MS. N. Y., 1849.) Where the principle of the alleged invention has been discovered and applied before, the new application will 19* 222 PROCEDURE IN THE PATENT OEFICE. te what is called a double use. (Blandy ex parte, MS. Appeal Cases, D. C., 1858.) The application of a thing already known to a new and useful purpose may be the subject of a patent, pro- vided the new use is not analogous to the old, and re- quires the exercise of inventive faculties. ( Winans v. Schenectady and Troy Railroad, 2 Blatchf., 293.) If the patentee was the first and original inventor of the application and use of plaster of Paris to the filling of fire-proof safes, and this application produced a new and useful result, it cannot be doubted that it is a proper subject of a patent. (Rich .v. Lippincott, 2 Fish., 1.) An invention or arrangement of parts, though already used for a particular purpose, is patentable, if in the new use it performs any new function, or an old function in a better manner, or makes a better or cheaper manufac- ture. (Newman ex parte, MS. Appeal Cases, D. C., 1859.) The substitution of a jewel in place of glass in a sew- ing machine to prevent friction in the passage of the thread is not patentable; it is but the double use of an old contrivance, with no new effect or result. (Berry ex parte, MS. Appeal Cases, D. C., 1859.) The making of an instrument of india rubber and silver, if a useful effect is secured thereby, may be the subject of a patent, though such article may have before been made entirely of metal and also entirely of rubber. Such an invention is not a double use. (Adams ex parte, MS. Appeal Cases, D. (7.,* 1860.) 23. MECHANICAL EQUIVALENTS. The substitution of a known mechanical equivalent is not an invention within the patent law. (Blanchard's Gun-Stock Turning Company v. Warner, 1 Blatchf., 278.) SUBJECT-MATTER OF APPLICATION. 223 There are different well-known devices, any one of which may be adapted to effect a given result, according to the judgment of the constructor. The mere substi- tution of one of these for another does not belong to the subject of invention, but of construction. (Foster v. Moore, 1 Curt., 291.) By equivalents in machinery is usually meant the mere substitution of one mechanical power for another, or one obvious and customary mode for another, to effect a like result. (Smith v. Downing, 1 Fish., 64.) The term "equivalents" has two meanings, as used in patent cases. The one relates to the results that are pro- duced, and the other to the mechanism by which these results are produced. (Johnson v. Hoot, 1 Fish., 352.) A mechanical equivalent, as generally understood, is when one thing may be adopted instead of another, by a person skilled in the art, from his knowledge of the art. (Ib.) By an "equivalent" is meant something that does the same thing in substantially the same way. ( Cahoon v. Ring, 1 Fish., 397.) When a party has discovered a result, as well as the machinery that produces it, he has a right to invoke the doctrine of equivalents in reference to infringers. (Singer v. Walmsley, ItFish., 558.) But where he is only the original inventor of a device, he can only recover against an infriuger, if he shows that he has substantially copied his invention. In other words, being an improver himself, he cannot invoke the doctrine of equivalents to help him. (/>.) "Where a patent is granted for a composition made of several ingredients, it covers and embraces known equiv- 224 PROCEDURE IN THE PATENT OFFICE. alents of each of the ingredients. (Matthews v. Skates, 1 Fish., 602.) An equivalent of any substance is another substance having similar properties and producing substantially the same effect. (Ib.} An equivalent device is such as a mechanic of or- dinary skill in the construction of similar machinery, having the plaintiff's specification and machine before him, could substitute in the place of the mechanism de- scribed, and without the exercise of the inventive facul- ties. (Burden v. Corning, 2 Fish., 477.) In the case of Foster v. Moore, Mr. Justice Curtis charged the jury as follows: "The term 'equivalent,' gentlemen, has two meanings, as used in this class of cases. The one relates to the results that are produced, and the other to the mechanism by which those results are produced. Two things may be equivalent, that is, the one equivalent to the other, as producing the same result, when they are not the same mechanical means. Mechanical equivalents are spoken of as different from equivalents that produce the same result. A mechanical equivalent, I suppose, as generally understood, is where the one may be adopted instead of the other, by a person skilled in the art, from his knowledge of the art. Thus an instrumentality is used as a mechanism. You wish to produce a pressure downward; well, it can be done by a spring or it can be done by a weight. A machine is presented to a person conversant with machines. He sees that the farce applied downward in the one before him is by weight; from a knowledge of his art he can pass at once to another force the spring to press it downward; and these are mechanical equivalents. But, SUBJECT-MATTER OF APPLICATION. 225 gentlemen, there may be equivalents in producing the same results, each of which is an independent matter of invention, and in that sense they are not mechanical equivalents. To illustrate my meaning, suppose in early days the problem was to get water from a well to the surface of the earth : one man takes a rope made of grass and draws up a pail of water; another would see that, as a mechanical equivalent, a rope of hemp would accomplish the same result. But suppose that another person comes and for the first time invents a pump: that is equivalent in the result to bringing the water to the surface of the ground; in that respect it is equiva- lent, as producing that result, to hauling it up by a rope, but it is not mechanically equivalent; it brings into op- eration, as you know, different powers and forces, and would require invention to introduce it. (1 Curtis C. (7., 279.) 24. MECHANICAL SKILL. There must be embodied in the invention, over and beyond the skill of the mechanic, that inventive element of the mind which is to be found in every invention that is the proper subject of a patent. (Tatham v. Le Roy, 2 Blatchf., 488.) Mere mechanical skill can never rise to the sphere of invention. The latter involves higher thought and brings into activity a different facul ty. Their domains are distinct. The line which separates them is some- times difficult to trace; nevertheless, in the eye of the law, it always subsists. (Blandy v. Griffith, 3 Fish., 609.) It is difficult to determine where ordinary mechanical skill ends and invention begins. The best practical prin- ciple is, that where the combination of known elements produces new and useful results to the public not before 15 226 PROCEDURE IN THE PATENT OFFICE. attained, then the person who discovers and applies the combination is an inventor, within the true intent and meaning of the patent law. (Smith ex parte, MS. Ap- peal Cases, D. C., 1860.) 25. DISCOVERY. Discovery is synonymous with inven- tion, under the Constitution and laws of the United States respecting patents. (Kemper ex parte, MS. Ap- peal Cases, D. C., 1841.) A patent cannot be granted for the discovery of a fact which long before existed; there is no invention, nothing contrived or produced. (-Z7>.) In its naked and ordinary sense a discovery is not patentable. It is only when the explorer has gone be- yond the mere domain of discovery, and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance, by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the patent laws. He then controls the discovery through the means by which he has brought it into practical ac- tion, or their equivalent, and it is then an invention, although it embraces a discovery. (Morton v. New York Eye Infirmary, 2 Fish., 320.) A discovery may be the soul of an invention, but it cannot be the subject of the exclusive control of the pat- entee, or the patent law, until it inhabits a body, no more than can a disembodied spirit be subjected to the control of human law. (Ib.) He who has discovered some new element or property of matter may secure to himself the ownership of his discovery, but the mental conception must have been embodied in some mechanical device or some process SUBJECT-MATTER OF APPLICATION. 227 of art. The patent must be for a thing, not for an idea merely. ( Vide supra, p. 219; Detmold v. Reeves, 1 Fish., 127.) The discovery of a fact, that a given natural substance will, in appropriate methods of administration, produce a particular physiological or pathological effect on the human body, is not a thing patentable under any existing statute. (Morton's Anaesthetic Patent, 8 Opinions Attorneys General, 272.) A new process is generally the result of discovery a machine of invention. ( Corning v. Burden, 15 How., 267.) 26. NOVELTY. As to the novelty of the invention, the rule is that it must be new as to all the world; not the abstract discovery, but the thing invented; not the new secret principle, but the manufacture resulting from it. ( Whitney v. Emmett, Bald., 309.) The thing itself which is patented must be new, not merely the purpose to which it is applied. (Bean v. Sinallwood, 2 Story, 411.) The question is whether the thing has been known before. In case of a machine, whether it has been sub- stantially constructed before ; in case of an improvement of a machine, whether that improvement has ever been applied to such a machine before, or whether it is sub- stantially a new combination. (Eark v. Sawyer, 4 Mason, 6,7.) The question is not whether the invention is better or worse than its predecessor, but whether it is new and useful, and different from anything before used or known. (Blandy v. Griffith, 3 Fish., 609.) The law does not require any degree of utility ; it does not exact that the subject of the patent shall be better 228 PROCEDURE IN THE PATENT OFFICE. than anything invented before or that shall come after. (Hoffhdm v. Brandt, 3 Fish., 218.) A novelty in principle may consist in a new and val- uable mode of applying an old power, effecting it not merely by a new instrument or form of the machine, or any mere equivalent, but by something giving it a new or greater advantage. (Hovey v. Stevens, 1 Wood $ Min., 290.) In the allowance of a patent the question of novelty should not be too rigorously questioned, but the benefit of any doubt should be given to the applicant, as, if his application is rejected and his invention have real pat- entable novelty, irremediable injury would be produced; but if the patent is allowed, the novelty can still be in- quired into by a jury. (Cole ex parte, MS. Appeal Cases, D. C., 1857.) It was formerly necessary among us, as in England, that the whole of the improvements claimed as such should be new, and if the novelty of any one of them failed, though it might not be one used by the defend- ant, an action could not be sustained. But the law now provides (ut supra, p. 27, 60) that the patent shall be deemed good and valid for so much of the invention or discovery as shall be truly and bona fide the invention or discovery of the patentee, if it is a material and substan- tial part of the thing patented, and definitely distinguished from the other parts which the patentee had no right to claim, notwithstanding the specification may be too broad, if it was so made without willful default. ( Curtis on Pat- ents, 334.) 27. PRESUMPTIONS OF NOVELTY. Presumptions of the novelty of a patented invention may arise from some or SUBJECT-MATTER OF APPLICATION. 229 all of the following grounds: 1. The oath of the pat- entee that he was the first and original inventor; 2. The action of the Patent Office in granting the patent after full examination; 3. Undisturbed enjoyment of all the benefits of the exclusive rights granted by the patent; 4. Direct adjudications, either at law or in equity, estab- lishing the validity of the patent; 5. Injunctions granted to restrain infringement of the patent. (Hussey v. Whitely, 2 Fish., 120.) 28. UTILITY. The word useful is used in contradis- tinction to mischievous or immoral. All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. Whether the invention is more or less use- ful is a circumstance of no importance to the public. It is sufficient if the invention has any utility. (Lowell v. Lewis, 1 Mason, 186 ; Kneas v. Schuylkill .Bank, 4 Wash., 12.) The degree of the utility of an invention is not a sub- ject for consideration in determining whether an inven- tion is patentable. (Seely ex parte, MS. Appeal Cases, D. C., 1853.) It is the duty of the Commissioner to grant a patent, if in his opinion the thing is sufficiently useful and im- portant. But the degree of usefulness or importance is not described or limited by the statute ; nor is it mate- rial if the matter interferes with no prior right or claim and is in itself innocent. If good may be the result of granting a patent and evil cannot, it ought to be granted. (Aiken ex parte, MS. Appeal Cases, D. (7., 1850.) But the invention must be, in some small measure at least, beneficial to the community. An invention for folding thread or cotton in a more ornamental manner, 20 230 PROCEDURE IN THE PATENT OFFICE, by which the article would sell quicker and at a higher price, but which made no change in the article, is not a useful invention within the patent laws, although useful to the patentee. (Langdon v. De Groot, 1 Paine., 204, 206.) The presumption on the face of a patent is that it is of some utility, for the applicant is obliged to swear that the invention is useful before he can secure a patent. (Coleman v. Liesor, MS., Ohio, 1859.) 29. HARMFUL INVENTIONS NOT PATENTABLE. In the case of George B. Morris and Samuel Watson ex parte the Commissioner says : Applicants described in their original specification what they called " a new process for making butter, to be used in place of ordinary but- ter." They say, "the nature of our invention consists in preparing ordinary butter, and combining it with milk and other ingredients, whereby it is increased in bulk and weight." Again they say, " to prepare the Western Dairy Butter take say about ten pounds of ordinary but- ter, and wash the same as cold as it can be worked in clear lime water, in which about four ounces of lime to the gallon of water have been dissolved," &c. They next warm the butter, and mix it with sweet milk and flour into a paste. They then color it with eggs, carrots, or anotta and tumeric, until at length the precious mess produces " about eighteen pounds of good solid butter, which may be printed in cakes or made into rolls or packed." Subsequently applicants amended this appli- cation, by changing the title to a process for making "A Substitute for Butter;" but the remainder of the specification, the process itself, the title of "Western Dairy Butter," and the statement of the nature of the invention, remain unchanged. SUBJECT-MATTER OF APPLICATION. 231 This application was rejected by the primary examiner, but was allowed by a majority of the board of examiners- in-chief on appeal. The examiner now presents the mat- ter for the judgment of the Commissioner in person. Fortunately the law vests the Commissioner with ample powers to protect the public against the advertisement of such mixtures under the sanction of this office. Section 31, act of July 8, 1870, provides that " the Commissioner shall cause an examination to be made of the alleged new invention or discovery; and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor." In the opinion of the Commissioner, this invention, whether regarded as a new process of making butter, which it is not, or as " a new process for making a sub- stitute for butter," is not sufficiently useful or important to warrant the grant of letters patent for it. (Commis- sioner's Decision, July 23, 1870.) The feasi lity of an invention in point of expense is not for the office to consider ; nor will an invention be condemned on the ground that it is too costly for use. (li. A. Cheesborough ex parte, Commissioner's Decisions, 1859, p. 18.) 30. ART. In order to make a new process or method of working, or of producing an effect or result in matter a subject of a patent in England, a somewhat liberal con- struction of the ter"m "manufacture" became necessary, by which an improvement in the art or process of mak- ing or doing a thing was made constructively to be rep- resented by the term which, ordinarily, would mean only 232 PROCEDURE IN THE PATENT OFFICE. the thing itself, when made or done. It was, doubtless, to avoid the necessity for this kind of construction that the framers of our legislation selected a term which, pro- prio vigore, would embrace those inventions where the particular machinery or apparatus, or the particular sub- stance employed, would not constitute the discovery, so much as a newly-invented mode or process of applying them, in respect to the order, or position, or relations in which they are used. Thus, for example, in the art of dyeing or tanning, it is obvious that an old article of manufacture may be produced by the use of old mate- rials, but produced by the application of those materials in new relations. In such cases it might not be practi- cable to claim the article itself, when made, as a new manufacture, for it might, as an article of commerce or consumption, differ in no appreciable way from the same kind of article produced by the old and well-known method; at the same time the new method of producing the article might be a great improvement, introducing greater cheapness, rapidity, or simplicity in the process itself. Again, other cases may be supposed, where the manufacture itself, as produced by a new process, would be better than the same manufacture produced by the old process, as in the different modes of making iron from the native ore; and yet the really new discovery in such cases could not well be described as a new "manu- facture" or a new "composition of matter," without a figurative use of those terms, which it is desirable to avoid. This difficulty is avoided by the use of the term "art," which was intended to embrace those inventions where the particular apparatus or materials employed may not be the essence of the discovery, but where that SUBJECT-MATTER OF APPLICATION. 233 essence consists in using apparatus or materials in new processes, methods, or relations, so as to constitute a new mode of attaining an old result, or a mode'of attaining a new result, in a particular department of industry, which result may not of itself be any new machine, man- ufacture, or composition of matter; or, finally, an entirely new process of making or doing something which has not been made or done before by an old process. (Cur- tis on Patents, 9.) The patent may be for a new and useful art, but it must be practical; it must be applicable and referable to something which may prove it to be useful. A mere abstract principle is unsusceptible of appropriation by patent. ( Vide supra, p. 219, 19.) The applicant for a patent must show how the princi- ple is to be used and applied to some useful purpose. (Ecans v. Eaton, 1 Pet. C. G, 341.) Art, as the subject of a patent, is not art in the ab- stract, without a specification of the manner in which it is to operate as a manufacture or otherwise, but it is the art explained in the specification, and illustrated by a machine or model or drawing. It is the art so repre- sented or exemplified, like the principle thus embodied, which alone the patent laws are designed to protect. In the English patent acts the word art is not used at all. (Smith v. Downing, 1 Fish., 64.) The word art means a useful art or a manufacture which is beneficial, which is required to be described with exactness in its mode of operation, and which can be protected only in the mode used to the extent thus described. (/6.) An art is entitled to protection as well as the machin- 20* 234 PROCEDURE IN THE PATENT OFFICE. ery or process which the art teaches, employs, or makes useful. (Ifreneh v. Rogers, 1 Fish., 133.) A patent for " an improvement in the art of making nails, by means of a machine which cuts and heads the nail at one operation," is not a grant of an abstract prin- ciple, nor is it a grant of the different parts of any ma- chine, but an improvement applied to a practical use effected by a combination of various mechanical parts to produce a new result. (Gray v. James, Pet. C. C., 400, 401.) An improvement in an art, as of casting iron by giv- ing an angular direction to the tube which conducts the metal to the mold, so that the flog or drop will be thrown into the center instead of the surface, is patentable. (McClurg v. Kingsland, 1 How., 209, 210.) A mode or tabular, form of keeping mercantile ac- counts, whereby a balance sheet and statement of assets is constantly shown, is not an invention of an art, ma- chine, or composition of matter, and is not patentable. (Dixon ex parte, MS. Appeal Cases, D. C., 1860.) 31. PROCESS. A process eo nomine is not the subject of a patent under our laws, but it is included under the general term "useful art," and an art may require one or more processes or machines in order to produce a certain result or manufacture. (Corning v. Burden, 15 How., 252.) Where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called "processes." The arts of tanning, dyeing, making water-proof cloth, vulcanizing india rubber, smelting ores, &c., are usually SUBJECT-MATTER OF APPLICATION. 235 carried on by " processes," as distinguished from machines. One person may discover an improvement in a process, irrespective of any particular form of machinery, and another may invent a labor-saving machine by which the operation or process may be performed, and each may be entitled to a patent the first, for a process, but not for a machine; the second, for a machine, but not for a process. It is when the term "process" is used to represent some means or method of producing a result, that a process is patentable, and thus used the term in- cludes all means which are not effected by mechanism or mechanical combinations. (lb.) A principle, so far embodied and connected with cor- poreal substances as to be in a condition to act and to produce effects in any art, trade, mystery, or manual oc- cupation, becomes the practical manner of doing a par- ticular thing. It is no longer a principle, but a pro- cess. Mr. Watts's invention was the discovery of a practical means of lessening the consumption of steam, by protecting the cylinder from the external air, and keeping it at a temperature not below that of steam it- self. He thus brought a principle into practical applica- tion, by the invention of a process carried on by a newly- contrived machine. (Curtis on Patents, 5.) The application of an old process to the manufac- ture of an article to which it had never been before applied is not patentable. (How v. Abbot, 2 Story, 190, 1842.) The inventor is entitled to separate claims for the pro- cess and the product which it produces; and while such claims may properly be embraced in one patent, it is a matter within the discretion of the Commissioner so to 236 PROCEDURE IN THE PATENT OFFICE. include them, or to issue separate patents for each. (Good- year v. Wait, 3 Fish., 242.) If the patentee be the inventor of a new composition of matter, not known or used by others before his dis- covery, his sole right to use, and vend to others to be used, is the new composition or substance itself. The product and process constitute one discovery. (Goodyear v. The Railroads, 2 Wall., jr., 360.) Where the specification showed that the invention was not merely an improved method or process, but a new product, fabric, or manufacture, held, that the patentee had a right to prohibit the sale or use of the composi- tion, as the product and process both were new. (fb.) 32. MACHINE. Machines may be regarded merely as devices, by the instrumentality of which the laws of na- ture are made applicable and operative to a particular re- sult. (Parker v. Hulme, 1 Fish., 50.) A machine is rightfully the subject of a patent when- ever a new or an old effect is produced by mechanism new in its combinations, arrangements, or mode of oper- ation. If the subject of the invention or discovery is not a mere function, but a function embodied in some. partic- ular mechanism, whose mode of operation and general structure are pointed out, and which is designed to ac- complish a particular purpose, function, or effect, it will be a machine, in the sense of the patent law. A ma- chine is rightfully the subject of a patent when well- known effects are produced by machinery entirely new in all its combinations, or when a new or an old effect is produced by mechanism of which the principle or modus operandi is new. The word " machine " in the statute SUBJECT-MATTER OF APPLICATION. 237 includes new combinations of machines, as well as new organizations of mechanism for a single purpose. There may be a patent for a new combination of machines to produce certain effects, whether the machines constitut- ing the combination be new or old. In such cases the thing patented is not the separate machines, but the combinations. A single instance of such a combination is presented by the telescope, in which a convex and concave glass of different refracting powers are com- bined to make the object-glass. (Curtis on Patents, 21.) The word " machine" in the statute includes new com- binations as well as new organizations of mechanism, and hence there may be a patent for new combinations of machinery to produce certain effects, whether the ma- chines constituting the combination be new or old. ( Wintermute v. Redington, 1 Fish., 240.) Invention, as respects machines, is any new arrange- ment or combination of machinery, whether of old or new parts or materials, producing a useful result. (Mc- Cormick v. Seymour, MS., N. Y., 1857.) A machine may be new, and the product or manufac- ture proceeding from it may be old. In that case the former would be patentable, and the latter not. The machine may be substantially old and the product new. In that event the latter, and not the former, would be patentable. Both may be new, or both may be old. In the former case, both would be patentable; in the latter, neither. The same remarks apply to processes and their results. Patentability may exist as to either, neither, or both, according to the fact of novelty, or the opposite. The patentability, or the issuing of a patent as to one, in nowise affects the rights of the inventor or discover in 238 PROCEDURE IN THE PATENT OFFICE. respect to the other. They are wholly disconnected and independent facts. (Rubber Company v. Goodyear , 9 Wal- lace, 796.) ' 33. INVENTIONS PERTAINING TO MACHINES MAY BE DI- VIDED INTO FOUR CLASSES. 1. Where the invention em- braces the entire machine. Under such a patent, the patentee holds the exclusive right to make and use, and vend to others to be used, the entire machine; and if another, without license, makes, uses, or vends any por- tion of it, he invades the right of the patentee. 2. Those which embrace one or more elements of a machine. In patents of this class any person may make, use, or vend all other parts of a machine, and he may employ the same part or element of a machine, provided it be substantially different from that embraced in the patent. 3. Those which embrace both a new element and a new combination of elements previously used and well known. The property of the patentee in such a case consists in the new element and the new combination. 4. Those where all the elements of the machine are old, and where the invention consists in a new combina- tion of those elements, whereby a new and useful result is obtained. Most of the modern inventions are of this latter kind, and many of them are of great utility and value. ( Union Sugar Refinery v. Matthiessen, 2 Fish., 600.) 34. FORM, (vide supra, p. 225.) A mere change of the form or proportions of any machine cannot, per se, be deemed a new invention. (Lowell v. Lewis, Mason, 190.) There must be a substantial difference in the principle, and the application of it, to constitute such an improve- SUBJECT-MATTER OF APPLICATION. 239 ment as the law will protect. (Smith v. Pearce, 2 McLean, 178.) But if by changing the form and proportion a new effect is produced, there is not simply a change of form and proportion, but a change of principle also. (Davis v. Palmer, 2 Brock., 310.) If an improvement in form and structure enables the operator to do the work in a better manner, or with more ease, or less expense, or in less time, it is a patentable improvement. (Bain v. Morse, MS. Appeal Cases, D. C., 1849.) 35. MANUFACTURE. The term "manufacture" was used in the English statute (21 Jac. I) to denote any- thing made by the hand of man ; so that it embraces, in the English law, machinery as well as substances or fab- rics produced by art and industry. It came by construc- tion to include the process of making a thing, or the art of carry ing on a manufacture; so that all the various ob- jects which are now held in England to be the subjects of letters patent are included under this term, which alone saves them out of the prohibition of the statute of mo- nopolies. Our statute, however, having made an enumeration of the different classes of subjects which in England are held to be patentable, it is to be presumed that this term was used to describe one of these classes only, namely, fabrics or substances made by the art or industry of man, not being machinery. It may sometimes require a nice discrimination to determine whether one of these classes does not run into the other in a given case : as, for in- stance, when a tool or instrument of a novel or improved construction is produced, to be used in connection with 240 PROCEDURE IN THE PATENT OFFICE. other machinery or to be used separately. As an article of merchandise, found and sold separately in the market, such a production would he a manufacture; hut, regarded with reference to its use and intended adaptation, it might he considered as a machine or part of a machine. In de- termining in such cases how the patent for the article should he claimed, it would probably he correct to range it under the one or the other of these classes, according to the following test: if the article is produced and in- tended to be sold and used separately as a merchantable commodity, and the merit of it as an invention consists in its being a better article than had been before known, or in its being produced by a cheaper process, then it may properly be considered simply as a manufacture; but if its merit appears only after its incorporation with some mechanism with which it is to be used, and con- sists in producing, when combined with such mechanism, a new effect, then it should be regarded as a machine, or an improvement of an existing machine. The fact that a result is a new and valuable article of manufacture affords ground to presume invention. ( Woodruff ex parte, MS. Appeal Cases, D. C., 1859.) A new manufacture, as the use of a new composi- tion, which results in a new and useful article, is the proper subject of a patent, though the means employed to adapt the new composition to a useful purpose are old and well known. (Hotchkiss v. Greenwood, 11 How., 265.) There is a wide difference between the invention of a new method or process, by which a known fabric, pro- duct, or manufacture is produced in a better and cheaper way, and the discovery of a new compound, substance, SUBJECT-MATTER OF APPLICATION. 241 or manufacture, having qualities never found to exist together in any other material. In the first case, the inventor can patent nothing but his process.; in the latter, both the process and composi- tion of matter are patentable. (Goodyear v. The Rail- roads, 2 Wall, jr., 360.) Where the result or effect is a greatly-improved article of manufacture, it may become the test from which in- vention may be inferred. ( Treadwell v. Fox, MS. Appeal Cases, D. C, 1859.) Where the claim was for a particular method of form- ing hoop-skirts, which rendered necessary the use of a former, it was held, the inventor had a right to claim the use of the apparatus as incidental and subsidiary to the practical purpose of the idea constituting his invention; and that therefore it was immaterial that the apparatus of the former was old. (Mann ex parte, MS. Appeal Cases, D. G., 1860.) 36. IDENTITY OF PRINCIPLE. The word principle means the operative cause by which a certain effect is produced, the combination of certain mechanical powers, the mode of operation, the mode or manner of operation; and hence there may be two structures, widely different in appearance or dimensions, which are yet identical in prin- ciple. Whatever is essential to produce the appropriate result of a machine, independent of its mere form, is a matter of principle. (Latta v. Shawk, 1 Fish., 465.) One machine or manufacture is not a violation of an- other, within the purview of the patent system, unless it is substantially the same. It need not be identical, but it must be similar in the principle or mode of operation. (Smith v. Downing, 1 Fish., 64.) 21 242 PKOCEDURE IN THE PATENT OEFICE. The identity that is to be looked to iu an action of in- fringement respects that which- constitutes the essence of the invention, namely, the application of the principle. If the mode adopted by the defendant shows that the principle admits of the same application in a variety of forms, or by a variety of apparatus, such mode is a pi- racy of the invention. (Wintermute v. Redington, 1 Fish., 239.) But if the defendant has adopted variations which show that some other law, or rule of practice or science, is made to take the place of that which the patentee claims as the essence of his invention, then there is no infringement. (Ib.) If the same result is produced by the defendant as by the patentee, but by means substantially different, there is no infringement, for a patent is not granted for a mere result ; but, otherwise, if the defendant produces the re- sult by contrivances substantially the same in principle. (Morris v. Barrett, 1 Fish., 461.) If the parts of two machines, having the same mode of operation, do the same work in substantially the same way, and accomplish substantially the same result, those parts are the same, although they may differ in name, form, or shape. ( Union Sugar Refinery v. Matthiessen, 2 Fish., 600.) Two structures are "substantially" the same when they are of the same material, if material is important; of the same thickness, if thickness is important; or of the same form, when form contributes to the result. (Adams v. Edwards, 1 Fish., 1.) The identity or diversity of two machines depends, not on the employment of the same elements or powers SUBJECT-MATTER OF APPLICATION. 243 of mechanism, but upon producing the given effect by substantially the same mode of operation or substan- tially the same combination of powers. One device can- not be said to be a well-known substitute of another, which cannot be used for it. (Crompton v. Belknap Mills, 3 Fish., 563.) "Where a patent is for a combination of distinct and designated parts, it is not infringed by a combination which varies from that patented, in the omission of one of the operative parts and the substitution therefor of another part, substantially different in its construction and operation, but serving the same purpose. (Eames v. Godfrey, 1 Wallace, 78.) "Substantial identity" excludes immaterial variations or fraudulent evasions. That is a substantial identity which comprehends the application of the principle of the invention. If a party adopts a different mode of car- rying the same principle into effect, and the principle admits of a variety of forms, there is an identity of prin- ciple though not an identity of mode. (Page v. Ferry, 1 Fish., 298.) 37. COMPOSITION OF MATTER. The term "composition of matter" includes medicines, compositions used in the arts, and other combinations of substances intended to be sold separately. In such cases the subject-matter of the patent may be either the composition itself, the arti- cle produced, or it may be the mode or process of com- pounding it. Generally speaking the patent covers both, because, if the composition is itself new, the pro- cess by which it is made must also be new, and the law will protect both as the subjects of invention. (Curtis on Patents, 28.) 244 PROCEDURE IN THE PATENT OFFICE. It is no ground for the rejection of an application for a patent for a composition of matter that the thing in- vented is an imitation of a real existing substance or material, e. g., artificial honey. (CorUn Martlett exparte, MS. Appeal Cases, D. C., 1857.) It is not necessary, to render a composition patent- able, that every ingredient or that any one ingredient used by the patentee in his invention should be new or unused before for the purpose intended. The question is, whether the combination of materials used by the patentee is substantially new. Each of the ingredients may have been in extensive common use, and some may have been used for the same purpose; but if they have never been combined together in the manner stated in the patent, but the combination is new, the invention of the combination is patentable. (Ryan v. Goodwin, 3 Sumn., 518.) The inventor of a new compound, wholly unknown before, is not limited to the use always of the same pre- cise ingredients in making that compound ; and if the same purpose can be accomplished by him by the substi- tution in part of other ingredients in the composition, which have never been so used before, he is at liberty to extend his patent so as to embrace them also. Thus, where an inventor claimed as his invention the combination of phosphorus with chalk or any other absorbent earth or earthy material, or glue or any other glutinous substance, using the materials in the proportions substantially as set forth in the specification, in making matches, it was held, that the patent was not void as being too broad and com- prehensive. (J6., 521.) The question is, not whether the compositions are iden- SUBJECT-MATTER OF APPLICATION. 245 tical, but are they substantially the same. (Street v. Sil- ver, Brighiley, 100.) Where a patent is claimed for a discovery of a new substance, by means of chemical combinations of known materials, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave the person attempting to use the discovery to find it out by " experiment." ( Tyler v. Boston, 1 Wallace, 327.) 38. IMPROVEMENT. Improvement, applied to machin- ery, is where a specific machine already exists, and an addition is made to produce the same effects in a better manner, or some new combinations are added to produce new effects. (Fultz exparte, MS. Appeal Cases, D. C, 1853.) If the discovery be an improvement only, it must be an improvement on the principle of the machine, art, or manufacture, before known or in use. If only in the form or proportion, it has not the merit of discovery, which can entitle the party to a patent. (Evans v. Eaton, Pet. C. C., 342.) If a machine substantially existed before, and a person has made an improvement only thereon, he is entitled to a patent for such improvement only, and not for the whole machine. ( Woodcock v. Parker, 1 Gall., 439.) Where a specific machine already exists, producing certain effects, if a mere addition is made to such ma- chine, to produce the same effects in a better manner, a pat- ent cannot be taken for the whole machine, but for the improvement only. The case of the watch is a familiar instance. The inventor of the patent lever, without doubt, added a very useful improvement to it, but his right to a patent could not be more extensive than his 21* 246 PROCEDURE IN THE PATENT OFFICE. invention. The patent could not cover the whole ma- chine, but barely the actual improvement. The same illustration might be drawn from the steam engine, so much improved by Messrs. Watt and Boulton. In like manner, if to an old machine some new combinations are added to produce new effects, the right to a patent*is limited to the new combination. ( Whittemore v. Cutter, 1 Gall, 480.) On the other hand, if well-known effects are produced by machinery, in all its combinations entirely new, a patent may be claimed for the whole machine. (lb., 480.) A slight alteration in the structure of a machine, or in the improvement of it, will not entitle an individual to a patent. There must be a substantial difference in the principle and the application of it to constitute such an improvement as the law will protect. (Smith v. Pearce, 2 McLean, 178.) An improvement on a combination is the subject of a patent, but at the same time the improvement cannot be used without the consent of the original patentee. (Fos- ter v. Moore, 1 Curtis, 293.) An improvement in a process may be discovered irre- spective of any particular form of machinery. (Corning v. Burden, 15 How., 267.) A man may improve a patented machine so as to en- title him to a patent for his improvement; but that will not give him the right to use the invention of the first patentee without his license. (Foss v. Herbert, 2 Fish., 31.) Because a substance may be an improvement upon a product previously patented, and \rnay be patentable as an improvement, it does not follow that it can be made SUBJECT-MATTER OF APPLICATION. 247 and used without the permission of the owner of the prior patent. (Goodyear Denial Vulcanite Company v. Evans, 3 Fish., 390.) An improvement on a patented invention may entitle the party making it to a patent, but he cannot pirate the original invention. (Goodyear v. Mullee, 3 Fish., 420.) When the improvements claimed are only improve- ments upon a well-known machine, the patentee cannot treat as infringers others who have improved the pre- viously existing organization by the use of a different arrangement or combination, which, though performing the same functions, does it in a different, simpler, or bet- ter manner. (Seymour v. Osborne, 3 Fish., 555.) When a man conceives a machine, no one knows ex- cept himself; when he describes it, no one knows ex- cept himself and those to whom he describes it. This is, from the nature of the case, the testimony upon which reliance must be placed. (Sayles v. Hapgood, 3 Fish., 632.) A patentee is not bound in a new patent to refer to his former one. All that is required is, that he shall not claim what is covered by a former invention. (O'Reilly v. Morse, 15 How., 122.) 39. PRIORITY OF INVENTION. If it appears that the plaintiff was not the original inventor, in reference to other parts of the world as well as America, he is not entitled to a patent. This point has been decided other- wise in England, in consequence of the expression in the statute of James I, which speaks of new manufac- tures within the realm. (Reutgen v. Kanowers, 1 Wash., 170.) The first inventor who has put the invention into practice, and he only, is entitled to a patent. Every sub- 248 PROCEDURE IN THE PATENT OFFICE. sequent patentee, although an original inventor, may be defeated of his patent right upon proof of such prior invention put into actual use. The law in such case adopts the rule, qui prior est in tempore, potior esl in jure. In order to defeat a subsequent patent, it is not necessary to prove that the invention has been previously in general use and generally known. It is sufficient if the same in- vention has been previously known and put in actual use, however limited the use or the knowledge of the inven- tion might have been. (Bedford v. Hunt, 1 Mason, 302; Whitely v.Swayne, 1 Wall, 685.) The intent of the statute was to guard against defeat- ing patents by setting up a prior invention which has never been reduced to practice. If it were the mere speculation of a philosopher or a mechanician, which had never been tried by the test of experience, and never put into actual operation by him, the law would not de- prive a subsequent inventor, who had employed his labor and his talents in putting it into practice, of the reward due to his ingenuity and enterprise. But if the first inventor reduced his theory to practice, and put his ma- chine or other invention in use, the law never could intend that the greater or less use in which it might be, or the more or less widely the knowledge or existence might circulate, should constitute the criterion by which to decide upon the validity of any subsequent patent for the same invention. (Ib., 305.) And though the patentee had no knowledge of the previous use or previous description, still his patent is void : the law supposes he may have known it. (Evans v. Eaton, 3 Wheat., 514.) By knowledge and use, referred to in the act, is meant SUBJECT-MATTER OF APPLICATION. 249 knowledge and use existing in a manner accessible to the public. (Gayler v. Wilder, 10 How., 497.) Prior machines relied upon to defeat a subsequent pat- ent must have been working machines, which have either done work or been capable of doing it. ( Wood- man v. Stimson, 3 Fish., 98.) And if a prior machine were merely got up for the purpose of experiment, and was not practically tested, it would not constitute a practical invention. (Swift v. Whi- sen, 3 Fish., 343.) If a previous patent so far describes a machine covered by a subsequent patent that any mechanic of ordinary skill could, from the description in the first patent, con- struct or supply all essential parts of the mechanism de- scribed in the second patent, the latter is void. ( Wood- man v. Stimson, 3 Fish., 98. Clifford, J., in delivering the opinion of the court in the case of White v. Allen, (2 Fish., 444,) said: "Orig- inal and first inventors are entitled to the benefits of their inventions, if they reduce them to practice and seasonably comply with the requirements of the pat- ent law in procuring letters patent for the protection of their exclusive rights. While the suggested improve- ment, however, rests merely in the mind of the origi- nator of the idea, the invention is not completed within the meaning of the patent law, nor are crude and imper- fect experiments sufficient to confer a right to a patent; but in order to constitute an invention in the sense in which that word is employed in the patent act, the party alleged to have produced it must have proceeded so far as to have reduced his idea to practice, and embodied it in some distinct form." (Gayler v. Wilder et al., 16 How., 250 PROCEDURE IN THE PATENT OFFICE. 498; Parkhurst v. Kinsman, 1 Blatchf., 494; Curtis on Pat- ents., 43.) "Mere discovery of an improvement does not consti- tute it the subject-matter of a patent, although the ideas which it involves may be new; but the new set of ideas, in order to become patentable, must be embodied into working machinery and adapted to practical use." (Sickles v. Borden, 3 Blatchf., 535.) " 'Whoever first perfects a machine and makes it capa- ble of useful operation,' says Judge Story, 'is entitled to a patent,' and he accordingly held, in Reed v. Cutter, (1 Story C. C., 599,) 'that an imperfect and incomplete in- vention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice and embodied in some distinct machinery, appa- ratus, manufacture, or composition of matter, was not patentable under the patent laws of the United States.' Pursuant to that rule, the same learned judge also held, 'that he is the first inventor, in the sense of the patent act, and entitled to a patent for his invention, who has first perfected and adapted the same to use, and that, until the invention is so perfected and adapted to use, it is not patentable under the patent laws.' " ( Washburn v. Gould, 3 Story C. C., 33; Woodcock v. Parker et al, I Gall. a a, 121.) Mr. Justice Nelson says, in Winans v. New York and Har- lem Railroad Company, (Franklin Journal, 3 series, vol. 61, p. 322:) "The circumstance that a person has had an idea of an improvement in his head, or has sketched it upon paper, has drawn it, and then gives it up, neg- lects it, does not in judgment of law constitute, or have the effect to constitute, him a first and original inventor. SUBJECT-MATTER OF APPLICATION. 251 It is not the person who has only produced the idea that is entitled to protection as an inventor, but the person who has embodied the idea into a practical machine and reduced it to practical use. He who has first done that, is the inventor who is entitled to protection." In Ducheman v. Richardson, (Decisions, April 7, 1870,) re- ferring to the doctrine stated by Justice Clifford in White' v. Allen, the Commissioner says: "On the other hand, there can be no doubt that the Patent Office has, in the main, accepted a lower standard of invention. Sketches, drawings, models, or machines of the crudest description, and mere conversations, have in some cases been held sufficient to constitute invention. " The practice in the Patent Office has grown up from the perversion of a principle, which is referred to by Mr. Justice Clifford, in White v. Allen, as a limitation of the doctrine cited. He says: 'Taken as a general rule, no doubt is entertained of the correctness of the proposition as stated ; but it must be regarded as subject to the qual- ification that he who invents first shall have the prior right, if, as is prescribed in 15 of the patent act, he is using reasonable diligence in adapting and perfecting the same within the meaning of that provision.' ' (Reed v. Cutter, 1 Story, 600; Marshall v. Mee, Law's Dig., 426; Bartholomew v. Sawyer, 1 Fish., 516.) "Undoubtedly, where two men have hit upon the same idea, and are both diligently engaged in experimenting or in perfecting their inventions, it is proper to go back to the very beginning of the invention, to its first em- bodiment in any form, to determine which of them is prior in point of time. But where one of the parties has been negligent, or has not perfected the invention at 252 PROCEDURE IN THE PATENT OFFICE. all, or the other party has not only perfected but has pat- ented his device, then the rule as administered in the courts should prevail, and no evidence of priority should be received that falls short of a reduction to practice in working mechanism." (Oahoon v. Ring, 1 Fish., 897; 1 Clifford, 592.) 40. LOST ART. Tf any one should discover- a lost art, and it was a useful improvement, he would be entitled to a patent ; for, although not literally the original and first inventor, he would be the first to confer on the public the benefit of the invention. (Gayler v. Wilder, 10 How., 497.) 41. INVENTOR MAY AVAIL HIMSELF OF PRIOR EXPERI- MENTS. If a prior inventor fall short of making a com- plete machine, practically useful^ those who come after him may secure to themselves the advantages of his in- vention. To constitute prior invention, the inventor must have proceeded so far as to entitle himself to a patent. (Hoice v. Underwood, 1 Fish., 160.) Thus, where a patent has been granted for improve- ments which, after a full and fair trial, resulted in un- successful experiments, and have been finally abandoned, if another person takes up the subject of the improve- ments and is successful, he is entitled to the merit of them as an original inventor. ( Whitely v. Swayne, 7 Wallace, 685.) 42. PRIOR PUBLICATION. A bona fide inventor in this country, and who believed himself to be the original and first inventor at the time of his application, is entitled to a patent for his invention, though the same invention may have been known or used in a foreign country, pro- vided it had not been patented or described in any printed SUBJECT-MATTER OF APPLICATION. 253 publication. (Parker v. Stiles, 5 McLean, 61; Swift v. Whisen, 3 ^sA., 343.) But it will be fatal to the right of the patentee if the thing invented or discovered has been described in any foreign publication. This goes upon the presumption, if such foreign publication has been made, the pat- entee may have acquired a knowledge of it. (Allen v. Hunter, 6 McLean, 313.) Unless such publication was prior in point of time to the invention of the patentee it will not avoid the patent. It is not sufficient that such publication was prior to the application of the patentee for his patent. (Bartholomew v. Sawyer, 1 Fish., 516.) It must appear that the improvement which has been known in a foreign country has been so clearly described that the invention could be constructed by a competent mechanic. (Judson v. Cope, 1 Fish., 615.) An imperfect description would not be sufficient to defeat the American patent; and, in order to find a pat- ented invention anticipated in a prior printed publication, the jury must find from the evidence that the description embodies substantially the same organized mechanism, oper- ating substantially in the same manner as that described in the patent. (Clark Patent Steam and Fire-Eegulator Company v. Copeland, 1862, 2 Fish., 221.) And the defendant in a patent cause may show that the thing patented, or some substantial part thereof, ex- isted in a foreign country, and was known to the pat- entee before his application for a patent, and may have put to the jury the question, whether the patentee be- lieved himself to be the original inventor, though such foreign invention had not previously been patented or 22 254 PROCEDURE IN THE PATENT OFFICE. described in any printed publication. (Forbush v. Cook, 2 Fish., 668.) 43. PRIOR FOREIGN PATENT. A foreign patent, to de- stroy a patent granted in this country, must have been granted before the invention here, not merely before the application for letters patent. (Howev. Morton, 1 Fish., 586.) An invention is not "patented" in England, within the meaning of the acts of Congress, until the specifica- tion is enrolled. The enrolled specification takes effect only from the date of its enrollment, and not from the date of the provisional specification. (J-b.) In determining the proper reading of a disputed trans- lation of a foreign patent, the following considerations are applicable : 1." Which translation is most literal; 2. The question should be examined in view of the other parts of the instrument not involved in any doubt; 3. Recurrence should be made to the nature of the inven- tion, to see if it is consistent with either or both read- ings; and, 4. If it be found that one of the translations is repugnant to other parts of the instrument, and the other is consistent with the other parts, it will be safe to adopt the latter. ( White v. Allen, 2 Fish., 440.) 44. UNITY OR DIVERSITY OF INVENTION. A single pat- ent cannot embrace two machines, which are wholly independent of each other and distinct inventions for unconnected objects, nor for several distinct improve- ments upon different machines having no common con- nection or common purpose; but a single patent may be taken out for several inventions or improvements, if they conduce to the accomplishment of one and the same gen- eral end. (Wythe v. Stone, 1 Story, 288, et seq.) SUBJECT-MATTER OF APPLICATION. 255 In the case of Atwood ex parte, the Commissioner says: " There would seem to be an obvious impropriety in allowing an inventor to make application and obtain a patent for some trifling improvement, and then come in at any time within two years, as suggested by counsel, and claim another patent covering broadly the machine improved and already described in the first patent, so that the first patent would become tributary to the sec- ond, and the unlucky purchaser of the first would become an infringer of the second in the hands of his grantor. "The law gives ample facilities for patenting every improvement shown in an application. It provides a system of re-examinations and appeals before the patent goes out ; and, even after the issue of a patent, it permits the owner to reissue it and to subdivide it, until nothing is left upon which to found a. claim. All claims granted upon the thing described have a common origin the original application. The monopoly founded upon them has a common duration the lifetime of the original pat- ent. This is just to the inventor, and it is just to the public. It is a sound practice, and the only safe one. " I answer the questions of the examiner as follows: 1. The case of Suffolk Company v. Hayden in no way controls the practice in the Patent Office. 2. When an applica- tion is filed, every invention contained in that application must be patented under it, or under such divisions of it as the wishes of the applicant and the rules of the office may permit." (Commissioner' 's Decisions, 1869, p. 98.) 45. THE QUESTION OF THE DIVISION OF AN INVENTION INTO SEPARATE PATENTS is WITHIN THE DISCRETION OF THE COMMISSIONER. It is difficult, perhaps impossible, to lay down any general rule by which to determine when a 256 PROCEDURE IN THE PATENT OFFICE. given invention or improvement should be embodied in one, two, or more patents; some discretion must neces- sarily be left on this subject to the head of the Patent Office. It is often a nice and perplexing question. (Ben- nett v. Fowler, 8 Wall, 445.) The case of Hoggv. Emerson (6 How., 483) has usually been relied upon as authorizing the union of several de- vices, machines, or improvements, under a single patent. In that case letters patent had been granted covering an improvement in a spiral propelling wheel and in a cap- stan. This was an extreme case, and the defendant con- tended that the patent was void. The court say : " The next objection is, that this description in the letters thus considered covers more than one patent, and is therefore void. " There seems to have been no good reason at first, unless it be a fiscal one on the part of the Government when issuing patents, why more than one, in favor of the same inventor, should not be embraced in one in- strument, like more than one tract of land in one deed or patent of land." (Phillips on Pat, 217.) "Each could be set out in separate articles or para- graphs, as different counts for different matters in libels in admiralty or declarations at common law, and the specifications could be made distinct for each, and equally clear. "But, to obtain more revenue, the public officers have generally declined to issue letters for more than one pat- ent described in them." (Renouard, 293 ; Phillips on Pat., 218.) "The courts have been disposed to acquiesce in the practice, as conducive to clearness and certainty; and if letters issue otherwise, inadvertently, to hold them, as SUBJECT-MATTER OF APPLICATION. 257 a general rule, null. But it is a well-established excep- tion, that patents may be united if two or more, included in one set of letters, relate to a like subject, or are in their nature or operation connected together." (Phillips ottPart.,218,219; Barrettv.Hall, 1 Mason C.C.^1; Moody r. Fiske, 2 Mason C. * * * 'It is very clear to the mind of the court that Judge Fisher had no jurisdiction in the premises. The jurisdiction is limited. It is limited to an appeal circumscribed to the rights of the reissue of the patent.' "It is believed, if the application for the mandamus had covered the first decision of the learned justice as well as the second, that it would have received the same condemnation from the full bench. My predecessor de- clined to obey these orders; and entertaining these views, and sitting here not only as the guardian of the rights of inventors, but of those of the public, and especially of the manufacturing public, I cannot, under the circum- stances, consent to the issue of these reissued patents. "As regards the division of this batch of applications which is designated as Division G, the facts are as follows : 34 398 PROCEDURE IN THE PATENT OFFICE. During the pendency of the application for divisions A, B, C, and D, and before the decision of Justice Wylie, applicants amended Division A by taking therefrom the fourteenth claim and framing a new division, called Di- vision E, with five claims of invention. On October 29, 1866, applicants filed a fresh division, called Division F, with five more claims. These divisions were both re- jected by the office, on the ground that the claims pre- sented involved no patentable subject-matter. They were appealed to the board of examiners, to the Commission- er, and finally to Justice Fisher, who overruled the ac- tion of the office, and ordered the patents to issue, with antedate to February 18, 1865, more than a year before either of the applications were filed in the office. The office declined to antedate, but finally obeyed the order so far as to issue the patents in the fall of 1868, although the novelty of the claims had never been examined. Since the last decision of Justice Fisher, upon divisions A, B, C, and D, the applicants have again proposed to amend Division A by taking therefrom the twenty-first claim, framing a new division, to be called Division G, and ex- panding the single claim extracted from Division A into twenty-two claims. "It will thus be seen that the original patent of "Wil- liam Gage, with its two claims, has now reached, in the hands of applicants, the formidable proportions of seven patents, with no less than one hundred and sixteen claims. "Division G, so-called, cannot be allowed. The orig- inal patent is surrendered, and has been reissued in divis- ions E and F. " It has no vitality to support another division. Chief Justice Cartter, in Whiteley, assignee of Weeks, ex partc, APPEAL TO THE SUPREME COURT D. C. 399 said : ' This motion raises the question simply as to the effect of the surrender of a patent. Can such patent, after its surrender, be received and treated by the office or the judge as having legal vitality in such wise as to give authority for reissue? If I correctly comprehend the subject, it cannot. The surrender of a patent, and lett?rs patent granted in reissue for the same subject upon such surrender, is the death of the first patent in the life of the second. Whatever of title to the subject of the patent survives is to be found in the letters of reissue, ajid not in the patent out of which such letters grow, and any application thereafter made for reissue should be based upon the reissued letters patent. Inasmuch as this application is made upon an expired title, there is no authority in the office to comply with it.' " It is true that this opinion of the chief justice was overruled by his associate, Justice Fisher, in the same case, and that a patent was ordered to issue 'forthwith;' but, though there be a conflict of opinion between the two justices, I still think myself justified in quoting so respectable an authority as Chief Justice Cartter. "If it be said that Division G derives its vitality from Division A, and not from the surrendered original, the obvious answer is that Division A was no longer open for amendment. Whether the decision of Judge Wylie against it was final, or whether Justice Fisher was authorized to order it to issue ' forthwith,' it was equally removed from the power of applicant to alter or amend it in any way. " The statute which permits a division of reissues is section 5 of the act of 1837, which provides, ' That when- ever a patent shall be returned for correction and reissue 400 PROCEDURE IN THE PATENT OFFICE. under the thirteenth section of the act to which this is additional, and the patentee shall desire several patents to be issued for distinct and separate parts of the thing patented, he shall first pay,' &c. " This provision evidently contemplates nothing more than that, when his rights are determined and the Commissioner is willing to allow him a patent, he may receive distinct improvements in several patents. The whole transaction is single. The divisions make up but one patent, and should be treated as one application until finally disposed of. No provision is made for issuing a patent for some undisputed part of the invention", and carrying on a contest subsequently for another patent for some other part. "Accordingly, in Selden ex parte, Book of Appeals, vol. 3, p. 459, Judge Morsell said: 'The case is that ap- plication which embraces the whole matter, however it may become afterward divided into parts, unless the law declares it to be otherwise.' And again: 'The case is that which is set forth as the ground of the application in the incipient stages of it, and includes or embraces the whole, and not a part only, each part of which is only a part of one whole; and so it must be here considered, notwithstanding the after effect produced by reissuing separate patents for each part; and such has been the invariable contemporaneous practice by the office and the judges ever since the passage of the law.' " Since, therefore, the patent of "William Gage has been reissued in the divisions known as E and F, I am of opin- ion that no other division of reissue for the same patent can be entertained by the office. " The fee paid by applicant is subject to his order, but APPEAL TO THE SUPREME COURT D. C. 401 the application filed by him and marked Division G can- not be examined. 252. THE DECISION OF THE -APPELLATE TRIBUNAL is BINDING ONLY UPON THOSE QUESTIONS WHICH WERE SUB- MITTED TO ITS CONSIDERATION. In the case of Andrew Whiteley, ex parte, Mr. Justice Fisher says : " On the 21st day of May, 1863, Whiteley applied for a reissue in three divisions, having surrendered the reissued patent. The Commissioner of Patents refused this second reissue, on the ground that as Ball, Aultmau & Co. possessed an ex- clusive right to the invention, under the original patent, within the limits of the State of Ohio, and as the Haw- leys also had the exclusive right to said invention within the limits of the northern counties of Illinois, under the reissue of 1858, Whiteley was only the grantee of an ex- clusive sectional interest, and not of the entire patent. "From this decision Whiteley prayed an appeal to a justice of the supreme court of the District of Colum- bia, but the Commissioner refused to grant the appeal also, which was continued to be withheld from him until the early part of the year 1867, when the Supreme Court of the United States, in a case of mandamus, to which Whiteley and the late Commissioner, D. P. Hol- loway, were the parties, declared that Whiteley was entitled to have his appeal as a matter of right under the patent laws, and that if the mandamus issued by the supreme court of the District of Columbia, then under consideration of the Supreme Court of the United States, had directed the Commissioner to allow the appeal, such an order would have been held correct. " On the 9th day of April, 1867, soon after the Su- preme Court of the United States had made this declar- 34* 402 PROCEDURE IN THE PATENT OFFICE. ation, Whiteley filed his reasons of appeal, and brought the case to hearing hefore Chief Justice Cartter, who, on motion of J. J. Coombs, esq., on behalf of the Com- missioner of Patents, dismissed the appeal, upon the ground that on the llth day of February, 1867, White- ley 'had assigned all his right, title, and interest in said patent to Whiteley, Fissler & Kelly, who, on the 18th day of March, 1867, assigned all their right, title, and interest therein to Jonathan Haines,' the first patentee, and that this transfer divested him (Whiteley) of all interest or control over the title to the invention, 'and that the effect of issuing letters patent for the residue of the term that is, of granting a reissue to Whiteley' would be to force a title in defiance of the act of the party and in fraud of his assignee. "The Commissioner's decision, adverse to Whiteley, had been made several years previous to the appeal being brought before Judge Cartter, and the reasons of appeal were filed also several years before, and all long before the assignment made by Whiteley to Whiteley, Fissler & Kelly, so that the ground upon which Judge Cartter dismissed the appeal was not involved at all in any of the questions raised by the assignment of errors in the appeal. The principal question raised by the errors assigned in the Commissioner's decision was whether, at the time of the surrender and application for a second reissue, on the 21st May, 1863, Andrew Whiteley was entitled, as the assignee of the original patentee, to have a reissue, or whether, as the Commis- sioner decided, he was only the grantee of an exclusive sectional interest, and not the assignee of the original patent, and therefore not entitled to the reissue. APPEAL TO THE SUPREME COURT D. C. 403 " The appeal, being thus dismissed without any decis- ion of the question raised by the appellant's reasons of appeal, and on matters arising long after the rendition of the Commissioner's decision, "Whiteley again appealed on the 8th March, 1868, assigning in his reasons of appeal but one error, viz, that 'the Commissioner of Patents, then D. P. Holloway, erred by holding that the applicant was but the grantee of an exclusive sectional interest in the patent sought to be reissued, and there- fore not entitled to the reissue, when the assignment showed that Haines had transferred to him the patent itself, when no interest in it was owned by any other person, and did this for enabling the assignee to procure its reissue, the same as he might have done in the ab- sence of this assignment.' " The first question for my decision is whether the appeal is now properly before me, an appeal having been brought in the same case and upon the same grounds substantially before Chief Justice Cartter, and dismissed by him, as before stated. If the former appeal were properly and lawfully determined or dismissed, the pres- ent appeal could not be entertained. Was the former appeal thus legally disposed of? I do not think it was. The jurisdiction of the supreme court of the District of Columbia in appeal from the decisions of the Commis- sioner of Patents is a special and limited jurisdiction. It is therefore the duty of the justice to whom an appeal is brought to confine himself strictly within the limits prescribed by the act conferring that jurisdiction. This jurisdiction was conferred first upon a board of exam- aminers by act of July 4, 1836 ; afterwards, by act of March 3, 1839, it was transferred to the chief justice of 404 PROCEDURE IN THE PATENT OFFICE. this District; afterwards, by act of August 30, 1852, it was extended to the assistant judges of the old court; and, by the act of March 3, 1863, it was transferred to the justices of the supreme court of the District of Co- lumbia. Section 11 of the act of March 3, 1839, pro- vides as follows : * In all cases where an appeal is now allowed by law from the decision of the Commissioner of Patents to a board of examiners, provided for in the seventh section of the act to which this is additional, the party, instead thereof, shall have a right of appeal to the chief justice of the district court of the United States for the District of Columbia, by giving notice thereof to the Commissioner, and filing in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal, specifically set forth in writing, and also paying into the Patent Oifiee, to the credit of the patent fund, the sum of $25. And it shall be the duty of said chief justice, on petition, to hear and determine all such ap- peals, and to revise such decisions in a summary way on the evidence produced before the Commissioner, at such early and convenient time as he may appoint, first notifying the Commissioner of the time and place of hearing, whose duty it shall be to give notice thereof to all parties who appear to be interested therein, in such manner as said judge shall prescribe. The Commis- sioner shall also lay before the said judge all the original papers and evidence in the case, together with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined.' From the words italicized it will be seen that the only duty which the judge to whom an appeal is taken in a patent case has to perform is to de- APPEAL TO THE SUPREME COURT D. C. 405 termine the points involved by the reasons of appeal. To this law expressly confines him. The moment he enters upon, the investigation or the determination of matters de hors these reasons of appeal, he has transcended the limits of the jurisdiction conferred, and acting thus, without power or jurisdiction, his act becomes a mere nullity. In the case of Whiteley's former appeal, the point on which the appeal was dismissed was in nowise involved by the reasons of appeal, and the dismissal is therefore, in my judgment, a mere nullity, and does not stand in the way of the present appeal." (MS. Appeal Cases D. C., 1868.) In the case of Abraham v. Fletcher the Commissioner says : " It seems as though the necessity would never cease to be felt of recalling the true nature and extent of the jurisdiction conferred upon the appellate judge in patent cases. Yet it is well known that he is the mere substi- tute for the board of examiners provided in the seventh section of the act of 1836. It seems to be thought by many that his judicial character invests him with further prerogatives. That is an entire mistake. His office serves merely as a designatio persona, the means of ascer- taining who shall constitute the tribunal of appeal. He derives no authority or jurisdiction from it, but has merely those which were conferred upon the former board of examiners. How limited those are has been often conceded by the judges when acting in their ap- pellate capacity, as may be seen in repeated decisions referred to in Law's Digest, 138-141. (See more partic- ularly Arnold v. Bishop, 138 ; Richardson v. Hicks, 140.) "It is true that in a case somewhat resembling the one before us, Potter v. Dixon, (2 Fish., 381,) Judge Kelson is 406 PROCEDURE IN THE PATENT OFFICE. reported to have said, that 'the decision of the chief justice' (the appellate .judge) 'was doubtless binding on the Commissioner as between those pasties, but no further.' If he had said it was binding no further, at most, than as between those parties, he would have con- veyed all he probably meant to say, certainly all he was called upon to decide. " The question how far the former decision was bind- ing, as between the parties to it, upon the Commissioner, was not discussed before him, and probably was not con- sidered. On the other hand, the case plainly shows that the rescript of the appellate judge was held to be of no weight, except upon the precise points submitted to him. If, notwithstanding his order that a patent issue, the Commissioner may still suspend it when another party interposes a claim to the invention, it plainly follows that he has the same power when for other reasons it appears that there are valid objections to the issue. " The truth is, the Commissioner is bound to follow the decision above upon those points only which were raised by the appeal, and upon no other. It is for the judge to say that a decision of the Commissioner shall be affirmed or reversed; not to say that a patent shall or shall not issue. It belongs to the Commissioner alone to determine that question, and in determining it many other considerations may have to be taken into the ac- count, besides those which have been passed upon by the judge. In Wade v. Matthews, (5 Opinions Attorneys Gen- eral, 220,) it was held by Reverdy Johnson, Attorney General, that so long as the Commissioner had a patent within his control, which had been ordered to issue, he was bound to keep it back if fresh objections to it came APPEAL TO THE SUPREME COURT D. C. 407 to his knowledge, so that he was not satisfied that it ought to issue. "That is equally true, I apprehend, although his opin- ion upon other points touching the invention has been reversed on appeal. He is only precluded from raising anew an objection which has been overruled." (Commis- sioners' Decisions, 1869, p. 50.) 253. DECISIONS NOT MERELY ADVISORY, BUT TO BE FOL- LOWED AS PRECEDENTS. In the case of Mason v. Doellbor and Houghton the Commissioner says.: "It is conceded by the counsel for the appellant, Mason, that this case pre- sents the precise question as to abandonment which was lately decided by Mr. Justice Fisher, upon appeal from this office, in the case of Rowley v. Mason. I think that the decisions of the judges of the supreme court of the District of Columbia in cases which are properly before them on appeal from this oifice, are, in other cases to which they apply, something more than advisory, and that where, as in the present case, it is conceded that the facts are in substance the same as the case in which a decision has been rendered, it is the duty of the Com- missioner to apply and enforce such decision without hesitation, whatever might be his individual opinion of the law. The decision of the board of examiners-in- chief is therefore affirmed, upon the authority of Rowley v. Mason." (Commissioners' Decisions, 1869. p. 26.) 254. FORM OF PETITION TO THE SUPREME COURT OF THE DISTRICT OF COLUMBIA. To the Supreme Court of the District of Columbia. The petition of George Thompson, of Boston, in the county of "Suffolk, and State of Massachusetts, respectfully showeth: That he has heretofore invented a new and useful improvement in velocipedes, and has applied to the Patent Office of the United States for a patent [or for the reissue of a 408 PROCEDURE IN THE PATENT OFFICE. patent heretofore granted] for the same, and has complied with the require- ments of the several acts of Congress and with the rules of the Patent Office prescribed in such cases; that his said application has been rejected by the Commissioner of Patents on appeal to him; and that he has filed in said office due notice to the Commissioner of Patents of this his appeal, accompanied with the reasons of appeal, and with certified copies of all the original papers and evidence in the case, all which will appear from the certificate of said Commissioner of Patents, hereto annexed. And the said George Thompson prays that his said appeal may be heard and determined by your honorable court at such a time as may be ap- pointed for that purpose ; and that the Commissioner of Patents may be duly notified of the same, and directed in what manner to give notice thereof to the parties interested. GEORGE THOMPSON. 255. FORM OF CERTIFICATE OF COMMISSIONER. PATENT OFFICE, WASHINGTON, D. C., July 17, 1869. I hereby certify that the above-named George Thompson has complied with the requisites of the law necessary to perfect his aforesaid appeal. SAM'L S. FISHER, Commissioner of Patents. 256. FORM OF NOTICE AND REASONS OF APPEAL. To the Commissioner of Patents: George Thompson, of Boston, in the county of Suffolk, and State of Massachusetts, hereby gives notice that he has appealed from your decis- ion rejecting his application for a patent [or for a reissue of a patent granted to him July 7, 1865] for improvement in velocipedes, and of this you are respectfully requested to take notice. Accompanying this notice are certified copies of all the original papers and evidence in the case, and a petition addressed to the supreme court of the District of Columbia. And the said George Thompson assigns the following reasons for appeal- ing from the said decision of the Commissioner of Patents, viz: The Commissioner erred in deciding that the said improvement was not patentable. The Commissioner erred in deciding that the said invention was not new. GEORGE THOMPSON. MANDAMUS TO THE COMMISSIONER. 409 XV. Mandamus to the Commissioner. SEC. 257. Mandamus a remedy against public officers. 258. To compel the performance of ministerial duties. 259. Distinction between ministerial acts and the ordinary dis- charge of official duties. 260. Principles applicable to heads of departments applied to SEC. the Commissioner of Pat- ents. 261. Jurisdiction of the supreme court of the District of Co- lumbia. 262. Mandamus to Commissioner of Patents. 263. Parties in mandamus. 264. Proceedings in mandamus. 257. MANDAMUS A REMEDY AGAINST PUBLIC OFFI- CERS. In order to maintain a system of government which will be able to secure to the citizen his rights, it is necessary to have persons appointed or chosen to administer the law. And when persons are thus clothed with the power, and have assumed the duties of a public officer, they have taken upon themselves the obligation to perform those duties; and if they neg- lect or refuse to do so, any person whose rights are thereby injuriously affected is entitled to demand relief. The remedy provided by our system of law, as well as that of England, is a process issuing from the judi- cial branch of the government, which seeks to compel the officer to go forward and do that which is enjoined upon him by the position he holds. (Moses on Man- damus, 14.) And generally, in all cases of omission or mistake, where there is no other adequate specific remedy, resort may be had to this high judicial writ. It not only lies to ministerial, but to judicial officers. In the former case 35 410 PROCEDURE IN THE PATENT OFFICE. it contains a mandate to do a specific act; but in the latter only to adjudicate, to exercise a judgment, or discretion, upon a particular subject. (Ib.) It may be stated as a general principle, that this writ is only granted for public persons, and to compel the performance of public duties. (3 Stephens's Nisi Prius, 2291.) It can be resorted to only in those cases where the matter in dispute, in theory, concerns the public, and in which the public has an interest. The degree of its importance to the public is not, however, scrupulously weighed. (1 Swift's Digest, 564.) A mandamus gives no right, not even a right of possession, but simply puts a man in a position which will enable him to assert his right, which in some cases he could not do without it. And "in order to lay the foundation for issuing a writ of mandamus, there must have been a refusal to do that which it is the object of the mandamus to enforce, either in direct terms, or by circumstances distinctly showing an intention in the party not to do the act required." (3 Stephens' s Nisi Prius, 2292; Redfieldon Railways, 441, note 5; Moses on Mandamus, 18.) 258. To COMPEL THE PERFORMANCE OF MINISTERIAL DUTIES. Where the heads of departments are the po- litical or confidential agents of the executive, merely to execute the will of the President in cases where the ex- ecutive possesses a constitutional or legal discretion, nothing can be more perfectly clear than that their acts are only politically examinable. But where a specific ministerial duty is assigned by law, and individual rights depend upon the performance of that duty, it seems equally clear that the individual who considers himself injured has a right to resort to the laws of his country MANDAMUS TO THE COMMISSIONER. 411 for remedy, and that mandamus is a proper remedy. (Moses on Mandamus, 63.) It was held, in the ease of Marbury v. Madison, that " It is not by the office of the person to whom the writ is directed, but the nature of the thing to be done, that the propriety or impropriety of issuing a mandamus is to be determined. Where the head of a department acts in a case in which executive discretion is to be exercised, in which he is the mere organ of executive will, it is again repeated that any application to a court to control, in auy respect, his conduct, would be rejected without hesita- tion. But where he is directed by law to do a certain act, affecting the absolute rights of individuals, in the per- formance of which he is not placed under the particular direction of the President, and the performance of which the President cannot lawfully forbid, and therefore is never presumed to have forbidden, as, for example, to record a commission, or a patent for land, which has re- ceived .all the legal solemnities; or to give a copy of such record; in such cases, it is not perceived on what ground the courts of the country are further excused from the duty of giving judgment, that right be done to an injured individual, than if the same services were to be performed by a person not the head of a department." (1 Cranch, 137.) The doctrine that mandamus lies on the application of a private individual, and for his benefit, to compel the head of a department to perform a mere ministerial duty, where that duty is plain, seems to have been fully main- tained in the case of The Commissioners of the Land Office v. Smith, 5 Texas, 471. 259. DISTINCTION BETWEEN MINISTERIAL ACTS AND THE 412 PROCEDURE IN THE PATENT OFFICE. ORDINARY DISCHARGE OF OFFICIAL DUTIES. A distinction is made between the ministerial acts of one of the heads of department, and those duties required in the ordinary discharge of official duties, over which the officer is re- quired to exercise judgment and discretion. While the former can be compelled by mandamus, the latter can- riot. (Moses on Mandamus, 65.) In the case of Decatur v. Paulding, the Supreme Court of the United States, in re versing the decision of the circuit court of the District of Columbia, say: "In the case of Kendall v. The United States, 12 Peters, 524, it was decided in this court that the circuit court for Washington county, in the District of Columbia, has the power to issue a man- damus to an officer of the federal Government, command- ing him to do a ministerial act." * * * " The head of an executive department of the government, in the adminis- tration of the various and important concerns of his office, is continually required to exercise judgment and discre- tion. He must exercise his judgment in expounding the laws and resolutions of Congress under which he is from time to time required to act. If he doubts, he has a right to call upon the Attorney General to assist him with his counsel; and it would be difficult to imagine why a legal adviser was provided by law for the heads of departments, as well as for the President, unless their duties were re- garded as executive, in which judgment and discretion were to be exercised. If a suit should come before the court which involved the construction of any of these laws, the court certainly would not be bound to adopt the construction given by the head of a department. And if they supposed his decision to be wrong, they would, of course, so pronounce their judgmerrt. But their judg- MANDAMUS TO THE COMMISSIONER. 413 ment upon the construction of a law must be given in a case in which they have jurisdiction and in which it is their duty to interpret the act of Congress, in order to ascertain the rights of the parties in the cause before them. The court could not entertain an appeal from the decision of one of the Secretaries nor revise his judgment in any case where the law authorized him to exercise discretion or judgment. NOT can it by man- damus act directly upon the officer, and guide and con- trol his judgment or discretion in the matters committed to his care in the ordinary discharge of his official duties." * * * " The interference of the courts with the perform- ance of the ordinary duties of the executive departments of the government would be productive of nothing but mischief; and we are quite satisfied that such a power was never intended to be given to them." (14 Peters, 497.) In the case of The United States v. Guthrie, Mr. Justice Daniel, in delivering the opinion of the court, said: "It has been ruled, that the only acts to which the power of the courts, by mandamus, extends, are such as are purely ministerial, and with regard to which nothing like judg- ment or discretion, in the performance of his duties, is left to the officer; but that, wherever the right of judg- ment or decision exists in him, it .is he, and not the courts, who can regulate its exercise. " These are the doctrines expressly ruled by this court in the case of Kendall v. Stockton, 12 Peters, 524; in that of Decatur v. Paulding, 14 Peters, 497; and in the more recent case of Brashear v. Mason, 6 How., 92; prin- ciples regarded as fundamental and essential, and apart from which the administration of the government would be impracticable." (17 How., 284.) 35* 414 PROCEDURE IN THE PATENT OFFICE. Mr. Justice Clifford, delivering the opinion of the court in the case of The Secretary v. Me Garrahan, said : " Since the decision of this court in the case of Mclnlire v. Wood, (7 Cranch, 504,) it has heen regarded as the set- tled law of the court that the circuit courts of the United States in the several States do not possess the power to issue writs of mandamus except in cases in which it may be necessary to the exercise of their jurisdiction. (-Rigys v. Johnson Co., 6 Wallace, 198.) "Authority to that effect might doubtless be given to those courts by an act of Congress; but the insuperable difficulty at present is, that neither the judiciary act nor any other act of Congress has conferred upon them any such power. "Antecedent to the decision of this court in the case of Kendall, v. The United States, grave doubts were enter- tained whether any court established by an act of Con- gress possessed any such jurisdiction; but the majority of this court came to the conclusion that the circuit court of this District might issue the writ of mandamus to an executive officer residing here, commanding him to perform a ministerial act required of him by law, and it is not denied that the court below possesses all the power in that behalf which the circuit court of the Dis- trict possessed at that time." * * * " Though man- damus may sometimes lie against an executive officer to compel him to perform a mere ministerial act required of him by law, yet such an officer, to whom public du- ties are confided by law, is not subject to the control of the courts in the exercise of the judgment and discre- tion which the law reposes in him as a part of his official functions." (9 Wallace, 298.) MANDAMUS TO THE COMMISSIONER. 415 The rule to be gathered from all the -cases decided in the Supreme Court of the United States, governing mandamus, to the officers of the government, seems to be this: It cannot issue in a case where discretion and judgment are to be exercised by the officer, nor to con- trol him in the manner of conducting the general duties of his office. It can be granted only where the act re- quired to be done is imposed by law is merely minis- terial and the relator without any other adequate rem- edy. (Moses on Mandamus, 78.) 260. PRINCIPLES APPLICABLE TO HEADS OF DEPARTMENTS APPLIED TO THE COMMISSIONER OF PATENTS. The princi- ples applied by the Supreme Court of the United States, in cases of mandamus, to heads of departments of State, would seem to be applicable in cases of mandamus to the Commissioner of Patents. (See Commissioner of Patents v. WMteley, 4 Wallace, 522.) "261. SOURCE OF POWER TO ISSUE THEWRIT IN THE SUPREME COURT OF THE DISTRICT OF COLUMBIA. A writ of man- damus, at common law, was a command issuing in the King's name, from the court of King's Bench, and directed to any person, corporation, or inferior court of judicature within the King's dominions, requiring them to do some particular thing therein specified, which ap- pertains to their office and duty, and which the court of King's Bench has previously determined, or at least supposes to be consonant to right and justice. (2 Black. Com., 110.) Bat "in America the authority to issue the writ of mandamus does not exist as a prerogative power of the courts, but is derived by grant from the Government, through the Constitution or legislative enactments. And when the power has been granted in 416 PROCEDURE IN THE PATENT OFFICE. general terms to a court, it is to be governed by the common law rules as to when it is proper to be issued. (Kentucky v. Dennison, 24 How., 66; In the matter of James Turner, 5 0. E., 543;" Moses on Mandamus, 17.) The power to issue the writ of mandamus was, under the provincial government of Maryland, intrusted to the provincial court; which occupied under the govern- ment the place which belongs to the King's Bench in England. 'The Maryland constitution of 1777 transferred the right of issuing the mandamus, with the other powers of the provincial court, to the general court. (Evans's Practice, 18, 403.) It has been held by the Supreme Court of the United States, in the case of Kendall v. The United States, 12 Peters, 526, that as the act of Congress of the 27th of February, 1801, concerning the District of Columbia, and by which the circuit court of the District is organ- ized and its powers and jurisdiction pointed out, declared that the laws of the State of Maryland, as they now exist, shall be and continue in force in that part of the District which was ceded by that State to the United States, and as at the date of that act the common law of England was in force in Maryland, and that the power to issue a mandamus in a proper case is a branch of the common law fully recognized as in practical operation -in that State at the time the circuit court for the District of Co- lumbia was organized, it was thereby vested with broader powers and jurisdiction in this respect than is vested in the circuit courts of the United States in the several States, and that it does possess the power to issue the writ of mandamus, directed to United States ministerial officers, when it is a fit and proper remedy. MANDAMUS TO THE COMMISSIONER. 417 And in the case of Decatur v.Paulding, (14 Dallas, 515,) Taney, C. J., in delivering the opinion of the court, said : " In the case of Kendall v. The United States it was decided in the court that the circuit court for Washing- ton county, in the District of Columbia, -has the power to issue a mandamus to an officer of the federal govern- ment, commanding him to. do a ministerial act." The act of Congress of the 3d of March, 1863, which established the supreme court of the District of Colum- bia, provided that "the supreme court organized by this act shall possess the same powers and exercise the same jurisdiction as is now possessed and exercised by the circuit court of the District of Columbia," &c. 262. MANDAMUS COMMANDING THE COMMISSIONER TO PERFORM AN ACT ENJOINED BY LAW. It follows, there- fore, that the supreme court of the District of Columbia has the jurisdiction and power, in proper cases, to grant and enforce a" writ of mandamus," commandingthe Com- missioner of Patents to perform an act enjoined by law. In the case of the Commissioner of Patents v. Whiteley, (4 Wallace, 522,) the case is stated as follows : " "Whiteley, the defendant in error, was the assignee of a sectional in- terest in a patent granted to Haines, on the 4th of Septem- ber, 1855, for an improvement in mowing machines. He held, by virtue of several assignments, all the territory embraced in the patent, except the State of Ohio and the northern half of the State of Illinois; and in all the terri- tory, except as just mentioned, was assignee of all the rights of the patentee. " In 1863 he applied to the Commissioner of Patents for a reissue of the patent, according to the thirteenth section of the patent act of 1836. 418 PROCEDUEE IN THE PATENT OFFICE. "The assignees for the State of Ohio and of the north- ern half of Illinois did not join in the application. "The Commissioner of Patents, after a laborious in- vestigation of the law and comparison of various sections of the patent acts, decided that the applicant, not being the assignee of the whole interest in the patent, was riot entitled to the reissue asked for. " Whiteley took no appeal from the Commissioner's decision ; but setting forth that his application for reissue wasfiled with the Acting Commissioner, and the refusal, petitioned the supreme court of the District of Columbia for a mandamus to send an application to an examiner to be acted upon by him as though made by the patentee. " The Commissioner, in reply premising that for the reason that the proposed applicant was not such an as- signee as the law contemplates, arid that the application, therefore, was not filed or entered upon the books of the office, and never had been, and that the fees required on such application, which had been paid by the relator to the chief clerk of the office, on the presentation of said application, had not been placed to the credit of the pat- ent fund, but remain in the hands of the chief clerk, personally, and subject to the order of the relator re- plied, among other reasons, against the mandamus: " 1. That the object of it was to carry by appeal a pre- liminary question solely cognizable by him to the supreme court of the District, and that such a mandamus would be nugatory. " 2. That he had decided rightly in rejecting the appli- cation, the relator not coming within the meaning of the term ' assignee,' as contemplated in the thirteenth section of the act of 1836. And in support of this view he sub- MANDAMUS TO THE COMMISSIONER. 419 mitted as part of his answer a full law argument, which now came up in the record. "The supreme court of the District granted the man- damus, ' commanding the Commissioner of Patents to refer said application to the proper examiner, or otherwise examine or cause the same to be examined according to law? The case was now here on writ of error, brought by the Commis- sioner of Patents, to remove the proceeding to this court. Two principal questions were raised : " 1. Supposingthe decision of the Commissioner to have been erroneous, and that the assignee of a sectional in- terest in a patent was entitled to a reissue, did a man- damus such as that above mentioned lie to correct the decision ? " 2. Did the Commissioner, in deciding as he did that the applicant as owner of but a sectional interest was not entitled to a reissue, decide correctly?" Mr. Justice Swayne, delivering the opinion of the court, said : " This case was brought here by a writ of error to the supreme court of the District of Columbia. "On the 4th of September, 1855, a patent was issued to Jonathan Haines for an improvement in mowing machines. " On the 22d of November, 1856, Haines sold and as- signed to Ball, Aultman & Co. an exclusive right to the invention and patent, within the limits of the State of Ohio. " On the 13th of April, 1858, upon the surrender of the original patent by Haines, and upon his application, without the assent of Ball, Aultman & Co., a reissue of the patent was granted to him. 420 PROCEDURE IN THE PATENT OFFICE. "On the 15th of January, 1860, Jonathan Haines sold and assigned to his brother, Ansel Haines, one undivided third part of his interest in the patent. "On the 25th of January, 1860, Jonathan and Ansel Haines sold and granted to Isaac and "William C. Hawley the exclusive right to the invention and patent in certain counties in the State of Illinois. " On the 10th of April, 1863, Ansel Haines resigned to Jonathan Haines all his interest in the patent. " On the 17th of April, 1863, Jonathan Haines sold and assigned all his interest in the patent to Andrew White- ley, the defendant in error. Haines, at the same time, delivered the patent to Whiteley, in order that he might surrender it and procure another reissue. " Ball, Aultman & Co. were applied to, but declined to concur. It does not appear that the Hawieys were advised upon the subject. "On the 25th of January, 1863, Whiteley filed his ap- plication in the Patent Office, in conformity with the provisions of the thirteenth section of the act of 1836. " The Commissioner of Patents declined to entertain the application, upon the ground that the applicant was only the grantee of an exclusive sectional interest, and not of the entire patent. He also declined' to allow an appeal to be taken from this decision. An application was thereupon made to the supreme court of the District of Columbia for a writ of mandamus. That court a warded a peremptory writ, commanding the Commissioner < to refer said application to the proper examiner, or other- wise examine or cause the same to be examined accord- ing to law.' This writ of error is prosecuted to reverse that order. Did the court err in making it? MANDAMUS TO THE COMMISSIONER. 421 " The thirteenth section of the act of 1836 declares that, under the circumstances therein stated, 'it shall be law- ful for the Commissioner, upon the surrender to him of such patent, * * * to cause a new patent to be issued to the inventor, for the same invention, for the residue of the period, then unexpired, for which the orig- inal patent was granted, in accordance with the patentee's corrected description and specifications; and, in case of his death or any assignment by him made of the original patent, a similar right shall vest in his executors, admin- istrators, or assigns.' " The seventh section of this act provides that, on the filing of any application for a patent and the payment of the duty required, 'the Commissioner shall make, or cause to be made, an examination of the alleged new invention or discovery/ &c. " The eighth section of the act of 1837 provides, in regard to applications for the reissue of patents and the decisions of the Commissioner, that ' in all such cases the applicant, if dissatisfied with such decision, shall have the same remedies and be entitled to the benefit of the same privileges and proceedings as are provided by law in case of original applications for patents. " This renders it necessary to recur to the act of 1836, and to consider carefully its provisions touching the ap- plications to which it relates. "Both acts should be liberally construed to meet the wise and beneficent object of the legislature. Patentees are a meritorious class, and all the aid and protection which the law allows this court will cheerfully give them. "If the Commissioner should hold that a party apply- ing originally for a patent 'was not the original and first 36 422 PROCEDURE IN THE PATENT OFFICE. inventor,' and should decide against him upon that ground, the applicant could undoubtedly take an. appeal from his decision. The Commissioner having reached this con- clusion, would be under no obligation to go further and examine any other question arising 'in the case, and it would not be necessary to the right of appeal that he should do so. "Here an assignee applied for the reissue of a patent. It was clearly competent for the Commissioner, and it was his duty, to decide whether the applicant was an as- signee at all; and, if so, whether he was assignee with such an interest as entitled him to a reissue within the meaning of the statutory provision upon the subject. The latter question is an important one. It is as yet unsettled, and awaits an authoritative determination. " The Commissioner says, in his answer to the rule, that he could not examine the application, because none had been filed in the Patent Office. "This position is untenable. It is averred in the peti- tion, and not denied in the answer and, therefore, as in other like cases of pleading, to be taken as conceded that the application was filed with the Acting Commissioner. It is also admitted intheanswer that the requisite amount of fees had been paid by the relator, but, it is added, that it had not been placed to the credit of the office, and was in the hands of the chief clerk, subject to the relator's order. "The relator had done all in his power to make his application effectual, and had a right to consider it prop- erly before the Commissioner. " It was so. If it was not, a mandamus would clearly lie to compel the Commissioner to receive it. It was his first duty MANDAMUS TO THE COMMISSIONER. 423 to receive the application, whatever he might do sub- sequently. Without this initial step there could be no examination, and, indeed, no rightful knowledge of the subject on his part. Examination and the exercise of judgment, with proper fruit, were to follow, and they did follow. "The Commissioner found the question, whether the assignee was such a one as the law entitled to a reissue, lying at the threshold of his duties. It required an an- swer before he could proceed further. His decision was against the appellant. His examination of the subject was thorough, and his conclusion is supported by an able and elaborate argument. It was made a part of his reply to the rule, and is found in the record. "From this decision, whether right or wrong, the re- lator had a right, under the statute, to appeal. " If the mandamus had ordered the Commissioner to allow the appeal, we should have held the order under which it was issued to be correct. But the order was that he should pro- ceed to examine the application. That he had already done. The preliminary question which he decided was as much within the scope of his authority as any other which could arise. Having resolved it in the negative, there was no necessity for him to look further into the case. Entertaining such views, it would have been idle to do so. The question was vital to the application, and its resolution was fatal, so far as he was concerned. Only a reversal by the tribunal of appeal could revive it and cast upon him the duty of further examination. " The principles of law relating to the remedy by man- damus are well settled. "It lies where there is a refusal to perform a minis- 424 PROCEDURE IN THE PATENT OFFICE. terial act involving no exercise of judgment or discre- tion. "It lies, also, where the exercise of judgment and dis- cretion are involved and the officer refuses to decide, provided that, if he decided, the aggrieved party could have his decision reviewed by another tribunal. "It is applicable only in these two classes of cases. It cannot be made to perform the functions of a writ of error. "In Decaturv. Paulding, (14 Pet., 515,) referring to an act of Congress under which the relator in that case claimed a pension which had been refused her by the Secretary of the Navy, this court said : ' If a suit should come before this court which involved the construction of any of these laws, the court certainly would not be bound to adopt the construction given by any head of a department; and if they supposed his decision to be wrong, they would of course so pronounce their judgment. But their construc- tion of a law must be given in a case in which they have jurisdiction, and in which it is their duty to interpret the act of Congress in order to ascertain the rights of the parties in the cause before them. The court could not entertain an appeal from the decision of one of the Sec- retaries, nor reverse his judgment in any case where the law authorizes him to exercise discretion or judgment; nor can it by mandamus act directly upon the officer, and guide or control his judgment or discretion in the matters committed to his care in the ordinary discharge of his official duties. * * * The interference of courts with the performance of the ordinary duties of the executive department of the government would be productive of nothing but mischief, and we are quite satisfied that such a power was never intended to be given to them. MANDAMUS TO THE COMMISSIONER. 425 ' This case, as presented to the court below, was within neither of the categories above mentioned. The court, therefore, erred in making the order to which the Com- missioner objected. " The main question passed upon by the Commissioner, and which was supposed to underlie this case, is not be- fore us for consideration. If it were, as at present advised, we are not prepared to say that the decision of the Com- missioner was not correct. " The order of the courtbelow, awardingthe mandamus, is reversed with costs, and it is ordered by this court that the application of the relator be by that court overruled and dismissed." 263. PARTIES rs T MANDAMUS. The writ of mandamus, from its very nature and definition, is " a command issuing in the name of the sovereign authority." (Bouvier's Diet.) And although it is substantially a civil remedy, (2 Carter's Ind. R., 423,) yet in the United States it has always been issued in the name of the sovereignty by which it has been authorized. (Moses on Mandamus, 194.) The suit, therefore, is properly prosecuted in the name of the United States against the Commissioner of Patents. 264. PROCEEDINGS IN MANDAMU.S. The writ can only be obtained after a rule to show cause has been laid by the court and a copy of it has been served on the Com- missioner of Patents. (Brosius v. Renter, 1 Harr. and Johns., 481.) The rule is obtained by filing a petition, in which all the facts and circumstances entitling the party to the mandamus are stated, and which is verified by oath. (Evans's Practice, 404.) The petition should present to the court a prima facie case of duty on the part of the Commissioner to perform the act demanded, 36* 426 PROCEDURE IN THE PATENT OFFICE. and an obligation to perform it. (Moses on Mandamus, 284.) It should also appear that a demand has been made upon the Commissioner to do the thing he is sought to be compelled to do, and that he has refused or neglected to do it, (Stephens' s Nisi Prius, 23; 9 Mich. B., 328,) and that he has it in his power to perform the act. (Bidding v. Bell, 4 Gal. B., 333.) The Commissioner who appears to show cause why a mandamus should not be issued does so by what -is some- times called a return, sometimes an answer. (Evans's Practice, 404.) The return must either deny the facts on which the claim of the relator is founded or must state other facts sufficient in law to defeat the relator's claim. (10 Wend., 20; 35 .Bark, 105; 37 Penn. S. B., 237.) When the return is made and filed, if insufficient, the relator may move to quash it, (Evans's Practice, 405; People v. State, 2 Barb., 554; Commonwealth v. Commis- sioners,^ Penn. S. .R.,218;) it may, however, be amended, or a supplementary return filed, should it prove defect- ive, (Evans's Practice, 405,) and a return on leave of court may be amended in matters of substance even after exceptions have been made. (Doug. -R.,135; 10 Pick. B., 59.) The motion, however, for leave to amend should probably set forth specifically the points sought to be cor- rected. (State v. County Judge, 12 Iowa, 237.) Motions or applications for mandamus againstthe Com- missioner of Patents may be heard before the general term of the supreme court of the District of Columbia in the first instance, or by one of the justices at cham- bers, or in special term, but not until the petition, veri- fied by affidavit and stating the grounds of the applica- tion, has been filed and docketed, and motion to quash DESIGNS. 427 may be heard in the same manner. (Rules of Supreme Court of D. C.) Upon argument of the law, arising upon the facts dis- closed, the court decide that a mandamus shall or shall not go. (Evans's Practice, 404.) The writ is served by delivering it to the person to whom it is directed. Courts enforce compliance with the peremptory writ by attachment of contempt. The application for an attachment is made by a motion, upon which the defendant may show cause, unless the con- tempt be gross, in which case the rule may be made absolute at first. ( Tidd's Practice, 484.) XVI. Designs. SEC. 265. Subject-matter of design pat- ents. 266. Models may be dispensed with. 267. Term for which granted. 268. Term may be extended. 269. Proceedings the same as in other cases. 270. Photographs. 271. Classification of designs. 272. Disputed questions. 273. Design may embrace a class of ornaments. 274. Designs patentable on account of utility. 275. Modes of operation not to be SEC. monopolized under a patent for design. 276. Applicant to elect the term of the patent on application. 277. No provision made for use and sale prior to application. 278. Design shown in a patent for mechanical invention lost. 279. Number of claims allowed. 280. Application for mechanical in- vention oannot be changed to application for design. 281. Form of petition. 282. Form of specification. 283. Form of oath. 265. SUBJECT-MATTER OF DESIGN PATENTS. Any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture, bust, statue, alto-relievo, or bas-relief; 428 PROCEDURE IN THE PATENT OFFICE. any new and original design for the printing of woolen, silk, cotton, or other fabrics; any new and original im- pression, ornament, pattern, print, or picture, to be print- ed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and orig- inal shape or configuration of any article of manufac- ture, 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 pay- ment of the duty required by law and other due pro- ceedings had, the same as in cases of inventions or dis- coveries, obtain a patent therefor. (Act of July 8, 1870, 71 ; vide supra, p. 34, 71.) 266. MODELS MAY BE DISPENSED WITH. The Commis- sioner may dispense with models of designs when the design can be sufficiently represented by drawings or photographs. (Ib., 72.) 267. TERM FOR WHICH GRANTED. Patents for designs may be granted for the term of three years and six months, or for seven years, or for fourteen years, as the applicant may, in his application, elect. (/&., 73.) 268. PATENTS FOR DESIGNS MAY- BE EXTENDED. Pat- entees of designs issued prior to March 2, 1861, shall be entitled to extension of their respective patents for the term of seven years, in the same manner and under the same restrictions as are provided for the extension of patents for inventions or discoveries issued prior to the 2d day of March, 1861. (Ib., 74.) Upon extending a patent for a design its utility may be taken into account in estimating its value and importance to the public. (B. L, Solomon ex parte, Commissioners' Decisions, 1869, p. 49.) DESIGNS. 429 269. PROCEEDINGS THE SAME AS IN OTHER CASES. The petition, oath, specification, and other proceedings, are the same as for other patents. (Patent Office Rules, July, 1870.) 270. PHOTOGRAPHS. Photographs" are received for the illustration of works of design only. One must be pasted upon thick drawing-paper, but in every case where this mode of illustration is employed by an applicant he will be required to deposit in the office the glass or other " negative "' from which the photograph is printed, so that exact official copies may be made therefrom when de- sirable. (Ib.} 271. CLASSIFICATION OF DESIGNS. In the case of Bar- tholomew ex parts, the Commissioner says : "" Letters pat- ent for designs have increased in importance within the last few years. Formerly, but few were granted ; now, many are issued. To this day they have made so little figure in litigation that but three reported cases are known in which design patents have come into contro- versy. With their increase questions have arisen con- cerning their scope and character which have given rise to dispute and to inquiry as to the correctness of the current practice of the office in this branch of inven- tion. While on the one hand it is insisted that the prac- tice has always been uniform, and is therefore now fixed and definite, on the other it is asserted that there has never been, and is not now, any well defined or uniform practice either in the granting or refusal of design pat- ents. " The act of 1836 made no provision for the patenting of designs. The earliest legislation upon this subject is found in the act of August 29, 1842, section 3 ; and the 430 PROCEDURE IN THE PATENT OFFICE. only legislation upon this subject is found in this section and in section 11 of the act of March 2, 1861. " The definition of the subject-matter, or, in other words, of a ' design,' is the same in both acts. It is as follows : ' That any citizen, &e., who by his, her, or their own industry, genius, efforts, and expense, may have in- vented or produced any new and original design for a manufacture, whether of metal or other material or ma- terials, and original designs for a bust, statue, bas-relief, or composition in alto or basso-relievo, or any new and original impression being formed in marble or other mate- rial, or any new and useful pattern, print, or picture, to be either worked into or worked on, or printed, or painted, or cas.t, or otherwise fixed on an} 7 article of manufacture, or any new and original shape or configuration of any ar- ticle of manufacture not known or used by others,' &e. " This definition embraces five particulars : " 1. A new and original design for a manufacture. " 2. An original design for a bust, statue, &c. " 3. A new and original impression or ornament to be placed on any article of manufacture. " 4. A new and useful pattern, print, or picture, to be worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture. " 5. A new and original shape or configuration of any article of manufacture. " The first three of these classes would seem to refer to ornament only; the fourth, to ornament combined with utility, as in the case of trade-marks; and the fifth, to the shapes or forms of manufactured articles, which, for some reason, were preferable to those previously adopted." DESIGNS. 431 272. DISPUTED QUESTIONS. "The disputed questions which have thus far arisen under these definitions are : 1. "What variations may be claimed or covered by the patent, consistent with unity of design ? 2. Is a new shape of an article of manufacture, whereby utility is secured, a subject of protection under this act ? and 3. Is mechanical function of any kind covered by it ? "As to the first of these questions, it seems to have been assumed that the design spoken of in all parts of the sections referred to covered a fixed, unchangeable figure ; that the protection of the letters patent did not extend to any variation, however slight, but that such variation constituted a new design, might be covered by a new patent, and might safely be used without infringe- ment of the first. This, it is said, is the correct theory of the law, and has been the uniform adjudication of the office." 273. A PATENT FOE A DESIGN MAY EMBRACE A GENUS OR CLASS OF ORNAMENTS, AS WELL AS ONE SPECIES. "Neither of these statements is absolutely correct. The law by no means defines a design with such strictness. The language is, ' new and original design for a man- ufacture,' * new and original impression or ornament,' 'new and original shape or configuration.' It would seem to be too plain for argument that the new design, or impression, or shape might be so generic in its char- acter as to admit of many variations, which should em- body its substantial characteristics and be entirely con- sistent with a substantial identity of form. Thus, if the invention were of a design for an ornamental button, the face of which was grooved with radial rays, it would seem that the first designer of such a button might properly 432 PROCEDURE IN THE PATENT OFFICE. describe a button of five rays, and, having stated that a greater number of rays might be used, might claim a design consisting generally of radial rays, or of ' five or more' rays, and that it could not be necessary for him to take out a patent for each additional ray that could be cut upon his button. So, if the design were the orna- mentation of long combs by a chain of pearls, it would seem that a claim for such a design might be maintained against one who arranged the pearls either in curved or straight lines, or who used half pearls only ; and that such modifications, if they had occurred to the designer, might properly have been enumerated in his specifica- tion as possible and equivalent variations. In short, I can see no reason, under the law, why designs may not be generic, why what are called 'broad claims' may not be made to them, and why the doctrine of artistic or aesthetic equivalents may not be applied to them. " This has been recognized to a greater or less extent in the adjudication of the courts and in the practice of the office. One of the reported cases is that of Sooth v. Garelly, (1 Blatchf., 247.) The design is described as con- sisting of ' radially formed ornaments on the face of the molds or blocks of which the button is formed, combined with the mode of winding the covering on the same, sub- stantially as set forth, whether the covering be of one or more colors.' The specification, in 'substantially' set- ting forth the design, contained this language : ' It will be obvious from the foregoing that the figures can be changed at pleasure, by giving the desired form to the face of the mold by depressions and elevations which radiate from a point, whether in the center of the mold or eccentric thereto.' In the consideration of the case DESIGNS. 433 by the court no objection was made to this statement or claim. In the case of Root v. Ball, (4 McLean, 180,) the learned judge instructed the jury that 'if they should find that the defendant had infringed the plaintiff's pat- ent by using substantially the same device, as ornamental, on the same part of the stove, they would, of course, find the defendant guilty. To infringe a patent right, it is not necessary that the thing patented should be adopted in every particular; but if, as in the present case, the design and figures were substantially adopted by the de- fendants, they have infringed the plaintiff's right. If they adopt the same principle, the defendants are guilty. "' The principle of a machine is that combination of mechanical powers which produces a certain result. And, in a case like the present, where ornaments are used for a stove, it is an infringement to adopt the de- sign so as to produce substantially the same appear- ance.' "It has been the constant practice to grant patents for designs for fonts of type, for sets of silver plate, for a series of printers' flourishes, and the like. This class of cases has always passed without objection. Two other cases which have arisen within the office deserve notice. The first was for a series of miniature shoulder-straps, with emblems denoting rank, provided with a pin, to be worn under an officer's coat, upon his vest, or as a lady's breastpin. The drawing shows eight of these pins, with emblems of rank, varying from that of second lieutenant to major general, and the specification, de- scribing the brooch for a second lieutenant, goes on to say : * I propose to introduce on some of them the differ- ent ornaments showing the respective ranks of the army 37 434 PROCEDURE IN THE PATENT OFFICE. from a major generalship to a second lieutenancy. (See figures 2, 3, 4, 5, 6, 7, 8.') " The second case was that o an application for a mon- ogram visiting-card, on which the name was to be in- scribed or printed in the form of a monogram. The applicant filed a drawing, showing a card upon which was a monogram of his own name. In his specification he gives certain rules for forming such monograms, and then says: 'It is manifest that the form of the letters, as well as the letters themselves, can be changed as re- quired by circumstances or the taste of the individual for whom the monogram is designed, and that the gen- eral form and outline of the monogram rnay be varied, and indeed must vary, to be adapted to the particular name it is required to represent.' The claim was for 1 a monogram visiting-card, or visiting-card upon which the name is inscribed or printed in the form of a mono- gram, substantially as herein specified.' This applica- tion was rejected by the examiner and board of exam- iners-in-chief, but was allowed by the Commissioner upon appeal. "It is true that before and since this patent was issued many patents have been refused for what I have called generic designs. One man, having designed a tack-head ornamented with radial lines, was compelled to take put one patent for his tack with six radial lines, and another for the same tack with eight. There are other instances of like character, but /they only serve to show that the practice of the office has not been uniform, and that the true practice is still to be adopted and followed. " I have no hesitation in saying, in view of the prem- ises, that a valid patent may be granted for a new genus DESIGNS. 435 or class of ornaments, as well as for specific ornaments, though I do not doubt that, under the statute, every species, variety, and individual, having distinct charac- teristics, under such a genus, might also he patented, the patent being subordinate and tributary to that which covered the class. " From the nature of this subject-matter there must always be more latitude in the issue of patents for tri- fling changes of form or outline, since it is only neces- sary that such changes should constitute a new design to entitle them to a patent of this class." 274. NEW SHAPES AND CONFIGURATIONS MAY BE PAT- ENTED AS DESIGNS ON ACCOUNT OF THEIR UTILITY, WHEN THAT is OWING TO THEIR FORM. " The second question relates to the element of utility in patents for designs. "Articles have been and are being constantly patented as designs which possess no element of the artistic or ornamental, but are valuable solely because, by a new shape or configuration, they possess more utility than the prior forms of like articles. " Of this character are designs for ax-heads, for reflect- ors, for lamp-shades, for the soles of boots and shoes, which have been heretofore patented as designs; and to this class might be added with great propriety that class of so-called ' mechanical ' patents granted for mere changes of form, such as plowshares, fan-blowers, propeller blades, and others of like character. " When, therefore, my learned predecessor, in Crane's case, added to this number a box so designed as to hold with convenience a set of furs, he did but confirm, and not alter, the practice of the office, so far as it can be gleaned from the patented cases. 436 PROCEDURE IN THE PATENT OFFICE. "I am of opinion that the class of cases named in the act as arising from 'new shape or configuration' in- cludes within it all those new changes of form which involve increase of utility. This I take to be the spirit of the decision in Wooster v. Crane, (2 Fish., 583.) The design was of a reel in the shape of a rhombus. The learned judge says: 'In this case the reel itself, as an article of manufacture, is conceded to be old, and not the subject of a patent. The shape applied to it by the complainant is also an old, well-known mathematical figure. Now, although it does not appear that any per- son ever before applied this particular shape to this par- ticular article, I cannot think that the act quoted above was intended to secure to the complainant an exclusive right to use this well-known figure in the manufacture of reels. The act, although it does not require utility in order to secure the benefit of its provisions, does re- quire that the shape produced shall be the result of industry, effort, genius, or expense, and must also, I think, be held to require that the shape or configuration sought to be secured shall at least be new and original as applied to articles of manufacture. But here the shape is a common one in many articles of manufacture, and its application to a reel cannot fairly be said to be the result of industry, genius, effort, and expense. No advantage whatever is pretended to be derived from the adoption of the form selected by the complainant, except the incidental one of using it as a trade-mark. Its selec- tion can hardly be said to be the result of effort even; it was simply an arbitrary, chance selection of one of many well-known shapes, all equally well adapted to the purpose. To hold that such an application of a common DESIGNS. 437 form can be secured by letters patent would be giving the act of 1861 a construction broader than I am willing to give it.' "It would seem from this language that if there had been 'advantage,' i. e., utility, in the adoption of the form of the rhombus, it would have found more favor in the eyes of the court." 275. NEW MODES OF OPERATION OR CONSTRUCTION CAN- NOT BE MONOPOLIZED UNDER A PATENT FOR A DESIGN. " The third question may be readily disposed of. Modes of operation or construction, principles of action, com- binations to secure novelty or utility of movement, or compositions of matter, can hardly be said to be ' shapes, configurations, or designs;' but where the sole utility of the new device arises from its new shape or configura- tion I think it may fairly be included among the subjects which the act of 1842 was designed to protect." 276. APPLICANT TO ELECT THE TERM OF THE PATENT ON APPLICATION. In the case of Mayo ex parte, (motion,) the Commissioner says: "The applicant makes application for a patent for a design. He pays ten dollars into the treasury, and adds to his petition the following proviso : 'Should the Commissioner be willing to allow a patent on this application, the undersigned wishes to pay into the treasury the further sum of twenty dollars, and have such patent granted for fourteen years, instead of three and a half years.' " Section 11 of the act of March 2, 1861, provides that upon application for a patent for a design, ' the Commis- sioner, on due proceedings had, may grant a patent there- for, as in the case now of application for a patent, for the term of three and one half years, or for the term of seven 37* 438 PROCEDURE IN THE PATENT OFFICE. years, or for the term of fourteen years, as the said ap- plicant may elect in his application: provided that the fee to be paid in such application shall be for the term of three years and six months, ten dollars; for seven years, fifteen dollars; and for fourteen years, thirty dollars.' "This language contemplates an election to be made by the applicant, at the time of his application, of the term for which he desires his patent to issue, and the payment of a fee corresponding to that election. It does not contemplate the contingency of an application for one term and the payment of one fee, and a subsequent election, at the time of issue, of another term and the payment of another fee. The words are, * elect in his application.' The choice is to be made there and not elsewhere or otherwise, and, being made, must be final. "I can see that the practice proposed might be desira- ble, and might result in the granting of design patents for a longer period and the receipt of a larger revenue; but I have no power to alter the plain language of the statute, or to extend the time of election beyond the time of making the application, for any purpose. "In the present case the applicant has paid a fee of ten dollars. His patent, if granted, can issue only for three and a half years." (Commissioners' Decisions, February 23, 1870.) 277. No PROVISION MADE FOR USE AND SALE PRIOR TO APPLICATION. In the case of Stuart and Bridge ex parte, (Commissioners' Decisions, February 23, 1870,) the Commis- sioner says: "The applicants, on November 3, 1868, pat- ented the arrangement of ovens and flue in a cook stove having a peculiar external conformation. On February DESIGNS. 439 5, 1870, they filed an application for a design identical with that shown in their patent of 1868. " Upon this state of facts the examiner asks : 1. Should the application be rejected on the patent? 2. If so, can the patentees reissue in two divisions, one of which shall be for the design ? 3. If so, what fees are required? "Section 11 of the act of March 2, 1861, provides that the new design, &c., shall not be * known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their appli- cation for a patent therefor,' &c. "It will be observed that no provision is made for use or sale of the invention prior to the application, as in the case of other inventions ; and the reason of the distinc- tion is found in the fact, that as designs relate to form and shape only, no time is required for experiment before the application. At all events, the language of the statute is plain. The design must not have been known or used by others prior to the application of the inventor. It is obvious that if the design be described in a prior patent, granted either to himself or others, it is known to others within the meaning of the law. The present application must therefore be rejected upon the former patent." 278. A DESIGN SHOWN IN A PATENT FOR A MECHANICAL INVENTION is LOST. "The second question is, whether the original patent can be surrendered and reissued in two divisions, one of which shall be for the design? "Patents for designs may be granted for three and one half, seven, and fourteen years, at the election of the ap- plicant, made at the time of application. Patents for other inventions are granted for seventeen years. " The patent granted to applicants in November, 1868, 440 PROCEDURE IN THE PATENT OFFICE. was of the latter kind, and was granted for seventeen years. "It is provided by section 13 of the act of 1836 that upon applications for reissue ' it shall be lawful for the Commissioner, &c., to cause a new patent to be issued to the said inventor for the same invention for the residue of the period, then unexpired, for which the original pat- ent was granted.' "This language is explicit, and it is obvious that under this section any reissue of this patent, or any division of such reissue, must be granted 'for the residue of the period then unexpired for which the original patent was granted;' that is, for the residue of seventeen years. But no patent for a design can be granted for seventeen years, or for the residue of an unexpired period of seventeen years; and this fact seems decisive of the question. "The result is, that an invention of a design, if shown in a patent for a mechanical invention, is lost, and can- not be included in a subsequent application and patent for a design." 279. NUMBER OF CLAIMS ALLOWED. In the case ofShep- pard ex parte, (motion,) the Commissioner says: "This case is referred to me by the primary examiner, upon the following statement: 'In this application for patent for design of Isaac A. Sheppard, filed February 24, 1870, are found two claims: one for the central figure, (which constitutes the gist of the case,) when cast on and form- ing a part of a stove plate, and the other for the central figure and surrounding ornaments. " ' In dealing with this case, the examiner finds that it has not been the usual practice of the office to allow more than one claim in an application for a patent fora design. DESIGNS. 441 The reasons generally given to sustain this course of ac- tion are, that a design is a complete and individual device or ornament, and as such must be exact and perfect in every form, line, or configuration, the slightest devia- tion from what is represented operating to make a new design. "'The law evidently makes no such inflexible rule of official practice. In the Bartholomew case (Commis- sioners' Decisions, 1869, p. Ill) it is observed that a cer- tain reasonable and proper latitude is given in judging what does and what does not breathe the spirit of the invention in any given case, and that mere colorable variation is to receive no more countenance or favor in an application for a patent for a design than it would in an application for a mechanical device. '"But while the examiner is impressed with these views, he is unwilling in his first decisions, in applica- tions of the present character, to overrule, so far as falls within his jurisdiction, the generally settled custom and rule of the office in the above particular. He desires, therefore, to refer the whole matter to the personal con- sideration of the Commissioner, as a question of office practice, for his decision or direction. "'L. DEANE, Examiner.' "I agree with the examiner that there is no provision in, or fair construction of, the act relating to letters patent for designs, which forbids the union of two or more claims or clauses of claim in a single patent. I am at a loss to know upon what ground such a construction can be asserted or maintained. If the design contains features which are new, singly and in combination, no reason is known to me why they may not be so claimed. 442 PROCEDURE IN THE PATENT OFFICE. " But the practice of the office has not been so uniformly adverse to the granting of double claims as seems to have been supposed. On the contrary, letters patent for de- signs containing more than one claim were granted in the years 1855, 1857, 1858, 1859, 1860, -and 1862, and doubtless in the succeeding years, if time had permitted a further examination. Arnoug these special reference is made to the patent granted to Apollos Richmond, in 1859, which contains one claim for the configuration of a stove plate, and another for the ornament upon the same plate; and to the patent granted to Isaac B. Wood- ruff, in 1862, for a design for a clock case, which con- tains one claim for the configuration of the whole case, and another for a gilt frame forming a subordinate part of the same whole. " These cases fully justify the claims presented in the present application, which may, therefore, be allowed, both upon reason and precedent." (Commissioners' De- cisions, March 8, 1870.) 280. AN APPLICATION FOR PATENT FOR MECHANICAL INVENTION CANNOT BE CHANGED INTO AN APPLICATION FOR A DESIGN. Applicant filed, in September, 1868, an application for a patent for " a new and useful improve- ment in a rolled hollow hexagonal column." He claimed, in terms, " a hollow column of uniform thickness, hex- agonal in both its interior and exterior, and rolled out from a solid or welded pile or billet of iron or steel, with a hexagonal opening through it, substantially as described and represented." Becoming satisfied that he could not succeed in obtaining a patent for his supposed invention in this shape, he now proposes to change his application into one for a patent for a design. He asks to be allowed DESIGNS. 443 to deposit a further fee of $15, making $30 in all. He avers that it was by inadvertence and mistake that the fee of $30 was not paid originally, and the application made, in terms, for a patent for a design, tinder 11 of the act of March 2, 1861. He presents an amended specification, in which the invention is described as a " new and original shape or configuration of steel or wrought iron rolled pipes, tubes, or hollow shafts or pil- lars ;" and is claimed in the following terms : " As a new and original shape or configuration of tubes, pipes, hol- low shafts, or hollow pillars or posts of steel, or wrought or malleable iron, a machine-rolled tube or pipe or hol- low shaft or hollow post, of uniform and symmetrical hexagonal perimeter, area, and cross section, in every part of its length, and having no projections upon its surface or beyond its angles. J> In support of his prayer he urges that the question whether his patent be for an invention or design is merely one of classification, which is within the discretion of the Commissioner, and he in- sists that this is a case in which that discretion ought to be exercised in his favor. Prior to the act of August 29, 1842, there was no law which permitted the granting of letters patent for " shapes," " configurations," " designs," " ornaments," " patterns," and the like, which did not involve some mechanical principle, or amount to a new machine or manufacture within the meaning of the patent law. By that act and the act of March 2, 1861, these sub- jects were made patentable, not by enlarging the scope of the existing patent laws by the addition of new sub- jects of invention, but by independent legislation, pro- viding for a new class of patents, granted to a different 444 PROCEDURE IN THE PATENT OFFICE. class of persons, for a different class of subjects, for dif- ferent periods of time, and upon the payment of differ- ent fees. It is not a matter of discretion with the Commissioner whether the subject of an application be a machine, or a design for a manufacture; a manufacture, or a new and original shape or configuration of an article of manu- facture; a composition of matter, or a composition in alto or basso-relievo ; an art, or a pattern, print, or pic- ture. It is a matter of law, in which a mistake is fatal. These subjects of invention or contrivance are in truth as distinct from each other as either is from a copy- right. The applicant treats this matter as if it were simply a matter of mistake as to the term for which he should ha*ve applied for letters patent ; but in truth the error, if error there were, was in the character of the applica- tion itself. He applied for a patent for a new product, paying the fee for an examination, and paying for a pat- ent for seventeen years. He described, not a design for a manufacture, but a manufacture. He claimed, not a new shape, but a new thing. I know of no discretion or authority vested in the Commissioner to turn this application into an application for a design, nor any pro- cess by which it can be accomplished short of a new application. A single illustration will make thu suffi- ciently obvious. An alien may apply for letters patent for an invention, but not for a design, unless he has re- sided in this country for more than one year and made oath of his intention to become a citizen. It would be impossible, therefore, to turn the application of the alien for an invention into an application for a design, how- DESIGNS. 445 ever clearly the subject-matter might place it in the latter class of subjects. I regard the eleventh section of the act of 1861 as dis- tinct from the remainder of the law as if it formed the subject of a separate statute, and the codifiers of the pat- ent laws evidently so regarded it, for they collected all the matter relating to design patents in a separate chap- ter. (Boot v. Ball, 4 McLean, 180.) 281. FORM OF PETITION FOR LETTERS PATENT FOR A DESIGN. To the Commissioner of Patents: Your petitioner prays that letters patent may be granted to him for the new and original design set forth in the annexed specification. THOMAS TASTY. 282. FORM OF SPECIFICATION FOR A DESIGN. I, Thomas Tasty, of New Haven, in the county of New Haven, and State of Connecticut, have invented and produced a new and original de- sign for carpets, of which the following is a specification : The nature of my design is fully represented in the accompanying pho- tographic illustration, to which reference is made : Claim. I claim as my invention the design for a carpet, as shown. THOMAS TASTY. Witness: OLIVE OGLE, SAMUEL MERRIWEATHEB. 283. FORM OF OATH. STATE OF NEW YORK, 1 County of Albany. J Thomas Tasty, the above-named petitioner, being duly sworn, (or affirm- ed,) deposes and says, that he verily believes himself to be the original and first inventor of the design for carpets described in the foregoing specifi- cation ; and that he does not know and does not believe that the same was ever before known or used; and that he is a citizen of the United States. THOMAS TASTY. Sworn to and subscribed before me this 13th day of March, 1869. SIMON SHALLOW, Justice of the Peaec. 38 446 PROCEDURE IN THE PATENT OFFICE. XVII. Trade-Marks. SEO. 284. Act of July 8, 1870. 285. Object and effect of the law. 286. Patent Office requirements. 287. Duplicate copies. SEC. 288. Record of assignment. 289. Form of petition and oath. 290. Form of transfer. 291. Form of certificate. 284. ACT OF JULY 8, 1870. For the provisions of the act of July 8, 1870, concerning trade-marks, see Part I, p. 36. 285. OBJECT AND EFFECT OF THE LAW. In the case of King ex par te, (Commissioners' Decisions, September 19, 1870,) the Commissioner says : "Applicant tenders $30 and asks for a patent for fourteen years for a ' design for a trade- mark.' He says: ' The distinctive features of my design consist of my portrait, placed in the center lengthwise, and surmounted by the British coat-of-arms, about which is arranged, in a semicircular form, the words " King's Sauce Royal." Upon the left of my portrait is a shield or tablet, containing the words " Shake well the bottle before using," and upon the opposite side a similar tablet, con- taining the words "None genuine without my portrait and signature, W. King," said signature being a fac simile of my handwriting. Although the above-named tablets are used, they are not considered as essential to the design, and may be omitted if desired. "'Having thus fully set forth the nature and merits of my invention, what I claim as new, is: The hereinbe- fore described design, substantially as shown.' " Prior to the act of July 8, 1870, no protection was afforded by statute for trade-marks eo nomine. They were left to the protection of the common law, except where the design was of such character as to fall properly within TRADE-MARKS. 447 the subjects patentable as designs. In such case they have been patented, usually with the addition of the words 'for a trade-mark.' These words were, however, merely descriptive, and carried with them no guaranty as to the use of the trade-mark. In other words, if goods had been sold with such a design affixed, the only pen- alty that could have been recovered, under the statute, would have been for the infringement of the design as an ornament, and no recovery could have been had of the damage resulting to the injury to the trade of the manufacturer by a violation of his trade-mark in the sale of the articles to which it was attached. ^ " It was to remedy this evil, and to give promptly, by statute, that protection to trade-marks which the common law tardily afforded, that Congress passed so much of the act of July 8, 1870, as relates to this subject. By the provisions of that act, a trade-mark, whether old or new, may be registered in the Patent Office by its owner, and by the payment of $25 protection is afforded for thirty years. As this protection is more ample, and covers more than double the time for less money, it is difficult to see why applicant, or any one else, should now seek a design patent for a trade-mark. The folly of the appli- cation does not, however, relieve me from the necessity of deciding upon its legality. " The only clause of the designs act under which trade- marks can possibly fall is that which enumerates ' any new and original impression, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture.' This manifestly refers to the external ornamentation of man- ufactured articles, and it requires, first, a specific article 448 PROCEDURE IN THE PATENT OFFICE. of manufacture to be ornamented; and, second, an im- pression, ornament, pattern, print, or picture to be placed upon it. It was only by a forced construction of this clause that designs which were to be used only as trade- marks or selling labels could be included within it. "But the subject is relieved of all difficulty by 77 of the late statute. It is there enacted ' that any per- son, corporation, &c., who are entitled to the exclusive use of any lawful trade-mark, or who intended to adopt and use any trade-mark, for exclusive use within the United States, may obtain 'protection for such law/id trade- mark by complying with the following provisions.' This provision, by prescribing the statutory mode of obtain- ing protection for a trade-mark, excludes all other modes not expressly provided for, and operates as a construc- tion of 71, in excluding trade-marks from the list of subjects intended to be protected as designs. "In accordance with this opinion, the present applica- tion, and all others which are intended to cover trade- marks, or ' designs for trade-marks,' must be presented under the provisions of 77-84 of the act of July 8, 1870, and not otherwise." 286. PATENT OFFICE REQUIREMENTS. As to who are entitled to trade-marks, requirements of the law, &c., see Part I, page 36, et seq. Under the provisions of 77 and 81 of the act author- izing the Commissioner to make rules, &c., the follow- ing requirements, in addition to those prescribed by law, have been established: 287. DUPLICATE COPIES. Five duplicate copies of the proposed trade-mark, in addition to the one accompany- ing the statement and oath of applicant, must be depes- TRADE-MARKS. 449 ited with each application. Certified copies will be fur- nished at the usual rates. (Patent Office Rules, July, 1870.) 288. ASSIGNMENT OF TRADE-MARK TO BE RECORDED SIXTY DAYS AFTER ITS EXECUTION. The right to the use of any trade-mark is assignable by any instrument of writing, and such assignment must be recorded in the Patent Office within sixty days after its execution. The fees will be the same as are prescribed for recording assignments of patents. (/6.) 289. FORM OF PETITION AND OATH. To the Commissioner of Patents: Your petitioners, Martin Scott and Henry Newman, partners under the firm name of Scott & Newman, residing in Peacedale, Washington county, Rhode Island, and engaged in the manufacture and sale of cotton sheet- ings at said Peacedale, represent that they have used for ten years last past, are now using, and have the right to use, a trade-mark for said sheetings, of which the design shown in the annexed drawing is a true copy ; which trade-mark has heen printed in blue ink upon the out- side of each piece of sheetings. They further represent that no other per- son, firm, or corporation has a right to the use of said trade-mark, or of one substantially the same. They therefore pray that said trade-mark may be registered and recorded in the Patent Office according to law, they having paid into the treasury of the United States the sum of twenty- five dollars, and otherwise complied with the regulations in such case made and provided. MARTIN SCOTT. HENRT NEWMAH. STATE OF RHODE ISLAND, j County of Washington, ) Martin Scott and Henry Newman, being sworn, make oath and say, that the foregoing statement by them subscribed is true in substance and in fact, as they verily believe. MARTIN SCOTT. HENRY NEWMAN. Sworu to and subscribed before me this 15th day of July, 1870. JOHN JUBAT, Justice of the Peace. 38* 450 PROCEDURE IN THE PATENT OFFICE. 290. FORM OF TRANSFER OF A TRADE-MARK. We, Jotham Mills and Abner Clark, of Keokuk, Iowa, partners under the firm name of Mills & Clark, in consideration of five hundred dollars, to us paid by Jarvis Case, of the same place, do hereby sell, assign, and transfer to the said Jarvis Case and his assigns the exclusive right to use, in the manufacture and sale of stoves, a certain trade-mark for stoves deposited by us in the United States Patent Office, and recorded therein July 15, 1870; the same to be held, enjoyed, and used by the said Jarvis Case as fully and entirely as the same would have been held and enjoyed by us if this grant had not been made. Witness our hands this 20th day of July, 1870. JOTHAM MILLS. ABNEB CLABK. 291. FORM OF CERTIFICATE. UNITED STATES PATENT OFFICE. To all whom it may concern : THIS is TO CERTIFY, That did, on the day of , 187-, deposit in the United States Patent Office for registration a certain trade-mark for , whereof a copy is hereto annexed; that filed therewith the annexed statement; and, having paid into the Treasury of the United States the sum of twenty-five dollars, and otherwise com- plied with the acts of Congress in such case made and provided, the said trade-mark has been duly registered and recorded in the said Patent Office, and will remain in force for thirty years from the day of , one thousand eight hundred and seventy. In testimony whereof I have caused the seal of the Patent Office to be hereunto affixed this day of , 187-, and of the independence of the United States the ninety . , [SEAL.] Commissioner of Patents. XVIII. Interference. SEC. 292. Daty of Commissioner. 293. Patent to issue to prior inventor. 294. Definition of an interference. 295. When declared. 296. When one of the parties has obtained a patent. SEC. 297. Each party to file statement under oath. 298. Adjudication by default. 299. When case is closed and may be set for hearing. 300. Appeal in interference cases. INTERFERENCE. 451 SEC. 301. Notice of declaration of inter- ference. 302. Notice by publication. 303. First applicant presumed to be the prior inventor. 304. Assignment of time for taking testimony. 305. Postponement of hearing. 306. Affidavit required. 307. Examiner in charge of inter- ferences. 308. When an interference will be dissolved. 309. Primary examiner cannot dis- solve an interference. SEC. 310. Two years' public use. 311. When a second interference will be declared. 312. Withdrawal of claims which do not interfere. 313. No amendments allowed. 314. Withdrawal after decision. 315. Interference may be opened to admit new parties. 316. Abandonment in interference cases. 317. Classes into which cases of interference may be divid- ed. 292. DUTY OF COMMISSIONER. Whenever an applica- tion is made for a patent which, in the opinion of the Commissioner, would interfere with any pending appli- cation, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of in- vention. (Act of July 8, 1870, 42.) 293. PATENT TO ISSUE TO PRIOR INVENTOR UNLESS AP- PEAL is TAKEN. The Commissioner may issue a patent to the party who shall be adjudged the prior inventor, unless the adverse party shall appeal from the decision of the primary examiner, or of the board of examiners- in-chief, as the case may be, within some time, not less than twenty days, as the Commissioner shall prescribe. (J6.) 294. DEFINITION OF AN "INTERFERENCE." An "inter- ference" is an interlocutory proceeding for the purpose 452 PROCEDURE IN THE PATENT OFFICE. of determining which of two or more persons, each or either of whom claims to be the first inventor of a given device or combination, really made the invention first. (Patent Office Bides, July, 1870.) 295. WHEN AN INTERFERENCE WILL BE DECLARED. An interference will be declared in the following cases: First. "When the parties have pending applications before the ofiice at the same time, both or all the parties claiming to be the inventor of the same thing. Second. When an applicant, having been rejected upon the prior unexpired patent or the prior application of another, claims to have made the invention before the prior applicant or patentee. Third. When an invention is claimed in a renewed application which is shown or claimed in an application filed or unexpired patent granted prior to the filing of such renewed application. Fourth. When an applicant for a reissue embraces in his amended specification any new or additional descrip- tion of his invention, or enlarges his claim, or makes a new one, and thereby includes therein anything which has been claimed in any patent granted subsequent to the date of his original application, as the invention of another person, an interference will be declared between the application and any such unexpired patent or pend- ing application. If the reissue application claims only what was granted in the original patent, it may be put into interference with any pending application in which the same thing is shown ; provided the later applicant claims to be the prior inventor and is not barred a patent by public use or abandonment. Fifth. When an application is found to conflict with INTERFERENCE. 453 a caveat, the caveator is allowed a period of three months within which to present an application, when an inter- ference may be declared. Sixth. The office reserves to itself the right, when two applications are pending at the same time, in one of which a device may be described which is claimed in the other, to declare an interference to determine with whom is priority of invention, without reference to the order in which such applications may have been filed. (Ib.) The interference must be in respect to patentable matters, (Sain v. Morse, MS. Appeal Cases, 1849,) and there can be no interference between applications unless there is a substantial identity of the things for which a patent is sought; if there are material and substantial differences between the two things, there can be no iden- tity and no interference, (Tyson v. Rankin, ib., 1853;) and where two separate applications for patents for im- provements upon the same thing were generally similar in form, and in some respects nearly identical in con- struction, but the principle, object, and design of each was unlike that of the other, and the end to be attained or effect intended was wholly different, it was held, not- withstanding their general similarity, that the two inven- tions were not substantially tlte same, and that there was no interference between them. (O'Reilly v. Smith, ib., 1853.) A patentable improvement is not an interfer- ence. (Bain v. Morse, ib., 1849.) An interference may be declared between two applica- tions, if the same invention is substantially described in each of them, though the claim in one case may not be as broad as the specification. The oath as to invention 454 PROCEDURE IN THE PATENT OFFICE. is to be construed as extending to all described in the schedule, (King v. Gedney, ib., 1856;) and where a broad claim covers what is embraced in a special or restricted claim made by another party, a conflict exists which must be determined by an interference. (Sherwood v. Searls, Commissioners' Decisions, 1869, p. 112.) A subsequent application which claims a device which is shown in a prior patent interferes with that patent whether the device be or be not claimed in the patent. In the first place, if the applicant succeeds, it follows, that the patentee can no longer use the whole of that which he has described in his patent; and, in the second, if the applicant makes claim to a device which is shown in an earlier patent, the office can grant no patent to him; for, prima facie, he is not the first, but the second inventor. He must prove priority, and the necessity for proof creates the necessity for the interference. ( Wright ex parte, Commissioners' Decisions, June 13, 1870.) An interference is properly declared where no claim can be made upon the device of the party first in the office which would not be embraced in that of the other partv. (Bachelor v. Porter, Commissioners' Decisions, 1869, p. 64.) 296. WHERE ONE OF THE PARTIES HAS OBTAINED A PAT- ENT. The fact that one of the parties has already obtained a patent will not prevent an interference; for, although the Commissioner has no power to cancel a patent already issued, he may, if he finds that another person was the prior inventor, give him also a patent, and thus place them on an equal footing before the courts and the pub- lic. (Patent Office Rules, July, 1870.) Thus, in the matter of the interference between the INTERFERENCE. 455 application of J. C. Stoddard and the patent of II. A. Streeter for the same invention, the Commissioner says : " If these two cases were before me in the form of applications, I should have no hesitation in refusing a patent to both. Unfortunately, Streeter has received a patent; and the question now before me is, whether one should now be granted to Stoddard. " Aside from the substantial existence of the inventions claimed by Streeter in the prior patents of Stoddard, I find Stoddard to be the prior inventor of the precise 'arrangements' claimed by Streeter. He made a ma- chine in 1866, which was seen by several persons, and the existence of which is fully proved. He swears to the making of another in 1868, at Dayton, Ohio, and this is not contradicted. He preferred, in his earlier patent, to locate the rake in front of the axle, because he thought that when the farmers fully understood it they would rather use it in that way, and he wished it to be fully tried. The other form was made, explained to others, and held in reserve. I have already held that it involved no invention to pass from the one to the other. Never- theless, having issued a patent to Streeter, it is probably no more than just to issue a like grant to Stoddard, the real inventor of both forms, in order that he may be able to present to the public a grant as complete in the form of its claims as that which has inadvertently been made to his competitor. The decision of the board of examiners- in-chief, awarding priority of invention to Stoddard, is affirmed." (Commissioners' Decisions, September 7, 1870.) The case of Luther 0. Crocker ex porte presents inter- esting questions for consideration. Mr. Justice Fisher says: "In April, 1867, a patent was granted tcr said 456 PROCEDURE IN THE PATENT OFFICE. Luther 0. Crocker and one George T. Field, they having made an application therefor as joint inventors. After this patent had been issued, it appears that these patentees, upon consultation with their counsel, discov- ered that they were really not joint inventors of the de- vice, but that Luther 0. Crocker alone was the inventor. How this misapprehension occurred does not appear; but that Crocker was and is the sole inventor seems to be admitted by Field and also by the Patent Office. That the mistake honestly occurred does not seem to be doubted, as there is no suggestion from the office that there was any fraud practiced by either Field or Crocker. I there- fore assume that the mistake, in supposing that they were joint inventors, was honestly made. Finding upon con- sultation with their counsel that they were laboring under this misapprehension, they set about correcting the error. To this end Crocker filed an application in his own name only for a patent for the same invention, making the oath of course that he was the sole inventor. Soon after fil- ing this separate application he also filed an affidavit made by Field, setting forth the fact that the former patent had been erroneously issued to them as joint inventors, and that, since the explanation given them by their counselor, he was satisfied that Crocker alone was the sole inventor, and renouncing any claim as inventor himself, or as a joint inventor with Crocker. "The question then arose in the office as to how the error could be cured, and Crocker receive a patent as sole inventor. All agreed that an error had been made, and it seems also to be conceded that it was made not through any fault in the office, but through the inno- cent ignorance of Crocker and Field. The applicant INTERFERENCE. 457 demanded a new original patent to be issued to him. solely, without any offer on his own behalf or of Crocker and Field to surrender the joint patent for cancellation. But the examiner in charge decided that the 'remedy is not the issue of a new patent, but that the party in ami- cable error should assign all his interest, real or apparent, to the applicant, who could then properly control a reis- sue ;' and he postponed further action in the case, in order, I suppose, that such assignment might be made, and a reissue granted to Crocker only. " To this Crocker, the applicant, objected, and insisted that he was entitled to be put in interference with the pat- ent issued to Crocker and Field jointly, and himself de- clared the prior and sole inventor, on the sworn acknowl- edgments of himself and Field. The examiner, after a consideration of the matter, adhered to his original de- cision, and held that 'the applicant is the party in error, and cannot, through such error, force the office into the dilemma of either deliberately granting two patents for the same identical invention, or going through the form of a " quasi interference" ' The applicant still pressing for his new patent, the examiner finally rejected the appli- cation on the 3d of April, 1868, in order, as he says, 'to put the case in process to become subject to appeal upon the question at issue.' Accordingly Crocker made his appeal to the board of examiners-in-chief. This board decided that ' the patent issued to Crocker and Field is void ab initio, because it was issued to two parties as joint inventors, whereas Crocker was the sole inventor ; and that thus, being void ab initio, an applicant for a patent cannot be put in interference with a patent which does not exist, and, for the same reason, there can be no party 39 458 PKOCEDURE IN THE PATENT OFFICE. to assign his interest, for he can have no interest to assign in a void patent.' From their reasoning it would seem that the applicant, Crocker, had no remedy either by a reissue or new original sole patent. Having pronounced the joint patent void, and treating it as no patent, we could hardly suppose it would support a reissue, any more than it would support an interference, which they pronounce impossible, because, as they say, the joint patent had actually no existence, and therefore there is no patent for Crocker's application to be put in inter- ference with. They strangely enough, however, agree with the examiner, that the application should be re- jected, though they 'do not concur with him in the reasons which he has given for his decision or the rem- edy he suggests,' to wit, the assignment by Crocker and Field of the joint patent to Crocker, the surrender of the same by Crocker, and a reissue upon that surrender. They suggest, however, that the remedy of the applicant is in the surrender of the invalid patent, ' and in a reissue or granting of a new patent to the inventor (Crocker) for the residue of the period unexpired.' So that, although they say they do not concur in the remedy suggested by the examiner, they really do concur in it. The examiner suggests a reissue as the remedy ; the board suggests the same remedy. They only, in fact, differ with him as to how the reissue is to be had. The examiner says it mav / */ be had by an assignment, made to Crocker alone from Crocker and Field, and then a surrender by Crocker. The board say no assignment can be made, because, the joint patent being void ab initio, there is nothing to assign. But it would seem that if there is nothing to assign, there can also be nothing to surrender ; and, be- INTERFERENCE. 459 sides, if, while the old patent is not assignable, it may still be surrenderable, it would seem that Crocker alone cannot surrender it. The surrender would have to be made by both Crocker and Field; and, then, what if Field were unwilling to surrender ? How could Crocker compel him? " The board suggests the remedy of reissue according to the provisions of section 13 of the act of 1836, which they quote in their opinion, and which I quote literally, except that, supposing it applies to cases of joint pat- entees or inventors, I substitute the plural for the sin- gular number, in order to show that the provisions of that section could not possibly have been enacted to meet cases of the kind now under consideration. With such alterations the section would read thus: '"When- ever any patent which has been heretofore granted, k or which shall hereafter be granted, shall be inoperative or invalid by reason of a defective or insufficient descrip- tion or specification, or by reason of the patentee(s) claiming in his (their) specification as his (their) own in- vention more than he (they) had or should have a right to claim as new, if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the Commissioner, upon the surrender to him of such patent and the payment of a further duty of $30, to cause a new patent to be issued to the said inventor(s),' &c. Now, under this section, as I interpret it, if this old joint patent be surrendered, the reissued patent based upon it must issue to the same or 'said' patentees (or to the assignee of the same patentees) who took out the original patent upon which the reissue is based, so that a reissue 460 PROCEDURE IN THE PATENT OFFICE. would be no more valid or operative than the original, the place of which it is to take. In my judgment, this thirteenth section was not intended to correct a mistake as to the parties who take out a patent under the honest but erroneous impression that they are joint inventors. It is simply intended to correct errors which might be made in the claims of the party taking out a patent by reason of the insufficient description of the machine or thing invented, and not to correct the errors of parties who have mistakenly supposed themselves to be joint inventors. It was intended to enable an inventor who had, on the one hand, claimed too much, by describing his claim too broadly, or, on the other, by failing to de- scribe it broadly enough to cover all his invention, to cure these errors, and not to cure errors as to the iden- tity of the inventor. I am, therefore, clear in my con- viction that reissue is not the remedy which the patent laws provide for the error committed in this case. " The question then recurs, can the mistake be cured by the mode suggested by the applicant ? Can a new original patent be granted to him upon a declaration of interfer- ence between his application and the patent heretofore granted to Crocker and Field ? I think this is the proper and only remedy, except, perhaps, by proceedingin equity under the sixteenth section of the act of July 4, 1836. "It is true that Commissioner Foote, in his opinion af- firming the decision of the board of examiners-in-chief, says that 'the Patent Office has no authority to issue two patents for the same invention a joint patent to two parties and a separate one to one of them.' Let us see, first, whether such authority does not exist to issue two patents for the same invention. There can be no doubt INTERFERENCE. 461 that such authority does exist. Let us suppose that John Doe applies for and receives a patent for an improved ticket-cutter, having invented it six months before he makes his application. Richard Roe, having invented the same thing precisely, six months before John Doe in- vented it, comes in with his application within two years from the time of the making his invention. The office would not hesitate at once to declare an interference be- tween the patentee and the applicant; and if, upon the hearing, it should appear that Roe was the prior inventor, and was without laches, he also would receive his patent for the same invention, notwithstanding Doe had received one before. " The whole law on this subject of interference looks to nothing other than granting two patents for the same in- vention. It is done every month almost, if not every week; and neither party is concluded by the action of the court in granting a patent to the other, but each is free to fight out his claim of priority before the courts. But the trouble of granting two patents in this case, a joint and separate one, seems to be two-fold : First, that Luther O. Crocker was one of the persons to whom the joint patent was issued, and therefore he cannot be put in interference with himself and another as joint pat- entees; and, second, that because Field had admitted away his joint inventorship before the declaration of in- terference, therefore the interference, if declared, would merely be a quasi interference. There are no difficulties at all. If another than Crocker had made an applica- tion for the patent he now seeks, a declaration of inter- ference would have been made at oiice. Then why not make it between Crocker and Field and Crocker? One 39* 462 PROCEDURE IN THE PATENT OFFICE. of two parties may sue the firm of which he is a memher, so he may be put in interference with his firm. Nor does the fact that Field swears away the claim of priority of Field and Crocker, in advance of the declaration of inter- ference, present any reason why the interference should not be declared and tried. It simply saves time, expense, and trouble in the trial of cases, and that is all. "But Commissioner Fisher, in his reply to the reasons of appeal in this case, after referring to the opinion of Commissioner Foote, adds the following, viz: " ' 1. This appellant, having heretofore made oath that the invention was joint, cannot now be permitted to allege that it was a sole invention. To permit this would offer a premium to perjury. (See Child v. Adams, 1 Fish., 189.) " ' 2. The remedy, if an honest error existed and any remedy could be afforded, should have been preceded by a surrender of the joint patent for cancellation. That this may be and has been done, see Batten v. Taggart, (17 How., 84.') " The very high respect which I entertain for the opin- ion of the present Commissioner on any question of pat- ent law led me at first to suppose that if any remedy does exist at all for the error in this case, it could not be in the issuing of a new original patent; and, being clear in my conviction that it is not the case for a reissue, as pro- vided for in section 13 of the act of 1836, I suppose the applicant was altogether remediless, except through a bill in equity; and yet it seemed to be hardly in con- sonance with the spirit of our patent system that a mi&- take thus honestly made, as this was admitted to be, must go entirely without relief from the office. But on look- INTERFERENCE. 463 ing into the case of Child v. Adams, I find that it does not sustain the position which it is cited to sustain. The syllabus of that case, as made by the reporter, and very accurately made too, embraces the following seven prop- ositions only, viz : " 1. Section 13 of the act of July 4, 1836, by defining the condition under which the power it confers shall be examined, necessarily excludes it in all others, except, perhaps, the correction of clerical errors. " 2. Where a statute defines the extent of power given to one who acts ministerially, the courts cannot extend it, or validate acts done without or beyond its authority. " 3. The Commissioner has no power to confirm a pat- ent obtained by false suggestion, either by pardoning the offense or excusing it on the plea of innocent ignorance. " 4. If an alien, either through ignorance or intention, falsely represents himself as a citizen in order to obtain a patent, the patent so procured is inoperative and in- valid to vest a title in the alleged invention. " 5. The oath of citizenship and other duties required by section 6 of the act of July 4, 1836, are conditions- precedent, without which the Commissioner has no au- thority to grant a patent ; and a defendant may allege the neglect or fraudulent omission to fulfill these condi- tions, or any of these, as a sufficient defense. " 6. M, an alien, made oath that he was a citizen of the United States, and obtained a patent. Eight years after- wards he surrendered his patent, made oath that he was a citizen of France, paid the balance of the fee due the Patent Office, and obtained a reissue, which recited (among other things) that said original letters were grant- ed to him upon his belief that he was a citizen of the 464 PROCEDURE IN THE PATENT OFFICE. United States, which belief arose from ignorance of the laws of the United States : Held, that the original and reissued patents were both invalid, the first because of false suggestions; the second from want of power in the Commissioner to grant it. " 7. Held, also, that the Commissioner could not grant a new original patent eight years after the invention had been in public use. " Now, the court did not decide in this case that the Frenchman, having once sworn himself to be a citizen of the United -States, under an honest misapprehension, could not be permitted to allege himself to be a French citizen. On the contrary, it may be fairly inferred, from the opinion delivered in the case, that he might have corrected his honest mistake if he had made timely ap- plication to do so in the right way. Judge Grier ex- pressly declares that Mini, (the Frenchman,) with the consent of his assignees, had the right to surrender his original patent to be canceled, ' and when the invention or discovery had not been in public use more than two years the Commissioner might probably grant him a new original patent on an original application,' &c. The learned judge flatly decides that the Commissioner has no power under the 13th section of the act of July 4, 1836, to grant a new patent to one who has obtained it by false suggestion, which shall retroact by way of con- firmation of the original or stand in its place; but says that he probably has the power to grant a new original patent in such a case, provided the invention or discovery had not been in public use more than two years before filing an original application, truly stating the citizenship of the inventor. So that, in fact, the case of Child v. INTERFERENCE. 465 Adams, so far from militating against the right of the applicant in this case to have a new original patent on his new original sole application, actualty favors it. The second proposition of Commissioner Fisher also fails of support from the case of Batten v. Taggert, viz, that the remedy, if any, could only be found in a surrender of the joint patent for cancellation. The case cited only shows that such a thing had been done, but it does not appear that it was ever decided to be properly and legally done, as it legally was never challenged. It certainly does not decide that a surrender must necessarily precede the granting of a new original patent. " As Judge Grier, in the case of Child v. Adams, sug- gests that the court might probably in Mini's case have granted a new original patent on an original application, let us see if it is not more than probable that he had the power to do so. If we refer to the language of the 8th section of the act of 1836, and consider its provisions, we find that that probability rises to a certainty. That sec- tion declares that * whenever an application shall be made for a patent which, in the opinion of the Commissioner, would interfere with any other patent for which an ap- plication may be pending, or with an unexpired patent which shall have been granted, it shall be the duty of the Commissioner to give notice thereof to such appli- cants or patentees, as the case may be; and if either shall be dissatisfied with the decision of the Commissioner on the question of priority of right or invention, on a hearing thereof, he may appeal,' &c. In this case, it is conceded that Crocker has made an original application for a patent, which interferes and is identical with the patent issued to Crocker and Field. This being so, it was 466 PROCEDURE IN THE PATENT OFFICE. the duty of the Commissioner at once to declare the in- terference, and to decide the question of priority of inven- tion ; and, upon the showing of both Field and Crocker, it appearing that Crocker was the sole inventor, it was his duty, in the absence of the testimony to the contrary, to decide priority in favor of Crocker, and to grant him a new original patent. Had Crocker neglected to make his original application for the sole patent for more than two years, his case would have been in that respect anal- ogous to the case of the Frenchman, Mini, and he would not have been entitled to his new original patent, simply because the invention would have been too long in pub- lic use to entitle him to it, as was Mini's case. As I have before said, the fact that Crocker, individually and solely, would be a contesting party against himself and Field jointly would not in the least alter the case ; nor would the fact that Field had, under oath, disclaimed all claim of inventorship be any reason for not declaring the in- terference. The joint patent and the sole application were conflicting claims, and required absolutely an inter- ference to be declared. The duty of the Commissioner in such a case seems, by the terms of the 8th section of the act of 1836, to be made imperative, and, being so, it was error to have refused a declaration of interference and rejected the application for a new original patent to Crocker, as the sole inventor. "For these reasons the decision of the Commissioner of Patents is reversed." (MS. Appeal Cases, 1869.) 297. EACH PARTY TO FILE STATEMENT UNDER OATH. Upon the declaration of an interference each party will be required, before any time is set for the taking of testi- mony, to file a statement under oath, giving the date and INTERFERENCE. 467 a detailed history of the invention, showing the success- ive experiments, steps of development, extent and char- acter of use, and forms of embodiment. Such statement shall not be open to inspection by the other party until both are filed, or until the time for filing both has expired. (Patent Office Rules, July, 1870.) 298. ADJUDICATION BY DEFAULT. In default of such filing by either party, or if the statement of either fails to overcome the prima facie case made by the respective dates of application, or if it shows that the invention has been abandoned, or that it has been in public use for more than two years prior to the application of affiant, the other party shall be entitled to an adjudication by default upon the case as it stands upon the record. (Ib.) 299. WHEN THE CASE is CLOSED AND MAY BE SET FOR HEARING. Where no testimony is taken by the appli- cant, upon whom rests the burden of proof, or where tes- timony has been taken by such applicant, but not by the other party, during the time assigned to the latter, the case will be considered closed, and may, at the expiration of the time assigned to such parties respectively, be set down for hearing at any time not less than ten days thereafter. (76.) 300. APPEAL IN INTERFERENCE CASES. In cases of in- terference parties have the same remedies by appeal as other applicants to the examiners-in-chief and to the Commissioner, but no appeal lies in such cases from the decision of the Commissioner. Appeals in interference cases should be accompanied with a brief statement of the reasons thereof. (Ib.} 801. NOTICE OF DECLARATION OF INTERFERENCE. When an interference is declared notice will be given to both 468 PROCEDURE IN THE PATENT OFFICE. parties or to their attorneys. When one of the parties has filed a caveat, or already received a patent, duplicate notices will be sent to the patentee or caveator and to his attorney of record. (Ib.) 302. NOTICE BY PUBLICATION. "Where one of the par- ties resides abroad and has no known agent in the United States, in addition to the notice sent by mail, notice may be given by publication in a newspaper of general circu- lation in the city of Washington once in a week for three successive weeks. (Ib.} 303. FIRST APPLICANT PRESUMED TO BE THE PRIOR IN- VENTOR. In cases of interference the party who first filed so much of his application for a patent as illustrates his invention will be deemed the first inventor in the ab- sence of all proof to the contrary. (Ib.) In the case of Smith v. Burlew the Commissioner says: " The opinion of the board of examiners-in-chief announ- ces, as a rule of practice, the following extraordinary proposition: 'Heretofore, this board, in cases of inter- ference between an applicant and a patentee, have leaned to the side of the applicant where there has been doubt as to who was the prior inventor, and have been disposed to grant the prayer of the applicant, on the ground that this is expedient in order that it may be determined in a court of law, if the parties so choose, to which of said parties is rightly issued letters-patent.' " It is an old maxim of the law that prior tempore,potior jure, and when a party has made his application and ob- tained his patent, it would seem that his priority in point of time should entitle him to some consideration as against later and less diligent competitors. Accordingly, by the rules of this office, following the ordinary rules of INTERFERENCE. evidence, the burden of proof is put upon the last appli- cant to overcome by evidence the presumption of pri- ority arising, from the earlier application. The effect of this rule is to declare that, as the case stands at the decla- ration of interference, it must be decided in favor of the earlier applicant if no proof be offered ; or, if the testi- mony is equally balanced, it must be decided in his favor; or, if it be simply doubtful, he is entitled to the benefit of the doubt. To give the benefit of the doubt to the last applicant is simply to presume that the first appli- cant is not the first inventor, which would neither be in accordance with law nor common sense. The logical re- sult of such a doctrine would be, in every case where there are two applicants, neither of whom has a patent, but where the proofs raise a doubt, that a patent should issue to both, in order that the courts may decide between them. "The truth is, that the Patent Office is made by law the tribunal where in the first instance the question of priority is to be determined, and where it is to .be de- termined upon testimony taken and applied according to the ordinary rules of evidence. If there is error, a rem- edy is given by 16, act 1836, (vide supra, p. 26,) by bill in equity, to either party, whether a patent be issued to him or not. This provision is ample, and takes away all necessity and excuse for foisting upon the country, in the face of the ordinary legal presumptions, two pat- ents for the same invention, both of which may be used as means of speculations upon, or annoyance to, the in- nocent public. " The decision of the board of examiners-in-chief is reversed, and the priority is awarded to Smith." (Com- missioners' Decisions, May 16, 1870.) 40 470 PROCEDURE IN THE PATENT OFFICE. As two patents ought not to be granted for the same thing, if it can be avoided, the benefit of a doubt should be given to the patentee on an interference with an ap- plicant. (Wheeler and Chenoweth, Commissioners' Decis- ions, 1869, p. 3.) 304. ASSIGNMENT OF TIME FOR TAKING TESTIMONY. A time will be assigned in which the other party shall com- plete his direct testimony; and a further time in which the adverse party shall complete the testimony on his side ; and a still further time in which both parties may take rebutting testimony, but shall take no other. If there are more than two parties, the time for taking testi- mony shall be so arranged, if practicable, that each shall have a like opportunity in his turn, each being held to go forward and prove his case against those who filed their applications before him. (Patent Office Rules, July, 1870.) 305. POSTPONEMENT OF HEARING. There is nothing in the laws relating to the Patent Office, or in the rules adopted by the Commissioner, to prevent him from post- poning the hearing of an interference, if, in his opinion, the justice of the case should require it, and especially for the correcting of an irregularity in matters of form. (Smith v.Ftickenger 9 MS. Appeal Cases, D. a, 1843.) Applications for postponement are within the discre- tion of the Commissioner, and it will be presumed that his discretion has been soundly exercised. (O'Reilly v. Smith, ib., 1853.) Where, therefore, depositions in an interference had been correctly taken, but had not been transmitted in the form required, so that they could be considered by the Commissioner, held that the Commissioner had a INTERFERENCE. 471 right to postpone the hearing, to allow the parties to cure the informality, if he should deem such action necessary to further the ends of justice. (/&.) 306. AFFIDAVIT REQUIRED. If either party wishes the time for taking his testimony, or for the hearing, post- poned, he must make application for such postponement, and must show sufficient reason for it by affidavit filed before the time previously appointed has elapsed, if practicable; and must also furnish his opponent with copies of his affidavits and with reasonable notice of the time of hearing his application. (Patent Office Rules, July, 1870.) Affidavits on which to move for an enlargement of the time to take testimony in an interference, on the ground that the moving party could not obtain the attendance of his witnesses at the time appointed to take their examination, should state the names, competency, and materiality of the witnesses to be examined. (O'Reilly v. Smith, MS. Appeal Cases, D. C., 1853.) 307. EXAMINER IN CHARGE OF INTERFERENCES. Cases of interference will, when the issue is made up and the testimony taken, be tried before the examiner in charge of interferences. (Patent Office Rules, July, 1870.) 308. WHEN AN INTERFERENCE WILL BE DISSOLVED. If an interference has been properly declared, it will not be dissolved without judgment of priority, founded upon the testimony or the written concession of one of the parties, unless the invention is found not to be patent- able, or to have been abandoned, or that it has been in public use for more than two years prior to the applica- tion of either party, or that no interference in fact exists. (76.) 472 PROCEDURE IN THE PATENT OFFICE. In the case of Duthie v. Casilear the Commissioner says : " This is a motion to dissolve an interference. Several reasons are urged by the attorney for the motion, of which only one will be considered. " It appears that Duthie's patent was twice rejected by the examiner and once by the examiners-in-chief. Subsequently, through oversight or change of opinion, the examiner allowed a patent to Casilear. He after- ward took up the application of Duthie, and, without amendment or order from the Commissioner, recon- sidered it, and placed it in interference with the patent of Casilear. This course was irregular. After the de- cision of the board the case was removed from the juris- diction of the examiner, and he could not reconsider the case without an order from the Commissioner. It is somewhat difficult to see, also, if the inventions inter- fere, how a patent was granted to Casilear, a subsequent applicant. At all events, the irregularity in the recon- sideration of Duthie's case, and in the declaration of in- terference, are such that the motion to dissolve the inter- ference must prevail. The interference is dissolved." (Commissioners' Decisions, September 15, 1870.) 309. PRIMARY EXAMINER CANNOT DISSOLVE AN INTER- FERENCE. In the case of Traut v. Diston the Commis- sioner says: "In this case the primary examiner, upon the filing of an application of one of the Trauts as sole inventor, made an order dissolving the above inter- ference. This order was irregular. After the declara- tion of an interference it cannot be dissolved except by the order of the examiner in charge of interferences, or the Commissioner, or by the board of examiners-in-chief or Commissioner on appeal. If facts come to the notice INTERFERENCE. 473 of the primary examiner which render it proper that the interference should be dissolved, or if new cases are filed which he thinks should be included in the interference, he can only act through the examiner in charge of inter- ferences, to whom application must be made. "The order made by the primary examiner is set aside and the case remanded to the examiner of interferences." (Commissioners' Decisions, September 15, 1870.) 310. Two YEARS' PUBLIC USE, (vide supra, p. 264.) In the case of Young v. Hoard the Commissioner says: " This is a motion to dissolve an interference, upon the ground that the invention is shown to have been in pub- lic use for more than two years prior to the application of Young, which was filed April 8, 1870. " Affidavits have been filed on both sides, from which it appears that the patent with which Young claims an interference was, in fact, granted to John "W. Hoard, R. A. Dennison, and Young himself, as assignees of Hoard ; that, in company with his copatentees, he sold this patent to the Union Eyelet Company, who proceeded to manu- facture under it in May, 1867, and have continued the manufacture until the present time. These facts are not denied by Young, but he asserts that, while the use of the invention by the Union Eyelet Company was begun and continued with his knowledge and consent in May, 1867, and for about six months thereafter, after that time he did not assent to such use, although he admits that it went on in spite of him. " The admitted facts are fatal to Young's application. It is not necessary that the use should have been a con- tinuing use, extending over a longer period than two years prior to the application, in order to render the 40* 474 PROCEDURE IN THE PATENT OFFICE. patent void. It is sufficient if it be a public use or sale, at any time and for any length of time, occurring more than two years before the filing of the application. (See Hunt v. Howe, Book of Appeals, vol. 2, p. 380 ; Sanders v. Logan, 2 Fisher, 167.) " The motion is sustained, the interference will be dis- solved, and the application of Young will be rejected, because the invention claimed by applicant was in public use for more than two years prior to his application." (Commissioners' Decisions, June 13, 1870.) 311. WHEN A SECOND INTERFERENCE WILL BE DECLARED. A second interference is only a rehearing of the same case. (Earns v. Richards, MS. Appeal Cases, D. C., 1859.) A second interference will not be declared upon a new application filed by either party during the pendency of an interference or after judgment, nor will a rehearing be granted, unless it be shown to the satisfaction of the Commissioner (in person) that the party desiring a new interference or rehearing has new and material testimony, which he could not have procured in time for the hear- ing, or unless other sufficient reasons be shown satis- factory to the Commissioner. (Rules of the Patent Office, July, 1870.) In the case of Abraham v. Fletcher, the Acting Commis- sioner (Hodges) says : " The parties have heretofore been opposed to one another in a previous interference respect- ing the same invention, as well as two other parties, S. M. Clark and M. T. Gosnell. In the course of the con- troversy Abraham became satisfied that he was anticipated by Clark, and took no testimony, supposing he could not recover against him. The case was ultimately decided in favor of Fletcher, upon the ground that the device, which INTERFERENCE. 475 Clark proved that he had originated before Fletcher had made the one in controversy, was not identical with it, but was a different invention. When Abraham learned this, he also ascertained, upon inquiry, that Fletcher's proof did not carry the discovery as far back as he claims that he himself had made it. He thereupon filed a sec- ond application. Upon his petition, and upon his show- ing the circumstances, it was ordered by the Acting Com- missioner that the issue of Fletcher's patent should be suspended, and that the present interference should be declared between Abraham's second application and the previous one filed by Fletcher. Fletcher now moves, by his counsel, that this interference should be dissolved, and, secondly, that the order to suspend the issuing of Fletcher's patent should be rescinded. " It is urged that the interference should be dissolved, in the first place, upon the ground that the decision in the former interference has settled the question as between these parties ; that the question of priority has, in other words, become res adjudicata; and that Abraham is estop- ped by it from setting up any claims as a prior inventor against Fletcher. We apprehend that no such effect can be given to these decisions of the office. It is expressly provided in the 12th section of the act of 1836 that they shall not preclude the parties from contesting the validity of a patent in trials at law. There is still less reason for attributing such force to them in proceedings before the office, while the parties are yet before it. Even at law, the decision of a judicial tribunal is not regarded in that light until the term has elapsed and the case has become merged in a judgment beyond the control of the court. And so long as no patent has issued the whole matter is 476 PROCEDURE IN THE PATENT OFFICE. still pending in the office, and there is nothing which can be regarded as res adjudicata, so far as to limit it in the exercise of its usual jurisdiction. "It should be further remarked, that the doctrine con- tended for, if sustained, would render all second inter- ferences between the same parties respecting the same invention utterly useless and vain. There would be no question left open between them, but their rights would be established by the result of the first interference be- yond the power of the office to modify. Yet, from the earliest organization of the office, it has been the settled practice to declare such second interferences, and therein, when proper, to reverse the decision in the former one. And numerous patents have been granted to the success- ful parties upon such second interferences, notwithstand- ing patents had been granted to their adversaries upon the previous trials. "The 8th section of the act of 1836 has, in fact,-always been regarded as imperatively requiring that an interfer- ence should be declared whenever a pending application is found to be in conflict with another or with any unex- pired patent. It has never been supposed that such an interference could be denied because the question to be raised had already been tried and settled by the office. "When it was found that this was open to abuse, and that parties persisted in filing repeated conflicting applications, in orderto delay the issuing of a patentto their successful opponents, the rule was adopted that upon the determina- tion of an interference a patent should issue to the party re- covering. If, then, the other filed a new application and demanded an interference, it should be granted between that application and the patent which had been issued. INTERFERENCE. 477 "No more inducement usually remains, therefore, for filing such second application any more than for com- mencing causeless suits at law. This rule, however, is modified whenever the failing party shows cause why he should have a rehearing, just as courts grant new trials after a verdict. In such cases the issuing of the patent to the winning party is ordered to be suspended, and the interference is declared between his original application and the new application filed by the other party. " Such were the circumstances of the present case. No question was made upon the hearing as to the reasonable- ness of the ground upon which the orders were made. The motion is refused." (Commissioners' Decisions, 1869, p. 50.) In the case of Diston v. Emerson, Acting Commissioner Duncan says : " This ia a motion for the reopening of the interference, which is now before the Commissioner on appeal from the decision of the examiners-in-chief in favor of the applicant. " The patentee has taken no testimony, while the appli- cant appears to have carried his invention back to a date prior to the filing of the application upon which the pat- ent was granted. "Patentee now moves for a rehearing, on the ground that since the closing of testimony new evidence has been discovered which he deems material to the issue, said evidence being to the effect that applicant saw the invention going into public use, but neglected to assert his right thereto by warning the public to desist from the practice of that to which he himself was laying claim, and, further, that applicant denounced the invention as visionary, worthless, and impracticable ; the apparent 478 PROCEDURE IN THE PATENT OFFICE. object of this evidence being to show that at best appli- cant only regarded the invention as experimental and problematic in his hands until after it was reduced to practice and introduced into public use by another, or, if it is to be regarded as perfected by him, that the neglect on his part was such as to constitute a forfeiture of his right to a patent. " Standing alone, these alleged facts would not estab- lish either of the conclusions named; the authorities cited do not go to this extent ; yet from an addendum to the opinion of the examiuers-in-chief it appears that there is already in the case evidence of laches on the part of applicant. Said opinion is signed by but two members of the board, and one of these appended a postscript in these words : ' I subscribe this with hesitation, having doubts whether Diston can be said to have exercised reasonable diligence in adapting and perfecting the invention.' " Under these circumstances it seems desirable to have the further evidence, now offered, bearing upon the ques- tion of laches. Taken in connection with the facts already proven, it may have a significance that would not attach to it if considered separately. " It will be to the advantage of both parties doubtless that the question should be exhaustively investigated before the Patent Office, rather than slighted here, to become, of necessity, a bone of contention before the courts. "Applicant can hardly complain of the delay that a reopening of the case will occasion, as the record shows that he rested nearly two years after his rejection, upon reference to the patent which he is now seeking to de- INTERFERENCE. 479 stroy, before taking action to determine the question of priority; the parties owning the patent being allowed to go on, meanwhile, developing a large manufacturing enterprise by a liberal expenditure of capital, all un- warned and unconscious of impending danger. " The motion is granted and the case will be reopened." (Commissioners' Decisions, August 25, 1870.) In the case of Covel v. Maxim the Commissioner says : " This is a motion on the part of E. Hall Covel to reopen this case for another hearing and for further testimony. "The facts are, in substance, as follows: The inter- ference was declared February 2, 1869. Covel, having made oath to his invention sixteen days later than the other applicants, was ruled to take his testimony first, and to close it on the second Monday in March. The day of hearing was fixed for the fifth Monday of March, 1869. " During the five weeks allotted to him Covel took no testimony whatever ; but when it had elapsed he applied to the examiner and to the Commissioner for further time. Upon this application the time was extended to April 26, and the day of hearing was postponed to the second Monday of May. Covel still took no testimony, but allowed the case to go entirely by default. The ex- aminer, therefore, on the day of hearing, had no choice but to decide against him, as his opponents had made the prior oath, and as he, upon whom the burden of proof lay, had taken no testimony whatever. "As soon as he was notified of this decision, Mr. Covel appeared before the Commissioner, with an application for a rehearing and for further time. Upon hearing his statements, in the presence of the examiner, the Com- 480 PROCEDURE IN THE PATENT OFFICE. missioner declined to grant him the three months for which he asked upon his unsupported demand, but sug- gested that he should present affidavits showing the ne- cessity for such an extension. At his own request he was allowed a few days to visit New York upon that errand. This was about June 1. "Nothing further having been heard from Mr. Covel, on July 9 the examiner addressed a letter to him, notify- ing him that his affidavits, if he intended to produce any, must be filed within twenty -days, as further delay was unreasonable. This notice he alleges he did not receive until after the twenty days had expired ; and upon this point, and it is the only one, he is sustained by the affi- davits of others. "Nevertheless he had the twenty days, and when he did hear"6f the notice he came again to Washington, and obtained from the Acting Commissioner an extension to August 21, thus giving him over twenty days more. " This time passed like all the former allowances. Not an affidavit was or has been filed showing what testimony he proposed to take, why he needed so long a time to take it, or disclosing any of the facts required upon every motion to open a default or grant a rehearing. " Finally, on the 7th of September, seventeen days after the last allowance of time, and four months after the decision, his motion was finally denied, and the patent was ordered to issue to Maxim and Radley. "As usual, Mr. Covel now appears again with a motion for more time. Up to the present moment he has taken no proof, has offered no affidavit except his own to show what proof he desires to offer, or that he has proof to offer; and his own affidavits give no details, but are con- INTERFERENCE. 481 fined to statements of the most general character. The only evidence of vitality that he has shown has been ex- hibited when the office its patience outraged beyond limit, and mindful of the fact that the other applicants have some rights in the premises has notified him that it could delay no longer. It is difficult to believe that such persistent waste of time was not intended simply to delay the issue of a patent to those whom applicant already believed to be the prior inventors. He declares by affidavit that he had no such intention, and he is en- titled to the benefit of the doubt; but he by no means makes a case which ought to induce the Commissioner for a moment to delay or suspend the issue of a patent to those who have so long ago been adjudged.entitled to receive it, and against whose claim not an iota of testi- mony has yet been offered after these mouths of delay. "The notice of the decision of the examiner fixed a limit of appeal, which has long since passed. This might, in a proper case, have been enlarged, upon motion to the Commissioner. Failing to do this, the right of Maxim and Radley to a patent ought not now to be disturbed, especially as, in the absence of testimony, the correct- ness of the decision is beyond dispute." (Commissioners' Decisions, 1869, p. 78.) 312. WITHDRAWAL OF CLAIMS WHICH DO NOT INTER- FERE. When an application is adjudged to interfere with a part only of another pending application, the interfer- ing parties will be permitted to see or obtain copies of so much only of the specifications as refers to the inter- fering claims. And either party may, if he so elect, with- draw from his application the claims adjudged not to in- terfere, and file a new application therefor: Provided, 41 482 PROCEDURE IN THE PATENT OFFICE. That the claims so withdrawn cover inventions which do not involve the devices in interference : And provided also, That the devices in interference are eliminated from the new application. In such case the latter will be exam- ined without reference to the interference from which it was withdrawn. (Patent Office Rules, July, 1870.) 313. JSTo AMENDMENTS RECEIVED DURING INTERFER- ENCE. No amendments will be received during the pen- dency of an interference, except as provided in the fore- going section. (Ib.} 314. WITHDRAWAL AND REFILING OF APPLICATION AFTER DECISION. The Commissioner has authority to permit one of two competing applicants for a patent for a simi- lar invention to withdraw his application, after decision upon an interference, and refile his application, and to declare a second interference between such last applica- tion and the competing one. ( Wade v. Matthews, 5 Opin- ions Attorneys General, 224.) But the permission to withdraw an application in such a case will be granted or not, as the Commissioner may be satisfied. The matter is in his discretion, to be exer- cised when in his opinion the spirit of the law demands it. (Ib., 224.) 315. INTERFERENCE MAY BE OPENED TO ADMIT NEW PAR- TIES. There is nothing in the statute limiting the power of the Commissioner to a single interference, and the reason for the declaration of a subsequent interference, if any should appear befoie the issue of the patent, is as strong as for the first one. When, therefore, an inter- ference was declared between the application of J G W, assignee of A & F, and a patent previously issued to J M S, in which case, upon appeal to him, the chief justice INTERFERENCE. ' 483 declared in favor of J G "W, and ordered a patent to is- sue to him, and after the return of the order, but before the issue of the patent, another interference was declared between the same application and the patent issued to A B W, and the chief justice, upon appeal, held this last in- terference wrongfully declared, and peremptorily ordered the issue of the patent in pursuance of his first order, which was done, it was held, that the chief justice erred, and .that the patent issued in accordance with his last order was without authority and void, and should be enjoined. (Potter v. Dixon, 2 Fish., 381.) After closing the time for taking testimony in an in- terference the Commissioner may admit another party to the interference and open the further taking of testi- mony. (Laidleyv. James, MS. Appeal Cases, 1860.) 316. ABANDONMENT IN INTERFERENCE CASES. In the case of Rowley v. Mason, (MS. Appeal Cases, I). C., 1869,) Mr. Justice Fisher says : " In this case two issues are presented : one of fact, the other of law. The question of fact, is whether Mason or Rowley was really the prior inventor of the device in controversy; and the question of law is whether, supposing Mason to have been the first discoverer in point of fact, he has not forfeited his right to a patent by reason of having slept for years on his invention. " Upon a careful consideration of all the testimony in the case, I have come to the conclusion, though with much hesitation, that Mason invented the device claimed in this case in the year 1859, and reduced his invention to a fixed, positive, and practical form, and is therefore the first inventor. "I now proceed to the inquiry whether he has or has 484 PROCEDURE IN THE PATENT OFFICE. not forfeited his right to a patent as against a subse- quent, independent inventor, for there is no question in my mind that Rowley is such. "Mason perfected his invention in 1859, but failed to file his application until January, 1868, a period of about nine years thus intervening between the time of the perfection of his invention and the making of his appli- cation for letters patent. "In the meantime, to wit, during the year 1866, Row- ley, without any knowledge, so far as appears to us, of the invention having been made by Mason, perfects the identical device which Mason had perfected seven years previously, and files his application November 26, 1867. Rowley seems not to have lost any time unnecessarily in making his claim, and undoubtedly would have been entitled to his patent if the device had never been in- vented by Mason. So, if Mason had not perfected his invention, Rowley would undoubtedly have been entitled to a patent over him. No principle of patent law is bet- ter settled than that which was declared by Justice Story in the case of Woodcock v. Parker, (1 Story, 590,) wherein he says : ' In a race of diligence between two independent inventors, he who first reduces his inven- tion to a fixed, positive, and practical form would seem to be entitled to aright to a patent therefor.' This prin- ciple is founded in sound policy. The great object of the patent law is the promotion of the arts and sciences as rapidly as possible, by means of holding out to in- ventors an exclusive monopoly in their inventions for a limited term, and the principle laid down by Justice Story conforms to the spirit of our "patent system. "Were it otherwise than he decided, inventors would sleep upon INTERFERENCE. 485 their inchoate inventions, and put off their reduction to practical form to a more convenient season ; the result of which would be, in many instances, the loss of useful inventions and improvements which they had begun and might well have perfected, whilst other inventors would be deterred from expending their money and brain-work in perfecting inventions by the apprehension that some more sluggish genius might step in and antici- pate the fruits of their labors at the eleventh hour. The same sound policy seems to me to require that, as be- tween two independent inventors, the one who has per- fected his invention, but chooses to sleep upon it for nine years, or even a less period, and is only aroused from his slumbers by the application of a subsequent inventor for his patent, has no right to complain if that applica- tion should meet with success. It is also well settled that he who has abandoned an invention, even after it has been perfected, and dedicates it to the public, no matter for what reason, the dedication cannot be re- called. (See Ransom v. Mayor of New York, 1 Fish., 252.) "In the case of Adams v. Jones, (1 Fish., 527,) it was decided that a man might justly be treated as having abandoned his application for a patent if, by reason of laches on his part, his application was not prosecuted with reasonable diligence. In White v. Allen, (2 Fish., 440,) it was decided that when an invention is volunta- rily broken up and laid aside, without any controlling impediment in the way of an application for a patent, and no other in the mean time invents the same thing, without any knowledge of that which is so suspended, and reduces the same to practice, applies for and takes out his patent, and introduces the patented invention to 41* 486 PKOCEDURE IN THE PATENT OFFICE. public use, he must be regarded as the original and first inventor of the improvement. "These decisions are all founded upon the same sound policy to which I have alluded. It is true that the law looks with indulgence upon delays which arise from the circumstances of parties who may make an invention, but it is equally true that when the invention, although perfected, has been intentionally abandoned or neglected, or the parties show by their acts that they have not done all that they can do, the law declares that they shall not be protected. (See Sayles v. Chicago and Northwestern Railroad Company, 2 Fish., 523.) "In this case I fail to see any reason why Mason could not have prosecuted his claim for a patent as well in 1860 or 1861 as after Rowley had filed his application. He has certainly been guilty of laches in so long sleep- ing upon his invention, and I can account for his neglect in no other way than upon the ground that he has aban- doned it. It would certainly be bad policy if, after the space of nine years from the perfection of an invention, during all which time it was kept a secret in the brain of the inventor, he might come into the Patent Office and defeat the claim of a subsequent and independent inventor, who, honestly believing himself to have been the first discoverer of the improvement, had invested his whole estate in an honest effort to give to the public the benefit of his labors. If one might lie by quietly for nine years, he might do so for forty. Such a rule of law, we may readily see, so far from tending to encour- age the promotion of the arts and sciences, would tend greatly to its discouragement, because no man would feel safe against the dishonest practices of the marauder INTERFERENCE. 487 or pirate, who would not find it difficult to procure, for a reward, witnesses enough to swear up his priority, and fix a period of discovery which the honest inventor would find it hard enough to disprove. "It is admitted by Mason that if the patent for the device in question had been obtained by Rowley, his (Mason's) claim for a patent could not properly have been allowed. But I can see no reason for the distinc- tion between the case when the patent has been obtained by the subsequent and independent inventor, and a case of a pending application of the latter. What is the rea- son why the obtaining of a patent by a subsequent inventor should operate to prevent the issuing of a pat- ent to the original inventor sleeping for years on his discovery? It certainly cannot be because of the obtain- ing of the patent per se, for a patent may issue to one, and if afterwards application is made by another, who can show himself to be the prior inventor, and not in fault in making his application after the first patent had been issued, the obtaining of the first patent would be no impediment to his obtaining a second. There must be therefore some other reason, and I find that reason sound in policy which dictates that inventors should not be allowed to play the part of the dog in the manger, by putting aside their inventions and keeping them a secret from the world for a long period of years, and only bringing them to light when they have learned that some other inventor has made the identical discovery, and is about to benefit himself and the world by making it public. "To my mind there can be no stronger evidence of an intention to abandon an invention than breaking it 488 PROCEDURE IN THE PATENT OFFICE. in pieces or throwing it aside, and thus neglecting it for a period of nine years. " For these reasons the decision of the Commissioner of Patents is reversed, arid it is ordered that a patent be issued to S. B. Rowley for the invention in controversy." In/ the case of Erbe v. Hill the Commissioner says: "Hill applied for a patent in April, 1862, and obtained it in the following July. Erbe applied for a patent in October, 1864, more than two years after the issue of the patent to Hill. The issue of letters patent is a pub- lic act, of which Erbe was bound to take notice; and therefore, in contemplation of law, he knew of the issue of Hill's patent, and delayed his application for more than two years afterward. He now proves his own in- vention to have taken place in December, 1860, but offers no excuse for his protracted delay in applying for a patent. " If there be such a thing as a race of diligence be- tween two inventors, Erbe has long ago been distanced; if there be such a thing as laches, he has been guilty of it. If these reasons were not fatal to his claim, it is suf- ficient to say that his case is not distinguishable, on prin- ciple, from that of Rowley v. Mason, decided by Mr. Jus- tice Fisher in May last, and, upon the authority of that case, his application must be denied. "The decision of the board of examiners-in-chief is affirmed." (Commissioners' Decisions, 1869, p. 29.) The decision of the Commissioner in the case of Erbe v. Hill was affirmed by Mr. Justice Fisher. The learned judge says: "Erbe seems to have completed his inven- tion in December, 1860, and then to have slept upon it until 1864, nearly four years. Meanwhile Hill, independ- INTERFERENCE. 489 ently, perfects the same invention in the early part of the year 1862, and immediately offers it to the public by applying for letters patent, which were granted. More than two years after Hill had taken out his patent Erbe awakes from his slumbers and claims priority of inven- tion. It is too late. It is against the spirit of our patent system, and would be subversive of its policy, if men are allowed to wait for years after others independent , though subsequent inventors have taken out letters patent, and then, finding those letters patent to be valuable, to estab- lish priority, after having slept so long with their inven- tions buried to the woTld. The cases of Rowley v. Mason and Carlion and Merrill v. Aiwood, lately decided by me, are directly in point.'' (Erbe v. Hill, MS. Appeal Cases, D. C., 1869.) It would appear from the decisions of Mr. Justice Fisher, in the cases of Rowley v. Mason and Erbe v. Hill, above cited, that if an applicant, with no sufficient im- pediment in the way, delays to apply for two years after a patent for his invention has issued to another, he for- feits his title. Where there has not been a public use, and there is no proof of abandonment in fact, it should not be presumed against the first applicant on account of mere delay in making an application. ( Woerd v. Bacon, Commissioners' Decisions, 1869, p. 16.) Affirmed by Mr. Justice Fisher. (MS. Appeal Cases, D. C., 1869.) Three and a half years' delay in applying for a patent, after another person has obtained one for tfee same in- vention, cannot be excused by sickness, if the applicant has been attending mean while to other business. ( Wheeler v. Chenoweth Merrill, Commissioners' Decisions, 1869, p. 490 PROCEDURE IN THE PATENT OFFICE. 43.) Affirmed by Mr. Justice Fisher. (MS. Appeal Cases, D. C., 1869.) An inventor who made a drawing of his invention, but took no further steps for six years, when he filed his ap- plication, cannot prevail against his competitor, who had, in the mean time, devised it and obtained a patent. ( Wood v. Crowell, Commissioners' Decisions, 1869, p. 107.) In the case of Merrill v. Atwood, a lamp burner, em- bodying the device in controversy, was held to be an abandoned experiment, it having been prepared to test another invention, and after being used several evenings laid aside for years, until the interference was declared. ( Commissioners' Decisions, 1869, p. 6, affirmed, MS. Appeal Cases, D. C., 1869.) In the case of Mason ex parte, MS. Appeal Cases, D. C., 1870, the following question was submitted: "Whether the proposition in regard to laches of the applicant, John L. Mason, was intended to apply to the case of an ex parle application with the same effect as when the rights of an adverse claimant were likely to be affected by such laches?" In deciding this question, Mr. Justice Fisher says: "In reply to the second question, I have to say, that the case before me being that of adverse claimants, the proposition in regard to laches had reference and was intended to apply to such cases only, and not to the case of an ex parte application. The view which I enter- tain on the subject of laches is simply this: that the in- ventor who conceals his invention, or fails to take the steps necessary to secure his patent therefor, does so at the risk of being postponed in his claim by the corning in of a subsequent independent inventor, who is diligent in giv- ing the world the benefit of his invention, just as he INTERFERENCE. 491 takes the risks of losing the benefits of his invention by consenting to or allowing its public sale or use for the time fixed in the act of Congress as a bar against him. If he conceals his invention for any length of time, no matter how long, and it does not get into public use or on sale for more than two years by his consent or allow- ance, and it is not subsequently invented by another, who applies before him, and there is reasonable grounds to believe that he did not abandon it, I do not suppose that lapse of time per se would be cause for refusing his appli- cation for a patent." 317. CLASSES INTO WHICH CASES OF INTERFERENCE MAY BE DIVIDED. Cases of interference may be naturally divided into two leading classes. The first comprises those in which the applicants are both original and inde- pendent inventors, and the only question left for decision is, which was the first inventor ? The parties, in this class of cases, may be, and usually are, widely separated; they have no connection whatever with each other. The co- incidence of invention is accidental, or rather results from the fact that the new improvement is one which is demanded by the state of arts, and one which many men are seeking, at the same time, to discover or develop. The question of priority in such cases is usually one of easy solution. It is to be determined by ascertaining which of the parties first reduced the invention to a prac- ticable form, either by a drawing, sufficient of itself to enable an artisan to make the thing invented, or by a sketch, accompanied by written description, or by model, or full-sized machine. In such cases, mere conversations, as proof of invention, however explicit in detail, should not be accepted, unless such conversations consisted of 492 PROCEDURE IN THE PATENT OFFICE. directions to workmen to enable them to construct a ma- chine which was actually built at the time and from such directions. The second class of interference comprises those cases in which two men have been more or less connected in the work of invention; where the relation of partner, or employer and employee, or friend or fellow-workman, has, iii some form, existed; where the invention, if it be the act of both, takes place at or about the same time; and where the real question is not so much one of priority, but of origin ality; where, in short, it is charged or inferred that one of the parties is claiming that which he has stolen from the other. This class may be again subdi- vided into three: First, where the parties are fellow- townsmen or workmen, or so situated that either might have known of the movements of the other; second, where one party is in the general employment of the other, and in the course of his work has hit upon some improvement in the tools or processes with which he works; third, where the one has been specially employed by the other to assist in developing or embodying the very invention in controversy. The cases which fall within the second class are by far the most difficult. The testi- mony is usually contradictory, and the parties, surrounded by a troop of partisans, clerks, or workmen, appear, and, like the seamen of opposing vessels in a collision case, swear directly in each other's faces. Each is at pains to deny every fact, material and immaterial, asserted by the other, until the judge is compelled to grope painfully through a mass of contradictory evidence to find some fact, as a basis for a decision, which has escaped the fury of the conflict. There may be some presumptions which INTERFERENCE. 493 will render it possible to approximate to the truth. It may be said, in general, that in cases falling under the first subdivision, the evidence necessary to establish pri- ority should be substantially the same as in cases of the first class, to wit, that he is the first inventor who has first reduced the invention to practice. As to the second and third subdivisions, it may be safely asserted that the pre- sumption is that the workman is the inventor in the for- mer case, and that the employer is in the latter. When workmen are emploj*edin large establishments, it is a natural and common mistake for employers to sup- pose that they are entitled to the brain-work as well as the hand-work of their employees; that if a valuable in- vention is made, as in some measure it is the product of their capital and of the mind of their servant, they have acquired such a title to it as to be able to consider them- selves the inventors. This is especially the ease when the emplo}"er has conversed with the workmen during the progress of the work, or has exhibited any interest in its successful completion. They confound the supply of material with the supply of ideas, and sometimes confi- dently claim to be the inventors of mechanism which they would find it difficult to describe and impossible to ope- rate. But where a man has conceived an idea and given to it more or less development, and employs a mere work- man to put it into shape, it is obvious that much confusion is likely to follow, proportioned to the mechanical skill of the workman and the lack of it in the projector. So many suggestions and hints may be furnished by the workman, that at last he ceases to remember the parent- age of the underlying idea, and fancies that the whole 42 494 PROCEDURE IN THE PATENT OFFICE. machine is the product of his own invention. It must be rare, however, in such cases, that the labors of the me- chanic or model-maker can raise him to a higher rank than that of joint inventor with him who has the original conception, while, in the great majority of cases, the safer rule is undoubtedly that adopted by the Supreme Court of the United States in the late case of Agawam Woolen Company v. Jordan, (7 Wall., 583,) where it is said : " "When a person has discovered an improved principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that em- ployment, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are, in general, to be regarded as the prop- erty of the party who discovered the original improved principle, and may be embodied in his patent as a part of his invention." (Foster v. Foiule, Commissioners' Decis- ions, 1869, p. 35.) XIX. Affidavits and Depositions. SEC. 318. Commissioner may establish rules. 319. Before whom taken. 320. Clerk to issue subpena. 321. Penalty for refusing to appear and testify. 322. Rules of the Patent Office. 323. Notice. 324. Certified copy of caveat. 325. Evidence to be sealed, &c. 326. Ex parte testimony. SEC. 327. Notice of objection. 328. Force and effect of rules. 329. Service of notice for taking tes- timony. 330. Object and requisites of notice. 331. How testimony is to be taken. 332. Magistrate's certificate. 333. Formal objections. 334. Access to testimony ; copies. 335. Cannot be taken before inter- ested parties. AFFIDAVITS AND DEPOSITIONS. 495 SEC. 336. Testimony received by agree- ment of parties. 337. Testimony taken on former in- SEC. 339. Postponement. 340. Form of notice of taking tes- timony. terference. i 341. Form of deposition. 338. Assignment of time. I 342. Form of certificate. 318. COMMISSIONER MAY ESTABLISH RULES FOR TAKING AFFIDAVITS AND DEPOSITIONS. The Commissioner may establish rules for taking affidavits and depositions. (Act of July 8, 1870, 43.) 319. BEFORE WHOM TAKEN. And such affidavits and depositions may be taken before any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where the officer resides. (Ib.} As to what officers are authorized to administer oaths vide supra, p. 318. 320. CLERK TO ISSUE SUBPENA. The clerk of any court of the United States for any district or Territory wherein testimony is to be taken for use in any contested case pending in the Patent Office, shall, upon the appli- cation of any party thereto, or his agent or attorney, issue subpena for any witness residing or being within said district or Territory, commanding him to appear and testify before any officer in said district or Territory, authorized to take depositions and affidavits, at any time and place in the subpeua stated. (/>., 44.) 321. PENALTY FOR REFUSING TO APPEAR AND TESTIFY. If any witness, after being duly served with such sub- pena, shall neglect or refuse to appear, or, after appear- ing, shall refuse to testify, the judge of the court whose clerk issued the subpena may, on proof of such neglect 496 PROCEDUKE IN THE PATENT OFFICE. or refusal, enforce obedience to the process, or punish the disobedience as in other like cases. (Ib.) A person who, after being regularly served with a sub- pena, refuses or neglects to attend the trial, may be pro- ceeded against by attachment. It is presumed also that an action on the case may be maintained against him; but before an attachment will be granted it must appear that the subpena was personally served upon him a rea- sonable time before the trial, and that the fees allowed by law were paid or tendered to him. In the courts of the United States witnesses are enti- tled to the sum of one dollar and fifty cents for each day's attendance at the court, to the further sum of five cents per mile for traveling from their place of abode to the place where the court is holden, and to the like allowance for returning. (Act of February 26, 1853, c. 80.) The sum, therefore, which it is necessary to tender upon serving a subpena is one dollar and fifty cents for one day's attendance, and ten cents for each mile of dis- tance between the residence of the witness and the place where the court is to be held. (Conkliris Treatise, 386.) 322. RULES OF THE PATENT OFFICE FOR TAKING AND TRANSMITTING EVIDENCE. In interference, extension, and other contested cases the following rules have been established for taking and transmitting evidence : 323. NOTICE. First. That, before the deposition of a witness or witnesses be taken by either party, due notice shall be given to the opposke party, as hereinafter pro- vided, of the time and place when and where such depo- sition or depositions will be taken, with the names and residences of the witness or witnesses then and there to be examined, so that the opposite party, either in person AFFIDAVITS AND DEPOSITIONS. 497 or by attorney, shall have full opportunity to cross- examine the witness or witnesses : Provided, That if the opposite party or his counsel be actually present at the taking of testimony, witnesses not named in the notice may be examined, but not otherwise. And such notice shall, with proof of service of the same, be attached to the deposition or depositions, whether the party cross-exam- ine or not ; aud such notice shall be given in sufficient time for the appearance of the opposite party. 324. CERTIFIED COP^ OF CAVEAT. Second. That, when- ever a party relies upon a caveat to establish the date of his invention, a certified copy thereof must be filed in evidence, with due notice to the opposite party, as no notice can be taken by the office of a caveat filed in its secret archives. 325. EVIDENCE TO BE SEALED, &c. Third. That all evidence, &c., shall be sealed up, entitled upon the envel- ope with the name of the case in which it is taken, and addressed to the Commissioner of Patents by the person before whom it shall be taken, and so certified thereon, and forwarded, immediately upon the close of the examination, to the Patent Office. 326. Ex PARTE TESTIMONY. Fourth. In cases of ex- tension, where no opposition is made, ex parte testimony will be received from the applicant; and such testimony as may have been taken by the applicant prior to notice of opposition shall be received, unless taken within thirty days after filing the petition for the extension ; Provided, That immediately upon receiving notice of opposition the applicant shall give notice to the opposing party or parties of the names and residences of the witnesses whose testimony has thus been taken. 42* 498 . PROCEDURE IN THE PATENT OFFICE. 327. NOTICE OF OBJECTION. Fifth. That no evidence touching the matter at issue will he considered upon the day of hearing which shall not have been taken and filed in compliance with these rules: Provided, Notice of the objection has been given, as hereinafter prescribed, (vide infra, 314 :) Provided also, That if either party shall be unable, for good and sufficient reasons, to procure the testimony of a witness or witnesses within the stipulated time, it shall be the duty of said party to give notice of the same to the Commissioner of Patents, accompanied by statements, under oath, of the cause of such inability, and of the names of such witnesses, and of the facts ex- pected to be proved by them, and of the steps which have been taken to procure said testimony, and of the time or times when efforts have been made to procure it; which last-mentioned notice to the Commissioner shall be re- ceived by him previous to the day of hearing aforesaid. (Patent Office Rules, July, 1870.) 328. FORCE AND EFFECT OF PATENT OFFICE RULES. The rules and regulations of the Patent Office, as to taking testimony in cases of interference, are binding upon the parties, and each is entitled to the benefits of them, and, until abrogated, they are as binding upon the Commis- sioner himself as if enacted by the statute itself. (O'Hara v. Haws, MS. Appeal Oases, D. C., 1859.) The power granted to the Patent Office to make rules in respect to the taking of evidence gives no new right to make new rules of evidence, or to make new rules of law, or to divest vested rights by its rules of practice. (Dyson exparte, ib., 1860.) Evidence taken under the rules established by the Commissioner of Patents, under the statute, must not AFFIDAVITS AND DEPOSITIONS. 499 only be taken agreeably to these rules, but must be evi- dence competent in law. (Arnold v. Bishop, ib., 1841.) The rules referred to do not prohibit the Commissioner from looking into the deposition informally transmitted, or reading it and ascertaining its contents; but only pro- hibit him from considering it as evidence touching the matter in issue. (Smith v. Flickenger, ib., 1843.) The rules of the Patent Office as to the taking of testi- mony are to be just and reasonable, according to the established principles and precedents in like cases. (Nich- ols v. Harris, ib., 1854.) 329. SERVICE OF NOTICE FOR TAKING TESTIMONY. The notice for taking testimony must be served by deliver- ing a copy to the adverse party, or his agent or attorney of record or counsel, or by leaving a copy at the party's usual place of residence, with some member of the fam- ily who has arrived at the years of discretion. The no- tice must be annexed to the deposition, with a certificate, duly sworn to, stating the manner and time in which the service was made. (Patent Office Rales, July, 1870.) Service of notice to take testimony may be made upon applicant, upon the opponent, upon the attorney of record of either, or, if there be no attorney of record, upon any attorney or agent who takes part in the service of notice or the examination of the witnesses of either party. "Where notice to take testimony has already been given to an opponent, and a new opponent subsequently gives notice of his intention to oppose, the examination need not be postponed, but notice thereof may be given to such subsequent opponent by mail or by telegraph. This rule, however, does not apply to ex parte examina- 500 PROCEDURE IN THE PATENT OFFICE. tions, or those of which no notice has been given when notice of opposition is served. (Ib.} 330. OBJECT AND REQUISITES OF NOTICE. The object of notice is to bring the adverse party before the examin- ing officer. Where the party attends before such officer, such notice is mere form and technicality. ( Vide infra, 333 ; Walker v. Forbes, MS. Appeal Cases, D. C., 1861.) Where no notice of the taking of depositions has been given to the opposite party, but such opposite party or his counsel are present when they are taken, such depo- sitions will not be excluded because of want of notice, and particularly if taken by consent of parties. (Ib.) Depositions, to be used in a matter of interference be- fore the Commissioner of Patents, taken without notice to the opposing party, cannot be used against him, unless! he has waived his right to notice, and agreed to admit them to be read in evidence. (Perry v. Cornell, ib., 1847.) A notice of taking deposition at a place four hundred miles distant, served eleven days before the time for taking such depositions, is sufficient. (Smith v. Flickenger, ib., 1843.) 331. How TESTIMONY is TO BE TAKEN; SIGNATURE. The testimony must, if either party desires it, be taken in answer to interrogatories, having the questions and answers committed to writing in their regular order by the magistrate, or, under his direction, by some per- son not interested in the issue, nor an agent or attorney of one who is. The deposition, when complete, must be signed by the witness. (Patent Office Rules, July, 1870.) 332. MAGISTRATE'S CERTIFICATE. The magistrate must append to the deposition his certificate, stating the time and place at which it was taken, the names of the wit- AFFIDAVITS AND DEPOSITIONS. 501 nesses, (if any,) the administration of the oath, at whose request the testimony was taken, the occasion upon which it was intended to be used, the names of the adverse par- ties, and whether they were present. (/6.) If the magis- trate before whom a deposition is taken fails to certify thereon that it was sealed up by him, it is sufficient ground for excluding such deposition from the consider- ation of the Commissioner. (Arnold v. Bishop, MS. Ap- peal Cases, D. C., 1841.) 333. FORMAL OR TECHNICAL OBJECTION. ~No notice will be taken, at the hearing, of any merely formal or tech- nical objection, unless it shall appear to have wrought a substantial injury to the party raising the objection; and even then, as soon as the party becomes aware of the ob- jection, he must immediately give notice thereof to the office, and also to the opposite party, informing him at the same time that, unless corrected, he shall urge his objection at the hearing. (Patent Office Rules, July, 1870.) 334. ACCESS TO TESTIMONY; COPIES. In contested cases, whether of interference or of extension, parties may have access to the testimony on file prior to the hearing, in presence of the officer in charge; and copies may be obtained by them at the usual rates. (Ib.) 335. DEPOSITION CANNOT BE TAKEN BEFORE INTERESTED PARTIES. Deposition cannot be taken before a magistrate or person who is the attorney or of counsel for either party, or interested in the event of the action. (Nichols v. Harris, MS. Appeal Cases, D. C., 1854.) The officer before whom testimony is taken should stand indifferent between the parties, in no such relation to either of them as to bias him in favor of one more than 502 PROCEDURE IN THE PATENT OFFICE. the other; more especially he should not be interested in the question at issue. (Collins v. White, ib., 1860.) 336. TESTIMONY RECEIVED BY AGREEMENT OF PARTIES. By agreement of parties, the testimony of witnesses, otherwise incompetent, may be received and considered. ( Warner v. Goodyear, ib., 1846.) 337. TESTIMONY TAKEN ON A FORMER INTERFERENCE is ADMISSIBLE ON A SECOND ONE, and may be used without being retaken, although the second interference is de- clared after an assignment to another party, (Earns v. Richards, ib., December, 1859,") or after application is made by another party, and he is made a party to the interference. (Carter v. Carter, ib., 1855.) In the case of Crowell v. Sim, the Commissioner says : "A preliminary question is made as to an agreement be- tween the parties relating to the introduction of testimony taken in a former interference. The agreement is, that the testimony may be read by the examiner in the present case. Counsel for Crowell claims that this meant nothing more than that the examiner might read the testimony, but that it was not to be treated as evidence; and they further assert that this was fully understood by the par- ties. Counsel for Sim deny this understanding, and claim that the agreement meant and means, that the examiner should read the former testimony as evidence in this case. As the parties cannot agree as to their verbal statements, I can only construe the paper according to its terms. My opinion is, that 'reading' the testimony can only mean reading it in evidence. Any other construction would render it practically without meaning, and Sim has so far relied upon his own understanding of it as to take no other testimony." (Commissioners' Decisions, July 26, 1870.) AFFIDAVITS AND DEPOSITIONS. 503 338. ASSIGNMENT OF TIME IN INTERFERENCE CASES. In cases of interference the party who first filed so much of his application for a patent as illustrates his invention will be deemed the first inventor in the absence of all proof to the contrary. A time will be assigned in which the other party shall complete his direct testimony; and a further time in which the adverse party shall complete the testimony on his side; and a still further time in which both parties may take rebutting testimony, but shall take no other. If there are more than two parties, the times for taking testimony shall be so arranged, if practicable, that each shall have a like opportunity in his turn, each being held to go forward and prove his case against those who filed their applications before him. (Patent Office Rules, July, 1870.) 339. POSTPONEMENT. If either party wishes the time for taking his testimony, or for the hearing, postponed, he must make application for such postponement, and must show sufficient reason for it by affidavit filed before the time previously appointed has elapsed, if practicable, and must also furnish his opponent with copies of his affidavits and with reasonable notice of the time of hear- ing his application. (J6.) 340. FORM OF NOTICE OF TAKING TESTIMONY. BOSTON, MASS., March 29, 1869. In the matter of the interference between the application of Lyman Osgood for a paper collar machine and the patent No. 85,038, granted Decem- ber 15, 1868, to Charles Comstock, now pending before the Commissioner of Patents. SIR: You are hereby notified that on Wednesday, March 31, 1869, at the office of Sextus Tarquin, esq., No. 30 Court street, Boston, Massachu- setts, at 9 o'clock in the forenoon, I shall proceed to take the testimony of Truman Truthful, Peter Pivot, and Welcome Story, all of Boston, as witnesses in my behalf. 504 PROCEDURE IN THE PATENT OFFICE. The examination will continue from day to day until completed. Yon are invited to attend and cross-examine. LYMAN OSGOOD, By PETER PEOCTOB, his Attorney. CHAELES COMSTOCK, Providence, It. I. Proof of service. Service of the above notice acknowledged. CHARLES COMSTOCK, By CHARLES CAVIL, his Attorney. PROVIDENCE, R. I., March 30, 1869. 341. FORM OF DEPOSITION. Before the Commissioner of Patents, in the matter of the interference be- tween the application of Lyman Osgood for a paper collar machine and the letters patent No. 85,038, granted December 15, 1868, to Charles Corastock. Depositions of witnesses examined on behalf of Lyman Osgood, pursuant to the annexed notice, at the office of Sextus Tarquin, No. 30 Court street, Boston, Massachusetts, on Wednesday, March 31, 1869. Present, Peter Proctor, esq., on behalf of Lyman Osgood, and Charles Cavil, esq., on behalf of Charles Comstock. Truman Truthful, being duly sworn, (or affirmed,) doth depose and say, in answer to interrogatories proposed to him by Peter Proctor, esq., coun- sel for Lyman Osgood, as follows, to wit: Question 1. What is your name, age, residence, and occupation? Answer 1. My name is Truman Truthful; I am forty-three years of age ; I am a manufacturer of paper collars, and reside in Chelsea, Massa- chusetts. Question 2, &c. And in answer to cross-interrogatories proposed to him by Charles Cavil, esq., counsel for Charles Comstock, he saith : Cross-question 1. How long have you known Lyman Osgood? Answer 1. TRUMAN TEUTHFUL. 342. FORM OF CERTIFICATE OF OFFICER. COMMONWEALTH OF MASSACHUSETTS, ) County of Suffolk. ) At Boston, in said county, on the 26th day of April, A. D. 1869, before me personally appeared the above-named Truman Truthful, and made EVIDENCE. 505 oath that the foregoing deposition by him subscribed contains the truth, the whole truth, and nothing but the truth. The said deposition is taken at the request of Lyrnan Osgood, to be used upon the hearing of an inter- ference between the claims of the said Lyman Osgood and those of Charles Comstock, before the Commissioner of Patents, on the 3d day of May, A. D. 1869. The said Charles Comstock was duly notified, as appears by the original notice hereto annexed, and attended by Charles Cavil, esq., his counsel. SEXTUS TABQUIN, Justice of the Peace. The magistrate shall seal up the testimony, and write upon the envelope a short certificate, substantially in the following form, viz : I hereby certify that the within depositions of Truman Truthful and Peter Pivot, relating to the matter of interference between Lyman Osgood and Charles Comstock, were taken, sealed up, and addressed to the Com- missioner of Patents by me this 26th day of April, A. D. 1869. SEXTUS TABQUIJT, Justice of the Peace. XX. Evidence. SEC. 343. Presumption. 344. Declaration and acts of parties. 345. Declaration &c., third parties. 346. Parol and secondary evidence. 347. Patent Office records. 348. Evidence of abandonment. 349. Evidence of priority. 350. Evidence of prior use. SEO. 351. Evidence of novelty and utility. 352. Examples of novelty and want of novelty. 353. Examination of parties. 354. Parties in interference cases may testify. 355. Competency of witnesses. 356. Experts. 343. PRESUMPTION. The general head of presump- tive evidence is usually divided into two branches, namely, presumptions of law and presumptions of fact. Presumptions of law consist of those rules which, in certain cases, either forbid or dispense with any ulterior inquiry. They are founded either upon the first princi- 43 "06 PROCEDURE IN THE PATENT OFFICE. pies of justice, or the laws of nature, or the experienced course of human conduct and affairs, and the connection usually found to exist between certain things. The gen- eral doctrines of presumptive evidence are not therefore peculiar to municipal law, but are shared by it in com- mon with other departments of science. Thus, the pre- sumption of a malicious attempt to kill from the delib- erate use of a deadly weapon, and the presumption of aquatic habits in an animal found with webbed feet, be- long to the same philosophy, differing only in the in- stance, and not in the principle, of its application. The one fact being proved or ascertained, the other, its uni- form concomitant, is universally and safely presumed. It is this uniformly experienced connection which leads to its recognition by the law without other proof; the pre- sumption, however, having more or less force in propor- tion to the.universality of the experience. And this has led to the distribution of presumptions of law into two classes, namely, conclusive and disputable. (Greenleaf on Evidence, p. 21.) Conclusive, or, as they are elsewhere termed, imper- ative or absolute, presumptions of law, are rules deter- mining the quantity of evidence requisite for the support of any particular averment, which is not permitted to be overcome by any proof that the fact is otherwise. They consist chiefly of those cases in which the long-experi- enced connection before alluded to has been found so general and uniform, as to render it expedient for the common good that this connection should be taken to be inseparable and universal. They have been adopted by common consent, from motives of public policy, for the sake of greater certainty, and the promotion of peace EVIDENCE. 507 aiid quiet in the community; and therefore it is that all corroborating evidence is dispensed with, and all oppos- ing evidence is forbidden. (Ib.} The second class of presumptions of law, answering to the prcesumptiones juris of the Roman law, which may always be overcome by opposing proof, consists of those termed disputable presumptions. These, as well as the former, are the result of the general experience of a con- nection between certain facts or things, the one being usually found to be the companion or the effect of the other. The connection, however, in this class, is not so intimate or so universal as to render it expedient that it should be absolutely and imperatively presumed to exist in every case, all evidence to the contrary being rejected; but yet it is so general, and so nearly universal, that the law itself, without the aid of a jury, infers the one fact from the proved existence of the other, in the absence of all opposing evidence. In this mode the law defines the nature and amount of the evidence which it deems sufficient to establish a prima facie case, and to throw the burden of proof on the other party; and if no opposing evidence is offered, the jury are bound to find in favor of the presumption. A contrary verdict would be liable to be set aside, as being against evidence. (J6., p. 38.) Presumptions of fact, usually treated as composing the second general head of presumptive evidence, can hardly be said, with propriety, to belong to this branch of the law. They are, in truth, but mere arguments, of which the major premise is not a rule of law ; they be- long equally to any and every subject-matter; and are to be judged by the common and received tests of the truth 508 PROCEDURE IN THE PATENT OFFICE. of propositions and the validity of arguments. They depend upon their own natural force and efficacy in gen- erating belief or conviction in the mind, as derived from those connections which are shown by experience, irre- spective of any legal relations. They differ from pre- sumptions of law in this essential respect, that while those are reduced to fixed rules, and constitute a branch of the particular system of jurisprudence to which they belong, these merely natural presumptions are derived wholly and directly from the circumstances of the particular case, by means of the common experience of mankind, without the aid or control of any rules of law whatever. Such, for example, is the inference of guilt drawn from the discovery of a broken knife in the pocket of a prisoner, the other part of the blade being found sticking in the window of a house which, by means of such an instru- ment, had been burglariously entered. These presump- tions remain the same in their nature and operation, under whatever code the legal effect or quality of the facts, when found, is to be decided. (76., p. 49.) It is a presumption of law, that when a patent has been obtained, and the specification and drawing recorded in the Patent Office, every man who subsequently takes out a patent for a similar machine has a knowledge of the preceding patent. As in chancery it is a maxim that every man is presumed to have notice of any fact upon which he is put upon inquiry by documents within his possession, if such facts could, by ordinary diligence, be discovered upon such inquiry. It is also a presumption of fact that every man, having within his power the ex- act means of information, and desirous of securing to himself the benefit of a patent, will ascertain, for his own EVIDENCE. 509 interest, whether any one on the public records has acquired a prior right. (Odiorne v. Winkley, 2 Gall., 55.) All persons are bound to take knowledge of the doings of the Patent Office in relation to inventions. (Marcy v. Trotter, MS. Appeal Cases, D. 0., 1860.) In the case of the Philadelphia and Trenton Railroad Company v. Stimson, (14 Peters, 458,) Mr. Justice Story said: "It is a presumption of law that all public officers perform their proper official duties until the contrary is proved. And where, as in the present case, an act is to be done, or patent granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent is prima facie evidence that the proofs have been regularly made, and were satisfactory. "No other tribunal is at liberty to reexamine or controvert the sufficiency of such proofs, if laid before him, when the law has made such officer the proper judge of their sufficiency and compe- tency. It is not, then, necessary for the patent to con- tain any recitals that the prerequisites to the grant of it have been duly complied with, for the law makes the presumption; and if, indeed, it were otherwise, the re- citals would not help the case, without the auxiliary proof that these prerequisites had been, de facto, com- plied with. This has been the uniform construction, as far as we know, in all our courts of justice upon matters of this sort. Patents for lands, equally with patents for inventions, have been deemed prima facie evidence that they were regularly granted, whenever they have been produced under the great seal of the government, with- out any recitals or proofs that the prerequisites of the acts under which they have been issued have been duly 43* 510 PROCEDURE IN THE PATENT OFFICE. observed. In cases of patents, the courts of the United States have gone one step further, and as the patentee is required to make oath that he is the true inventor before he can obtain a patent, the patent has been deemed prima facie evidence that he has made the invention." It is a presumption of law that the patentee is the first inventor of the thing patented by him, and the burden of proof is on the party denying it to disprove the fact. (Pitts v. Hall, 2 Blatchf., 231,) and the burden of proof that a combination is not new is on the party denying that it is not new. (Hovey v. Henry, 3 West. Law Jour., 154.) The legal presumption is, from the action of the Patent Office, that a reissued patent is for the same invention as the original patent. (Hussey v. McCormick, 1 Fish., 509.) The law requiring that an inventor should describe his invention with accuracy and fullness, and it being the duty of the Commissioner of Patents to see that this is done, the presumption is that the patent has been issued upon sufficient foundation. (Judson v. Cope, 1 Fish., 615.) A reissued patent is prima facie evidence that the original patent was lawfully surrendered and the new one was lawfully granted, (Knight v. Baltimore and Ohio Railroad, 3 Fish., 1 ;) and, unless fraud upon the Patent Office is proved, (and it must be proved, never inferred,) it is prima facie evidence that there has been no abandon- ment of the invention to the public; and the burden of proof is on the defendant to show that any surrender to the public has taken place. (Hqffheim v. Brandt, 3 Fish., 218.) The reissue furnishes prima facie evidence that everything necessary to justify the Commissioner in granting the reissue has been produced before the grant EVIDENCE. 511 was made, (ib. ;) and, as the law now stands, the decision of the Commissioner is final and conclusive in cases of reissue, unless impeached for fraud in his or the pat- entee's acts, or for some irregularity on the face of the papers, or a clear repugnance between the original and reissued patents. (Slake v. Stafford, 3 Fish., 294.) However, it is in accordance with the late decisions of the courts, that the decision of the Commissioner is not conclusive upon the substantial identity of the inven- tion claimed in the original." (3 Fish., 439; vide supra, p. 570.) The patent itself is prima fade evidence that it was lawfully issued, and that the party who claims it is the original inventor; and, if it be assailed, the proof must come from the party calling the validity in question, (Hoffheim v. Brandt, 3 Fish, 218,) and the original pre- sumptions of novelty and utility arising from the grant of a patent are strengthened by the extension. ( Whitney v. Mowry, 3 Fish., 157.) It is a presumption of law that what the patentee does not distinctly assert to be his invention was known be- fore. (Smith v. Higgins, 1 Fish., 587.) It is to be pre- sumed that persons obtaining patents have acquainted themselves with the state of the art in which they are interested, as made known in books or by machines built and put in use, and evidence is not admissible to prove the contrary. (Ib.} The recital in a reissue of a prior assignment, and the action of the Commissioner in granting the patent, make a prima fade case of title. (Middletown Tool Company v. Jvdd, 3 Fish., 141.) The constructor of a machine is presumed to be the 512 PROCEDURE IN THE PATENT OFFICE. inventor, and the burden of proof is on him who denies the fact, and claims to be the inventor, (Atkinson v. Boardman, MS. Appeal Cases, D. C., 1847;) but the claim of a draughtsman to an invention which he is employed to put in shape is to be viewed with suspicion, (Doughty v. Clark, Commissioners' Decisions, 1869, p. 14,) and where an invention is reduced to practice by an operative em- ployed to labor upon it, the presumption is that his employer is the inventor ; but, on the other hand, he is presumed to be the inventor if he is laboring under a general employment. (Foster $ Townsend v. Fowle, 35.) A patent is prima facie evidence that the grant of right in it is valid, that the things described in it are new and useful, that they required invention, and that they were the invention of the patentee; and such prima facie evi- dence must have full effect, unless rebutted by sufficient countervailing evidence, (Potter v. Holland,! Fish., 327;) but the prima facie force of a parent, as to priority of invention on the part of the patentee, when once de- stroyed by evidence of prior invention on the part of another, cannot be restored by the patent itself, but only by specific testimony from witnesses. (Barstoiv v. Swan, MS. Appeal Cases, 1860.) Under the act of 1790 a patent was made prima facie evi- dence. That act was repealed by the act of 1793, and that provision was not re-enacted in it; hence a patent was not received in courts of justice as even prima facie evi- dence that the invention patented was new or useful; but the plaintiff was bound to prove these facts to make out his case. But the act of 1836 introduced a new system, and under it its inquisition and examination a pat- ent is received as prima facie evidence of the truth of EVIDENCE. 513 the facts asserted in it. (Corning v. Burden, 15 How., 270.) 344. DECLARATION AND ACTS OF THE PARTIES. The declarations of a party, at a given time, that he had in- vented a machine afterward patented, and which he then described, may be received in evidence; but they are not proof that he was the inventor, but only that he said he was, (Evans v. Hettick, 3 Wash., 410;) and in cases of inter- fering applications, the declaration of the parties them- selves in their own favor, in the absence of each other, are not competent evidence for any purpose, but to ascer- tain when and what they respectively claimed to have invented. (Atkinson v. Boardman, MS. Appeal Cases, D. C., 1847.) In the case of the Philadelphia and Trenton Railroad Company v. Stimson, (14 Pet., 462,) Mr. Justice Story, in delivering the opinion of the court, said: "The objec- tion is, that, upon general principles, the declarations and conversations of a plaintiff are not admissible evi- dence in favor of his own rights. As a general rule, this is undoubtedly true. It is, however, but a general rule, and admits and requires various exceptions. There are many cases in which a party may show his declara- tions conflict with acts in his own favor as a part of the res gestce. There are other cases again in which his material declarations have been admitted. Thus, for example, in the case of an action for an assault and bat- tery and wounding, it has been held, that the declara- tions of the plaintiff as to his internal pains, aches, in- juries, and symptoms, to the physician called to pre- scribe for him, are admissible for the purpose of show- ing the nature and extent of the injuries done to him. 514 PROCEDURE IN THE PATENT OFFICE. (See 1 Phillips on Evidence, c. 12, 1, p. 200-202, 8th ed., 1838.) In many cases of inventions, it is hardly possible in any other manner to ascertain the precise time and exact origin of the particular invention. The invention itself is an intellectual process or operation ; and, like all other expressions of thought, can in many cases scarcely be known except by speech. The inven- tion may be consummated and perfect, and may be sus- ceptible of complete description in words, a month or even a year before it can be embodied in any visible form, machine, or composition of matter. It might take a year to construct a steamboat, after the inventor had completely mastered all the details of his invention, and had fully explained them to all the various artisans whom he might employ to construct the different parts of the machinery. And yet from those very details and explanations another ingenious mechanic might be able to construct the whole apparatus, and assume to himself the priority of the invention. The conversations and declarations of a patentee, merely affirming that at some former period he invented that particular machine, might well be objected to. But his conversations and declara- tions, stating that he had made an invention, and de- scribing its details and explaining its operations, are properly to be deemed an assertion of his right, at that time, as an inventor, to the extent of the facts and de- tails which he then makes known, although not of their existence at an antecedent time. In short, such conver- sations and declarations, coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestce, and legitimate evidence that the invention was then known to and claimed by him, and EVIDENCE. 515 thus its origin may be fixed at least as early as that period." Although the mere declaration of an inventor, that at a certain time he made the invention, is not evidence. (Cochrane v. Waterman, MS. Appeal Cases, D. C., 1844.) Yet the declarations of a party, describing, at a particu- lar time, an alleged invention, are admissible to show what he knew or had invented at the time such declara- tions were made, provided they were made before a dis- pute or contest had arisen. (Yearsly v. Brookfield, ib., 1853.) But the conversation and declaration of a party as to an invention are evidence of his right at the time only to the extent of the fact and details which he then describes and makes known. (Garrett v. Davidson, ib., 1857.) The correspondence between the office and a patentee is evidence, at least in a court of equity, for the purpose of showing the limitation placed by the paten tee upon his claims. (Pike v. Potter, 3 Fish., 55.) And the letters of a party to the Commissioner of Patents, applying for a patent for his invention, are admissible as evidence as to the fact of his being the inventor. (Pettibone v. Derringer, 4 Wash., 219.) Admissions or declarations as to an invention, made in a way of compromise and without the admission of any particular facts, are not admissible as evidence; but if made voluntarily, without any pending negotiation, it would seem they are admissible. (Gibbs v. Johnson, MS. Appeal Cases, D. C., 1860.) The fact that a party is a witness to the application of another for a patent for a particular invention does not estop such party from afterwards claiming to be the orig- 516 PROCEDURE IN THE PATENT OFFICE. inal inventor of such invention, and lie may show that he was deceived as to the character of the invention he was witnessing. (Herring v. Leffingwell, ib., 1861.) "Where a party had disclaimed those parts of his inven- tion which were found in another patent, it was held that this was an admission of the validity of such patent. (Waterbury Brass Company v. New York and Brooklyn Brass Company, 3 Fish., 43.) It seems that evidence as to the declaration of an in- ventor, which referred to a specimen or model of his in- vention, cannot be received without the production of such model or without its non-production being accounted for, (Richardson v. Hicks, MS. Appeal Cases, D. 0., 1854,) and an exhibit cannot be introduced in evidence for the purpose of showing that it is like the original model, unless the non-production of the original is accounted for. (76.) 345. DECLARATIONS AND ACTS OF THIRD PARTIES. Where a witness was asked by counsel to state what third parties had said concerning an invention, the court decided that the question was improper. The person from whom the witness received the information on the subject ought to have been called on to give it in the usual way, and that the question was an attempt to intro- duce mere hearsay evidence of what others told the wit- ness. (Evans v. Hettick, 3 Wash., 414.) The declarations of a person as an agent, in relation to the business intrusted to him, and made at the time so intrusted, are competent concerning it, as a part of the resgestaz, if they relate to the act clearly. (Aiken v. Bemis, 3 Wood. $> Minot, 350.) The declarations of an assignor of a patent, after he has EVIDENCE. 517 parted with his interest, are inadmissible, either to show a want of title in him or to affect the quality of the arti- cle, or impair the rights of the purchaser. (Many v. Jugger, 1 Blatchf., 376.) And the declarations of a pat- entee who had parted with all his interest is only hearsay evidence. ( Wilson v. Simpson, 9 How., 121, 122.) The declarations of a third party in an interference, that he was a part inventor, are admissible to show that neither of the applicants is entitled to a patent. ( Yearsly v. Brootyeld, MS. Appeal Cases, D. 0., 1853.) 346. PAROL AND SECONDARY EVIDENCE. Primary evi- dence is that kind of proof which, under any possible circumstances, affords the greatest certainty of the fact in question, and it is illustrated by the case of a written document ; the instrument itself being always regarded as the primary or best possible evidence of its existence and contents. If the execution of an instrument is to be proved, the primary evidence is the testimony of the sub- scribing witness, if there be one. Until it is shown that the production of the primary evidence is out of the party's power, no other proof of the fact is in general admitted. All evidence falling short of this in its degree is termed secondary. The question whether evidence is primary or secondary has reference to the nature of the case in the abstract, and not to the peculiar circum- stances under which the party in the particular cause on trial may be placed. It is a distinction of law, and not of fact; referring only to the quality, and not to the strength of the proof. Evidence which carries on its face no indication that better remains behind is not second- ary, but primary. And though all information must be traced to its source, if possible, yet if there are several 44 518 PROCEDURE IN THE PATENT OFFICE. distinct sources of information of the same fact, it is not ordinarily necessary to show that they have all been ex- hausted before secondary evidence can be resorted to. (Greenleaf on Evidence, p. 99.) The cases which most frequently call for the applica- tion of the rule now under consideration are those which relate to the substitution of oral for written evidence, and they may be arranged into three classes : including in the first class those instruments which the law requires should be in writing; in the second, those contracts which the parties have put in writing ; and in the third, all other writings the existence of which is disputed, and which are material to the issue. (/&., p. 100.) By written evidence, is meant not eveiy thing which is in writing, but that only which is of a documentary and more solemn nature, containing the terms of a con- tract between the parties, and designed to be the reposi- tory and evidence of their final intentions. "When par- ties have deliberately put their engagements into writ- ing in such terms as import a legal obligation, without any uncertainty as to the object or extent of such en- gagement, it is conclusively presumed that the whole engagement of the parties, and the extent and manner of their undertaking, was reduced to writing; and all oral testimony of a previous colloquium between the par- ties, or of conversation or declarations at the time when it was completed, or afterwards, as it would tend in many instances to substitute a new and different con- tract for the one which was really agreed upon, to the prejudice, possibly, of one of the parties, is rejected. In other words, as the rule is now more briefly expressed, "parol contemporaneous evidence is inadmissible to con- EVIDENCE. 519 tradict or vary the terms of a valid written instrument." (76., p. 312.) Parol evidence, bearing upon written contracts or pa- pers concerning patent interests, ought not to be admitted without the production of such contracts or papers, to' enable the court andi jury to see whether the admission of parol evidence will trench upon the rule that parol evidence is not admissible to vary or contradict written contracts or papers. (Philadelphia and Trenton Railroad Company v. Stimson, 14 Pet., 461.) Certificates of manufacturers and others concerning an invention should be taken under oath, in order to be re- ceived and considered upon application for a patent. (Jillson v. Winsor, MS. Appeal Cases, D. O., 1850.) Although a letter from a third party is sent under cover of one from the inventor to the Commissioner of Patents, it is not evidence of priority of invention. (Cochrane v. Waterman, ib., 1844.) Copies of original memoranda and drawings are not admissible to confirm the testimony of the party who made them, but the originals might have been used to refresh the memory of the witness. (Jones v. Wetherill, MS. Appeal Cases,D.C., 1855.) Oral evidence of the meaning of parties in explana- tion of a written instrument respecting a patent right is inadmissible. The agreement, being in writing, must speak for itself. (Troy Iron and Nail Factory v. Corning, 1 Blatchf., 472.) 347. PATENT OFFICE RECORDS, (vide supra, pp. 309, 310.) "Written or printed copies of any records, books, papers, or drawings belonging to the Patent Office, and of letters patent under the signature of the Commissioner or Act- 520 PROCEDURE IN THE PATENT OFFICE. ing Commissioner, with the seal of the office affixed, shall be competent evidence in all cases wherein the originals could be evidence; and any person making application therefor, and paying the fee required by law, shall have certified copies thereof. And copies of the specifications and drawings of foreign letters patent, certified in like manner, shall be prima fade evidence of the fact of the granting of -such foreign letters patent, and of the date and contents thereof. (Act of July 8, 1870, 57.) Papers or drawings on file. at the Patent Office are public records, and certified copies of them must be re- ceived in evidence when offered; if discordant, one may destroy the effect of the other, but they need not concur in every particular. (Emerson v. Hogg, 2 Blatchf., 12.) If such copies are erroneous, the Commissioner of Pat- ents has the power and ought to make them conform to the patent itself and to the record, ( Woodworth v. Hall, 1 Wood. $ Minot, 260;) and a former and defective cer- tified copy of a patent may be corrected by another certified copy. (Brooks v. Bicknell, 3 McLean, 434.) Cer- tified copies of papers in the Patent Office are to be re- ceived as prima facie evidence of the genuineness of the originals on file and absolute evidence of the correctness of the copies from the record. (Parker v. Haworth, 4 McLean, 371.) A certified copy of an assignment of a pa,tent is prima facie evidence of the genuineness of the original, (Lee v. Blandy, 2 Fish., 89,) and the production of the originals cannot be compelled. (Brooks v. Bick- nell, 3 McLean, 434.) 348. EVIDENCE OF ABANDONMENT, (vide supra, pp. 264- 267.) Abandonment is in the nature of a forfeiture of right, which the law does not favor, and it should be made EVIDENCE. 521 out beyond all reasonable doubt, (Pitts v. Hall, 2 Blatchf., 238;) and the law throws upon a party who seeks to obtain the benefit of a forfeiture the burden of proving it beyond all reasonable question. (McCormick v. Sey- mour, 2 Blatchf., 256.) The natural presumption is, that a person who has invented a machine would not give it to the world, and there must be evidence of a distinct character as to abandoment, showing such intention. (Hovey v. Henry, 3 West. Law Jour., 155.) Where ex- periments were unsatisfactory, and the inventor threw aside his temporary model, and wholly neglected for years to follow up his experiments, so as to produce a perfect machine, it was held, that such acts afforded strong and decisive evidence of an abandonment. (Park- hurst v. Kinsman, 1 Blatchf., 494.) In the case of Goodyear $ Bacon v. Hills, Mr. Justice Cartter says : " The law-makers have admonished invent- ors and the public that if, before an application, they suffer more than two years to elapse in the use of the invention, they shall absolutely forfeit all right and title thereto. It is true that the legislative admonition relates to the period preceding the application. But it appears to me, so far as the court can be guided by its own judgment, that the inventor is left under the dominion of common-law prin- ciples in regard to any laches by which the application may be followed. Is it the law, that because an inventor files his application, which is refused by the office, he may sleep upon his rights indefinitely, and that at any period in his lifetime, or that of his representatives, the appli- cation may be revived as against the public? I think not. Prima facie, I think he would have to show a rea- son why he should be so permitted. The judgment of 44* 522 PROCEDURE IN THE PATENT OFFICE. condemnation by the office advertises to the country, at least, that he stands in no better position than before the application was made. The country is advised, by the de- liberation of the only tribunal provided bylaw for the as- certainment at that stage of the invention, that he has no rights. More especially is he himself advised of that fact, for he is a party to the proceeding, and more immedi- ately damnified by the rejection of the application. The rejection would at least be regarded, in the logic of equity, as a notice to him to proceed with diligence to traverse and reverse the judgment of the office." (3 fish., 139.) 349. EVIDENCE OF PRIORITY OF INVENTION. When a man conceived a certain machine, no one knows except him- self; when he described it, no one knew except himself and those to whom he described it. This is, from the nature of the case, the testimony upon which reliance must be placed. (Sayks v. Hapgood, 3 Fish., 632.) Priority of application for a patent does not decide priority of invention, (Perry v. Cornell, MS. Appeal Cases, D. C., 1847;) but in cases of interference, the party who first filed so much of his application for a patent as illus- trates his invention will be deemed the first inventor, in the absence of proof to the contrary. (Patent Office Rules, July 1870, vide supra, p. 451.) He is entitled to be placed in the condition of the defendant. His oath, being first made, gives him the benefit of the maxim, "Potior est conditeo defendentis." ( Waters v. Taylor, MS. Appeal Oases, 1869.) A patent is prima facie evidence that the patentee was the first and original inventor, ( Wmans v. New York and Harlem Railroad,&\ Jour. Frank. Inst., 3d series, 320; EVIDENCE. 523 Ransom v. Mayor, c., of New York, 1 Fish., 252; Ca- hoonv. Ring, 1 Fish., 397,) and must prevail, unless there is other evidence to overcome such prima facie presump- tion. (Ransom v. Mayor, $c., of New York, 1 Fish., 252.) The patentee has a right to rest upon his patent for his invention until its validity is overthrown, and if there is a reasonable doubt as to the priority of invention, the pat- entee is entitled to the benefit of it, ( Washburn v. Gould, 3 -Story, 142;) and where one party has a patent, the proof of want of originality must be specific and decisive in order to overthrow such patent. ( Troy Iron and Nail Factory^ v. Corning, 1 Blatchf., 472.) Upon interference with a patentee, not only is the burden of proof upon the applicant to establish priority of invention, but he must also explain why he was not as diligent as the patentee in making his application. (Hunt v. Wood, Commission- ers' Decisions, 1869, p. 34.) Priority of knowledge and use of an invention is a question of fact, which may be decided from one witness; the question is on the credibility and not the number of witnesses. ( Whitney v. Emmett, Bald., 310.) Proof that a party had made a thing at a certain time is prima facie evidence that it had been invented by the patentee, until other evidence is given to show that it had been previously known. (Pennock v. Dialogue, 4 Wash., 451.) But the silence of such party as to his claim of original invention at such time may be opposed to such evidence. (lb., 542) In considering the question of originality, the oath of the inventor, made prior to the issue of letters pat- ent, that he was the first inventor of the thing patented, may be opposed to the oath of a witness, ofiered to show 524 PROCEDURE IN THE PATENT OFFICE. that the invention was not original. (Alden v. Dewey, 1 Story, 339.) Where a dispute arises as to the priority of invention, a patentee is allowed to show the real date of it, and to have his rights as fully secured as if he had taken out his patent at that time. (Parker v. Hulme, 1 Fish., 44.) The measure of proof requisite to show the date of an invention depends upon the nature of the invention, whether complicated or not, the distance of time when the facts occurred, and the capacity of witnesses. (Ste- phens v. Salisbury, MS. Appeal Cases, D. C., 1855.) The time of the invention of an improvement must necessarily precede the time when the improvement is applied to a machine in operation. (Cundell v. Park- hurst, ib., 1847.) Dates in an account book, in which was made a draw- ing of an invention, are not conclusive evidence that the invention was made at the time of such dates. (Jittson v. TF^or,^6.,1850.) And sketches in a diary deserve little consideration when there are indications that they have been interpolated. (Purdy v. White, Commissioners' Decis- ions, 1869, p. 22.) Proof that a drawing was shown by A at a certain time, before the well-established invention of the same thing by B, but without any model, and with- out proof that the articles were manufactured until long after the invention of B, is not sufficient to establish pri- ority of invention in A. (Jillson v. Winsor, MS. Appeal Cases, D. C., 1850.) Drawings prepared for the hearing of the interference are of but little weight, although ac- companied with proof that they represent such as existed before. (Purdy v. White, Commissioners' Decisions, 1869, p. 22.) EVIDENCE. 525 But when original drawings were made of an inven- tion, they are the best evidence of such invention, and on the non-production of them, unless legally accounted for as being lost, the legal presumption is that, if pro- duced, they would show the facts to be unfavorable. Beech v. Tucker, MS. Appeal Cases, D. C., 1860.) Verbal description may, however, be sufficient, without models or drawings, to show the date of an invention, (Stepfiens v. Salisbury, ib., 1855;) but, to establish the date of an invention, it is not sufficient to show that the applicant was engaged upon one of the same character, without proof of its identity. (Black v. Locke, Commissioners' De- cisions, 1869, p. 13.) He is the real inventor, and is entitled to a patent, who first makes a machine capable of useful operation, though others may have previously conceived the idea and made experiments toward putting it in practice, (vide supra, pp. 247, 248, 249, 250, 251 ;) and where preliminary experi- ments have proved unsatisfactory to both parties, reliance should be placed on the first reduction to successful prac- tice. (Jennings v. Winter $ Harris, Commissioners' Decis- ions, 1869, p. 38.) In the matter of interference between the applications of John C. Duckworth, George Crompton, and Horace Wyman, for letters patent for improvement in looms, the Commissioner says: "In a conversation between Cromp- ton and Wyman, in 1861, the latter made some rough sketches, which he explained verbally to the former, of a plan which, as described, embodied in a rude form the invention in controversy. Crompton had a plan of his own, however, and, after discussion, concluded to adopt it in preference to Wyman's. Wyman's sketches were 526 PROCEDURE IN THE PATENT OFFICE. not preserved, and nothing came of his description until September, 1866, when Crompton recurred to the idea, and, as Wyrnau testifies, having made 'modifications and improvements ' upon it, built an experimental loom, which was tried for a few days during that month in Hamilton's tape works in Worcester. "No sketches, models, or written description of what was alleged to have been invented by Wyman in 1861 having been preserved, we are left entirely to the recol- lections of Cromptou and Wyman, both to some extent interested witnesses. Proof of invention consisting wholly of the memory of conversations occurring or of sketches made eight years before is of the most unreliable kind. (Foster v. Hamilton, Commissioners' Decisions, 1869, p. 80 ; Townsend $ Foster v. Fowle, ib., p. 35; White v. Allen, 2 Fish., p. 445; Winans v. New York and Harlem Railroad Company, Frank. Inst. Jour., 3d series, vol. 61, p. 322.) I should hesitate to accept such evidence as against a sub- sequent invention actually reduced to practice. "But if Wyman invented anything in 1861, he did nothing with it for seven years. This, if the invention or application of others intervened, is fatal to his case. (See Rowley v. Mason, supra, p. 483, as well as a long list of cases since decided, in which the doctrine of that case has been followed and applied.) "It is said that the war intervened; but the parties ex- pressly testify that the manufacture of looms from that cause was interrupted but for a single year, and the war ceased in 1865. It is said that there was a verbal agree- ment between Crompton and Wyman, by virtue of which all inventions patented by the latter were to belong to the works; but as this agreement still exists, and the ap- EVIDENCE. 527 plication of Wyman is being pressed confessedly for the benefit of Crompton, who is the real party in interest, Wyman is to be charged with Crompton's laches as well as his own. The interest of Wyman in the invention has always been the same as now. Crompton, who is to own the patent, cannot be allowed to say that Wyman was prevented by him from obtaining a patent. Nor can Wyman, who has no pecuniary interest in it, be allowed to play the part of an inventor under duress. This is not the case of White v. Allen, (2 Fish., 445,) nor anything like it. This is Wyman's application only in name. It is really made by Crompton for his own interest, and a fortiori he must be charged with his own laches. "All that was done by Wyman, then, was to make a suggestion, subsequently abandoned. It was competent for any one to take up that suggestion, to modify, improve upon, or perfect it, and then to use or patent it." ( Whitely v.Swayne, 7 Wall., 685; Duckworth v. Crompton, Commis- sioners' Decisions, May 16, 1870.) 350. EVIDENCE OF PRIOR KNOWLEDGE OR USE IN A FOR- EIGN COUNTRY. No person shall be debarred from receiv- ing a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign coun- try, provided the same shall not have been introduced into public use in the United States for more than two years prior to the application, and that the patent shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than seventeen years. (Act of July 8, 1870, 25.) 528 PROCEDURE IN THE PATENT OFFICE. Whenever it sball appear that the patentee, at the time of making his application for the patent, believed himself to be the original and first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country before his invention or discovery thereof, if it had not been patented or described in a printed publication. (/&., 62.) Evidence cannot be received of actual use and knowl- edge of an invention in a foreign country prior to the time of the invention here, unless it appears that the in- vention or improvement was patented in such foreign country or described in some public work, (Judson v. Cope, \Fish., 615;) and it must appear that the improve- ment has been so clearly and intelligibly described that the invention could be made or constructed by a compe- tent mechanic. (Ib.} The language of the act ( 6, act of 1839) under which this limitation was made is as follows : "That no person shall be debarred from receiving a patent for any inven- tion or discovery, &c., by reason of the same having been patented in a foreign country more than six months prior to his application: Provided, $c., and provided, also, That in all cases every such patent shall be limited to the term of fourteen years from the da,te or publication of such foreign letters patent." It will be seen that the language is " date or publica- tion" of the foreign letters patent. As the patent can- not have a varying term, the " or" is to be read conjunc- tively, and the phrase is in effect " date and publication;" so that, if there be a difference between the day of date EVIDENCE. 529 and the day of publication, the limit should run from the latest day. Under the English law, letters patent are dated when the provisional specification is filed. The applicant is allowed six months within which to complete his invention and to file a complete and extended specification. If he does this, the patent is formally issued to him ; if not, he has "provisional protection " for six months, when all pro- tection ceases. During the six months he may amend, alter, or improve upon his invention, and if his completed specification does not describe an invention inconsistent with his title and provisional specification, he may include his alterations, amendments, and improvements in his final paper. His provisional specification is in effect a caveat. It may not be followed up by a perfect invention ; when, after six months, all protection ceases. As the invention in its perfected, completed form is not "published" until the enrollment of the final speci- fication; as, in fact, much of the invention may be made between the time of the filing of the provisional and com- pleted descriptions, it would seem that the " date and publication" which are to determine the limit of a patent in this country should be the date of the filing of the complete specification. This was the view of the law entertained by Commis- sioner Ewbank, when referring to this subject in the Rules of the Patent Office published in 1851. (Patent Office Reports, 1851, p. 509.) He says : "Xo invention will be considered as patented in a foreign country unless the specification has been enrolled and the patent in all respects complete." There are but two reported cases bearing upon this 45 530 PROCEDURE IN THE PATENT OFFICE. subject. The first is that of Brooks v. Norcross (2 Fish., 661,) decided in 1851 by Mr. Justice Woodbury. Cer- tain French machines were offered in evidence to defeat the Woodworth patent, which machines, it was insist- ed, had been patented in France. The language of the court is as follows: "But were these two French inven- tions ever 'patented/ within the meaning of that word in the act of Congress, (July 4, 1836 ?) The word there is first applied in connection with the original issue of a patent, prohibiting it to be done by the Commissioner, if it had been 'patented' abroad. ( 7.) It is next used in connection with the defense to a patent, declaring the defense good if the invention has before been ' patented' abroad. ( 15.) " The word ' patented,' as here used, must of course mean covered and made known to the world by a public patent, so as to bring home to the public generally, and probably, a knowledge of its existence, and deprive any one of the credit and protection of being original, if he afterward construct a like machine. " But in the French system of patents at that time there existed private as well as public patents, and, for aught which appears, there may have been, till after 1828, pat- ents of the former character, and consequently not com- ing within the npirit or ordinary meaning of the word patented, as used here in the act of 1836 to describe what is open and should be known to the community. " This vital fact, whether private or public, ought to be made to appear by the defendant, as he sets up the patent as if coming within the word 'patented' as used in our own law, when nothing can be within the spirit of that law except what is public and thus known, open EVIDENCE. 531 and hence inimitable, and no other being in use here ; such being the design and principle in all objections of this class and the analogous classes, the patents must have been used publicly, if used before ; a description of them printed publicly, if printed before ; an invention of them been made public, if made before; and 'patented' of course publicly, if any way, before." The second case is that of Howe v. Morton, (1 Fish., 586,) decided by Judge Sprague in 1860. In this case the learned judge says: "But it is contended that this ma- chine was patented abroad prior to the invention here, although the specification of Fisher & Gibbons was not enrolled until after the invention of Howe here. This raises another, and, so far as I am aware, a new question upon the construction of our own statute. The language of the statute is ( 7, act of 1836) that it had before been ' patented or described in any printed publication. ' ' pat- ented in any foreign country.' Was this invention of Fisher & (ribbons patented in England before the middle of May, 1845 ? That depends upon what is to be deemed patenting. What was the patent taken out in Decem- ber? -It was as follows: 'Invention of certain improve- ments in the manufacture of figured or ornamental lace or net, or other fabrics.' That was the patent and whole description; and there is no pretense that it even indi- cates any invention of a sewing machine. " It is only by virtue of the specification enrolled in June, 1845, that we discover anything as to the stitching mechanism in the machine. " But it is said that when the specification was enrolled it took effect from the date of the letters patent, and, there- fore, what was specified and enrolled in June afterward 532 PROCEDURE IN THE PATENT OFFICE. was in fact patented in December, 1844. That is the argument. What is the meaning of the word 'patented' in our statute ? The English government may give such effect to certain acts of their own as they see fit; they may say letters patent may be granted in general terms, and that the fourteen years they grant may begin at the date of the letters patent, though no specification be en- rolled till six months after. That is the law of England; but the question is, what did the Congress of the United States intend when they used the words 'patented in any foreign country?' Did they mean that the invention might be patented before it was made ? Because, under the English law, the letters patent might be granted be- fore the specification was made, and the specification might contain inventions made after the letters patent were granted. There would be some force in the argu- ment if by the English law nothing could be put into the specification but what was invented or known before the letters patent were granted; but that was not so. The truth is, that the patentees had these six months by the terms of the letters patent to enroll their specification, and during all that time they may have made inventions and improvements; and the very thing that is relied upon here, as anticipating Howe, for all that we know, may have been invented after the middle of May, 1845, and put into the specification in June following. " What is meant by Congress undoubtedly is, in the first place, that there shall have been an invention ; and, in the second place, that it shall have been made patent to the world, patented. Now, we have no satisfactory evi- dence that the invention was made, and we have positive evidence that it was not made known to the world by EVIDENCE. 533 being patented until June, 1845; it was not made patent until after the invention by Howe. I am, therefore, of the opinion that Fisher & Gibbons' invention, whatever it may have been, was not patented until after Howe's invention, and can have no effect whatever." It will be observed that these decisions refer to the date of the foreign patent when offered as a defense upon an action brought for the infringement of an American patent, and they refer to patents not granted to the Ameri- can patentee. But Mr. Justice "Woodbury says, in Brooks v. Norcross : "But 'patented abroad' means the same thing in the defense as in the issue of letters;" and it is difficult to see why any portion of the life of the Ameri- can patent should be abridged by the filing abroad of an incomplete and unpublished specification. English let- ters patent, therefore, in so far as they affect the term of those granted in this country, are to be held to be "dated or published" at the time of the enrolling of the final specification. (Commissioners' Decisions, 1869, p. 60.) In the case of Maynard ex parte, the Commissioner says: "Applicant presents a proper case for an exten- sion, unless his invention is anticipated by the reference given by the examiner to the provisional specification of John Harcourt Brown, said to have been filed in England in August, 1855. "I have already had occasion (James Cochrane ex parte, Commissioners' Decisions, 1869, p. 60) to consider the mean- ing of the word ' patented,' as used in our law with refer- ence to inventions patented in foreign countries. In that case it was said: 'English letters patent, in so far as they affect the term of those granted in this country, are to 45* 534 PROCEDURE IN THE PATENT OFFICE. be held to be ' dated or published' at the time of the en- rolling of the final specification.' "A provisional specification is analogous to our caveat, and is filed for the purpose of permitting the inventor to complete or perfect his invention. Sometimes it can- tains no more than the title, and sometimes, as in the case of the present reference, is unaccompanied with drawings. Such a grant cannot be called a patent, nor can an invention described in it be said to have been 'patented' abroad. "But the provisional specification is found in aprinted publication, which bears date in 1856. This date must be construed most strongly in favor of the applicant. He has made oath that he is the original and first inventor. That oath can only be overcome by proof that the in- vention was made in this country, or patented or pub- lished abroad before the date of his invention. Proof that an invention was published in 1856 will not suffice. "We cannot assume it to have been published before April 18, 1856, the date of his application; indeed, it must be assumed, in the absence of proof, to have been published at a later period. "Nor is the recital in the publication, that the provis- ional specification bore date in 1855, of the slightest con- sequence. The printed publication can be evidence only to show that at the date of publication the thing described had an existence, and no recitals of former dates can be received as testimony. The contents of the book may be received as a description, but not as a history of the in- vention. This has been expressly held by the Supreme Court of the United States in Seymour v.McCormick, (19 How., 107.") In that case the book offered in evidence EVIDENCE. 535 recited that the machine in question had worked success- fully, but the court held that the publication could not be received as proof of any other fact, except that of the description of the improvement. "It follows that the improvement patented to Maynard has not been patented abroad, nor has it been described in a printed publication of earlier date than his patent." (Commissioners' Decisions, June 4, 1870.) As to the English laws and practice, vide supra, p. 85, et seq. 351. EVIDENCE OF NOVELTY AND UTILITY, (vide supra, p. .) Under the act of 1793 a patent was not even prima facie evidence that the invention patented was new or useful; but under the act of 1836 a patent issued after tho ex- amination required is received as prima facie evidence of the facts asserted in it. (Corning v. Burden, 15 How., 270, 271.) Whether there is novelty in an invention is a question to be determined upon a view of all the evidence in the case. (Sickles v. Borden, 3 Blatchf., 540; Batten v. Taggart, 17 How., 85 f Park v. Little, 3 Wash., 107.) A combination of old parts to produce a new and use- ful result is an invention for which a patent may be granted. (Evans v. Eaton, Pet. C. C., 322 ; Barret v. Hall, IMason^ 447; Pennock v. Dialogue, 4 Wash. C. C., 538; Earle v. Sawyer, 4 Mason, 1; Le Roy v. Tatham, 22 How., 132.) It is no objection to a patent for a combination that some or even all the parts have been known before. If the combination of them is new, and produces what is substantially a new and useful result, the combination is patentable. (Pitts v. Whitman, 2 Story ^C. C., 609; Hovey 536 PROCEDURE IN THE PATENT OFFICE. v. Henry, 3 West. Law Jour., 153; Homy v. Stevens,]. Wood, and Minot, 290; Blake v. Sperry, 2 N. Y. Leg. Obs., 251; Back v. Hermance, 1 Blatchf., 398; Hall v. Wi'Zes, 2 {6., 194.) A patent for a combination of three distinct things is not infringed by combining two of them with a third, which is substantially different from the third element described in the specification, (Prouty v. Ruggles, 16 Pet., 336; Silsby v. Foote, 14 How., 219; McCormick v. Talcott, 20 How., 402; Vance v. Campbell, 1 Black., 427; Earns v. Godfrey, I Wall., 78; Brooks v. Jenkins, 3 McLean, 432; Brooks v. Biekndl, 4 McLean, 30 ; Parker v. Hayworih, 4 McLean, 370; .LaJ'fo v. Shank, 1 .Fi'sA., 465; iee v. .5&m- <&/, 2 Fish., 89;) and a patent for a combination of two things is not a patent for a combination of one of the two things with a third and different thing. (Nicolson Pavement Company v. Hatch, 3 Fish., 432.) A patentee who is not the inventor of a peculiar ele- ment of a combination cannot claim that element in combination with every form of another element with which he unites it, but may claim it when constructed and combined as described in his specification. (Lara- bee v. Cortlan, 3 Fish., 5.) A combination in mechanism must consist of distinct mechanical parts, having some relation to each other, and each having some function in the organism, ( Yale and Greenleaf Manufacturing Company v. North, 3 Fish., 279;) and in considering whether one element of a com- bination is substantially the same as an element of another combination, the fact that one works better than the other, coupled with the fact that the change is not within the ordinary knowledge and skill of all mechanics, is highly EVIDENCE. 537 important, and often decisive. ( Woodman v. Stimson, 3 Fish., 98.) Though the separate parts are all as old as the mechanic arts, if they are organized into a new ma- chine, having a new mechanical operation, and the organ- ization of this new machine involved the exercise of original thought, and is productive of useful results, then it is patentable, (Blake v. Stafford, 3 Fish., 294;) and a modification of the parts of a combination, by which a new result is obtained, may be the subject of letters patent, ( Turrill v. Illinois Central Railroad Company, 3 Fish., 330;) but all the parts must coact in producing the result claimed for their combination. (Swift v. Whis- sen, 3 Fish., 343.) The patent raises the presumption of novelty and util- ity, and the degree of utility will not be very rigidly in- qu ired into. (Bell v. Daniels, 1 Fish . , 372 ; Teese v. Phelps, 1 McAllis., 49; Potter v. Holland, 1 Fish., 327.) This presumption, however, is not conclusive, and it may be shown that the invention is useless and worthless, (Leev. Blandy, 2 Fish., 89,) or that the thing had been previously known. (Coleman v.Leesor, MS., Ohio, 1850.) According to the American cases the result alone, when the effects produced are more economical, useful, and beneficial, or a better article, is not conclusive evidence of novelty of an invention; but under the English cases the result alone, under like circumstances, is conclusive evidence of invention. ( Yearsly v. Brookfield, MS. Appeal Cases, D. C., 1853.) As to the utility of an invention, upon application for a patent, the testimony of disinterested, practical men will be received, and it seems will overcome apparent resemblance to other inventions, (Hoyt ex parte, ib., 1860 ; 538 PROCEDURE IN THE PATENT OFFICE. Hayden ex parte, ib. ;) so also as to the point whether an invention furnishes either a new article or a better or cheaper one. (Arthur ex parte, MS., ib., 1861.) But it was held by Cranch, C. J., in the case of Winslow ex parte, that the opinion of experts or scientific and practical men, as to the comparative merits of two inventions, cannot affect the question of their novelty. (Ib., 1850.) The oath of the patentee, required upon his application for a patent, forms a legal ground for the presumption of the novelty of the claim until the contrary is proved. (Parker v. Stiles, 5 McLean, 60.) The novelty of an invention can be defeated by a prior use only, by showing that such prior use accomplished the same result in the same manner. (Foote v. Silsby, 2 Blatchf.,266.} Upon application for a patent the applicant cannot be required to furnish evidence of the practical result of his invention. (Seely exparte, MS. Appeal Cases, I). 0., 1853.) 352. EXAMPLES OF NOVELTY AND WANT OF NOVELTY. If nothing is shown that will invalidate a patent already granted, another will not be allowed for the same thing, (Grell v. Kunhert, Commissioners' Decisions, 1869, p. 5.) A machine which is designed to accomplish a certain ob- ject is 'not anticipated by one which accomplishes the same object only occasionally, and without its having been intended, (George W. Brown, ib., 10.) A patent fur- nishes no presumption that the invention was made be- fore the filing of the application, (John M. Heck, ib., 19.) A picture frame with a gilt-metal bead spun upon it from a flat band is a novelty, although such a frame with a gilt bead is old, as well as the mode of spinning metal beads, (George Schneider, ib., 24.) Placing advertisements EVIDENCE. 539 on railway tickets having been practiced, it is no nov- elty to designate upon them places of business in the towns at the end of the route for which they issue, ( A. N. Towne, ib., 39.) An invention is not to be deemed old because a like effect has been produced by similar means, if it was only incidentally and occasionally, without being intended, (Henry Waterman, ib., 51.) Escutcheons on stamps and the like, for inclosing distinctive marks, are old and not patentable, (Lewis Abraham, ib., 59.) An English provisional specification, upon which no patent was issued, can be treated only as a published descrip- tion in ascertaining the state of the art, (R. 0. Lowrey, ib., 85.) A die, whose surface is formed by electro typing from an article of straw, is not to be patented, if dies have been before made with a like surface electrotyped from a cast or model of straw, (H. Loewenberg, ib., 92.) In the application : It being a mechanical expedient to insert metal into a hub in order to diminish friction, it requires no invention to insert soft metal in the eye of a wooden sash pulley for the same purpose, ( Thomas B. Stout, ib., 4.) To use an old article in a new situation ia not of itself such a novelty as to be monopolized, ( Thomas Kerr, ib., 16.) The application of a known device may be deemed novel if it lies so far out of the beaten track as not to be suggested by the former use of it, (Robert A. Cheesebrough, ib., 18.) It is a mere double use to ap- ply to several steam boilers what has been applied to one before, though of a different kind, (James Murphy, ib., 24.) It is but a double use to apply to the casting of stove covers aud centers the same process which had been previously employed in casting fire shovels and the like, (E. C. Little, ib., 25.) There is no novelty in practicing 540 PROCEDURE IN THE PATENT OFFICE. on a small scale what has been practiced on a large one before, or in practicing it for a different purpose, ( Wood- ward v. Heist, ib., 34.) There is no invention in employ- ing upon a sheet-metal photographic frame a thumb- latch, which had been previously employed on other photographic frames, (A. Q. Plait, ib., 42.) The use of a friction 'driver in a type-setting machine may be the ground of a patent, though old in itself, if it has never been used in such a machine before, (Joseph Thome, ib., 76.) A claim for the combination of a pencil, rubber eraser, and sleeve to unite them, is not answered by the sleeve used in porte crayons, parasol handles, and the like, ( Vos- burg $ Ludden, ib., 80.) Land vehicles and water craft having been employed as advertising mediums, a vessel constructed and especially adapted for the purpose in an ordinary mechanical way is not to be regarded as an invention, (A. M. Biedler, ib., 91.) The application of a device to a mower, which has been previously applied to a reaper in the same way, is a mere double use, (H. M. Carter, ib., 96.) A jointed rod to operate a caster wheel in a harvester being old, there can be no invention in substituting it for a stiff rod in the place where the latter had been used, (//. M. Carter, ib., 96.) Metallic springs having been used on eye-glasses to close them, and hav- ing been used on articles in the same way and for the same purpose as the applicant uses them on eye-glasses, his device is not entitled to favorable consideration, ( Wil- liam Linden, ib., 108.) In the material: The substitution of a cheaper ma- terial for the bed of a billiard table, as cement for glass and the like, may merit favorable consideration, ( W. E. Bond, ib., 17.) The substitution for an unelastic material EVIDENCE. 541 of one possessing elasticity is patentable, where that quality is made to subserve a useful purpose, as in rail- road chairs, (6r. E. Deering, ib., 26.) A sheet-metal box or frame, with a wired flange, being known, there is no novelty in substituting it for a wooden or a cast-metal box in photographic frames, (A. C. Plait, ib., 42.) A trans- parent cylinder surrounding the wick tube of a lamp, combined with a deflector above and an air distributor below, would not be patentable had an opaque cylinder been used in the same combination, (Joseph Ridge, ib., 46.) Change of material is not patentable where the same material has already been used for the same general pur- pose, and is merely put in some new relation, (Dimond Doolittle, ib., 64.) To combine with a top rim flexible metallic lamp shades cannot be considered novel, as such shades are old, and shades not metallic have been combined with such a rim, (Dimond $ Doolittle, ib., 64.) Although a process was alleged to consist in the use of alum after soap, yet if the specification and claim repre- sent it to consist in the use of soap and alum in the com- bination, it is anticipated by a published process in which aluminous soap was recommended for the same purpose, (R. 0. Lowrey,ib.,85.) Metallic springs for eye-glasses are anticipated by rubber springs, which have been used on them in a similar manner, ( William Linden, ib., 108.) In the form: A change in the form of the aperture which it closes does not render a damper worthy of a patent, (E. It. Fenno, ib., 9.) Introducing additional wheels into gearing does not alone render the combina- tion legitimate, (E. Z. Webster, ib., 9.) Piano stools hav- ing been made with iron legs, having recesses for tips, and chairs with wooden legs provided with dove-tailed 46 542 PROCEDURE IN THE PATENT OFFICE. recesses for tips, and with rubber cushions inserted therein, to make piano stools with iron legs, constructed with such dove-tailed recesses and provided with such cushions, is not patentable, (f*. Y. Brown, ib., 18.) Tables vibrating in the arc of a circle having been used in sew- ing machines to carry the work, there is no merit in sub- stituting a table for a horn which vibrated vertically in a straight line in another machine, (Daniel Mills, ib., 25.) A change of form which renders an instrument more useful is patentable, although the change is simple, (/. D. Warner, ib., 41.) Substituting a broad-faced stop for a pin to check the movement of the arm in a horse rake should not be patented, (A. T. Barnes, ib., 81.) In the structure : The sanction of the office will not be given to extending a railroad shoe lengthwise, so as to underlie the whole rail, (Watts Cooke, ib., 6.) Merely reversing the operation of an apparatus is not a merit- orious invention, (GeorgeW. Blake, ib., 9.) A claim for hoppers within the furnace, with orifices between the boilers for feeding sawdust to the grate, so that the dust shall be dried, is not answered by such hoppers outside of the furnace, with orifices outside of the boilers, (Sam- uel Sykes, ib., 9.) The mere reversal of two parts of a device in their position upon a structure is not to be regarded as a novelty, (R. A. Leeds, ib., 13.) To add a shoulder for receiving a spring deserves no reward from the office, (Sherrett Warner, ib., 15.) To fit a tool with awls of different blades where one has been used before is not a novel conception in law, ( Wilcpx v. Woodbury, ib., 17.) It is a mere limitation and not an expansion of an invention, to make the case of a centering awl whole which another has made with a split, so as to fit coun- EVIDENCE. 543 tersinks of different sizes, (ib.) To pack bales of com- pressed feed in paper, retained by slats and binders, in- stead of straw retained by slats as usual, is an improve- ment deserving recognition, (S. W. Adwen, ib., 23.) To unite with steam boilers of different kinds a steam gen- erator and superheater, such as has been united with one kind of boiler before, and claim the combination, is not to be allowed, (James Murphy, ib., 24.) Adding a hinged lid to a vignette plate, and changing the mode of holding it in position, so that the whole frame is rendered less cumbersome, deserves a favorable consideration, (.A. C. Plait, ib., 42.) A band upon an open-grooved arrow gun, which holds the arrow in the groove while it is im- pelled by the spring, is not anticipated by a band which holds the arrow only before it is discharged, nor by such guns having close grooves or barrels, (Charles Robinson, ib., 44.) A claim for a short stud, projecting downward from the head of a railroad spike, might possibly be understood to embrace a flexible barb in the same posi- tion ; and that being old, the claim should not be allowed, (P. J. Dwyer, ib., 57.) Mere omission of parts does not constitute patentable novelty; but, if followed by reor- ganization, it may, (George McRoy, ib., 58.) Postage stamps with coupons, to be detached when the stamps are applied, in order to cancel them, anticipate revenue stamps with like coupons, although the coupons of the lat- ter are made to correspond with the stamps, and are pre- served in order to check frauds, (Lewis Abraham, ib., 59.) There is no invention in changing a mill from a hor- izontal to a vertical position, nor in applying the driving power directly to the main roller instead of applykig it through other mechanism, nor in incasing two. bolts in 544 PROCEDURE IN THE PATENT OFFICE. one casting, (Stevens $ Powers, ib., 63.) To spring an elastic body of a lamp shade over an inflexible rim can- not be regarded as novel, an elastic rim having been before sprung into an inflexible body, (Dimond $ Doolittle, ib., 64.) A ladies' safety belt, made with elastic pieces inserted, having been allowed a patent, it is an improve- ment upon it to make the belt in two pieces, connected by two buckles, so that the flaps which are attached are always opposite to each other, (Bacheller v. Porter $ Ban- croft, ib., 64.) Pumps having been made in sections, there is no invention in making hydrants in sections, ( Charles $ H. Ackerson, ib., 74.) A combination in a type- setting machine of an ejecting finger, a key to select the finger, and a carrier operated by a power separate from the key, is not answered by a combination in which the key both selects and operates the finger, (Joseph Thome, ib., 76.) A cover combined with a door latch sunk into the face of a door being old, as well as a projecting cover arranged on the face of a door, there is no novelty in a projecting cover with a latch so arranged, (P. W. Dean, ib., 77.) A right and left screw having been used with a printer's side-stick, there is no invention in operating a quoin with one, although the side-stick can be used only in a press of a given size and a quoin can be used in any, (F, H. Webb, ib., 78.) Whether a claim to a pen- cil, rubber eraser, and sleeve to unite them, can be ex- tended to cover a complete cylinder for a sleeve without the ring by which the semi-cylinders composing the sleeve are connected, quere? (Vosburg Ludden, ib., 80.) To drive two rollers, one by the gear wheel on one end of a shaft and the other by another gear wheel on the other end of the same shaft, is an improvement on a similar EVIDENCE. 545 machine, in which one roller is driven by a gear wheel on the other, (Powers $ Stevens, ib., 81.) A broad-faced stop with a flange extending down the side of the bar on which it is placed, so as to bear the blow better, when substituted for a pin to check the movement of the arm in a horse rake, is patentable, (A. T. Barnes, ib., 81.) To make a latch and weighted catch in one piece, which have before been made in two and soldered together, is not to be esteemed an invention, (.#. M. Thompson, ib., 81.) .A metal shade in one piece, with flexible springs on its inner periphery, and intended to rest by the springs on the glass chimney of a lamp, is not anticipated by one which rests by three inflexible points on a metal cap over the chimney, (M. H. Collins, ib., 82.) If a pinion has been secured upon the arbor of a wheel by means of a screw thread cut upon the arbor, there is no invention in securing the wheel upon the arbor of the pinion by the same means, although some slight advantages are incident to the' latter construction, (J. A. Smith, ib., 83.) There is no merit in forming blocks for a wooden pave- ment with a rebate on one side, so as to form a channel for holding concretes, after such blocks have been cut with a rebate on both sides -for the same purpose, and the same effect has been produced by using long blocks alternating with short ones, (L. S. Robbins, ib., 84.) A cork machine in which the cork was cut tapering by four cutters, which were made to approach each other during the process by means of a collar sliding upon the shaft to which they are hinged, does not anticipate one in which the cntter is in one piece, but with slits, and the edges approach each other in consequence of their form, (M. F. Crocker, administratrix, ib., 85.) An instrument for 46* 546 PROCEDURE IN THE PATENT OFFICE. kindling tires by gas, which is supplied to it by a flexible pipe attached to a tubular handle, is not anticipated by a like instrument for kindling fires having no such handle, although it was suggested that it might be used with gas, if desired, (Jeremiah Kenney, sr., ib., 95.) Where the dis- tance between two points in an instrument is all that distinguished it from others, and that distance must be varied in different applications, it will not render the in- strument patentable, ( I. D. Warner, ib., 109.) In a paper- folding machine the addition of a spring to one of the rollers, so that it will yield to the folding knife, is entitled to favor, (S. C. Forsaith, assignee, gc., ib., 111.) 353. EXAMINATION OF PARTIES. As a general rule, a party in a patent cause cannot be a witness in his own behalf. (Buckv. Hermance, 1 Blatchf., 324; Foote v. Silsby, 3 Blatchf., 508.) But the judiciary act of September, 1789, 34, (1 Stats, at Large, p. 92,) in adopting the laws of the several States as rules of decisions in the courts of the United States, embraced laws relating to evidence; and where, therefore, under the laws of any State, parties may be examined as witnesses in their own behalf, a plaintiff in an action in the United States courts for in- fringement of his patent is a competent witness as to the issues raised therein. (Haussknecht v. Olaypool, 1 Black, 431; Vance v. Campbell, 1 Black, 427.) Formerly the testimony of an inventor or a party to the record was not admissible in an interference, ( Yearsly v. White, MS. Appeal Cases, D. C., 1853,) even though he had assigned all his interest in an invention to another. (Earns v. Richards, ib., 1859; Hill v. Dunklee, ib., 1857; Gibbs v.Johnson, ib., 1860; G'Eielly v. Smith, ib., 1853; Barstow v. Swain, ib., 1860.) Upon this point Mr. Chief EVIDENCE. 547 Justice Cartter said, (Irwin v. Merrill, MS. Appeal Cases, D. 0., 1864:) "It is an elemental rule of evidence, as repeatedly declared by my predecessors and now affirm- ed, that a patentee and party to the record cannot become a witness by transfer of his right pending the proceed- ing. I do not possess the right, if I could see the reason, for removing this disability. It is urged by the Com- missioner that the legislature and courts incline to listen to the testimony of parties. If the federal legislature, the law-making power of this jurisdiction, had made parties competent as witnesses, I should not hesitate to follow, but Congress has failed to do so. * * * * The prevailing rule of all good courts is to administer the law as they find it, without attempting to make it." 354. PARTIES IN INTERFERENCE CASES MAY TESTIFY. Since the act of July 2, 1864, relating to the law of evi- dence in the District of Columbia, parties to the record in interference cases, and all parties interested in the same, have been deemed competent to give evidence. The provisions of the act are as follows: " Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That on the trial of any issue joined, or of any matter or ques- tion, or on any inquiry arising in any suit, action, or other proceeding in any court of justice in the District of Columbia, or before any person having by law, or by consent of parties, authority to hear, receive, and exam- ine evidence within said District, the parties thereto, and the persons in whose behalf any such action or other pro- ceeding may be brought or defended, and any and all per- sons interested in the same, shall, except as hereinafter excepted,be competent and compellable to give evidence, 548 PROCEDURE IN THE PATENT OFFICE. either viva voce or by deposition, according to the practice of the court, on behalf of either or any of the parties to the said action or other proceeding: Provided, That nothing herein contained shall render any person who is charged with any offense in any criminal proceeding competent or compellahle to give evidence for or against himself or herself, or shall render any person compellahle to answer any question tending to criminate himself or herself, or shall in any criminal proceeding render any husband competent or compellable to give evidence for or against his wife, or any wife competent or compellable to give evidence for or against her husband, or in any proceeding instituted in consequence of adultery ; nor shall any hus- band be compellable to disclose any communication made to him by his wife during the marriage, nor shall any wife be compellable to disclose any communication made to her by her husband during the marriage. Approved July 2, 1864." 355. COMPETENCY OF WITNESSES. It was also formerly held that the testimony of a witness directly or indirectly interested was not admissible in an interference, (Mar- shall v. Mee, MS. Appeal Cases, D. (7., 1853,) however small the amount of the "interest might be, (Arnold v. Bishop, MS. Appeal Cases, D. C., 1841;) but by the act of July 2, 1864, the disabilities of such witnesses were removed, and they are now competent and compellable to testify. If no objection is made to the competency of a witness on his examination, and both parties examine him, it will be too late to take the objection afterward. (Allen v. Alter, MS. Appeal Cases, D. C., 1860.) In determining what credit is to be given to the testimony of witnesses, every circumstance affecting EVIDENCE. 549 their veracity should be taken into calculation, (Evans \.Hettick, 3 Wash., 423,) and weight should be given to it in proportion to the competency of the witness to judge of the matter sworn to. (Allen v. Hunter, 6 Mc- Lean, 310.) The presumption of law is, that a witness on oath testifies honestly until the contrary is known. (New England Screw Company v. Sloan, MS. Appeal Cases, D. C., 1853.) The testimony of witnesses otherwise in- competent may be received and considered by the agree- ment of the parties. ( Warner v. Goodyear, ib., 1846.) 356. EXPERTS. To determine the question of the mechanical difference of machines, the law permits the opinions of men called experts to be given in evidence, and when such men are qualified, and free from bias, their testimony is entitled to great respect. (Morris v. Barret, 1 JFish., 461.) The patent act contemplates two classes of persons as peculiarly appropriate witnesses in patent cases, namely: 1st, practical mechanics, to determine the sufficiency of the specification as to the mode of constructing, com- pounding, or using the patent ; 2d, scientific and theo- retic mechanics, to determine whether the patented thing is substantially new in its structure and mode of opera- tion, or a mere change of equivalents; and the second class is by far the higher and more important of the two. (Allen v. Blunt, 3 Story, 742.) The opinions of professional men are evidence only as to matters which relate to their profession, (Brooks v. Bicknell, 3 McLean, 447 ;) thus, in medical science a phy siciau is an expert; in navigation, a sailor. (Page v. Ferry, 1 Fish., 298.) The statute defines the character of an expert as one " skilled in the art or science" to which 550 PROCEDURE IN THE PATENT OFFICE. his opinion appertains, ($.;) and one not so skilled is not a fit person to testify as to whether a specification contains, a sufficient description. (Poppenhausen v. New York 6r. P. C. Company, 4 Blatchf.; Allen v. Hunter, 6 McLean, 307.) The testimony of experts is useful to show the opera- tion of devices; but when experts undertake to tell what a patent is for, they assume the duty of the court; and when they undertake to say what is or is not a violation of the patent, they not only assume the duty of the court, but the jury. ( Waterbury Brass Company v. New York and Brooklyn Brass Company, 3 Fish., 43.) Experts may be examined to explain the meaning of terms of art on the principle, Caique in sua arte credendum, (Corning v. Burden, 15 How., 270; Winans v. New York and Erie Railroad Company, 21 How., 100,) or as to whether a patent is void for uncertainty, ( Washburn v. Gould,, 3 Story, 138,) or to explain the difference between an origi- nal and reissued patent, (Philadelphia and Trenton Railroad v. Slimson, 14 Pet., 462,) or as to the identity of different mechanical structures, (Parker v. Stiles, 5 McLean, 64,) or the state of the art at any given time, ( Winans v. New York and Erie Railroad, 21 How., 100,) or to explain ma- chines, models, and drawings exhibited, (ib.;) but their opinion cannot be dignified with the mantle of author- ity, even on questions of science. (French v. Rogers, 1 Fish., 133.) REISSUES. 551 XXI. Reissues. SEC. 357. Resume of the law. 358. Provisions act July, 1870. 359. To whom granted. 360. Application made by inventor only if living. 361. Concurrence of parties. 362. Rights of assignees. 363: Statement of title. 364. Application acted on as soon as filed. 365. . Defects cured by reissue. 366. There may be more than one reissue. 367. Use under defective patent. 368. Reissue during extended term. 369. Clerical error, fault of office. SEC. 370. Through fault of applicant. 371. Divisions of a reissue. 372. Action of the Commissioner. 373. Reissue must be for the same invention. / 374. Specification and claim subject to revision. 375. Surrender does not take effect until reissue is granted. 376. Rights conferred by reissue. 377. Petition for reissue by inventor. 378. Petition for reissue by assignee. 379. Oath by applicant for reissue by inventor. 380. Oath by applicant for reissue by assignee. 357. RESUME OF THE LAW CONCERNING REISSUES. Be- fore the British act of 5 and 6 Wm. IV. c. 83, 1835, the consequence of a defect in the specification, in England, was an absolute loss of the privilege of the patent right. By the first section of that act the patentee or his as- signee "may, with the leave of the attorney or solicitor general, enter a disclaimer of any part of either the title of the invention or of the specification, stating the rea- son for such disclaimer, or may, with such leave, enter a memorandum of any alteration in the said title or speci- fication, not being such disclaimer, or such alteration as shall extend the exclusive right granted by the patent;" and such disclaimer or memorandum is thereafter to be considered a part of the title or specification. In the early American cases, after the act of 1793, it \ 552 PROCEDURE IN THE PATENT OFFICE. appears to have been supposed that the law had by that act been varied from the English; so that the patent right was forfeited and lost only in case of the defects speciiied in the sixth section being designed and fraudu- lent. It is provided by that section that, in a case for an infringement, the defendant may give in evidence, in his defense, " that the specification does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public." Mr. Justice Story, in giving an opinion in the circuit court, in 1813, on an examination of this section, re- marked : " We think that the manifest intention of the legislature was not to allow any defect or concealment in a specification to avoid the patent, unless it arose from an intention to deceive the public." ( Whittemore v. Cutter, 1 Gall., 429.) In the same year, Mr. Justice Washington, instruct- ing the jury in the circuit court of the United States for Pennsylvania, said on the subject of concealment, "the matters not disclosed must appear to have been con- cealed for the purpose of deceiving the public, in order to invalidate the patent." (Parkv. Little, 3 Wash., 196.) In 1817, again, these judges appear still to have enter- tained the same opinion. (Lowell v. Lewis, 1 Mass., 182 ; Gray v. James, 1 Pet. O. 0., 401.) But it was, at the same time, remarked by Mr. Justice Story, that the doctrine was liable to grave objections on the score of expe- diency. (Whittemore v. Cutter, 1 Gall., 429.) And it was subsequently abandoned, and the English doctrine adopt- ed, that a defect in the specification, from want of com- REISSUES. 553 pliance with the requisitions of the third section of the act of 1793, rendered the patent void; but that, if the defect arose from mistake, a new patent could be taken out for the unexpired part of the term. In this respect our law on this subject differed from the English. This doctrine, as to the surrender and renewal of the patent, was suggested by Mr. Justice Thompson in a case that came before him in 1824, in which he remarked, "I see no insuperable objection to entering a vacatur of the patent of record in the Department of State, if taken out inadvertently and by mistake. All the proceedings in that department, on the subject of patents, are ex parte, except in the case of interfering applications. The department act rather ministerially than judicially, and upon the representation of the applicant, without entering into the question of right, and there seems to be no good reason why, on a like ex parte application, the patent may not be surrendered, and canceled of record, if no misconduct be imputable to the patentee in taking it out. And in such case, as the exclusive right is not to exceed fourteen years, the second patent may be limited according to circumstances, and thereby secure both to the patentee and the public their respect- ive rights." (Morris v. Huntington, 1 Paine, 355.) This doctrine was afterward distinctly adopted by the Supreme Court. (Townsend v. Raymond, 6 Pet., 220; Shaw v. Cooper, 7 Pet., 292.) In confirmation of the construction thus given to the patent law of 1793 the fifth section of the additional law of 1832 was passed, by which it is enacted that "whenever any patent shall be invalid or inoperative, by reason that any of the terms and conditions prescribed 47 554 PROCEDURE IN THE PATENT OFFICE. in the third section in the said act (of 1793) have not, by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the said inventor, it shall be lawful for the Secretary of State, upon the surrender to him of such patent, to cause a new one to be granted to the said inventor, for the same invention, for the residue of the period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said third section of said act." The law was thus put upon a liberal footing in respect to patentees, and the act of 1836, section thirteen, made a similar provision. (Phillips on Patents, 301.) 358. PROVISIONS OF THE ACT OF JULY 8, 1870. When- ever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he 'had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the Com- missioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the -same invention, and in accordance with the corrected specifications, to be issued to the pat- entee, or, in the case of his death or assignment of the whole or any undivided part of the original patent, to his executors, administrators, or assigns, for the unex- pired part of the term of the original patent, the sur- render of which shall take effect upon the issue of the amended patent; and the Commissioner may, in his dis- cretion, cause several patents to be issued for distinct REISSUES. 555 and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue of each of such reissued letters patent. And the specification and claim in every such case shall be subject to revision and restriction in the same man- ner as original applications are. And the patent so reissued, together with the corrected specification, shall have the effect and operation in law, on the trial of all actions for causes thereafter arising, as though the same had been originally filed in such corrected form ; but no new matter shall be introduced into the specification, nor, in case of a machine patent, shall the model or drawings be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commis- sioner that such new matter or amendment was a part of the original invention, and was omitted from the spe- cification by inadvertence, accident, or mistake, as afore- said. (Act of July 8, 1870, 53.) 359. To WHOM GRANTED. A reissue is granted to the original patentee, his legal representatives, or the assignees of the entire interest, when, by reason of a de- fective or insufficient specification, the original patent is inoperative or invalid, provided the error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention. (Patent Office Rules, July, 1870.) The sole right to surrender is given, 1, to the patentee if he is alive and has made no assignment of the original patent; 2, to the executors and administrators of the patent after his decease, when there has been no such assignment; 3, to the assignee, after the death of the 556 PROCEDURE IN THE PATENT OFFICE. inventor, when there has been an assignment of the original patent. Where, however, there has been an assignment of an undivided part of the whole patent the assignee of such part and the patentee become joint owners of the patent, and should join in the surrender; and if they do not, it will be invalid unless the part owner not joining shall ratify it. But a licensee or one who has had transferred to him a less or different inter- est than either the interest in the whole patent or an undivided part of such interest, or an exclusive sectional interest, has no legal right as assignee to surrender, and a surrender without his concurrence is valid. (Potter v. Holland, I Fish., 327.) 360. APPLICATION MUST BE MADE BY INVENTOR, IF LIV- ING, IN CASE OF ASSIGNMENT. Patents may be granted and issued or reissued to the assignee of the inventor or discoverer, the assignment thereof being first entered of record in the Patent Office; but in such case the appli- cation for the patent shall be made and the specification sworn to by the inventor or discoverer, and also, if he be living, in case of an application for reissue, (Act of July 8, 1870, 33;) but if the inventor be dead, the appli- cation may be made and the specification sworn to by assignees. 361. CONCURRENCE OF PARTIES. The petition must show that all parties owning an undivided interest in the patent concur in the surrender. (Patent Office Rules, July, 1870.) 362. RIGHTS OF ASSIGNEES. It is not in the power of a patentee, by the surrender of his patent, to affect the rights of third persons to whom he has previously by assignment passed his interest in a whole or a part of REISSUES. 557 the patent, without the consent of such assignees. (Potter v. Holland, 1 Fish., 327; Woodworth v. Stone, 3 Story, 750; Smith v. Mercer, 4 West. Law Jour., 52; McBurney v. Goodyear, 11 (7wsA., 571.) The reissued patent oper- ates from the commencement of the original, and will inure to the benefit of assignees who became such before the reissue, although no assignment is made to them after the reissue. ( Woodworth v. Hall, 1 Wood. $ Minot, 248.) A surrender of letters patent renders void all assign- ments so far as those are concerned who assent to the surrender. It is necessary that a prior assignee should have a new assignment before he can maintain an action for an invasion of the patent. (Gibson v. Richards, Index Pat. Dec., No. 376.) Consent may be manifested by join- ing in the surrender, or previously authorizing it, or sub- sequently ratifying or approving it; and taking an ad- vantage and benefit of it would be a ratification; and when so consented to the rights of the party consenting in and to the old patent are forever gone. (Potter v. Holland 1 Fish., 327.) Assignees are not compelled to take under the reissued patent, and give up the right had under the old one. They may, if they prefer, rest their claims upon the specification as it stood when they purchased their right, (Smith v. Mercer, 4 West. Law Jour., 52;) and there may be one claim of fight under the old patent for one section of country and a different claim of right under the reissued patent for another section of country, (Pot- ter v. Holland, 1 Fish., 327.) Where there has been an assignment of an undivided part of the whole original patent, in such case the as- signee of such a part and the patentee become joint 47* 558 PROCEDURE IN THE PATENT OFFICE. owners of the patent, and should join in the surrender; and, if they do not, it will be invalid, unless the part owner not joining shall ratify it. (Potter v. Holland, 1 Fish., 327.) A person to whom the patentee has passed his inter- est in a part of the old patent, upon the surrender of the same by the patentee, and obtaining a reissued patent, is entitled to the same right, under the reissued patent, that he had to the old one. (Ib.) He may, however, elect to hold under the old patent, and it is not a valid objection, that in such case there would be different claims of right in the same invention secured to differ- ent sectional owners. (Ib.) A reissue does not inure to the benefit of a prior as- signee. He takes by ratification, not by inurement. (Burdell v. Denig, 2 Fish., 589.) 363. STATEMENT OF TITLE. A statement under oath of the title of the party proposing to surrender must be filed with the application. (Ib.} 364. APPLICATION FOR REISSUE ACTED ON AS SOON AS FILED. Reissued patents expire at the end of the term for which the original patent was granted ; for this rea- son applications for reissue will be acted on as soon as filed. (Ib.) 365. DEFECTS CURED BY REISSUE. The act contemplates two classes of cases in which reissues may be granted: First, where the patent is inoperative and invalid by rea- son of a defective or insufficient specification; second, where the objection arises by reason of the patentee claim- ing as his own invention more than he had a right to claim as new, (Goodyear v. Day, MS. New Jersey, 1852;) but whether the defect be in the specification or claim, the REISSUES. 559 patentee may surrender his patent, and by an amended specification or claim cure the defect. There is nothing in the act which requires the pat- entee to claim all things in a reissued patent which were claimed as his original invention in his original patent. A specification may be defective as well by an excess of claim as by a defect in the mode of stating it, and the inventor is always at liberty to omit part of his original invention if he deems it expedient, ( Carver v. Braintree Company, 2 Story, 439;) and he is not bound to include in his reissued patent improvements to which he may have been actually entitled under the original patent, (Knight v. Baltimore and Ohio Railroad Company, 3 Fish. , 1 ;) and where the claim in the original was for a new article of manu- facture, and in the reissue it was for a combination and arrangement of the parts,it was held that the former claim was unfortunate, as changes could be made to avoid the patent while retaining the principle of the invention, and that the defect was curable by reissue. (Middletown Tool Company v. Judd, 3 Fish., 141.) It is not necessary that there should have been any ad- judication upon the patent in order to justify a reissue; the oath of the party as to the existence of the facts re- quired for a reissue is enough, (Bull ex parte, MS. Ap- peal Cases, I860;) and though the old specification had been adjudged good, yet if defective, so as to be open to litigation, and thus somewhat "inoperative," the Com- missioner may reissue it. (Woodworth v. Edwards, 3 Wood. Minot, 126.) The disclaimer of a part of an invention in the original application, provided such disclaimer arose from inad- vertency, accident, or mistake, will not prevent the pat- 560 PROCEDURE IN THE PATENT OFFICE. entee from embracing the part so disclaimed in a reissue of his patent, (Hay den ex parte, MS. Appeal Cases, D. (7., I860,) and a statement in an original patent that a part is old does not prevent such part being claimed in a re- issued patent, though it seems it would have that effect if made advisedly. (Laidly v. James, MS. Appeal Cases, D. C., I860.) 366. THERE MAY BE MORE THAN ONE REISSUE. There may be more than one reissue of the same patent. There is nothing in the patent acts that limits the correction of errors to such as may have been the first discovered. (French v. Rogers, 1 Fish., 133.) The surrender and re- issue, no matter how often they recur, are reciprocal, each in consideration of the other, and form together but a single act; and it is for the public interest that the surrender and reissue should be allowed to follow each other as often as the patentee is content to be more spe- cific or modest in his claims. (Ib.} But where the patentee surrendered his original patent and obtained a reissue, and afterwards surrendered the reissued patent and obtained a second reissue, it was held that the original patenthavingbeen canceled when thefirst reissue was granted, the second reissue was not valid unless the improvement described in it was in its princi- ple and mode of operation the same with that intended to be described in the first reissue. (Knight v. Baltimore and Ohio Railroad Company, 3 Fish., 1.) When a patent has issued in one division of an appli- cation for a reissue the original patent is dead, and no new division can be entertained. ( Whitely and Gage ex parte, Commissioners' Decisions, 1869, p. 63.) And after one patent has issued, upon an application REISSUES. 561 for a reissue the original patent is annulled, and no new division can be entertained. In the case of Whitely ex parte, (MS. Appeal Cases, D. C., 1869,) it was held by Chief Justice Cartter that the surrender of a patent and letters patent granted in reissue, for the same subject, upon such surrender is death to the first patent and life to the second. What- ever of title to the subject of the patent survives is to be found in the letters of reissue, and not in the patent out of which such letters grow; and any application made thereafter for reissue should be based upon the reissued letters patent. 367. USE UNDER THE DEFECTIVE PATENT. ~No prior use of an invention under a defective patent can take away the right to surrender and reissue such patent, or authorize a use under the renewed patent, (Stimsonv. Western Rail- road, 4 How., 402;) and the fact that the thing described in an original patent had been in public use in the inter- val between the issue of the original and reissue, does not exclude an inventor from the right to resume them in a reissue. (Goodyear v. Day, MS., N. J., 1852.) 368. REISSUE DURING EXTENDED TERM. The Commis- sioner can lawfully reissue letters patent on an amended specification after the expiration of the original patent and during the existence of an extended term. ( Wilson v. Rosseau, 4 How. , 688.) The extended patent of twenty- one years is, in such case, to be regarded as the " original patent," within the meaning of 13 of the act of 1836, (Gibson v. Harris., 1 Blatchf., 169;) and the reissue of a patent extended by act of Congress to twenty-eight years, after it had been previously extended to twenty- one years, stands on the same footing. There is no 562 PROCEDURE LN THE PATENT OFFICE. difference in principle. (/&,; Woodworth v. Edwards, 3 Wood. $ Minot, 126.) 369. A CLERICAL ERROR WILL BE CORRECTED WITHOUT FEES IF IT OCCURRED THROUGH THE FAULT OF THE OFFICE. Before the passage of the act of 1836, the Supreme Court of the United States held, (Grant v. Raymond, 6 Pet., 242; Shaw v. Cooper, 7 Pet, 314,) that a defective patent might be surrendered, canceled, and reissued to correct an hon- est mistake on the part of the patentee, or an error com- mitted by the office. The 13th section of the act of 1836 provides for sur- renders and reissues in two specified cases, but is silent as to all other grounds of surrender. It is believed that the right of the patentee to surrender his patent for the correction of errors committed by the office remains un- affected by the legislation contained in that section. It could never have been the intention of the legislature to restrict the correction of mistakes to those enumerated, or to declare that the errors of the office should not be reformed as promptly as those of the patentee. Accordingly it has been the practice of the office to correct all errors in parties' names, titles, dates, and all omissions or insertions of words made by the fault of the office, upon the surrender of a patent, without fee, but to require the patentee, when seeking the correction of his own mistakes, to pay the fee and conform to the pro- visions made for cases of reissue. In Dental Vulcanite Company v. Wetherbee, 3 Fish., 87, a patent thus corrected came under the review of the full court in the district of Massachusetts. In that case, after an assignment of the entire interest of an inventor, the application for reissue was signed by the patentee, REISSUES. 563 and the reissue was granted to him instead of to his assignee. The court, by Mr. Justice Clifford, say: "Whether the mistake was first discovered by the Pat- ent Office, or by the party named as patentee, does not appear, but it does appear that the letters patent were immediately returned to the Commissioner, and the mis- take was corrected as a clerical error. Unless it could be corrected as a clerical error it could not be corrected at all, as it was clearly not a case falling within the pro- vision authorizing a surrender and reissue." Again: "Second surrender was asked merely to correct an error of date in the first reissue, and it is obvious that the sug- gestion of error was well founded, and that the correc- tion requested was one proper to be made." In Detmold's ca;e, (4 Opinions, 335,) Nelson, Attorney General, held that the date of a patent maybe altered to correspond with that of a foreign patent, previously taken out by the inventor, where the mistake has not arisen from any fraudulent or deceptive intention. (See also Smith v. Ely, 5 McLean, 78-86 ; James Cochran, Commis- sioners' Decisions, 1867, p. 60.) 370. ERROR THROUGH THE FAULT or THE PATENTEE WILL BE CORRECTED ONLY BY REISSUE ON THE USUAL TERMS. A patentee when seeking the correction of his own mis- takes is required to pay the fee required by law and con- form to the provisions made for cases of reissue. (Ib.) In the case of Havemeyer ex parte the Commissioner says : "This is a motion on the part of the American Papier Mache Company for the correction of an alleged cler- ical error. The facts are briefly as follows : Letters pat- ent for an improvement in the manufacture of sugar molds, and other articles, were granted to Carl Kronig 564 PROCEDURE IN THE PATENT OFFICE. in 1864. In 1868, this patent was returned with the fol- lowing petition: 'The petition of Theodore A. Have- meyer, J. Lawrence Elder, and Charles F. Loosey, of "New York city, respectfully represents : That your pe- titioners are the sole owners, by assignment, entered of record, of letters patent of the United States, granted to Carl Kronig, of Vienna, in the Empire of Austria. They therefore pray that they may be permitted to surrender the said letters patent, and that the same may be can- celed and new letters patent issued to your petitioners on an amended specification,' &c. - "In the letter transmitting this application mention was made of an inclosed assignment from Havemeyer, Elder & Loosey to the American Papier Mache Com- pany for record, but no request was made for the issue of letters patent to ss. County of Suffolk. j Charles Careful, of said county, being duly sworn, doth depose and say, that he is administrator of the estate of Henry Miner, deceased, late of Boston, in said county ; that the letters patent No. 12,219, granted to said Henry Miner, and bearing date on the 9th day of January, A. D. 1855, have been lost or destroyed, as he verily believes ; that he has made diligent search for the said letters patent in all places where the same would proba- bly be found, if existing, and especially among the papers of the decedent; and that he has not been able to find said letters patent. CHARLES CAREFUL, Administrator, <&c. Subscribed and sworn to before me this 5th day of October, 1868. PETER PLACID, Justice of the Peace. 414. FORM OF CERTIFICATE OF EXTENSION. Whereas, upon the petition of A. W., of Auburn, in the State of New York, for the extension of the patent granted to him December 6, 1869, and reissued to him the fourth day of January, 1870, the undersigned, in accord- ance with the act of Congress approved the eighth day of July, 1870, en- titled "An act to revise, consolidate, and amend the statutes relating to DISCLAIMER. 609 patents and copyrights," did, on this twelfth day of October, 1870, decide that said patent ought to be extended : Now, therefore, I, Samuel S. Fisher, Commissioner of Patents, by virtue of the power vested in me by said act of Congress, do renew and extend the said patent, and certify that the same is hereby extended for the term of seven years from and after the expiration of the first term, viz, from the fifth day of December, 1868, which certificate being duly entered of record in the Patent Office, the said patent has now the same effect in law as though the same had been originally granted for the term of twenty-one years. In testimony whereof I have caused the seal of the Patent Office to' be r _ -I hereunto affixed this fourth day of December, 1868, and of the inde- pendence of the United States the ninety -third. SAM'L S. FISHEB,- Commissioner XXIII, Disclaimer. SEC. 415. When disclaimer may be filed ; requisites. 416. Action for infringement prior to disclaimer. 417. What should be set forth; when necessary. SEC. 418. Rights of grantees. 419. Owner of sectional interest may disclaim. 420. Delay in filing. 421. Effect of disclaimer. 422. Form of disclaimer. 415. WHEN DISCLAIMER MAY BE FILED; REQUISITES. Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a pat- entee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, mav, on payment of the duty required by law, 51* 610 PROCEDURE IN THE PATENT OFFICE. make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent : said disclaimer shall be in writ- ing, attested by one or more witnesses, and recorded in the Patent Office, and it shall thereafter be considered as part of the original specification to the extent of the in- terest possessed by the claimant and by those claiming under him after the record thereof. But no such dis- claimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it. (Act of July 8, 1870, 54.) 416. ACTIONS FOR INFRINGEMENT PRIOR TO DISCLAIMER. Whenever, through inadvertence, accident, or mistake, and without any willful default or intent to defraud or mislead the public, a patentee shall have (in his specifi- cation) claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first in- ventor or discoverer as aforesaid, every such patentee, his executors, administrators, and assigns, whether of the whole or any sectional interest in the patent, may main- tain a suit at law or in equity for the infringement of any part thereof which was bona fide his own, provided it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the parts so claimed, without right as aforesaid, notwithstanding the specification may embrace more than that of which the patentee was the original or first inventor or dis- coverer. But in every such case, in which a judgment or decree shall be rendered for the plaintiff, no costs shall DISCLAIMER. 611 be recovered, unless the proper disclaimer has been en- tered at the Patent Office before the commencement of the suit; nor shall he be entitled to the benefits of this section if he shall have unreasonably neglected or delayed to enter said disclaimer, (Ib., 60.) 417. WHAT SHOULD BE SET FORTH; WHEN NECESSARY. The interest of the party disclaiming should be set forth ; but where an administrator, in whose name a patent had been extended, entered a disclaimer stating that he was the patentee, and referring to the patent as showing his interest, it was held to be sufficient, ( Brooks v. Bicknell, 3 McLean, 439 ;) and where a patentee filed a disclaimer setting out that it was " to operate to the extent of the interest in said letters patent vested in the patentee," it was held that it fairly enough imported on its face that the patentee was the owner of the entire interest in the patent, and if so there was a substantial compliance with the statute as to the statement of interest, (Foote v. Silsby, 1 JBlatchf., 450;) and where the party disclaiming stated that he was the patentee, but said nothing in regard to a transfer of any part of the patent, the fair presumption is that he still owns the whole. (Silsby v. Foote, 14 How., 221.) The law is not penal, but remedial ; it is intended for the protection of the patentee as well as the public, and should not be restricted in its operation within nar- rower limits than the words of the law fairly import. (O'ReWjj v. Morse, 15 How., 121.) A patentee may disclaim any thing which has been claimed through inadvertence or mistake, (Parker v. Sears, 1 Fish., 93;) but a disclaimer is necessary only in cases where the thing claimed wrongfully is a material and substantial part of the thing invented. If it is not 612 PROCEDURE IN THE PATENT OFFICE. essential to the machine, and was not introduced into the patent through willful default or intent to defraud or mislead the public, the want of a disclaimer affords no ground for invalidating the patent. (Hall v. Wiles, 2 Jllatchf., 199.) But when a patent is illegal in part, be- cause of claiming more than the inventor has described, or more than he has invented, the patentee must dis- claim in order to save the portion to which he is entitled. (O'Reilly v. Morse, 15 How., 121.) Inadvertence and error may occur as well in a dis- claimer as a claim, (Poppenhausen v. Fulke, 2 Fish., 181,) and a disclaimer in such a case will not prevent the pat- entee from embracing the part so disclaimed in a reissue of his patent. (Hay den exparte, MS. Appeal Cases, D. C., 1860.) 418. RIGHT OF ASSIGNEES. If a disclaimer is filed by a patentee alone after an assignment of a part thereof, it will not operate in favor of the assignee in any suit, either at law or in equity, unless he has joined in it, ( Wythe v. Stone, 1 Story, 294.) The disclaimer cannot af- fect a prior grantee unless he accept it, and he may refuse to be affected by it. (Smith v. Mercer, 5 Penn. Law Jour., 581,' Kane, J., Pa., 1846.) 419. OWNER OF SECTIONAL INTEREST MAY DISCLAIM. The owner of a sectional interest may file a disclaimer, which will be considered as a part of the original patent to the extent of his interest, but the patentee is not com- pelled to join in such disclaimer, nor will it affect any one except him making it and those claiming under him. (Potter v. Holland, I Fish., 327.) 420. EFFECT OF DELAY IN FILING. In every suit brought upon a patent it is a good defense, both at law and in DISCLAIMER. 613 equity, that there has been unreasonable delay or neglect to file a disclaimer where one is necessary. ( Wythe v. Stone, 1 Story, 295; Reed v. Cutler, ib., 600; Brooks v. Bicknell, 3 McLean, 449; Hotchkiss v. Oliver, 5 Denio, 318 ; Parker v. Stiles, 5 McLean, 56.) What is "unreasonable delay" in filing a disclaimer is a mixed question of law and fact, to be decided under the direction of the court.) Brooks v. Bicknell, 3 McLean, 449.) It is a question of law for the court. (Seymour v. McCormick, 19 How., 106; Singer v. Walmsley .) The time in reference to the question of delay commences from when knowledge is brought home to the party that he is not the first inventor, or a court of competent juris- diction has declared him not to be one. (Singer v. Walms- ley, .) Whether a disclaimer has been filed before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof if he has unreasonably neglected or delayed to file it in the Patent Office. But such an unreasonable neglect or delay will constitute a good de- fense to the suit. (Reed v. Cutler, 1 Story, 600.) The ques- tion of delay in entering a disclaimer goes to the right of action, and if the jury are satisfied that there has been unreasonable negligence on the part of the patentee in making a disclaimer, then the whole patent is inopera- tive. (Hall v. Wiles, 2 Blatchf., 198; McCormick v. Sey- mour, 3 Blatchf., 222.) 421. EFFECT OF DISCLAIMER. The disclaimer men- tioned in 7 of the act of 1837 (vide supra, p. 23, 54) applies solely to suits pending when the disclaimer is filed, and the disclaimer mentioned in 9 of the same act (vide supra, jp. 27, 60) applies solely to suits, brought after such disclaimer is filed. ( Wythe v. Stone, 1 Story, 52 614 PROCEDURE IN THE PATENT OFFICE. 294.) If filed before the suit is brought, and the plaint- iff establish on trial that a part of his invention not dis- claimed has been infringed, he will be entitled to costs, (Reed v. Cutler, 1 Story, 600;) but if he omits to disclaim, and it appears on trial that he is entitled to be protected in a portion of his claims, but not in respect to another portion, he is still entitled to damages for the infringe- ment of the valid portion, but is not entitled to costs, (McCormick v. Seymour, 3 Blatchf., 222;) and a disclaimer will not affect any action pending at the time of filing it, except in respect to the question of unreasonable neglect or delay. (G-uyon v. Serrill, 1 Blatchf., 245.) In the case of Aiken v. Dolan the complainant filed a bill in equity to restrain the defendant from infringing letters patent for " improvement in knitting needles." Mr. Justice Cadwalader, delivering the opinion of the court, said: "By a proper disclaimer of the invention of latch needles without any such curvature the patent would, however, be sustainable for the actual improve- ment. The complainant proposes, through his counsel, to disclaim any construction of a latch needle which has not a swell, or its equivalent, substantially as shown in the drawings; and to repeat, in the words of the original specification, that what he claims as the invention of the patentee is the operation of the latch or tongue, &c., oper- ated as therein described. The effect of such a disclaimer will be to deprive the complainant of all right to recover costs in the present suit. But a court of equity some- times considers that which might and ought to be done as having already been done. There may, therefore, be a decree for a perpetual injunction, each party to pay his own costs, without any actual proof of record in the DISCLAIMER. 615 Patent Office. According to the decision of the Su- preme Court in O'Reilly v. Morse, (15 How., 121,) it might perhaps be supposed that I should go further, and, before any actual disclaimer, decree an account or order an issue quantum damnificatus. But I do not think that a court whose decision is liable to reversion, on appeal, should in such case make any decree beyond the perpetual in- junction without an actual disclaimer, previously re- corded in the Patent Office. In the present stage of the case, therefore, I can do no more than award the injunc- tion with leave to disclaim, and afterward to move for such further order for an account, &c., as maybe deemed proper." (3 Fish., 207.) 422. FORM OF DISCLAIMER. To the Commissioner of Patents : Your petitioner, Ichabod Willis, of St. Louis, county of St. Louis, and State of Missouri, represents that he has, by grant duly recorded in the United States Patent Office, (liber , p. ,) become the owner of an ex- clusive right within and for the several States of Maine, New Hampshire, and Vermont, to make, use, and vend to others to be used, a certain im- proved mechanical movement, for which letters patent of the United States were granted to Jeremiah Ingersoll, of Albany, in the county of Albany and State of New York, April 1, 1869 ; that he has reason to believe that, through inadvertence, accident, or mistake, the specification and claim of said letters patent are too broad, including that of which said patentee was not the first inventor. Your petitioner, therefore, hereby enters his disclaimer to that part of the claim in said specification which is in the following words, to wit: " I also claim the sleeves A B, having each a friction cam C, and con- nected, respectively, by means of chains or cords, K L and M N, with an oscillatory lever, to operate substantially as herein shown and described." ICHABOD WILLIS. Witness: HENEY OAKLAHD. 616 PROCEDUEE IN THE PATENT OFFICE. XXIV. The Patent. SEC. 423. Issuing, signing, and recording. 424. Contents and grant. SEC. 425. Date. 426. Form of patent. 423. ISSUING, SIGNING, AND RECORDING. All patents shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Secretary of the Interior and Cbunter- signed by the Commissioner, and they shall be recorded, together with the specification, in said office, in books to be kept for that purpose. (Act of July 8, 1870, 21.) 424. CONTENTS AND GRANT. Every patent shall con- tain a short title or description of the invention or dis- covery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the said invention or discovery throughout the United States and the Territories thereof, referring to the specification for the particulars thereof; and a copy of said specifications and of the drawings shall be annexed to the patent and be a part thereof. (/6., 22.) 425. DATE. Every patent shall date as of a day not later than six months from the time at which it was passed and allowed and notice thereof was sent to the applicant or his agent; and if the final fee shall not be paid within that period, the patent shall be withheld. (J6., 23.) 426. FORM OF PATENT. No. . THE UNITED STATES OF AMERICA. To all to whom these letters patent shall come : Whereas, , of , , ha- alleged that ha- in- vented a new and useful . and ha- made that a citizen PATENT OFFICE FEES. 617 of the United States ; that verily believes the original and first inventor or discoverer of the said , and that the same hath not to knowledge and belief been previously known or used ; ha- paid into the Treasury of the United States the sum of dollars, and presented a petition to the Commissioner of Patents praying that a patent may be issued therefor. These are therefore to grant to the said , his , executors, administrators, or assigns, for the term of years from the day of , one thousand eight hundred and , the full and exclusive right and liberty of making, using, and vending to others to be used, the said , a description whereof is given in the annexed schedule, and made a part of these presents. In testimony whereof I have caused these letters to be made patent and the seal of the Patent Office to be hereunto affixed. Given under r -I my hand at the of city Washington, this day of , in / the year of our Lord one thousand eight hundred and , and of the independence of the United States of America the . , Secretary of the Interior. , Commissioner of Patents. [Countersigned and sealed with the seal of the Patent Office.] XXV. Patent Office Fees. SEC. 427. All fees to be paid in advance. 428. Tariff of fees. 429. Final fee to be paid within six months. SEC. 430. How fees may be paid. 431. Money paid by mistake. 432. Revenue stamps. 427. ALL FEES TO BE PAID IN ADVANCE. Nearly all the fees payable to the Patent Office are positively re- quired by law to be paid in advance, that is, upon making application for any action by the office for which a fee is payable. For the sake of uniformity and convenience, the remaining fees will be required to be paid in the same manner. (Patent Office Rules, July, 1870.) 618 PROCEDURE IN THE PATENT OFFICE. 428. TARIFF OF FEES. The following is the tariff of fees established by law : On filing every application for a design, for three years and six months $10 00 On filing every application for a design, for seven years 15 00 On filing every application for a design, for four- teenyears 30 00 On filing every caveat ; 10 00 On filing every application for a patent 15 00 On issuing each original patent 20 00 On filing a disclaimer 10 00 On filing every application for a reissue 30 00 On filing every application for a division of a reissue 30 00 On filing every application for an extension 50 00 On the grant of every extension 50 00 On filing the first appeal from a primary exam- iner to examiners-iu-chief 10 00 On filing an appeal to the Commissioner from examiners-in-chief 20 00 On depositing a trade-mark for registration 25 00 For every copy of a patent or other instrument, for every 100 words __ 10 For every certified copy of drawing, the cost of having it made. ( Vide supra, p. 309.) For copies of papers not certified, the cost of hav- ing them made. For recording every assignment of 300 words or under 1 00 For recording every assignment, if over 300 and not over 1,000 words - 2 00 PATENT OFFICE FEES. 619 For recording every assignment, if over 1,000 words- - $3 00 429. FINAL FEE TO BE PAID WITHIN Six MONTHS, (vide supra, p. 343.) The final fee on issuing a patent must be paid within six months after the time at which the pat- ent was allowed and notice thereof sent to the applicant or his agent. And if the final fee for such patent be not paid within that time the patent will be forfeited, and the invention therein described become public property, as against the applicant therefor, unless he shall make a new application therefor within two years from the date of the original allowance. (Patent Office Rules, July, 1870 ; Act of JulyS, 1870, 35.) 430. How FEES MAY BE PAID. The money for the pay- ment of fees may be paid to the Commissioner, or to the Treasurer, or any of the assistant treasurers of the United States, or to any of the designated depositaries, national banks, or receivers of public money, designated by the Secretary of the Treasury for that purpose, who shall give the depositor a receipt or certificate of deposit there- for, which shall be transmitted to this office. When this cannot be done without much inconvenience, the money may be remitted by mail, and in every case the letter should state the exact amount inclosed. Letters con- taining money may be registered. Post-office money- orders now aftbrd a safe and convenient mode of trans- mitting fees. All such orders should be made payable to the Commissioner of Patents. (Patent Office Rules, July, 1870; Act of July 8, 1870, 69.) All money sent by mail, either to or from the Patent Office, will be at the risk of the owner. In no case should money be sent inclosed with models. All payments to 620 PROCEDURE IN THE PATENT OFFICE. or by the office must be paid in specie, treasury notes, national bank notes, certificates of deposit, or post-office money-orders. (Patent Office Rules, July, 1870.) 431. MONEY PAID BY MISTAKE. Money paid by actual mistake will be refunded; but a mere change of purpose after the payment of money will not entitle a party to demand such return. (Patent Office Rules, July, 1870 ; Act of July S, 1870, 70.) 432. REVENUE STAMPS must be attached as follows: 1st. A stamp of the value of fifty cents is required upon each power of attorney authorizing an attorney or agent to transact business with this office relative to an application for a patent, reissue, or extension. 2d. No assignment directing a patent to issue to an assignee will be recognized by this office, nor will any assignment be recorded, unless stamps shall be affixed, of the value of five cents, for every sheet or piece of paper upon which the same shall be written. 3d. The person using or affixing the stamp must cancel the same by writing thereupon the initials of his name and the date. (Patent Office Rules, July, 1870.) IV. CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. 52* ea CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. I. Assignments. SEO, 1. 2. 3. 4. 5. 6. Patent may issue to assignees. Assignments, &c. Interests conveyed. Recording. Recording not essential as be- tween the parties. Object to protect bona fide pur- chasers. Assignee. Grantee. Licensee. SEC. 10. Assignment before patent. 11. Effect and construction. 12. Sale on execution. 13. Assignees of alien inventors. 14. Form of assignment before pat- ent. 15. Form of assignment of patent. 16. Form of assignment of undi- vided interest. 17. Form of exclusive territorial grant. 1. PATENT MAT ISSUE TO ASSIGNEES. Patents may be granted and issued or reissued to the assignee of the in- ventor or discoverer, the assignment thereof being first entered of record in the Patent Office ; but in such case the application for the patent shall be made and the speci- fication sworn to by the inventor or discoverer ; and also, if he be living, in case of an application for reissue. (Act of July 8, 1870, 33.) 2. ASSIGNMENTS, GRANTS, AND CONVEYANCES. Every patent, or any interest therein, shall be assignable in law by an instrument in writing; and the patentee, or his assigns or legal representatives, may, in like manner, grant and convey an exclusive right under his patent to 623 624 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. the whole or any specified part of the United States; and said assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice, unless it is re- corded in the Patent Office within three months from the date thereof. (Act of July 8, 1870, 36.) (As to right of assignee in cases of reissue, vide supra, p. 556. In cases of extension, p. 603.) 3. INTERESTS WHICH MAY BE CONVEYED. A patent may be assigned, either as to the whole interest or any undivided part thereof, by any instrument in writing. To particular form of words is necessary to constitute a valid assignment, nor need the instrument be sealed, witnessed, or acknowledged; and a patent will, upon request, issue directly to the assignee or assignees of the entire interest in any invention, or to the inventor and the assignee jointly, when an undivided part only of the entire interest has been conveyed. "When the patent is to issue in the name of the assignee, the entire correspondence should be in his name. The patentee may grant and convey an exclusive right under his patent to the whole or any specified portion of the United States, by an in- strument in writing; or he may convey separate rights under his patent to make or to use or to sell his inven- tion, or he may convey territorial or shop rights, which are not exclusive. Such conveyances are mere licenses, and need not be recorded. (Patent Office Rules, July, 1870.) What if Congress provides for three kinds of assign- ments: first, as to the whole interest; second, as to an undivided part; and, third, an exclusive right in any dis- trict, (Blanehard v. Eldridge, I Wall, 330;) but the stat- ASSIGNMENTS. 625 ute renders the monopoly capable of subdivision as to locality, and in no other way. The patentee cannot carve out his monopoly, which is a unity, into a hundred or more, all acting in the same place and liable to come into conflict. (Ib.; Whittemorev. Cutter,! (raW.,431; Suy- dam v. Day, 2 Blatchf., 23.) He cannot divide his right into parts and grant to one man the right to use it in its connection with or applica- tion to one thing, and to another in connection with a different thing, to such an extent as that purchasers from any of these persons may not use the fabric exactly as they like. (The Washing- Machine Company v. Earle, 3 WaO.,.} When the patentee sells the right to make, use, and vend the invention in a particular place, the purchaser buys a portion of the franchise which the patent confers; but the purchaser of a patented implement or machine for use in the ordinary pursuits of life stands on a differ- ent ground. By virtue of the contract of sale and the unconditional delivery of a patented article, it passes outside the monopoly, and is no longer under the pecu- liar protection granted to patent rights, (Goodyear v. Beverly Rubber Company, 1 Clifford, 348;) and when the patentee of certain processes and the products thereof, for a valuable consideration, sold the patented article, both the manufactured article and the materials of which it was composed passed to the purchaser, discharged of the peculiar privileges secured by the patent, and the purchaser may use the material in the manufacture of other articles not themselves protected by the patent, ($._) and this although the patented article was bought of the patentee's licensee, who was restricted by the 53 626 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. license to a use of the patented product different from that to which it was devoted by the purchaser, (ib ;) hut where a person had purchased of the owner of the inven- tion certain knitting machines, with which the vendor was accustomed to send a package of needles used in the same, it was held, that the sale of the machines did not carry with it aright to the purchaser to manufacture new needles of the same construction as those sold, when those which he had hought were worn out, although the machines could not be operated without them, and the needles were the patented invention of the seller; the needles, however, being the subject-matter of a different patent from that covering the machine. (Aiken v. Man* Chester Print Works, 2 Clifford, 435.) The grant of a machine, with the right to use it, does not import the same privileges under the patent as the sale of the right to make and vend the patented machine, ' (ib.) In the latter case the purchaser buys a portion of the franchise, and the right he acquires necessarily termi- nates at the time limited for the continuance of the patent; but in the former, the machine sold passes out- side the monopoly, and is no longer under the protection of the patent act, (ib,) and redress for injury in such case 'must be sought in the State courts, under State laws, and not under the special jurisdiction conferred on the Federal courts by the patent acts. (Ibid.) 4. RECORDING. Every assignment or grant of an ex- clusive territorial right must be recorded in the Patent Office within three months from the execution thereof; otherwise, it will be void as against any subsequent pur- chaser or mortgagee for a valuable consideration without notice; but if recorded after that time, it will protect the ASSIGNMENTS. 627 assignee or grantee against any such subsequent pur- chaser whose assignment or grant is not then on record. (Patent Office Rules, July, 1870.) In every case where a patent issues or reissues to an assignee the assignment must be recorded at the Patent Office at least five days before the issue of the patent, and the specification must be sworn to by the inventor. (76.) No assignment directing a patent to issue to an as- signee will be recognized by the office, nor will any assignment be recorded, unless stamps shall be affixed of the value of five cents for every sheet or piece of paper upon which the same shall be written. The person using or affixing the stamp must cancel the same by writing thereupon the initials of his name and the date. (2b.) The receipt of assignments is not generally acknowl- edged by the office. They will be recorded in their turn within a few days after their reception, and then transmitted to the persons entitled to them. (Ib.) Three cases of the recording of assignments are pro- vided for by the statute: first, an assignment of the whole patent; second, an assignment of an undivided part thereof; and, third, a grant or conveyance of an exclusive right under the patent within any specified part or portion of the United States. A grant of right, not being exclusive, need not be recorded. (Brooks v. Byam, 2 Story, 542.) 5. RECORDING NOT ESSENTIAL AS BETWEEN THE PAR- TIES. To render an assignment valid under 36 of the act of 1870, as between the parties and against strangers, it is not essential that it should be recorded. (McKeman 628 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS v. Site, 6 Ind., 430 ; Case v. Eedfield, 4 McLean, 527.) The provision of the statute as to the recording of assign- ments within three months is merely directory, and, ex- cept as to intermediate bona fide purchasers without notice, any subsequent recording of an assignment will be sufficient to pass title to the assignee. (Brooks v. Byam, 2 Story, 524 ; Boyd v. Me Alpine, 3 McLean, 424 ; Peck v. Bacon, 18 Conn., 388 ; Olcott v. Hawkins, 2 Amer. Law Jour., 319; Hildreth v. Turner, 17 III, 185.) The recording is not a prerequisite indispensable to the valid- ity of the assignment. (Pitts v. Whitman, 2 Story, 615, 618.) It is not necessary to make the transfer operative, but only essential to enable the assignee to sue in his own name, (Blanchard's Gun- Stock Turning Company v. Warren, 1 Blatchf., 271 ;) and it is immaterial whether the assignment is recorded before or not till after suit brought. It is the common case of a deed required to be registered, where it is sufficient if it be registered before the trial, though after the suit is brought. (lb.} 6. OBJECT OF RECORDING TO PROTECT BONA FIDE PUR- CHASERS. The chief object of the requiring assign- ments to be recorded is manifestly the protection of bona fide purchasers, though not especially so declared. (Gibson v. Cooke, 2 Blatchf., 148.) After the expiration of three months, if no record has been made of an assign- ment, and another assignment of the same right is made and recorded, the last assignment would be valid. (Boyd v. McAlpine, 3 McLean, 429.) To guard against an out- standing title of over three months' duration, the pur- chaser need only look to the records of the Patent Office; within that period he must protect himself as best he can, as an unrecorded assignment would prevail ; but i x ASSIGNMENTS. 629 must be an assignment in writing, that may be recorded within the time limited. (Gibson v. Cooke, 2 Blatchf., 148.) 7. ASSIGNEE. An assignee is one who has trans- ferred to him in writing the whole interest of the orig- inal patent, or an undivided part of such whole interest, in every portion of the United States. And no one, unless he has such an interest transferred to him, is an assignee. (Potter v. Holland, 1 Fish, 327.) 8. GRANTEE. A grantee is one who has transferred to him in writing the exclusive right, under the patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout some specified part or portion of the United States. Such right must be an exclusive sectional right, excluding the patentee therefrom. (lb.} 9. LICENSEE. A licensee is one who has transferred to him in writing or orally a less or different interest than either the interest in the whole patent, or an undi- vided part of such whole interest, or an exclusive sec- tional interest. (-H>.) 10. ASSIGNMENT BEFORE PATENT, (vide supra, p. 274, et seg.) An assignment of a patent may be made as well before the issuing of a patent as afterward. The thing to be assigned is not the mere parchment, but the mo- nopoly confert-ed the right of property which it creates; and when the party has acquired an inchoate right, an assignment of it is legal, (Gayler v. Wilder, 10 How., 477, 493;) and an invention may as well be sold before as after the application for a patent. (Rathbone v. Orr, 6 McLean, 132.) After the patent has been issued no new assignment is necessary; the legal right to the monopoly and the property it created ie vested by 53* 630 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. operation of the assignment in the assignee. So held when the assignment had been recorded before the patent issued. (Ib.) An assignment of an invention is not void by being executed before the invention is patented. It is a good transfer of the right of the patentee immediately upon his obtaining the patent, and he would be estopped from setting up any ad- verse title. (Herbert v. Adams, 4 Mason, 15.) An in- ventor may sell his invention before he obtains a pat- ent; and after the patent has been obtained, the con- tract will secure to the assignee the extent of his right. The provision of law which requires the application for a patent to be made in the name of the inventor becomes necessarily a part of the contract ; the inventor sells his right, and obligates himself to obtain a patent. (Rath- bone v. Orr, 5 McLean, 131; and see Rich v. Lippincott, 26 Jour. Frank. Inst., 3d s., 13.) An inventor may sell future improvements as well as those alread} 7 made, and a second as well as a first patent for them. (Nesmith v. Calvert, 1 Wood. $ Minot, 34.) It is not proper to grant a patent on a joint invention to one of two inventors upon the assignment of the other; but all who are con- cerned in the invention should join in the petition. (2 Opinions Attorneys General, 571.) Patents for inventions cannot, under 6 of the act of 1837, issue jointly to the inventor as such and to the assignee of a partial interest, but may issue to the assignee or assignees of the whole interest. (4 Ib., 401.) When a transfer or assignment of an inventor's right is only partial, although the part excepted be very small, the assignee has no legal claim to have the patent issue in his name. It should issue in the name of the inventor. (9 Ib., 403.) ASSIGNMENTS. 631 11. EFFECT OF ASSIGNMENT. An assignment of an exclusive right to make, use, and vend to others a pat- ented machine, within a certain territory only, does not prohibit the assignee from selling elsewhere, out of the said territory, the products of such machines. The re- striction in the assignment applies solely to the using of the machine, and is no restriction as to place of the sale of the product. (Simpson v. Wilson, 4 How., 709.) An agreement between a patentee and a third person, as trustee, that the latter should hold the patent and have the control thereof for the benefit of those who had a right to use the same, under contracts with the patentee, transfers the entire interest and ownership, legal and equitable, of the patentee in the patent to such trustee, for the benefit of those interested. (Hartshorn v. Day, 19 How., 211.) An assignment of the revenues of a rail- road, by the company, to a preferred creditor, and the use of the rolling stock, is not a transfer of corporate entity or property ; and the use, by the assignee, of cars to which patented brakes were attached, does not render him liable to account for infringement upon the patent right, the exclusive use of the brakes having previously been licensed to the company by the patentee. The as- signee used the brakes as an agent and not as a pur- chaser; such use, in the name of the company, being ex- clusive, in the meaning of the license. (Emigh v. Cham- berlain, 1 Am. Law. Reg., n. s., 207; S. C., 2 Fish., 192.) A particular agreement allowing the use of a patent right held a mere license, and not an assignment conveying an interest in the patent. (Armstrong v. Hanknbech, 3 N. Y. Leg. Obs., 43.) An assignment of the whole or any part of an interest in a patent will be valid, although it is 682 CONTEACTS, ASSIGNMENTS, AND PRECEDENTS. at the time the subject of litigation, (Gayv. Cornell, 1 Match/., 510,) but a paper purporting to be the assign- ment of an expired patent is void as an assignment. (Sell v. McCullough, 1 Fish., 380.) Mere circumstantial differences between a description of the patent in the specification and in an assignment will not render the assignment invalid, (Holden v. Curtis, 2 N. Hamp., 63,) nor do they indicate fraud or prevent the right from passing. (Casev.Mowry, 1 N. Hamp., 349.) An assignment may be exclusive, although limited to a certain number of machines, ( Washburn v. Gould, 3 Story, 131;) such limitation is not inconsistent with the grant of an exclusive territorial right. (lb., 167.) The term exclusive comprehends not only an exclusive right to a whole patent, but the exclusive right to a patent in a particular section of country. (Ib., 131.) If an assign- ment contains no warranty, the vendee cannot set up a parol warranty, for it is presumed that the writing con- tains the entire contract, (Jolliffe v. Collins, 21 Mo., 341,) unless it is also alleged that the warranty was false and fraudulent, and then parol proof is only evidence of such representation. (Me Clure v. Jeffrey, 8 2nd. , 83.) The con- veyance of a patent by A, with the written consent of B, in whom the title then was, is equally effective with a conveyance directly from B. (Sherman v. Champlain Transportation Company, 31 Vt., 175.) 12. SALE ON EXECUTION. A patented machine, and the right of use attached to it, may pass by sale, devise, or levy of execution, or assignment of any insolvent's effects. ( Woodworth v. Curtis, 2 Wood. Minot, 524.) The sale of a patented machine by a sheriff, under an execu- tion, does not, in and of itself, convey to the purchaser ASSIGNMENTS. 633 any right to use the machine in the manner pointed out in the patent right. The purchaser acts at his own peril. (Sawin v. Guild, 1 Gall., 485.) 13. ASSIGNEES OF ALIEN INVENTORS take and hold the patent, which may be issued to them with all the privi- leges belonging to American patentees. The clause in 15 of the act of 1836, (5 Stats, at Large, 123,) requiring the invention to be put on sale in a certain time, applies only to alien patentees. (Tatham v. Lowber, 2 Blatchf., 49.) To the contrary, ( Tatham v. Loring, 5 N. Y. Leg. Obs., 207.) 14. FORM OF ASSIGNMENT OF THE ENTIRE INTEREST IN AN INVENTION BEFORE THE ISSUE OF LETTERS PATENT. In consideration of $1, to me paid by Epbraim G. Hall, of Cleveland, Ohio, I do hereby sell and assign to said Ephraim G. Hall all my right, title, and interest in and to a certain invention in plows, as fully set forth and described in the specification which I have prepared [if the application has been already made, say "and filed"] preparatory to obtaining letters patent of the United States therefor. And I do hereby authorize and request the Commissioner of Patents to issue the said letters patent to the said Ephraim G. Hall, as my assignee, for the sole use and behoof of the said Ephraim G. Hall and his legal representatives. Witness my hand this sixteenth day of February, 1868. [5-cent revenue stamp.] J. F. CROSSETTE. 15. FORM OF ASSIGNMENT OF THE ENTIRE INTEREST IN LETTERS PATENT. In consideration of $500, to me paid by Nathan Wilcox, of Keokuk, Iowa, I do hereby sell and assign to the said Nathan Wilcox all my right, title, and interest in and to the letters patent of the United States, No. 41,806, for an improvement in locomotive head-lights, granted to me July 30, 1864, the same to be held and enjoyed by the said Nathan Wilcox to the full end of the term for which said letters are granted, as fully and entirely as the same would have been held and enjoyed by me if this assign- ment and sale had not been made. Witness my hand this tenth day of June, 1869. [5-cent revenue stamp.] HOBACE KlMBALL. 634 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. 16. FORM OF ASSIGNMENT OF AN UNDIVIDED INTEREST IN THE LETTERS PATENT AND EXTENSION THEREOF. In consideration of $1,000, to me paid by Obadiah N. Bush, of Chicago, Illinois, I do hereby sell and assign to the said Obadiah N. Bush one un- divided fourth part of all my right, title, and interest in and to the letters patent of the United States, No. 10,485, for an improvement in cooking- stoves, granted to me May 16, 1856; the same to be held and enjoyed by the said Obadiah N. Bush to the full end of the term for which said letters patent are granted, and for the term of any extension thereof, as fully and entirely as the same would have been held and enjoyed by me if this assignment and sale had not been made. Witness my hand this seventh day of January, 1869. JOHN C. MORRIS. [5-cent revenue stamp.] 17. FORM OF ASSIGNMENT OF EXCLUSIVE TERRITORIAL GRANT BY AN ASSIGNEE. In consideration of $1,000, to me paid by William H. Dinsmore, of Con- cord, New Hampshire, I do hereby grant and convey to the said William H. Dinsmore the exclusive right to make, use, and vend within the State of Wisconsin and the counties of Cook and Lake, in the State of Illinois, and in no other place or places, the improvement in corn planters for which letters patent of the United States, dated August 15, 1867, were granted to Leverett R. Hull, and by said Hull assigned to me December 3, 1867, by an assignment duly recorded in liber X 8 , p. 416, of the records of the Pat- ent Office, the same to be held and enjoyed by the said William H. Dins- more as fully and entirely as the same would have been held and enjoyed by me if this grant had not been made. Witness my hand this nineteenth day of March, 1868. ABRAHAM MOORE. [5-cent revenue stamp.] II. Licenses and Contracts. SEC. 18. Licenses need not be recorded. 19. Construction and effect. 20. Assignee of license. 21. Licenses for single machines. SEO. 22. Other contracts. 23. Form of license, shop-right. 24. Form of license with a roy- alty. 18. LICENSES NEED NOT BE RECORDED. The patentee LICENSES AND CONTRACTS. 6J5 may convey separate rights under his patent to make or to use or to sell his invention, or he may convey territo- rial or shop rights which are not exclusive. Such con- veyances are mere licenses, and need not he recorded. (Patent Office .Rules, July, 1870.) A conveyance transferring a less or different interest in the patent than either the interest in the whole patent, or an undivided part of such whole interest, or an exclu- sive sectional interest, is a mere license, and need not be recorded. (Potter v. Holland, 1 Fish., 327; see also Stevens v. Head, 9 Vt., 177; Brooks v. Byam, 2 Story, 541.) 19. CONSTRUCTION AND EFFECT OF LICENSE. A con- tract of license is like every other contract, and depends upon a fair construction of the acts of the parties. (Bell v. McCullough, 1 Fish., 380.) As to the principles upon which a license to manufacture under a patent should be construed, and their application to a license in particular cases, see Washbur?i v. Gould, 3 Story C. C., 122; 8. C., I West. Law Jour., 465; 7 Law Rep., 276; Day v. Gary, 1 Fish., 424; Day v. Stellman, ib., 487. H assigned to M, A & Co. all his right and interest un- der his patent in twenty-three counties in Ohio, includ- ing that in which the defendants' manufactory was car- ried on. M, A & Co. were to pay ten dollars for each machine made and sold by them, while H reserved the right of sending machines of his own manufacture into the territory named in the contract. Held, that this paper was not an assignment of the interest of H in the patent within the territory named, but a mere license. (Husseyv.Whitely, 2 Fish., 120; see also Potts v. Jameson, 15 Barb., 315.) A license to use vulcanized india-rubber CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. for coating cloths, for the purpose of japanning, mar- bling, and variegated japanning, is limited to the particu- lar kinds of goods mentioned, and conveys no right to use the rubber for coating cloths for any other purpose, (Goodyear v. Providence Rubber Company, 2 Fish., 499;) but the public cannot be compelled to notice or regard agree- ments between the patentee and his .licensee as to the limitation of the use of articles made by them. (Metro- politan Washing-Machine Company v. Earle, 2 Fish., 203.) The purchase of a license forms no bond of allegiance to the patentee or an estoppel to the licensee from averring or proving any defense in an action for the infringement of the patent which any other person might use, (Burr v. Duryee, 2 Fish., 275;) but when the defendants were licensees of the plaintiff, and stamped every article made with the name and date of the patent, the act was a public acknowledgment that the articles were made under the patent, notwithstanding their protest that it should not be so considered. (Jones v. Vankirk, 2 Fish., 586.) A cove- nant between a patentee and his licensees that they will not manufacture certain articles may be valid as between the parties, but it does not run with the article manufac- tured like a covenant as to land. Such a contrivance to destroy competition may be valid, but the covenant binds only the parties to it. If a stranger purchase the product from one licensed to use the process, he need look no further, and may use it for his own purposes, without inquiring for or regarding any private agreement of licensees not to compete with one another. (Metropolitan Washing -Machine Company v. Earle, 2 Fish., 203.) Where a railroad fifty-eight miles long, having a license to use a patented improvement, subsequently acquired by con- LICENSES AND CONTRACTS. 637 solidation and change of name two hundred and ten miles more, held, that the license did not extend to or protect the newly acquired portion. (Emigh v. Chi- cago, c., Railroad Company, 2 Fish., 387.) Where a per- son agreed with a patentee to pay him a certain sum on every patented article manufactured by him, the patentee brought his action for money had and received, it was held that the j ury might infer the receipt of money from the fact of the sale of the article, and that judgment should be rendered for the plaintiff as upon an executed contract. (Stanley v. ~Whipple, 2 McLean, 35.) 20. ASSIGNEE OF LICENSE. A license to use a pat- ented machine may be assigned, it not being a mere personal privilege, ( Woodworth v. Curtis, 2 Wood. $ Minot, 527; Wilson v. Stolley, 5 McLean, 2;) but a mere license to a party, without having his assigns, or equivalent words to them, showing that it was meant to be assigna- ble, is only a grant of a personal power to the licensee, and is not transferable by him to another. ( Troy Iron and Nail Factory v. Corning, 14 How., 216.) Where D had an exclusive license to use the patent of G for a particular purpose, covenanting not to use it for other purposes, and to pay a specified tariff for such use, and C took an assignment of such license, it was held, that C took the license subject to the obligation to pay the specified tariff on what he should make under it. (Goodyear v. Congress Rubber Company, 3 Blatchf., 449.) 21. LICENSE RELATIVE TO SINGLE MACHINES. The limitation of the number of machines to be made or used under a patent is not inconsistent with the grant of an exclusive right in the patent within such territory. ( Washburn v, Gould, 3 Story, 162.) Where one licensedi 54 638 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. to run a patented machine sells such machine, the license to run does not necessarily pass with the ma- chine. ( Wilson v. Stolley, 4 McLean, 275.) The right of a licensee to use a patented machine may be assigns 1 to a third person. A machine and the right to use it is personal property rather than a mere patent right, and has all the incidents of personal property, making it subject to pass by sale. (Woodworth v. Curtis, 2 Wood, g Mmot, 524.) The right to use a machine, to be con- structed according to a certain specification, involves the right to make or cause to be made the machine thus per- mitted to be used. (/&.) A right or license to use one machine during the term of the patent does not mean any particular machine then sold, but has reference to what must be considered, therefore, one machine in number at one time. A second machine may be run if the first one wears out, or is destroyed by fire, or is constructed erroneously, or is disused entirely for want of repair. (Ib.; Wilson v. Stolley, 4 McLean, 275.) The right to construct a patented machine is distinct from the right to use it, the latter necessarily implying the right to repair, and also to purchase, when the one in use is worn out or destroyed. (Bieknell v. Todd, 5 McLean, 236.) Where the' only right to use a patent was one which resulted from the purchase of a machiae, such right is coextensive with the existence of the machine, and expires with it. (Day v. Union Rubber Company, 3 Blatchf., 488.) A grant of a right by a patentee to make and use a patented machine within a term for which it has been granted will give the purchaser of machines from such grantee the right to use the machine patented as long as the machine itself lasts ; nor will this right to LICENSES AND CONTRACTS. 639 use a machine cease because an extension of the patent, not provided for when the patentee made his grant, has since been allowed, and the machine sold has lasted and is used by the purchaser within the term of time covered by this extension. (Bloomer v. Millinger, 1 Wall, 340.) 22. OTHER CONTRACTS. A party has no authority to grant licenses under a patent upon a mere agreement with the patentee to assign such patent. Before such a party can grant licenses, the patent must be actually as- signed. (Day v. Hartshorn, MS., 21, 1854.) While the ex- clusive rights of a patentee are specially guarded from in- trusion, the contracts which he makes to share them with third persons are interpreted and enforced in the same manner as other legal engagements. (Morse v. 'Reilly, 6 Penn. Law Jour., 501 ; 2 Whart. Dig., 414.) Contracts in relation to a patented machine or implement are regulated by the laws of the several States, and are subject to State jurisdiction. ( Wilson v. Sandford, 10 How., 99.) An agree- ment made between B and C and others, providing for the settlement of various matters, the discontinuance of certain suits, and also as to the manufacture of a certain article, as follows : " That the said parties may each here- after manufacture and vend spikes of sucji kind and character as they see fit, notwithstanding their conflicting claims to this time," must be construed with reference to the situations of the parties to it. As B claimed that he had the exclusive right, under his patent, to make such spikes, which right the defendant, C, was infringing, but defendant, C, claimed that he did not infringe such patent, but made such spikes by an entirely different method : held, that such an agreement did not give C a license to make such spikes after B's patent, but only a 640 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. right to make them by the same process or machinery he had been before using. (Troy Iron and Nail Factory v. Corning, 14 How., 193; reversing, S. C., 1 Blatchf., 467.) Where a patentee granted to V the exclusive right to construct and use and vend, within a certain territory, ten planing, tongueing, and grooving machines, and the grant declared that V was to enjoy an exclusive use of the patent within said territory, limited to said ten ma- chines, and afterward the patentee granted to K the exclusive right under the patent of making, using, and vending within the same territory molding planing ma- chines: held, that the grant first made to V conveyed the entire interest of the patentee, and that the subse- quent grant to K was void. (Sitter v. Serrell, 2 Blatchf., 379.) To an action of covenant upon an agreement, which granted a license to make arid vend a patented article, the licensee agreeing to keep an account of the articles manufactured and to pay a fixed price per pound on those sold, it is no defense that the patent is invalid. ( Wilder v. Adams, 2 Wood. Minot, 329.) 23. LICENSE; SHOP-RIGHT. In consideration of $50, to be paid by the firm of Simpson, Jenks & Co,, of Huntsville, Alabama, I do hereby license and empower the said Simp- son, Jenks & Co', to manufacture, at a single foundery and machine shop in said Huntsville, and in no other place or places, the improvements in cotton- seed planters, for which letters patent of the United States, No. 71,846, were granted to me November 13, 1868, and to sell the machines so manufactured throughout the United States to the full end of the term for which said letters patent are granted. Witness my hand this 22d day of April, 1869. JOEL NOBCEOSS. [5-cent revenue stamp.] 24. LICENSE, NOT EXCLUSIVE, WITH ROYALTY. This agreement, made this 12th day of September, 1868, between Morri- son White, party of the first part, and the Uniontown Agricultural Works, LICENSES AND CONTRACTS. 41 party of the second part, witnesseth : That whereas letters patent of the United States for an improvement in horse-rakes were granted to the party of the first part, dated October 4, 1867; and whereas the party of the sec- ond part is desirous of manufacturing horse-rakes containing said patented improvement ; now, therefore, the parties have agreed as follows : I. The party of the first part hereby licenses and empowers the party of the second part to manufacture, subject to the conditions hereinafter named, at their factory in Uniontown, Maryland, and in no other place or places, to the end of the term for which said letters patent were granted, horse-rakes containing the patented improvements, and to sell the same within the United Slates. II. The party of the second part agrees to make full and true returns to the party of the first part, under oath, upon the first days of July and Jan- uary in each year, of all horse-rakes containing the patented improvements manufactured by them. III. The party of the second part agrees to pay to the party of the first part $5, as a license fee upon every horse-rake manufactured by said party of the second part containing the patented improvements ; provided, that if the said fee be paid upon the days provided herein tor semi-annual re- turns, or within ten days thereafter, a discount of fifty per cent, shall be made from said fee for prompt payment. IV. Upon failure of the party of the second part to make returns, or to make payment of license fees, as herein provided, for thirty days after the days herein named, the party of the first part may terminate this license by serving a written notice upon the party of the second part ; but the party of the second part shall not thereby be discharged from any liability to the party of the first part for any license fees due at the time of the ser- vice of said notice. In witness whereof the parties above named (the said Uniontown Agri- cultural Works, by its president) have hereunto set their hands this day and year first above written. MORRISON WHITE. UNIONTOWN AGEICULTUBAL WOEZS, By JABEZ REYNOLDS, President. [5-cent revenue stamp.] 54* 642 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. III. British Assignments. SEC. 25. Assignments should be by deed. 26. Patentee may assign to himself and others. 27. Assignment before patent. 28. License. 29. Form of words required. SEC. 30. Estoppel. 31. Registry. 32. Stipulations and covenants. 33. Form of license. 34. Form of agreement to purchase share before patent. 25. ASSIGNMENTS OR TRANSFERS OF PATENTS SHOULD BE MADE BY DEED; that is, by a document or instrument in writing, on paper or parchment, and signed by the parties, sealed with their seals, and formally "delivered" as their "act and deed," like other deeds. Assignments should contain such stipulations and pro- visos as^the parties think desirable; the} 7 are in practice often restricted to the disposal of a share in the patent, such as a half, a third, a twentieth share, and so forth; but unless the deed stipulates how the patent is to be worked, it seems difficult to say what actual beneficial interest is thus conveyed, because coproprietorship in a patent does not seem to necessitate joint participation in profits. The proper course in such cases would appear to be to place the patent in trust, to be worked by the trustee or his agent for the benefit of all the creditors, in accordance with their respective shares. 26. PATENTEE MAY ASSIGN TO HIMSELF AND OTHERS. As since the property-law amendment act, 22 and 23 Viet., cap. 35, sec. 21, the proprietor of personal prop- erty may assign to himself, or herself, and others, if such an arrangement be deemed suitable, the patentee can make an assignment in that manner, with stipulations BRITISH ASSIGNMENTS. 643 that he or she is to work the patent and pay over to the coproprietors their respective shares in the profits; or, under an assignment made in manner above stated, a re- ceiver or manager may be appointed to work the patent and pay over the proceeds to the proprietors according to their respective shares. Sometimes assignments are clogged with a condition that the patentee shall be em- ployed in carrying out the invention at a stipend to be paid by the assignees, and in such cases there are fre- quently stipulations that the patentee shall give his time to the carrying out of the invention; but according to the case of Stacker v. Wedderbum, 1857, (3 Kay g Johnson Reports, 393,) actual compliance with such a stipulation cannot be enforced by injunction, although it may enti- tle those interested to damages for default. An assign- ment of a patent may be made by way of mortgage. Further, such assignment will be good when there is a stipulation that upon the happening of a stated event the patent shall thereupon become and be transferred. (Cartwright v. Amatt, 2 Dalies' 's Patent Cases.) 27. ASSIGNMENT BEFORE PATENT. It not unfrequently happens that an inventor obtains pecuniary aid when applying for provisional protection, and in such case the party supplying the money wishes to have an assignment of the patent rights. The course then usually adopted is to have a memorandum of agreement prepared and signed by the parties, obliging the inventor to assign the pat- ent as soon as it is obtained. For in such a case there seems to be a legal difficulty in the way of making a pos- itive assignment to take effect upon the event of the grant of the patent being made, because the inventor has then no potential position with regard to the property therein, 644 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. for it does not depend on him whether it ever will be granted, but on the volition of the Crown. There are, however, several law cases which imply that, although in strict law no proper assignment can be made before the patent is granted, yet if the person assigning receive the consideration for the contract, and afterwards become possessed of the property, the court of chancery will com- pel him to perform the contract; and it appears that chancery will enforce the specific performance of an agreement by injunction, even where the payment of the purchase-money is all that is required. (Cogent v. Gib- son, 33 Beavan Reports, 557, 1864; Reeve v. Whitmore, 12 Weekly Reporter, 113.) But the words must be clear in order to pass the property, per Lord Chancellor "Westbury. (Holroyd v. Marshall, 9 Jurist Reports, 213, 1863.) 28. LICENSE. A patentee may license others to make, use, exercise, and vend the said invention, still retaining the property in the patent to himself, even when such license may affect the whole term of the patent and the whole extent of territory for which it is granted. This is a sole and exclusive license: but licenses may be sole and exclusive with regard to a certain district or place, or they may be simple licenses to use, exercise, and vend, either limited as to place or district, or not, in which cases of simple licenses other licenses may be granted to other parties, the only effect of such simple licenses being to free the licenses from any action or proceeding for infringement. 29. FORM OF WORDS KEQUIRED. It is the proper and safe course to make the license by deed, especially in cases where sums of money as royalty payments may be stip- BRITISH ASSIGNMENTS. 645 ulated to be paid, or conditions may be imposed as to the manner of working under the patent. There is no particular form of words required to be used in a deed of license or a deed of assignments, but as regards any stipulation or agreement which it is in- tended should have full legal force and effect given to it, that should be expressly stated as a "covenant" between the parties. 30. ESTOPPEL. Moreover, the statements made in the document must be carefully considered, because they may work what is termed an "estoppel;" that is, they may hereafter stop the truth from being brought before the court, if the truth is at variance with what has been dis- tinctly averred by the solemn act of executing the deed containing the former contrary statements. Tliis is apparent from the old cases of Oldham v. Lay- mead, (cited 3 Term Reports, 439,) and Bowman v. Taylor, (2 Adolphus Ellis Reports, 278;) also the modern case of Smith v. Scott y (Law Journal, vol. xxviii, p. 325 ;) Lowes v. Purser, (6 Ellis $ Blackburn Reports, p. 930.) And it is usually understood that without a special statement reserving the right of the licensee or assignee or purchaser of a patent to question its validity, he can- not, after executing the deed, question the validity of the patent, so as to recover back any part of the purchase- money, unless, indeed, he can show fraud in the trans- action; for he is considered to have acknowledged its validity by the deed, and to be thereby estopped. (Noton v. Brooks, 1861, 7 Hurlstone $ Norman Reports, 499.) 31. REGISTRY. The patent law amendment act, 1852, requires licenses and assignments to be registered; and this is an important point to be attended to. And by the 646 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. same act, as before stated, the register may be altered in certain cases, as there stated. In Morey's patent, 1858, (25 Beavan Reports, 581,) alterations were made in the register by adding the entry of a non-registered assignment made previously to another assignment which had been duly registered. In this case there was evident fraudulent dealing. Re Green's patent, 1858, (24 Beavan Reports, 145,) the patentee assigned the patent, which was omitted to be registered, and afterwards he assigned to another party, who registered at once. The first assignee then regis- tered, and moved the master of the rolls to expunge the first entry, which he ordered to be expunged with costs. 32. STIPULATIONS AND COVENANTS. Licenses in prac- tice, whether sole and exclusive or otherwise, are made under various circumstances, imposing various condi- tions on the licensee. Sometimes the payment of a fixed sum is the consideration for granting the license; more often a certain sum is paid by way of premium, and a percentage or royalty is to be paid on all articles made under the patent. This royalty is not unfrequently sim- ply a payment of a fixed amount per machine or article, or given quantity of articles. Stipulations are introduced as to the keeping of accurate accounts or verification of accounts by statutory declaration ; for inspection by pat- entee of the books of accounts and of the manufactory or workshops of the licensee; and even the power of dis- traint for non-payment of royalties is in some cases stip- ulated for. It may be advisable that in no case shall a license be granted without either a premium at the time of grant or a minimum sum per annum being reserved as pay- BRITISH ASSIGNMENTS. 647 able, as otherwise the licensee, after having obtained the license and led the patentee to believe that his patent has been put in working train, may possibly, from various circumstances, be induced to refrain from any operations under it, and deprive him of the expected benefit. However, the stipulations and conditions of licenses and assignments must be such as the law will give effect to. It is not unusual to introduce into licenses a condition that the licensee shall not make any machines or articles of a similar kind without the patent improvements being applied thereto; and it has been argued that this stipula- tion could not be supported in law, as being in restraint of trade. In Jones v. Lees, 1868, (Exchequer Reports, new series, vol. i, p. 193,) such a covenant was upheld, it not being a covenant for an unreasonable time, but only for the term of the license. The construction of the covenants in assignments and licenses follows the usual rules of law in construing deeds, as to which the case of Webster v. Newsome, (5 Hurlstone $ Norman, 42,) may be referred to by those who wish to enter into details on that point. In assignments, and perhaps in .licenses, there may probably be covenants to pay the deferred stamp duties at the third and seventh years. In the case of Hill v. Mount, (18 Common Bench Reports, 72,) an agreement to assign and pay for letters patent was held not to compel the payment of the third year's stamp duty. It is sometimes stipulated in licenses that the licensee shall use his best endeavors to detect infringers, and that the patentee shall prosecute them; and sometimes the licensee is left to prosecute them. 648 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. According to the case of Renard v. Levenstein, 1865 ? (Aniline dye patent,) an exclusive licensee has a right to use the name of the patentee to bring actions of infringe- ment. And in Dunnidiff' Bagley v. Malleti, Dunnidiff $ Bag- ley v. Berkin and another, 1859, (7 Common Bench Reports, new series, p. 209,) an assignee of a part of a patent was adjudged to have a right to bring an action of infringe- ment without joining the possessors of the other part or parts. It may be remarked that both assignments and licenses, whether exclusive or otherwise, may have reference to part of any invention only. Thus they may refer to the use of the invention for a certain class of articles, or to some parts of a combination, and not to the whole, and so forth. Both assignments and licenses usually contain cove- nants or clauses that all differences between the parties shall be submitted to arbitration; and a short way of doing this is to provide that the proceedings for arbitra- tion shall be in accordance with the common-law-proce- dure act, 1854, (17 and 18 Viet, cap. 125,) as that act con- tains explicit directions on the subj ect. It is also desirable that all questions of the construction of the wording of the deeds should be required to be submitted to some par- ticular conveyancing counsel or the conveyancing counsel of the court of chancery, either ultimately or primarily. In preliminary agreements it should always be provided that any further deed or document that may be deemed requisite shall be afterwards executed, in order to give legal effect to the transaction according to its true intent a,n In Equity, The replication of the above-named complainant to the answer of , defendant. This repliant, saving and reserving to himself now and at all times here- after all and all manner of benefit and advantage of exception which may be had or taken to the manifold insufficiencies of the said answer, for re- plication thereunto says that will aver, maintain, and prove bill of complaint to be true, certain, and sufficient in the law to be answered unto ; and that the said answer of the said defendant is uncertain, untrue, and insufficient to be replied unto by repliant without this ; that any other matter or thing whatsoever in the said answer contained material or effec- tual in the law to be replied unto, and not herein and hereby well and sufficiently replied unto, confessed and avoided, traversed or denied, is true; all which matters and things , repliant is and will be ready to aver, maintain, and prove, as this honorable court shall direct, and humbly prays as in and by said bill has already prayed. Solicitor for Complainant. 52. EQUITY NOTICE FOR PROOFS UNDER ORAL EXAMIN- ATION. UNITED STATES CIRCUIT COURT DISTRICT OF KEW YORK. vs. > In Equity. SIR : You will please take notice that the complainants in said cause desire the evidence to be adduced therein to be taken orally, under the 67th rule of the Supreme Court, as amended ; and you will further take 668 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. notice, that by an order made in said cause by , Esq., one "of the examiners of said court, the examination of witnesses on the part of the said complainants will take place before said examiner at , in the city of , on the day , A. D. 18 , at o'clock, and proceed as said examiner may direct. Dated . Yours., &c, , Solicitor for Complainants. To , Solicitor for Defendants and , Defendants. 53. DECLARATION. UNITED STATES CIECUIT COUET DISTBICT OF NEW YOBK. Of the day of , 186 . As yet of term, in the year of our Lord one thousand eight hundred and . DISTRICT OF NEW YORK, ss. , being a citizen of the United States of America, and a resident of , plaintiff in this suit, by , his attorney, complains of , defendant-, of the said district, of a plea of trespass on the case : For that whereas the said , of the town of , in the county of , and State of New York, and in said district, before and at the time of the making of the letters patent and of the committing of the grievances by the said 7 , as here- tofore mentioned, were the true, original, and first inventors of a certain new and useful improvement in , which was not known nor used before such invention or discovery as aforesaid, and were not at the time of the plaintiff's application for letters patent therefor, as hereinafter mentioned, in public use or on sale with the consent or allowance of said or either of them ; and whereas said , being such original and first inventors, and being citizens of the United States, obtained for said invention letters patent of the United States in due form of law, under seal of the Patent Office, bearing date the , and whereas the said letters patent having been wholly assigned by the said to the said , and, having been surren- dered by the said for being partially invalid on account of a defective specification, were canceled and new letters ordered to issue to said on the amended specification ; and whereas the plaint- FORMS OF PROCEDURE. 669 iff did accordingly obtain new letters patent for such invention in due form of law upon such amended specification, under the seal of the Patent Office, and signed by the Secretary of the Interior, and countersigned by the Commissioner of Patents, and bearing date the , eighteen hun- dred and , which said reissued letters patent did grant according to law to the said , his heirs, administrators, and assigns, for the term of years from the said day of , eighteen hun- dred and , the full and exclusive right and liberty of making, con- structing, using, and vending to others to be used, the said improvement, a description whereof was given in the words of the said , in a certain schedule to said letters annexed and made part thereof, as by ref- erence to said letters patent and the said specification thereto annexed, which the plaintiff now brings here into court, will fully appear. And the plaintiff further says, that from the time of the granting to him of the said letters patent hitherto he has made, used, and vended to others to be used, the said improvement, to his great advantage and profit. Yet the said defendant-, well knowing the premises, but contriving to injure the plaintiff, did, on the day of , eighteen hundred , and at divers other times before and afterwards, during the said term of years mentioned in said letters patent and before the commence- ment of this suit at , in the county of , and State of New York, unlawfully and wrongfully, and without the consent or allowance, and against the will of the plaintiff, did use and cause to be used the said improvement, in violation and infringement of the exclusive right so secured to plaintiff by said letters patent as aforesaid, and contrary to the form of the statute of the United States in such case made and provided, whereby the plaintiff has been greatly injured and deprived of great profit and advantage, which he otherwise would have derived from said improve- ment, and has sustained actual damage to the amount of dollars ; and by force of the statute aforesaid an action hath accrued to him to recover the said actual damages and such additional amount, not exceed- ing in the whole three times the amount of such actual damage, as the court may see fit to order and adjudge, besides costs. Yet the.said defendant-, though requested, ha never paid the same, or any part thereof, to the plaintiff, but ha- refused, and yet refuse- so to do, and therefore the plaintiff brings this suit. , Attorney and of Counsel for Plaintiff", County, N. Y. DISTEICT OF NEW YORK, ss. -, being duly sworn, says, that on the day of 670 CONTRACTS, ASSIGNMENTS, AND PRECEDENTS. 186 , he personally served on the defendant , within named, a copy of the within declaration and notice of rule to plead as herein indorsed. Sworn before me this day of , 186 . SiE: Please to take notice that the within is a copy of a declaration filed with the clerk of the United States circuit court at ; that you are required to plead thereto within twenty days from service hereof on you, or judgment by default, &c. Yours, &c., , Plaintiff's Attorney, County, N. Y. To the above defendant. 54. PLEA AND SPECIAL NOTICE. UNITED STATES CIRCUIT COURT DISTRICT OF NEW YOEK. Plea. And the said defendant, , by , his attorney, comes and defends the wrong and injury, when, &c.,and says that he is not guilty of the supposed grievances above laid to his charge, or any or either or any part thereof, in manner and form as the said plaintiff hath above thereof complained against , and of this the said defendant puts him- self upon the country, and the said plaintiff doth the like, &c. And it is suggested to the court, now here, that the defendant givee the following notices in writing of special matter to the plaintiff, thirty days before trial, under section 15 of the act of Congress passed July 4, 1836, entitled "An act to promote the progress of the useful arts, and to repeal all acts and parts of acts heretofore made for that purpose:" First, Notice of Special Matter. Take notice that the above-nam^d defendant will prove upon the trial of this cause, in bar of the said plaintiff's action, that the said , the assignor of the said plaintiff, was not the original or first inventor of (here describe the patent.) And the said defendant will further prove, upon such trial as aforesaid, that the same principle was known to and had been previously combined by and invented by , who resides (or resided) at , in the State of , and that the same was known to and combined by said as early as , 18 . And the said defendant will further prove, upon said trial as aforesaid, that what is claimed in said declaration and in said letters patent therein mentioned, and the specifications and drawings thereto attached, as the in- vention of said assignors of said plaintiff named in said declaration, was FORMS OP PROCEDURE. 671 substantially and in principle known to , of , in the State of . And the said defendant will further prove, upon paid trial as aforesaid, that the thing patented in and by the letters patent was not first invented by or known to said , but the same was publicly known and used prior to the time when it is alleged in this action the same was in- vented by him. And the defendant will prove that , who resides at , possessed such prior knowledge of the said thing mentioned as aforesaid in said declaration. And that the said thing was in public use and on sale anterior to the said supposed discovery or invention thereof by said . Second. Please take notice that, on said trial of this cause, in addition to the notices already served upon you, the defendant will prove by , of , and others, that they knew of the use of said thing, or substantially the same, as the alleged invention of said , and the same, or substantially the same, was used by prior to the alleged invention thereof. That the same, or substantially the same, was previously invented and patented , 18 , by . And the same was, previously to the time when it is claimed they in- vented or discovered the same, in public use with his consent and allow- ance, and upon sale with his consent and allowance, and subsequent to the time when it is claimed he invented or discovered the same. SUPPLEMENT. The following rules of practice in the supreme court of the District of Columbia, in appeals from the Commissioner of Patents, were adopted in general term, November 30, 1870, after this work had been stereotyped: RULES OF PEACTICE. 1. The appellant's petition shall be addressed to the court, and shall be substantially as follows: To the Supreme Court of the District of Columbia, in bane, , 187 . The petition of , a citizen of , in the (State, territory, dis- trict,') of , respectfully shows as follows: a. About the day of , 18 , I invented, (describe the subject of the desired patent in the identical words of the application to the Patent Office.) b. On the day of , 18 , in the manner prescribed by law, I presented my application to the Patent Office, praying that a patent be issued to me for said invention. c. Such proceedings were had in said office upon said application that, on the day of , 18 , it was rejected by the Commissioner of Patents. d. I thereupon appealed to this court, and gave notice thereof to the Commissioner, and filed in his office the following reasons for said appeal : e. The Commissioner of Patents has furnished me a complete copy of all the proceedings in his office upon my said application, which copy has been filed herewith, and is to be taken as part hereof. /. And thereupon I pray that the court do revise and reverse said decis- ion, to the end that justice may be done in the premises. 2. This petition shall be filed in the clerk's office of this court, and as soon as the petitioner has made the deposit required by law at the com- mencement of suits in this court, or said deposit has been dispensed with,' the clerk shall enter the case in a docket to be provided by him for the purpose, and in which a brief of said filing and of all subsequent proceed- 67 <>73 674 SUPPLEMENT. ings in the case shall be entered, as and when they successively occur, down to and including the final decision. 3. The clerk shall provide a minute book of his office, in which he shall record every order, rule, judgment, or decree of the court in each case, in the order of time in which said proceedings occur. And of this book there shall be two alphabetical indexes, one showing the name of the party applying for the patent, and the other designating the invention by its subject-matter or name. 4. The cases in the docket of causes shall be successively numbered from No. 1, onward, and each case shall also be designated by the number as- signed to it on the records of the Patent Office. 5. This docket shall be called for the trial of the cases thereon on the first day of each session of this court in general term, provided the petition has been filed ten days before the commencement of the term. 6. The opinions of the court, when written, shall be kept by the clerk in the order of their delivery in a temporary book-file, indexed; and when so many have been delivered as will make a volume of convenient size, ho shall cause them to be bound. 7. The clerk shall furnish to any applicant a copy of any paper in any of said appeals on payment of the lawful fees. 8. Hearing of said appeals shall be subject to the rules of the court pro- vided for other causes therein. 9. When the testimony of the Commissioner or of any examiner, touch- ing the principles of the invention iu question, shall be deemed necessary, it shall be taken orally in open court, unless otherwise ordered by the court. And in such case the court may order it to be reduced to writing, and filed or entered on its minutes, if it think proper. 10. The final judgment or order of the court shall not recite any of the facts made to appear in the case, but shall be to the following effect: "This appeal having been heard upon the record from the Patent Office, [and upon the testimony of the Commissioner of Patents,] [of one of the examiners,] touching the principles of the invention, and having been argued by [counsel for] the petitioner and [for] the Commissioner, " It is thereupon ordered and adjudged that the [petition be dismissed] [Commissioner do issue to the petitioner a patent,] [as prayed,] [granting the petitioner (so and so.} ] "And that the clerk of this court transmit to the Commissioner of Pat- ents a copy of this decree duly authenticated." INDEX. ABANDONMENT. Statute provisions concerning, 9, 12, 13, 14. More than two years' public use constitutes, 264. May be within two years, 266, 267. Use which amounts to, 264, 265. What delay will amount to, 204, 269. Evidence of, 267, 521. ^ in interference cases, 483-491. by non-completion of an appli- cation, 260. by non-prosecution of applica- tion, 265-268. by non-payment of final fee, 343. by neglect to prosecute applica- tion rejected prior to July 8, 1870, 345-348. ABSTRACT PRINCIPLE. When reduced to practice patent- able, 219. Invention should not be described as, 298. ACTION AT LAW. Arising under patent laws, 24, 25. trade-mark laws, 39. copyright laws, 50, 51. Form of declaration in, 668. ADMINISTRATOR. May apply for letters patent, 13, 271. ADMINISTEATOH (continued.) for extension, 591. Form of petition for letters patent by, 280. for extension by, 604. Form of oath on application for patent by, 318. for extension by, 606. AFFIDAVIT. (See Oath, Deposition.) AFFIRMATION. (See Oath.) AGENT. (See Attorney.) ALIEN. (See Foreign Inventor.) AMENDMENT. (See Examination, Appeal, Application.) APPEAL. To examiners-in-chief. (SeeExam- iner-in- chief.) To Commissioner in person. (See Commissioner of Patents.) To the supreme court of the Dis- trict of Columbia. (See Su- preme Court of the District of Columbia.) To the Supreme Court of the Uni- ted States. (See Supreme Court of the United States.) APPLICATION FOR LETTERS PATENT. Fee of $15, payable on filing, 32. Subject-matter of, 218. Abandonment of, (See Abandon- ment.) 675 676 INDEX. APPLICATION (continued.) When caveator is required to com- plete, 208. May be made by citizens or aliens, 218. For inventions patented abroad, 219. Division of, when required, 254, 255, 339. Number of inventions included in, 255. When inventions must be patented under a prior, 255. To be made in writing, 260. Time to complete and prosecute, 260. Clerical requirements of, 260. Should be complete when filed, 261. Correspondence with the office re- garding, 261. Preserved in secrecy pending, 262. When information will be given concerning, 262. Two years' use prior to, allowed, 264. When considered as continuing, 268. Is to be by way of petition, 271. (See Petition.) To be made by actual inventor if alive, 271. When made by joint inventors, 271-274. May be made by legal represent- atives, 13, 274, 280. To include, the specification, 284. To be accompanied by oath, 317. (See Oath.) Examination of, (See Examination.) APPLICATION (continued.) Rejection of, 334-339. Amendment of, 333, 334. (See Ex- amination.) Which take precedence, 331. May be renewed, 343, 345. On rejection of, applicant may ap- peal. (See Appeal.) Right of purchasers prior to, 15. ARGENTINE REPUBLIC, 59-61. Law and date, 59. Kinds of patents, 59. Previous examination, 59. Duration, 59. Government fees, 60. Documents required, 60. Working, 61. Assignment, 61. Specification, &c., inspection and publication of, 61. Infringements, 61. Other legal provisions, 61. ARRANGEMENT OF PARTS. (See Com- bination.) ART. (See Abstract Principle, Effect) Definition of, 231, 232. When patentable, 233, 234. Must be practical, 233. Lost, 252. ARTICLE. (See Manufacture.) ASSIGNEE. Patent may issue to, 275, 276, 623. Correspondence to be in the name of, 277. Who is an, 278. Rights of, unaffected by a reissue, 557. Entitled to the benefit of a dis- claimer, 612. INDEX. 677 ASSIGNEE (continued.') Rights of, under extension, 599. Rights of, under extension by act of Congress, 603. Cannot apply for an extension, 585. Form of petition for an, 279. May apply for reissue if the in- ventor be dead, 556. Form of petition for reissue by, 582. Form of oath by, 583. Of a partial interest, 276. Of alien inventors, 633. ASSIGNMENT. (See Assignee, Licensee, British Assignments, French Assignments.) Before letters patent are obtained, 14, 274-279, 629. Patent may issue to assignee in case of, 13, 274, 276. Should be recorded before patent issues, 277. After rejection of, application val- id, 275. Of incomplete invention, only val- id as a contract, 276. Stamp required, 278, 627. Requires no particular form of words, 278, 624. Oath and application to be by in- ventor in case of, 318. Interests which may be conveyed by, 624. Recording of, 277, 626. Unrecorded, good as between the parties, 627, 628. Distinction between, and license, 629, 635. Effect and construction of, 631. 57* ASSIGNMENT (continued.} Whether a particular instrument amounts to, 624, i!2o, 631. Implies no warranty of title, 632. Of extended term, 599. In case of reissue, 556-558. Forms of, 633. Copy of evidence, 520. ASSISTANT COMMISSIONER. How appointed, 1. Duties of, 5. ATTORNEYS. (See Power of Attor- ney.) Correspondence only with, 261, 281. Conflicting interests represented by the same, 262. Who may appear as, 281. Patent Office not responsible for acts of, 281. Commissioner may refuse to recog- nize, 6, 281. AUSTRIA, 61-67. Law, date, and where recorded, 62. Kinds of patents, 62. Previous examination, 62. Duration, 62. Government fees, 62. Documents required, and where to be left, 63. Working and prolongation, 63. Assignments, 63. Other legal provisions, 63. Specifications, inspections, and copies of, 63. List of patents delivered, 64. Specifications published, 64. Proceedings to obtain a patent, 64. Form of petition, 65. BADEK, (Grand Dnchy of,) 67, 68. 678 INDEX. BAVARIA, 68-71. Law, date, and where recorded, 68. Kinds of patents, 68. Previous examination, 69. Duration, 69. Annulment, 69. Government fees, 69. Documents required, and where to be left, 69. Working and extension, 69. Assignments, 69. Other legal provisions, 70. Specifications, inspection, and copies of, 70. List of patents delivered, 70. Specifications published, 70. Proceedings to obtain a patent, 70. BELGIUM, 71-77. Law, date, and where recorded, 71. Kinds of patents, 71. Previous examination, 71. Duration, 71. Government fees, 71. Documents required, and where to be left, 72. Working and extension, 72. Assignments, 72. Specifications, inspection, and copies of, 72. List of patents delivered, 73. Specifications published, 73. Originals of specifications, 73. Jurisdiction and legal proceed- ings, 73. Causes of nullity, 73. '^ Proceedings to obtain a patent, 73. BELGIUM (continued.) Declaration, 75. Form of a patent, 76. Form of transfer of patent, 77. Form of certificate of reception of a patent by transfer, 77. BILL IN EQUITY. (See Equity.) BOND. Official, of Commissioner, 4. Of chief clerk, 4. CANADA, 112-114. Patent Office constituted, 113. Seal, 113. Rules and regulations, 114. Deputy Commissioner, 114. Report, 114. Who may obtain Patents, 115-117 Who may obtain a patent, 115. An original inventor, having foreign patent, must apply within six months, 116. Right of assignment, 116. A rejjjdent may obtain, but not vend, a patent, 116. Joint applications to be made by joint inventors, and pat- ents issue accordingly, 116. Conditions and Formalities, 117- 119. Oath or affirmation as to inven- tion must be made by appli- cants, 117. Applicants to elect a domicil in Canada, 117. Nature of petition and specifi- cations, 118. Drawings to be furnished in duplicate, with references, 118. INDEX. CANADA (continued.') Working model of invention, or samples of ingredients, if a discovery, required, 119. Contents, Duration, Surrender, Re- issue of Patents, and Dis- claimers, 120-123. Contents of the patent and powers granted thereby, 120. Duration of patent 120. Patent to be examined and cer- tified by minister of justice before delivery, 121. New patent in case of error, 121. Patentee may make disclaimer, 122. Assignment and Infringement of Patents, 123-125. Government of Canada may use any patented invention by making reasonable compensa- tion, 123. Patents to be assignable, 123. Penalty for infringement, 124. Prosecution for infringement, 124. Court may discriminate in cer- tain cases, 125. Defense in such cases, 125. Nullity, Impeachment, and Void- ance of Patents, 126-128. Patents to be void in certain cases, or valid for only part, 126. Patents to be conditioned on manufacture in Canada with- in three years ; importing the article patented, 126. Proceedings for impeachment of patent, 127. CANADA, (continued.} Certificate of judgment voiding patent to be entered, 128. Judgment to be subject to ap- peal, 128. Patents Issued under former Laws, 128, 129. Existing provincial patents to remain in force, 128. Handing over records of patent offices to Commissioner, 129. Tariff of Fees, 129-131. With reference to fees, how and to whom to be paid, 129. The Commissioner to have the power of returning one-half of the Government fee, 131. Miscellaneous Provisions, 131- 137. Applicant may file a caveat, 132. Causes why Commissioner may refuse to grant a patent, 132. Commissioner to notify appli- cant of rejection, 133. Appeal to Governor in Council, 133. Interfering applications, 133. Documents in Patent Office to be open to inspection of the * public, except caveats, 134. Clerical errors, 134. Lost or destroyed patent may be replaced, 134. Use of patented inventions al- lowed in foreign ships, 134. Patent not to affect previous purchaser of invention, 135. 680 INDEX. CAK ADA (continued.) Patented articles to be stamped with date of patent, 135. Punishment of parties who stamp an article as patented when such is not the case, 135. Punishment of offenders for making false entry or copy, 136. All acts inconsistent with pres- ent act repealed, 136. Title of act: The patent act of 1869, 137. Act to commence and take effect July 1, 1869, 137. Rules, Regulations, and Forms of the Canadian Patent Office, 137-147. Date of approval, 137. Personal appearance, 138. Applicant responsible, 138. Correspondence, 138. Clerical requirements, 138. Address, 138. Forms, 138. Petition, 138. Joint application, 139. Oath, 139. Specification, 140. Drawings, 141. Extension, 142. Form of patent, 143. Model, 144. Fees, 144. Time for perfecting application, 144. Separate inventions cannot be claimed in one application, 146. CANADA (continued) Protest, 115. Cases of doubt, 145. Caveat, 145. Intricate cases, 146. General remarks, 146. CAPE OF GOOD HOPE, 147- 149. Law, date, and where recorded, 147. Kinds of patents, 147. Duration, 147- Government fees, 147. Documents required, and where to be left, 148. Assignments, 148. Specifications and drawings, 148. Other legal provisions, 148. CAVEAT. Who may file, 16, 207. When alien may file, 17, 208. For incomplete invention, 207. What may be set forth by, 207, 209. To be preserved in secrecy, 207. Term for which operative, 208. May be renewed, 208. Secures notice of interfering ap- plication, 208, 210. Caveator to complete his applica- tion after notice, 208. Not entitled to notice of pending application, 208. Notice to Commissioner only, 216. Need not contain a specific de- scription, 209. . Need nob be accompanied by a model, 209. INDEX. 681 CAVEAT (continued.} Purpose and office of, 209. Rights secured by, 208, 210. Papers not to be withdrawn, 215. Copies of, furnished, 215. Copies of evidence, 26, 497. Effect of, upon a subsequent patent, 213. How far evidence of invention, 215, 216, 520. Powers and duties of Commis- sioner as to, 208, 216. Form of petition for, 216. description attached to, 217. of oath accompanying, 217, 323. Fee payable on filing, 207. CERTIFICATE. Trade-mark, 450. Of officer concerning depositions, 504. Forms of, 505. CEYLON, 149, 150. Law, date, and where recorded, 149. Kinds of patents, 149. Duration, 149. Government fees, 149. Documents, where to be left, 149. Specification, inspection, and co- pies of, 149. Assignments, 149. Other legal provisions, 150. CHANCERY. (See Equity.) CHANGE. (See Novelty, Improvement, Combination.) CHEAPNESS. (See Utility.) CHEMICAL COMPOSITION. (See impo- sition of Matter.) CIRCUIT Court. (See Action at Law, Subpena.) CLAIM. (See Specification.) CLASSIFICATION. Of subjects of invention, 324, 329. Of models and specimens, 6. CLERKS. Of United States courts to issue subpena, 18, 19, 495. Of the Patent Office, 2, 3. Incapable of acquiring interests in patents, 6. COMBINATION. (See Improvement, Double Use, Equivalents, Iden- tity.) What constitutes a technical, 295, 296, 535, 536, 537. The word " arrangement " synon- ymous with, 295. May include an element not de- scribed, 289. Of old parts patentable, 535. Substitution of a substantially different element constitutes a new, 243. COMMISSIONER OF PATENTS. Appointed by the President, 2. Salary of, 2. Official bond of, 4. Powers, duties, and discretion of, 4. as to caveats, 208, 216. in issuing patents, 8, 362, 269. in determining as to utility, 231. as to the division of an inven- tion, 255. as to dispensing with model, 315, 428. as to the specification, 299. respecting examiners - in - chief, 351. 682 INDEX. COMMISSIONER (continued.) in regard to rehear ing after ap- peal, 358, 359. in case of appeal to the supreme court of the District of Colum- bia, 381, 387, 407. in cases of reissue, 570. in cases of extension, 598. as to attorneys, 281. in cases of mandamus, 409-427. to make rules, 7, 18, 495, 498. All correspondence in the name of, ' 260, 261. to and from free, 4, 262. Appeal from examiners-in-chief to, 20, 365-377. time of hearing on, 366. motion on, 366. oral argument on, 366. continuance of cases on, 366. questions of fact on, 367. case may be remanded after, 372. form of, 377. action of former Commissioner not reversed on, 366. Appeal from primary examiner to, 340, 373. (See Examination.) Appeal from, to the supreme court of the District of Columbia, 377, 408. COMMISSIONER, Acting. (See Assist- ant Commissioner.) COMMON USE. (See Abandonment.) COMPOSITION OF MATTER. {See Utili- ty, Process, Manufacture^ What is included by the term, 243. Substitution of ingredients in, 244. When patentable, 244. Variable proportions need not be stated in a specification for, 290. CONCEALMENT, (fraudulent.) (See Fraud.) CONGRESS. Patent may be extended by a spe- cial act of, 602. (See Extension.) CONSTRUCTION. (See Evidence. ) Of patent in connection with the specification, 286. Of the specification. (See Specifi- cation.) Of reissued patent. (See Reissues.) Of extended patents. (See Exten- sion.) Of assignments,. &c. (See Assign- ments.) Of the words "substantially as described," 293. Of the word "arrangement," in the claim, 295. CONSUL. (See Oaths.) CONTINUING APPLICATION. (See Abandonment.) For letters patent, what consti- tutes, 268. CONTRACT. (See Assignment, License.) COPIES. (See Evidence, Fees.) Of caveat papers furnished to cav- eator, 215. To be evidence, 26. Of Patent Office records to be evidence, 26, 519. To be furnished on application.310. Commissioner cannot refuse to furnish, 310. Of foreign patent to be evidence, 26, 527, 534. Of drawings, cost of, 309. Of specification, drawings, and references on rejection of ap- plication, 334. INDEX. 683 COPIES (continued.) On appeal to supreme court of D. C., appellant to furnish, 303. Applicant for the registry of trade- mark to furnish five dupli- cates, 448. Of testimony in contested cases may be obtained, 501. COPYRIGHT. Librarian of Congress to have con- trol of matters appertaining to, 42-47. to give bond, 42. to furnish record under seal, 42. to make annual report, 42. to record assignments of, 44. to record copyright books, 45. Who may obtain a, 43. What may be protected by, 43. Term for which granted, 43. Extension of term of, 43. Applicant for, to forward copy, 44. may send copyright matter free of postage, 46. liable to penalty for non-deliv- ery, 46. entitled to a copy of the re- cord of, 45. may demand a receipt from postmaster, 46. Fees payable for recording, 45. Copies under seal, 45. Recording assignment of, 45. Copies of assignment, 45. Assignment of, 44, 661. to be recorded, 44, 661. form of, 661. Action for infringement of, 47-52. not maintainable unless notice is inserted, 47. COPYRIGHT (continued.) Of a book, 48. Of maps, engravings, photographs, Ac., 48. Of dramatic compositions, 49. Of manuscripts, 49. Pleading in, 50. Cognizable by circuit court, 50. Appeal to the Supreme Court, 50-58. Full costs to be allowed, 51. Notice to be inserted on title page, 47. Penalty for false notice of, 47. to be recovered by action, 47. limitation of action for, 50. Transfer of books, &c., relating to, 51. CORRECTION. (See Reissue, Disclaim- er, Examination, Clerical Error.) CORRESPONDENCE. (See Application, Examination ) With the Patent Office free ot postage, 262. Must be in the name of Commis- sioner, 261. When power of attorney has been filed, 261. Should be in writing, 262. In case of assignment, 277. Information not furnished by, 263. COSTS. (See Disclaimer.) COURT. (See Action at Law, Equity, Sabpena, Supreme Court of District of Columbia.) CUBA, PORTO Rico, AND THE PHIL- IPPINE ISLANDS, 150, 151. Law, date^and where recorded, 150. Kinds of patents, 150. 684 INDEX. CUBA, &c., (continued.) Duration, 150. Documents, where to be left, 151. Government fees, 151. Specification, inspection of, 151. Assignments, 151. Working, 151. DAMAGES. (See Action at Law.) DEATH. (See Administrator, As- signee.) DECLARATION. (See Action at Law.) Form of, in action for infringe- ment, 668. Of parties. (See Evidence.) DEDICATION. (See Abandonment.) DEED. (See Assignment.) DEFENSE. (See Action at Law, Equity.) DEPOSITIONS. (See Evidence, Exten- sion, Interference, Oath.) Commissioner may establish rules for taking, 495, 498. Before whom taken, 495. Clerk to issue subpena, 495. Penalty for refusing to testify, 495. Notice to be given to opposite party before taking, 496. To be sealed up and entitled, 497. Ex parte testimony, 495. Notice of objection to, 468. Technical objection to, 501. Service of notice for taking, 499. Eequisites of notice for taking, 500. To be taken in answer to inter- rogatories, 500. Magistrate's certificate appended to, 500. DEPOSITIONS (continued. ) Parties may have access to, 501. cannot be taken before inter- ested parties, 501. May be received by consent of parties, 502. Taken on a former interference admissible, 502. Assignment of time for taking, 503. Postponement of taking, 503. Form of notice of taking, 503. Form of, 504. Form of certificate attached to 504 DESCRIPTION. (See Specification, Re- issue.) Caveat need not contain specific, 209. DESIGNS. Patents for, 427-445. citizens and aliens may take, 427. subject-matter of, 427, 428. terms of, 428. applicant to elect on application, term of, 437. term of may be extended, 428. classification of, 429. what may be embraced in, 431. trade-mark not now included in, 448. may embrace a genus or class of ornaments, 431. may be granted on account of utility, 435. cannot include mode of opera- tion or construction, 437. number of claims allowed in, 440. INDEX. 685 DESIGNS (continued.) Application for letters patent for, 428. the same as for other patents, 429. need not generally be accom- panied by model, 428. may be illustrated by photo- graphs, 429. requisites of photographs accom- panying, 429. no provision made for use or sale prior to, 438. application for mechanical in- vention cannot be changed into, 442. fee payable on filing, 618. form of petition accompanying, 445. form of specification accompany- ing. 445. form of oath accompanying, 445. DIRECTIONS. To persons skilled in the art. (See Specification.) DISCLAIMER. (See Action at Law, Examination, Extension, lie- issue.) When allowed and by whom made, 609, 610. To state the interest of disclaira- ant, 610, 611. To be in writing, witnessed, and recorded, 610. To be considered a part of the specification, 610. A mode of amending imperfect specification, 609-612. If not filed before action, costs not recoverable, 610, 614. 58 DISCLAIMER (continued.) Effect of delay in filing, 613. Inures to the benefit of assign- ees, 612, Cannot affect prior grantee, 012. Owner of sectional interest may file, 612. Effect of, upon actions for in- fringement, 610, 613, 614. Form of, 6" 15. DISCOVERT. (See Abstract Principle, Art, E/ect.) Meaning of, judicially ascertain- ed, 226. To be patentable, must be re- duced to practice, 227. Of a lost art patentable, 252. DOUBLE USE. (See Novelty.) DRAUGHTSMEN. (See Clerk.) What constitutes, 221, 222. DRAWINGS (See Copies, Specification, Reissue. ) To accompany caveat papers, 209. Application for patent accom- panied by one copy of, 308. A part of thespecification, 286, 308. To be attested by two witnesses, 308. May be signed by inventor or attorney, 308. Patent Office requisites concern- ing, 308, 309. Patent Office to furnish copies of, 309, 310. Cost of copies of, 309. Relation of, to the specification, 308,311. May be resorted to to aid the description, 311. 686 INDEX. DRAWINGS (continued.) How described in specification, 312, 214. Manner of lettering, 312, 313. Use of dotted lines in, 314. EFFECT. (See Abstract Principle, Art, Double Use, Novelty, Utility.) Alone not patentable, 220. May become the test of inven- tion, 221. EMPLOYEES. (See Clerks.) ENTIRETY. (See Unity.) EQUITABLE TITLE. (See Assignment.) EQUITY. Suits in, cognizable in the United States circuit courts, 24. Proceedings in, to prevent viola- tion of patent right, 25. Damages upon decree in, 25. Appeal from decree in, to Supreme Court, 25. Proceedings in, in case of interfer- ing patents, 26, 27. Remedy by bill in, in case of refusal of Commissioner to grant a patent, 21, 22. Forms of procedure in, 662, 667. Form of bill in, 662. Subpena to appear and answer, 665. Precept for appearance, 666. Motion for leave to file supple- mental bill, 666. Answer, 666. Replication, 667. Notice for proof under oral exam- ination, 667. EQUIVALENTS. (See Mechanical Equivalents. . ... EVIDENCE. (See Deposition, Oaths.) Model may be used as, 316. Presumptive divided into two classes, 505. Piesumption in regard to public officers, 509. Of knowledge of preceding pat- ent, 510. That the patentee is the first in- ventor, 510, 512. That reissued patent is for the same invention as the origi- nal, 510. That the patent was lawfully is- sued, 511, 512. Of acquaintance with the state of the art, 511. That the constructor of a ma- chine is the inventor, 511, 512. As to oath of invention, 323. Parol and secondary, 517-519. Patent Office records to be, 519, 520. On appeal to the supreme court of District of Columbia, 383. Of abandonment, 520, 521. Of priority of invention, 522, 527. Of prior knowledge or use in a foreign country, 527-535 Copy of foreign patent to be, 26. Of novelty and utility, 535-546. Of declaration and acts of par- ties, 513-516. Of third parties, 516. Competency of witnesses, 546- 550. Of parties in patent causes, 546- 547. INDEX. 687 EVIDENCE (continued.) In cases before the Patent Office, 547. Of witnesses in interference cases, 548. Of experts, 549, 550. EXAMINATION. Of officers of the Patent Office on appeal to Supreme Court, 381. Of application for letters patent, 12, 330-342. Commissioner shall cause, to be made, 330. To be made within two years after filing petition, 300. Duties of primary examiner on, 342. To be made in the order in which applications are completed, 331. Cases which take precedence on,331 . Attendance of applicant unneces- sary on, 341. References given if any claim is rejected on, 333. Division of the application may be required on, 339. Correction of specification may be required on, 339. Closed on appeal, 337. Will be reopened if amendments are allowed on appeal, 337, 372, 373. On rejection, applicant may amend specification, 334. *may demand specific references, 334. may demand a re-examination, 336. EXAMINATION (continued.) may amend as often as new ref- erences are given, 335, 336. may demand copies and draw- ings, 334. cannot require the return of specification for amendment i 341. may obtain copy of specification, 341. may appeal to the board of ex- aminers-in-chief, 340 352. may appeal directly to the Com- missioner in certain cases, 340, 353. may file special amendments, 338. requirements of amendments, 338. Form of amendment of specifica- tion, 343. EXAMINERS, (primary.) (See Exam- ination, Reissue, Extension.) Appointed by the Secretary of the Interior, 2. Divided into three classes, 2. Salary of, 3. Executive, ministerial, and judi- cial functions of, 343. May be examined on appeal to the supreme court of D. C., 381. EXAMINERS-IN-GHIEF. Appointed by the President, 2. Salary of, 2. Duties of 5, 349, 365. Resume" of the laws constituting, 349. To be governed by the rules of the Commissioner, 351. 688 INDEX. EXAMHTERS-IN-CHIEF (continued.) When applicant may appeal to, 20, 352. Appeal to, is from the judicial acts of examiner, 352. cannot be taken from executive acts, 353, 354, 357, 361. from adverse decisions only, is from the action of the exami- ner, not from his reasoning, 357. rehearing on, only by order of Commissioner, 358. examiner cannot reopen a case after, 359. case may be remanded for fur- ther examination after, 360. petition on, to set forth reasons, 364. amendment after, 337. examination closed before pri- mary examiner after, 337. form of, 365. When Commissioner not bound by decision of, 362. Appeal to Commissioner from de- cision of, 365. EXECUTION. Patented machine may be sold on, 632. Ex PARTE. (See Evidence.) EXPERIMENT. (See Novelty.) Inventor may avail himself of prior, 252. Unsatisfactory, evidence of aban- donment, 521. EXTENSION. Statute provisions concerning, 30, 31. 32. Resume 1 of the law concerning, 584. EXTESSION (continued.) Patentee may apply for, 585. Assignee cannot apply for, 585. When attorney may apply for, 586. Administrator may apply for, 591. Duty of party applying for, 585. Publication of notice of applica- tion for, 591. Application for, to be referred to primary examiner, 591. "When patent has been divided on reissues, 593. Any person may oppose, 591. Party opposing, to give notice, 592. must file reasons of opposition, 592. In cases of opposition to, testimo- ny may be taken, 592. on whom notice to take testi- mony may be served, 592. Assignment of time on application for, 593. Hearing in cases of, 593. Applicant for, to furnish state- ment under oath, 593, Questions considered on applica- tion for, 594. Proof required on application for, 594. as to novelty, 595. as to value and importance, 596. as to remuneration, 596. as to policy, 597. Granting the, 597. To be for seven years from expi- ration of first term, 598. Effect of, 598. Action of Commissioner in grant- ing, not re-examinable, 598. Eights of assignees on, 599-602. LSDEX. 689 EXTENSION (continued.) By act of Congress, 603. By special act of Congress, 602. Form of petition for, by patentee, 604. Form of petition for, by adminis- trator, 604. Form of statement of account on, 604. Form of oath by patentee, 606. Form of oath by execntor, 606. Form of reasons of opposition to, 606, 607. Form of certificate of, 608. Form of oath to loss of letters patent, 608. Of patents for designs, 428. EXPERTS. (See Evidence.) Who are, 541. FALSE MARKING. Penalty for, 15, 16. FEES OF THE PATENT OFFICE. To be paid in advance, 617. Tariff of, 618. On issuing patent, to be paid with- in six months, 343, 619. How may be paid, 619. Paid by mistake to be refunded, 620. FOREIGN INVENTOB. May obtain a United States pat- ent, 10, 219. When may file a caveat, 208. Form of oath by, 318. FOREIGN PATENTS. Not a bar to obtaining a patent in the United States, 219. When will avoid a United States patent, 254. 58* FOREIGN PATENTS (continued.) United States patent expires with, 527-535. Oath by inventor who has taken out, 318. Date of, how determined, 527- 535. The Argentine Republic, 59-61. Austria, 61-67. The Grand Duchy of Baden and Petty States of Germany, 67, 68. Bavaria, 68-71. Belgium, 71-77. Great Britain and Ireland, 77-84. Analysis of 'the British Patent Laws, 84-102. Forms and proceedings to obtain a patent, 102-112. Patent Laws of the Dominion of Canada, 112-114. Who may obtain patents, 115- 117. Conditions and formalities, 117- 119. Contents, duration, surrender, re- issue of patents, and dis- claimers, 120-123. Assignment and infringement of patents, 123-125, 649-654. Nullity, impeachment, and void- ance of patents, 126-128. Patents issued under former laws, 128, 129. Tariff of fees, 129-131. Miscellaneous provisions, 131-137. Rules, regulations, and forms of Canadian Patent Office, 137- -147. Cape of Good Hope, 147-149. 690 INDEX. FOREIGN PATENTS (continued.) Ceylon, 149, 150. Cuba, Porto Rico, and the Philip- pine Islands, 150, 151. France, 151-156. Greece, 156. British Guiana, 156-158. India, 158-164. Italy, 164-169. Jamaica, 169-171. Mauritius and Dependencies, 171, 172. Mexico, 172, 173. The Netherlands, 173-175. Newfoundland, 175-177. New South Wales; 177, 178. New. Zealand, 178, 179. Portugal, 179-181. Prussia, 181-183. Queensland, 183. Russia, 183-185. Saxony, 186, 187. Spain, 188-191. Sweden, 191-193. Tasmania, 193-195. Trinidad, 195. Victoria, (Australia,) 195-199. West Indies, (Dutch,) 200, 201. Wurtemberg, 201-203. FOREIGN PUBLICATION. When, will avoid a patent, 252- 254, 527-535. FORM. Change of, when patentable, 238. FORMS. Of petition for letters patent, 271. Of petition for patent by inventor for assignee, 279. Of petition for patent by joint in- ventors, 274. FORMS (continued.) Of petition for patent by adminis- trator, 280. Of petition for patent by executor, 280. Of petition with power of attorney. 282. Of power of attorney, 283. Of revocation of power of attorney, 284. Of specification for a machine, 304. Of specification for a process, 306. Of specification for a composition of matter, 30(3. Of oath on application for patent, 323. Of amendment of the specifica- tion, 343. Of petition for the renewal of an application, 345. Of appeal from examiner to exam- iners-in-chief, 365. Of appeal from the examiners-in- chief to the Commissioner , 37 7. Of petition on appeal to the su- preme court of D. C., 407. Of certificate of Commissioner on appeal to supreme court of D. C., 408. Of notice and reasons of, to su- preme court of D. C., 408. Of appeal to the supreme court of D. C , furnished by the ofiice, 380. Of oath on application for patent for a design, 445. Of petition for the registry of trade- mark, 449. Of oath on the registry of trade- mark, 449. INDEX. 691 FORMS (continued) Of transfer of trade-mark, 450. Of certificate of registry of trade- mark, 450. Of notice of taking testimony, 503. Of deposition, 504. Of certificate of officer, 504, 505. Of petition for reissue by inventor, 582. by assignee, 582. Of oath of applicantfor reissue, 583. assignee, 583. Of petition for extension by pat- entee, 604. By an administrator, 604. Of statement of account, 604. Of oath by applicant for exten- sion, 608. Of reason of opposition to exten- sion, 607. Of disclaimer, 615. Of United States letters patent, 616. Of assignments, 633, 634. Of license, 640, 641. Of British assignment!? 649-654. Of French assignments, 658-660. Of assignments of copyright, 661. Of bill in equity, 662. Of subpena to appear and answer, 665. Of precept of appearance, 666. Of motion for leave to file supple- mental bill, 666. Of answer, 666. Of replication, 667. Of notice for proofs under oral ex- amination, 667. Of declaration, 668. Of plea and special notice, 670. FRANCE, 151-156. Law, date, and where recorded, 151. Kinds of patents, 152. Previous examination, 152. Duration, 152. Government fees, 152. Documents required, and where to be left, 152. Working and prolongation, 152. Assignments, 152, 655, 660. Specifications, inspection, and copies of, 153. List of patents delivered, 153. Specifications published, 153. Originals of specifications, (mo- dels, 153.) Jurisdiction, local proceedings, 153. Proceedings to obtain a patent, 153. Form of French letters patent, 155. FRANKING PRIVILEGE. Of Commissioner, 4. FRAUD. In the specification, 300. In the oath of invention, 319, 322. GENERAL ISSUE. (See Action at Law.) GREAT BRITAIN AND IRELAND, 77- 84. Law, date, and where recorded, 78. Kinds of patents, 78. Previous examination, 78. Duration, 78. Stamp duties to be paid, 78. Documents required at the Pat- ent Office, 79. 692 INDEX. GREAT BRITAIN, &c., (continued.) Assignments and licenses, 80 649. List of patents at their different stages, 80. Specifications, disclaimers, al- terations, provisional specifi- cation, assignments, and li- censes, 80. Specifications, disclaimers, alter- ations, and indexes, 80. Originals of specifications, etc., 81. Free public library of the Com- missioners of Patents, 81. Commissioners of Patents' Jour- nal, 81. Infringements, 83. Other legal provisions, 83. Analysis of British Patent Laws, ' 84-102. Acts of Parliament; rules, 85. Commissioners, 85. Seal, 86. Petition and declarations, 86. Only one invention to be in- cluded in a patent, 86. Copy of specification, &c., to accompany application, 86. Petitions, &c., to be left at office; size, 87. Size of drawings, 87. Applications referred, 87. Law officer may amend title, 87. Applicant may not amend pro- visional specification, 88. Nature of invention, 88. Fee on leaving petition, 88. Provisional protections, 88. Complete specifications, 88.. Fraud, 89. . GREAT BRITAIN, &c., (continued.) Complete specification advertised, 89. Complete specification stamp, 5 89. Notice to proceed, 89. Notice to proceed advertised, 89. Opposition, 90. Applications for or against seal- ing, 90. Notice to proceed fee 3, 90. Objections to be referred, 90. Law officer to decree cost, 90. Warrant for sealing patent, 90. Complete specification filed, 91. Patent fee 5 ; stamp 5, 91. Future payments, 91. Issue of letters patent, 91. Issued three months from war- rant, 92. Accidental delay, 92. Case of death, 92. If lost, new patent may issue, 93. Date of letters patent, 93. Patents for foreign inventions, 93. Foreign ships, 93. Copy of drawings, 93. Size of specifications, 94. Size of drawings and scale, 94. Extra copy of specification, 94. Documents to be legibly signed, 94. Period of notice, 95. Public inspection of documents, 95. Documents to be printed, 95. Documents evidence in courts, 96. INDEX. 693 GEZAT BRITAIN,