'T 
 
 M 
 
 19416 
 
{tihut ^m^ %hnutm 
 
 ^ mn t0 
 
 lana 
 
Cornell University Library 
 
 arV19416 
 
 A brief inquiry into the princiDles, eff 
 
 3 1924 031 307 279 
 olin.anx 
 
Cornell University 
 Library 
 
 The original of tliis book is in 
 tine Cornell University Library. 
 
 There are no known copyright restrictions in 
 the United States on the use of the text. 
 
 http://www.archive.org/details/cu31924031307279 
 
A BRIEF INQUIRY 
 
 JULIUVJIKJ) 
 
 AMERICAN PATENT SYSTEM, 
 
 //: & C. HOWSON, 
 
 SOLICITORS OF PATENTS, AND COUNSEL IN PATENT CAITSES. 
 
 PHILADELPHIA 
 
 AND 
 
 WASHINGTON. 
 
 THIRD EDITION, REVISED. 
 
Entered, according to Act of Congress, in the year 1873, 
 
 By H. & C. HOWSON, 
 
 In the Office of the Librarian of Congress at Washington, D.C. 
 
 SHERMAN & CO., PBINTEES, PHILADELPHIA. 
 
Ill 
 
 United States Patent Oepicb, 
 Washington, D. C, 
 
 June 18th, 1873. 
 Messrs. H. & C. Howson, 
 
 Fhila^elphia, Pennsylvauia. 
 
 Gentlemen : I have been much pleased with your book entitled, 
 "The American Patent System." As a concise statement of 
 principles underlying the grant of patent protection, and a brief 
 exposition of the American patent system, it is valuable. 
 
 In the discharge of my duties as Eepresentative of the United 
 States in the International Patent Congress at Vienna, I should 
 be glad to use some portions of your treatise. 
 
 Can you, consistently with your personal interests, revise and 
 condense your essay, and publish for this purpose a small pamphlet 
 edition in the German language, which is the official language of 
 the Congress ? 
 
 If so, you will greatly oblige me, and at the same time, as I 
 believe, serve the interests of American inventors and patentees. 
 Very respectfully yours, 
 
 J. M. Thacher, 
 
 Assistant Commissioner of Patents. 
 
 Philadelphia, July 4th, 1873. 
 To THE Hon. J. M. Thaohee, 
 
 Assistant Commissioner of Patents. 
 
 Sir : We have complied, as well as the brief time allowed us 
 would permit, with your request that we should prepare and place 
 at your disposal copies of a revised edition, in German, of our 
 essay entitled, " The American Patent System." We also furnish 
 you with a number of copies in English, which may prove useful 
 where the others would not be available. We are obliged to you 
 
IV 
 
 for the good opinion which it has pleased you to express of the 
 work as a concise explanation of its subject. We had intended to 
 add further commendatory remarks upon the examining system, 
 based upon the operation of the civil service law, so effectually 
 carried out by the Commissioner, the Hon. M. D. Leggett, but 
 this, for want of time, we have been unable to do. 
 
 We cannot permit this opportunity to pass, however, without 
 recording our opinion, warranted by a long practice before the 
 Patent Office, that the operation of the Act in question has effected 
 very marked improvements in that Bureau. 
 
 The plan of promoting trained officers according to merit, as 
 developed by a competitive examination, has resulted in securing 
 most competent men for performing the delicate duty of examiners, 
 and this, together with facilities afforded for appealing, renders it 
 impossible that injustice should be done to a real inventor, whose 
 case is properly presented and prosecuted. 
 
 We trust that you may find our work in its present shape of 
 
 some use, as you are kind enough to consider it may be, in the 
 
 discussions in which you are to take part as the Eepresentative 
 
 of the United States in the International Patent Congress, about 
 
 to be held at Tienna. 
 
 Very respectfully yours, 
 
 H. & C. HowsoN. 
 
CONTENTS. 
 
 PAGE 
 
 History of property in inTentions, .... . . 7 
 
 General principles gorerning patent property, 11 
 
 Patents as a mode of remunerating inventors, 14 
 
 Essential features of a good patent system, .... 17 
 
 The American patent system. — Previous official examination, 19 
 
 Benefits of an examining system 26 
 
 The examining system as viewed from abroad, . . . 23 
 
 Remedies for defective patents 37 
 
 Disclaimers — Reissues, .41 
 
 Qeneral featnres of the XT. S. Patent Laws, 47 
 
 Caveats 48 
 
 Conditions to patentability, ... 49 
 
 Interferences, 55 
 
 Priority of invention, 55 
 
 Diligence, 5^^ 
 
 Appeals, .... .... .58 
 
 Remedies for Infringement 59 
 
 Status of Foreign Inventors, ... ... 61 
 
THE AMERICAN PATENT SYSTEM. 
 
 CHAPTEE I. 
 
 HISTOKY OF PKOPEBTY IN 
 INVENTIONS. 
 
 An inquiry as to the principles 
 and object of tlie American Patent 
 System, may perhaps be made more 
 clear if introduced by a brief his- 
 'torical retrospect. 
 
 The English "Statute of Mo- 
 nopolies," James I, 21st, is the 
 earliest legislative recognition of the 
 public policy of allowing temporary 
 exclusive rights in the exercise of new 
 manufactures. This statute declared 
 utterly illegal and void, those royal 
 grants for the sole buying, selling, 
 working or using of different things 
 within the realm, which, under the 
 name of patents, had become odious 
 from their mischievous and oppres- 
 sive results. But from the general 
 condemnation of monopolies, the 
 act excepted, under certain qualifica- 
 tions, patents fbr the sole working 
 or making, during a limited period, 
 of any manner of new manufac- 
 tures, which others, at tlie time of 
 making such letters-patent should not 
 use. 
 
 To the Anglo-Saxon mind— jeal- 
 ous of anything tending to re- 
 strain free action, and jealous, es- 
 
 pecially, of any extraordinary in- 
 struments of taxation — monopolies 
 in trade or art, or in the making 
 or vending of necessary or useful 
 articles, were utterly abhorrent. 
 
 But the declaratory character of 
 this statute shows that previously, 
 at common law, it was recognized 
 as a lawful prerogative of the Crown 
 to grant to the inventors of wio 
 manufactures the sole right, for lim- 
 ited periods, of working such manu- 
 factures within the kingdom, and 
 records of such grants are to be found, 
 dating so far back as the time of Ed- 
 ward III. 
 
 As explained by Lord Eldon, this 
 was a prerogative vested in the 
 Crown as the depositary of the su- 
 preme executive power of the state, 
 to be exercised in behalf of and for 
 the benefit of the public. 
 
 But, as may be well understood, a 
 royal prerogative of granting Pat- 
 ents of Monopolies, so long as its 
 true object remained undefined and 
 its exercise unregulated by express 
 legislation, was exceedingly likely to 
 be diverted from its legitimate uses 
 and employed for the private advan- 
 tage of the monarch, or of royal favor- 
 ites, to the grievous disadvantage of 
 the public. And so events proved, for 
 
8 
 
 during the reign of Elizabeth especi- 
 ally the prerogative was so stretched 
 and perverted as to produce general 
 mischief and complaint,which finally 
 led to the passage of this Statute of 
 Monopolies, the eflfect of which is to 
 define the real extent and object of 
 the royal prerogative with reference 
 to the grant of patents affecting the 
 exercise of trades. 
 
 It is not our purpose to pursue 
 this historical inquiry further than 
 to point out that the common law 
 of England early recognized the 
 public policy of granting exclusive 
 privileges in the exercise of new 
 trades, and that the public advantage 
 arising from the introduction or dis- 
 covery of a new art or trade was re- 
 garded as being that which alone 
 warranted such grants. 
 
 The words "true and first in- 
 ventor," as used to this day in Eng- 
 lish Patent law, include not only 
 him who may first devise or discover 
 something new, but him also who 
 may first make known within the 
 kingdom something which has been 
 invented abroad. 
 
 The reason of this is readily un- 
 derstood when we consider the char- 
 acter of the times in which the Eng- 
 lish law on this subject may first be 
 traced. The insular position of 
 England and the imperfect, not to 
 say dangerous character of travel, 
 isolated her from the rest of the 
 civilized world. Communication 
 was limited and infrequent, and in 
 every country patriotism took the 
 shape of extreme jealousy of for- 
 
 eigners. It is not hard to believe, 
 then, that to import knowledge of 
 an art from abroad was no small 
 achievement, but might be regarded 
 as rare merit. 
 
 Thus in the Clothmakers of Ips- 
 wich case, adjudged in the reign 
 of James I, it is said, "If a man 
 hath brought in a new invention 
 and a new trade within the king- 
 dom, in peril of his life and consump- 
 tion of his estate or stocic, &c., or if a 
 man hath made a new discovery of 
 anything, in such cases the King, 
 of his grace and favor, in recom- 
 pense of his cost and travail, may 
 grant by charter unto hiin that he, 
 only, shall use such a trade or traf- 
 fique for a certain time, &c." 
 
 To the development of invention 
 in the sense of originating and de- 
 vising, neither the intellectual nor 
 the social condition of these early 
 times was favorable. 
 
 The mass of laborers and artisans 
 were little more than human mar 
 chines, running in one rut, and as a 
 rule lacking the desire or the intel- 
 ligence to seek to better their modes 
 and means of working, while the in- 
 tellectual efforts of those of higher 
 rank and educated intelligence were 
 not as yet fairly diverted from the 
 unprofitable channels and myste- 
 rious lore of a felse and unprofit- 
 able philosophy. Bacon's works 
 were but now startling the edu- 
 cated few, and the leaven of that 
 practical and humane philosophy of 
 which he was the first great exponent 
 had yet to commence its work on 
 
9 
 
 men's minds. The science of the 
 times was perfectly barren. The 
 artisans were not thinkers, and the 
 thinkers had no acquaintance with 
 the practical arts. There was yet a 
 gulf, partly of social and political and 
 partly of educational creation, sepa- 
 rating cultured intelligence and 
 practical industry, which must he 
 allied before there can he fruitful 
 invention. 
 
 Ifor were the political troubles of 
 the time, succeeded as they shortly 
 were by internal war, favorable to 
 the development of the industrial 
 arts. Moreover the science of phys- 
 ics was yet to be reduced to rational 
 principles, and new modes of thought 
 to be developed, and this was the 
 slow work of years. The applica- 
 tion of science to the practical arts 
 must come later. 
 
 It is not to be wondered at then, 
 that, as is observed in the excellent 
 treatise of Hindmarch, " for many 
 years after the passing of the statute 
 of monopolies the arts and manu- 
 factures continued in a low state 
 in England ; few of the inventions 
 for which letters-patent were ob- 
 tained were of any value, and the 
 demand for novelties being very 
 limited, no one was tempted to in- 
 fringe the rights of patentees." 
 
 It is not until the reign of George 
 III that we find the subject of prop- 
 erty in inventions attracting public 
 attention. Then the troubles of 
 Arkwright and of Watt, brought 
 the subject of patents into court, and 
 led to the earliest of that series of 
 
 judicial reasonings upon the English 
 law of patents, which gives that 
 law what it has of system. 
 
 We need not wonder that the 
 early treatment of patents in the 
 English courts was anything but 
 liberal. The subject was a strange 
 one, coming before them at a time 
 when a very clear and high concep- 
 tion of the importance and merit of 
 inventors could hardly exist. 
 
 In later years, as the exercise of 
 the inventive faculties became more 
 general and active, and had pro- 
 duced results which forced a per- 
 ception of the importance and value 
 of original invention upon the public 
 mind, a more liberal treatment of 
 patents crept into the judicial prac- 
 tice ; and the English patent law as 
 it stands to-day is for the most part 
 judge-made law, whose doctrines 
 are founded upon reasoning as just 
 and liberal, perhaps, as the bounds 
 of the old legislation forming the 
 text for the judicial commentaries 
 will permit. 
 
 The apparent public policy of en- 
 couraging improvements in the use- 
 ful arts, has led to the adoption 
 by most civilized countries of patent 
 systems more or less analogous to 
 that of England. 
 
 The earliest to adopt such systems 
 were France and the United States. 
 
 Our own patent system, first es- 
 tablished by Act of Congress, in 
 1790, and gradually developed and 
 improved by subsequent legisla- 
 tion, is based upon reasoning which 
 
10 
 
 seems, on the whole, peculiarly cor- 
 rect, just, and liberal. 
 
 It originated at a time and under 
 circumstances favorable to the de- 
 velopment of inventive activity, and 
 •which allowed a clear perception of 
 the importance of invention to the 
 domestic progress of the useful arts 
 and its consequent utility to society. 
 
 This led to a recognition of the 
 ■piinciplevf privateright which really 
 underlies a patent system, and of 
 the broad difierence between patent 
 privileges and monopolies, so called. 
 
 A monopoly in its legal and odious 
 sense, implies the taking away of 
 some right from the many, for the 
 benefit of particular individuals. 
 Manifestly, then, the term is not 
 applicable to letters-patent for new 
 inventions ; that cannot be taken 
 from the public, which the public 
 has not ; a new invention or discov- 
 ery can become public property, 
 only by communication from the 
 inventor or discoverer ; until so com- 
 municated voluntarily, it remains 
 the secret property of the latter. 
 
 This view of the case shows that 
 into the public policy of patents 
 enter important considerations of 
 public justice, an idea upon which 
 we shall have occasion to dwell more 
 fully in the course of this treatise. 
 
 Looking to the question how far 
 our patent system may be adjudged 
 from experience to have proved con- 
 sistent with the principles of justice 
 and policy upon which it is based, 
 we find, to begin with, that the 
 number of patents issued in this 
 
 country, is very largely in excess of 
 that in any other patent-granting 
 country ; that there is here a more 
 general and widely-spread inventive 
 activity than elsewhere ; that Amer- 
 ican labor-saving machinery and 
 devices are in demand the world 
 over ; and that inventors enjoy in 
 this community, a power and con- 
 sideration without parallel abroad. 
 
 The vast amount of work to be 
 done in developing the resources 
 and industries of this new coun- 
 try, by a comparatively small and 
 scattered population, with moderate 
 pecuniary resources, hasma4e labor- 
 saving mechanism a peculiarly ser- 
 viceable instrument of power, sup- 
 plying the place of manual labor 
 with greater accuracy and economy, 
 and so increasing the productive 
 power of capital. 
 
 Thus, it is because of its pecu- 
 liarly manifest utility to the public, 
 that invention has here attained 
 such dignity. 
 
 How far has this been brought 
 about by our patent system ? or in 
 other words, how far has that sys- 
 tem tended to incite and foster the 
 exercise of ingenuity '? 
 
 Our Patent Laws are, undoubted- 
 ly, the most truly liberal of any. 
 They more clearly than any other 
 recognize the truths that productive ' 
 industry is the basis of national 
 wealth and power ; that such indus- 
 try will flourish in proportion as 
 it is made a secure source of indi- 
 vidual profit ; that true invention is 
 intellectual production of the most 
 
11 
 
 beneficial kind, and that, therefore, 
 true policy, which is always just, 
 demands that it shall be made, as 
 far as posssible, a secure source of 
 individual profit. 
 
 The benefit of the patent laws has 
 been sought with avidity, and there 
 can be no doubt that the advantages 
 which they hold out have led to a 
 multitude of inventions and novel 
 disclosures, which otherwise had not 
 been made. 
 
 Of course, complaints and criti- 
 cisms have been directed against the 
 patent laws and their administra- 
 tion, some of them perhaps measur- 
 ably just, since an absolutely perfect 
 system of human designing is hardly 
 to be looked for, but for the most 
 part, we believe, fallacious, and aris- 
 ing from a misapprehension of the 
 true principles of the law. 
 
 This misapprehension is due, in 
 great degree, to the just favor with 
 which inventors have been regarded, 
 leading gradually to a somewhat 
 one-sided and partial understanding 
 of the laws peculiar to them. 
 
 CHAPTEE II. 
 
 GBNEEAL PBINCIFLBS GOVBRST- 
 
 iNa PEOPBETT nr inventions. 
 
 It is our purpose in this chapter 
 to inquire first into the true nature 
 and purpose of patent laws, for it is 
 necessary to- ascertain this, before 
 we can look with intelligence into 
 the question of the justice and effi- 
 ciency of our own law. 
 
 The patent laws, as viewed in 
 reference to inventors only, are the 
 means of securing temporary exclu- 
 sive rights to the use of new and 
 useful inventions, and it is not un- 
 natural that inventors themselves 
 should regard the laws in that light 
 only. So viewing them, regarding 
 themselves as the only parties inter- 
 ested, they will look with impa- 
 tience and disfavor upon those fear 
 tures in the laws, or the administra- 
 tion of them, which may seem mere 
 embarrassments or impediments in 
 the way of obtaining patents. 
 
 Yet this is not a true, because 
 only a partial, view of the subject. 
 
 It would be an unprofitable and 
 imnecessary task to touch upon the 
 question of man's natural property 
 in his own original ideas. It is suffi- 
 cient to recognize the fact that as 
 long as they are locked up in his own 
 breast, they are likely to be of little 
 benefit to himself or any one else ; 
 to be of use they must, as a rule, be 
 disclosed ; and when once disclosed, 
 they cannot be stamped with the 
 character of individual property, 
 and be identified and protected as 
 such, except through the medium 
 of positive legislation. 
 
 But society can be looked to for 
 such legislation only if, and so far 
 as it may be, consistent . with the 
 general welfare. 
 
 Consequently it is in utility to 
 society that we must seek the rea- 
 son and justification of positive laws 
 recognizing individual rights in con- 
 nection with invention. 
 
12 
 
 The progress of tHe useful arts is 
 a most important branch of the 
 general welfare, and inventors are 
 the chief instruments for the ad- 
 vancement of the useful arts. An 
 inventor is not bound to disclose 
 his invention ; he may, if he so 
 elect, keep the knowledge of it to 
 himself, but generally he cannot 
 himself profit by its use, without, in 
 the very act, disclosing it to others, 
 and when thus disclosed, there is 
 nothing in the absence of positive 
 law on the subject to prevent other 
 members of the public from avail- 
 ing themselves of an idea, which 
 has then in a certain sense become 
 public property. 
 
 Evidently, in a state of society 
 where for an inventor to disclose his 
 invention is altogether to lose, with- 
 out return, the special benefit of 
 it, and of the labor and expense he 
 may have bestowed upon it, there 
 is little or no encouragement for the 
 exercise of ingenuity, and the ex- 
 penditure of thought, time, labor, 
 and money in the bringing to light of 
 new inventions. Men wiU not wil- 
 lingly sow merely for others to reap. 
 
 It may be said that the inventor 
 derives a profit from his original 
 thought, in the advantage which it 
 gives him over competitors, by way 
 of increased facilities or economy in 
 the prosecution of his business. But 
 if he cannot hope to maintain this 
 power longer than he can keep it 
 secret, but must upon accidental 
 disclosure share his advantage with 
 all his competitors, so that he wiU 
 
 then occupy no better position rel- 
 atively than before, plainly the in- 
 ducement to invention is small in- 
 deed. 
 
 It is to be considered, moreover, 
 that in an active condition of the 
 inventive mind, a vast number of 
 original ideas must be produced, 
 which have no relation to the par- 
 ticular employment of the inven- 
 tors, and for the encouragement of 
 such a general active condition, 
 therefore, some special inducement 
 must exist. 
 
 Some few inventions there . are 
 which may be practiced in secret, 
 and no doubt valuable and import- 
 ant discoveries have in this way died 
 with their originators, and so been 
 lost to the world. Of such conceal- 
 ment it is desirable that there should 
 be as little as possible, not only be- 
 cause it tends to deprive the public 
 of useful knowledge, but because it 
 tends to destroy confidence, and 
 arouse doubt and suspicion, hamper- 
 ing business, and interfering with 
 peace and good order. The conceal- 
 ment of inventions, where it may 
 appear practicable, will, perhaps, 
 always be to some extent indulged 
 in, but it is evidently impolicy on the 
 part of the public to encourage such 
 concealment, by totally ignoring the 
 interests of inventors. 
 
 The mischiefs, public and private, 
 likely to proceed from compelling 
 inventors to secrecy, have been thus 
 forcibly represented by an accom- 
 plished writer : 
 
 "A manufacture conducted in se- 
 
13 
 
 cret, is at an enormous disadvantage. 
 Processes must be separated, tliat 
 the workman may not apprehend 
 the mystery ; immense wages must 
 be paid to retain them from desert- 
 ing to competitors ; simplicity must 
 be avoided, and expense introduced, 
 for no purpose but to complicate 
 and confuse the methods used. Ex- 
 periments for further improvement 
 ■ must be avoided, for they would not 
 only tend to disclosure, but to the 
 loss of the outlay incurred in estab- 
 lishing the existing expensive meth- 
 ods. After all, if the attempt to 
 maintain the secret were successful, 
 the public would be no gainers, for 
 it would constitute a strict mo- 
 nopoly, and, unlike a patent, a mo- 
 nopoly that would be lasting either 
 till the secret was discovered, or 
 till it died with its first employers." 
 
 To this it need only be added that 
 in such a state of affairs, many im- 
 portant improvements would be for- 
 ever lost, from the inability of the in- 
 ventors to undertake the burden of 
 practicing them secretly, and their 
 natural unwillingness to run the risks 
 of disclosing them to persons who 
 might assume that burden. 
 
 The relative positions then, of the 
 public and mventors, and the conse- 
 quences proceeding therefrom, may 
 be thus summarized : 
 
 I. The public is vitally interested 
 in the progress of the useful arts, 
 and to this progress the production 
 and disclosure of original invention 
 are essential : it is the clearest public 
 policy to encourage such production 
 
 and disclosure by any proper 
 means. 
 
 II. Inventors, in producing and 
 disclosing improvements in the use- 
 ful arts, add materially to the pub- 
 lic stock of wealth and power, and 
 are therefore producers of the high- 
 est order ; and as payment is the 
 rightful consequence of physical or 
 mental labor, time, and capital ex- 
 pended in production, it would seem 
 the clearest public justice that some 
 mode should be provided of remune- 
 rating inventors in proportion to the 
 value of their productions and dis- 
 closures. 
 
 III. From the preceding proposi- 
 tions it follows that the public object 
 of promoting the progress of the 
 useful arts is that which allies the 
 interests of the public and those of 
 inventors. The consideration which 
 passes from the inventor to the pub- 
 lic, entitling him to some return, 
 is his contribution to that progress. 
 
 We come then to the conclusions 
 that, practically speaking, the rights 
 of inventors, as such, are those cre- 
 ated by positive legislation ; and 
 that the object of legislation, in 
 creating such rights, is to promote 
 the progress of the useful arts by pro- 
 viding some mode by which inven- 
 tors may be remunerated for their 
 instrumentality in promoting that 
 progress. 
 
 Thus we find the true object of 
 our own patent system in the title 
 of the original act of 1790, and of the 
 succeeding acts : " An Act to pro- 
 mote the progressof the usefularts. " 
 
14 
 
 CHAPTER III. 
 
 OF PATENTS AS A MODE OF KE- 
 MUNEEATING INVENTOES. 
 
 The propositions admitted, that 
 it is both' politic and just — ^having 
 regard to the progress of the useful 
 arts — to provide some mode in which 
 inventors may derive personal profit 
 from their contributions to that 
 progress, the next point to be as- 
 certained is the best mode. 
 
 That which is the most obvious, 
 is the payment by the state of a 
 stated price or premium, but there 
 are many and obvious objections to 
 this mode. It could not be practi- 
 cally carried out with even justice 
 to the public and to inventors, and 
 it would entail a cumbrous and ar- 
 bitrary system peculiarly open to 
 abuse. It would be necessary either 
 that the law itself should ascertain 
 and fix valuations for inventions 
 generally — manifestly an absurd 
 and impractical thing, and one 
 which, if attempted, would work 
 injustice, sometimes to the pubUc, 
 and sometimes to inventors, — or the 
 fixing of values must be left to 
 tribunals, whose decisions would, 
 of necessity, be arbitrary and un- 
 satisfactory, since they could not 
 apply to the determination of the 
 question the only reasonable and 
 just test, that of experience. 
 
 These, and other objections 
 equally obvious, but to which it is 
 not to our purpose here to allude, 
 make it plam that a system of this 
 kind would not well answer the end 
 
 of promoting the progress of the 
 useful arts. 
 
 The objections which we have 
 cited, going to show what is not a 
 good and eflicient mode, point to the 
 principles necessarily governing a 
 mode which is so 
 
 It is just and proper that a new 
 and useful invention should be paid 
 for hy the public, in proportion to 
 its proven value to the public, and 
 that the mode of valuation should 
 be the same as in the case of other 
 products of individual skiU and 
 labor. 
 
 The public verdict, as evidenced in 
 demand, is the best general test of 
 the value of an article, and the profit 
 derived from manufacture and sale, 
 if these be carried on with proper 
 enterprise and discretion, wiU be in 
 proportion to the value. 
 
 This is the philosophy of that ! 
 mode of paying inventors which is 
 known as the patent system ; a 
 mode the most just and reasonable 
 that could be devised. 
 
 Letters-patent grant to the in- 
 ventor of a new and useful improve- 
 ment the exclusive right, for a 
 stated period, of making, using, and 
 selling such improvement 
 
 If an invention thus secured for a 
 time by patent be really valuable 
 and important, it is of course desi- 
 rable that it should be brought into 
 public use as speedily and widely 
 as possible, and here" the interests 
 of the public, and those of the in- 
 ventor are alike, for the advantage 
 which the latter can derive from 
 
15 
 
 his patent, must altogether depend 
 upon his diligence and discretion in 
 availing himself of the exclusive 
 right which it gives him. If, on the 
 other hand, the invention he of no 
 value and importance, the exclusive 
 right of the inventor is altogether 
 harmless ; it 'will be practically no 
 restraint upon the public, and will 
 bring the inventor no more than 
 he is entitled to. 
 
 Patents — in so far as they operate 
 as a restraint upon the public — are 
 yet decidedly beneficial restraints, 
 for during the term of the inventor's 
 exclusive right, the public are bene- 
 fited in the apan. practice by the in- 
 ventor himself, 'or those acquiring 
 the right from him, of an invention, 
 which, but for the prospect of that 
 right, might not have been made, 
 or having been made, might not have 
 been disclosed. So far as the exclu- 
 sive right operates as a tax upon the 
 public, it is a tax justly proportion- 
 ate to the ascertained value of the 
 consideration given by the inventor ; 
 and after the exclusive right has 
 expired, the pubUc freely use the 
 invention themselves, being enabled 
 to do so by the knowledge which 
 the inventor has imparted to them. 
 These then are the principle and the 
 object of a patent system : to pro- 
 mote the progress of the useful arts 
 by extending to inventors that en- 
 couragement to exert their inge- 
 nuity, and disclose their inventions, 
 which can be given with most ad- 
 vantage, both to the inventor and 
 the community, in the shape of a 
 
 temporary exclusive right to the 
 former to make, use, and vend his 
 invention. 
 
 Thus viewed, the patent laws as- 
 sume the aspect of a compact be- 
 tween inventors and the public, by 
 which the public in consideration of 
 the disclosure by the inventor of an 
 original thought which it is not 
 compulsory upon him to disclose, 
 yet of which, without such disclo- 
 sure, neither he nor they can have 
 the use and enjoyment, undertake 
 to secure to him for a limited period, 
 by positive grant, that exclusive 
 right in his invention, which with- 
 out such positive grant, it would be 
 impossible for him to maintain. 
 
 The policy of patents as a means 
 of promoting the progress of the 
 useful arts, has been disputed, never 
 seriously, however, in this country. 
 In England the proposition has been 
 made, and urged more loudly than 
 forcibly, to abolish patents ; but 
 there the would-be abolitionists are 
 a very small minority, and their 
 views have been vigorously and suc- 
 cessfully combated by some of the 
 leading intellects of the country. 
 
 Holland stands alone as the coun- 
 try which has abolished patents. 
 The abolition occurred in 1869, the 
 royal proclamation stating that ' ' the 
 grants of exclusive rights for inven- 
 tions and improvements or importar 
 tions of objects of art and industry 
 promote neither industry nor public 
 interest." 
 
 In its experience on this subject, 
 Holland seems to be as exceptional 
 
16 
 
 a country as it is in everything else. 
 "Such a land as Holland," says a 
 recent American writer, "exists 
 nowhere else. It is not merely the 
 most singular of kingdoms, it is the 
 only one of its kind. You may travel 
 the world over and yet be unable to 
 form any conception of the Nether- 
 lands. You may live there your hfe 
 long, and form no adequate idea of 
 the remainder of the globe." 
 
 It is not at all unlikely that among 
 a people so conservative and self- 
 satisfied as the Hollanders, patent 
 laws did not promote industry. The 
 people, though robust, brave, and 
 industrious, appear to have a horror 
 of innovation, as is attested by their 
 obstinate adherence to sleighs in 
 place of wheeled vehicles, for draw- 
 ing heavy loads over rough pave- 
 ments. Little progress in the useful 
 arts is to be expected in a country 
 where men and horses continue to 
 be shod with wood, and where men, 
 women, and children are still to be 
 found yoked to the same tow ropes 
 with dogs and donkeys on the banks 
 of the interminable canals. 
 
 It may be very true that the Dutch 
 patent law did not promote the pro- 
 gress of the useful arts in Holland ; 
 great progress would scarcely be ex- 
 pected among a people so obstinately 
 conservative, no matter what in- 
 centives were offered ; but the Dutch 
 law was so intensely selfish in its 
 character that it would scarcely be 
 expected to promote any public ad- 
 vancement in the arts, one of its 
 prominent clauses being to the effect 
 
 that a native forfeited his patent if 
 he secured his invention in any other 
 country.* 
 
 The patent abolitionists were un- 
 fortunate in pointing to the example 
 of Holland, a country where the 
 limited manufacturing interests are 
 at a standstill, if not retrograding, 
 and where the prominent products 
 are gin, tulips, and cheese. 
 
 Switzerland, a country which 
 never possessed any patent laws, is 
 also pointed to by the advocates for 
 the abolishment of patents. In re- 
 spect to Switzerland, Mr. Day, in 
 his able papers read before the Philo- 
 sophical Society of Glasgow, papers 
 from which we shall have to quote 
 hereafter, says : " When do we hear 
 of an important invention coming 
 to maturity in this country ? There 
 is plenty of inventive talent in 
 Switzerland, but Swiss inventors 
 lack the stimulus of a patent law, 
 and, therefore, have to come here or 
 go elsewhere where an invention can 
 be patented, and is recognized by 
 the state as bondjide property." 
 
 To again quote from Mr. Day's 
 book: "The patent system is the 
 only one by which a nation can secure 
 the maximum advantage from the 
 invention, the only one by which in- 
 vention is properly encouraged, the 
 only one by which the real value of 
 
 * A Diitcli legislator, in advocating the aboli- 
 tion of patents, declared that it was useless to 
 point to the United States and England in sup- 
 port of Patent laws, because those countries 
 were in a degenerate condition, not better than 
 that of Holland at the close of the sixteenth 
 century. 
 
17 
 
 aninyention can be ascertained, and, 
 therefore, the only one which can 
 secure not merely reward, but a due 
 reward, precisely its exact worth to 
 the inventor." 
 
 CHAPTEK IV. 
 
 ESSENTIAIi FEATURES OF A GOOD 
 PATENT SYSTEM. 
 
 AssuMHirG it to be politic and 
 just to provide some mode in which 
 the public shall pay inventors for 
 their contributions to the progress 
 of the useful arts, and that the best 
 mode is by a properly devised patent 
 system, we come next to consider 
 what should be the characteristics 
 of such a system. Undioubtedly 
 the soundest patent law is that 
 which treats inventors with the 
 most liberaUty, on the plain grounds 
 that the more hberal the law, the 
 more it is likely to answer its pub- 
 lic purpose of promoting the prog- 
 ress of the useful arts, by induc- 
 ing the production and disclosure 
 of new inventions. 
 
 But this idea of liberality to in- 
 ventors is not to be carried so far, 
 as to lose sight of the public object 
 of the law, and of the fact, that 
 having a reference to that object, 
 inventors are simply the instru- 
 ments and means. In other words, 
 it is not to be forgotten that the 
 utUity of inventors to society is the 
 consideration upon which the legal 
 rights peculiar to them as inventors 
 are based ; that they occupy pre- 
 
 cisely the same footing as other pro- 
 ducers to the pubUc stock, and that 
 society, in contracting to pay them, 
 has the right to establish such pro- 
 visions and conditions, as are neces- 
 sary to assure that in each case the 
 effect of the contract shall accord 
 with its object and with the general 
 welfare. 
 
 If these principles were continu- 
 ally and clearly borne in mind, we 
 should have less of that criticism of 
 the patent laws, based upon the 
 false assumption, often expressed, 
 that their one object is to '' pro- 
 tect inventors." That is their end 
 so fe,r as concerns the particular 
 interests of inventors, but they 
 have a superior and public object, 
 that of promoting the progress of 
 the useful arts ; with reference to 
 this object, the "protection of in- 
 ventors " is simply the means. 
 
 The proper liberality of the law 
 to inventors is based not upon 
 poetic sentimentaUty but upon per- 
 fectly utiUtarian grounds and princi- 
 ples of puactical justice. 
 
 Of the patent laws, therefore, as 
 of any other contract, the justice is to 
 be measured by the degree to which 
 they appear to consult and recon- 
 cile the interests of all parties con- 
 cerned, and to proceed upon the 
 truth that the intended beneficial 
 operation of the bargain must be 
 destroyed by any provisions tend- 
 ing to antagonize the interests of 
 the respective parties. 
 
 If this test be applied to our own 
 patent system, we beheve it will be 
 
18 
 
 found that the provisions and con- 
 ditions which seem to be in the in- 
 terests of the public, are also really 
 to the advantage of inventors ; that 
 the same precautionary measures 
 work to the profit of both parties to 
 the contract. 
 
 But before proceeding- to apply 
 the test, let us see what are the 
 leading principles which, having due 
 reference to the object to be attained, 
 may be considered as essential to 
 ■be recognized and followed by any 
 sound patent law. 
 
 It is evident, to begin with, that 
 new and us^ul inventions only, can 
 be the subject of valid patents ; 
 for if an inventor produce and dis- 
 close something which is not new, or 
 something which cannot be used, 
 or which it is against the interest of 
 society to allow to be used, he 
 simply gives society that which it 
 had before, or that from which it 
 can derive no benefit : which is to 
 give nothing ; so that society owes 
 him nothing. A patent, therefore, 
 granted for such an invention, would 
 be invalid for want of consideration. 
 
 Presuming the invention to be 
 new and useful, it is no less essen- 
 tial to the validity of the patent that 
 it shall have been fully and fairly 
 disclosed by the inventor ; other- 
 wise his part of the compact has not 
 been carried out in good faith. 
 There must be no concealment, no 
 deception, but the information given 
 must be sufficient to guide those 
 skilled in the art to a beneficial use of 
 the invention, so that the public may 
 
 fully and freely advantage by it after 
 the expiration of the patent. 
 
 In addition to this it is essential 
 that the inventor shall have clearly 
 pointed out and particularized what 
 he claims to be original with him, 
 that the public, during the existence 
 of the patent, may be fully advised 
 as to the nature and extent of the 
 exclusive right which it confers, and 
 as to what it is they are restrained 
 from making, using, or selling, save 
 .with the permission of the patentee. 
 As to this there should be no dis- 
 simulation, duplicity, or dubious- 
 ness, but a clear and candid state- 
 ment of claim. 
 
 'Sow it is manifestly just both to 
 the public and inventors to insure 
 as far as possible that none but valid 
 patents shall be granted ; that is to 
 say, such as do in truth bestow that 
 exclusive right which they purport 
 to bestow. 
 
 This is just to inventors, because 
 the value of patent property, as of 
 any other, is in proportion to its 
 ascertained degree of certainty and 
 security; and just to the public, be- 
 cause the issue of valid patents only 
 is plainly an important element in 
 the efficiency and public advantage 
 of a patent system. 
 
 It would seem then to be the 
 important end to which the provi- 
 sions of a patent law should prir 
 marily be directed, to confine the 
 issv^ of patents as far as possible 
 to inventions new and useful, clearly 
 disclosed, and distinctly claimed. 
 
 A second object to be realized to 
 
19 
 
 the fullest extent possible, consis- 
 tently with the maintenance of -the 
 first, is that patents shall be easily, 
 speedily, and cheaply attainable, so 
 as to be within reach of rich and 
 poor alike. 
 
 Here, too, the interests of the 
 public and inventors are identical, 
 for the more easily and cheaply 
 valid patents can be obtained, the 
 greater will be the number of new 
 and useful inventions made and 
 disclosed, and the more rapid in 
 consequence the progress of the use- 
 ful arts. 
 
 Naturally enough, inventors anx- 
 ious to obtain their patents, and 
 inclined to look upon the grant as 
 matter of natural right, are apt to 
 look upon this second object as the 
 most important. But a little re- 
 flection will convince them that the 
 matter of prime importance to them 
 is the degree of confidence which 
 they can place in the validity of 
 their patents, and that a reasonable 
 expense of time and money in ne- 
 cessary proceedings to ascertain, 
 before a patent is granted, that it 
 shall have the essentials to validity, 
 is beneficial to themselves. 
 
 In this regard, too, the interests 
 of inventors and the interests of the 
 public are the same. 
 
 It is to the advantage of both — 
 it is the right of both — that, while 
 the issue of valid patents shall be as 
 free as possible, the execution of the 
 law shall yet be so regulated that the 
 smallest possible number of invalid 
 patents shall escape into existence. 
 
 CHAPTER V. 
 
 THE AMERICAIT PATENT SYSTEM. 
 PKEVIOUS OFFICIAL EXAMIIJ-A- 
 TlOJSr. 
 
 "We now come to the considera- 
 tion of the more immediate subject 
 of this treatise, — the merits of the 
 American patent system. And first, 
 as to that examination into the 
 novelty and utility of an invention 
 before granting a patent, which is 
 the main distinguishing feature of 
 the system. This peculiarity is a 
 recognition of the principle to which 
 we have above referred, that the 
 first point of importance, both to 
 the public and to inventors, is to 
 provide for ascertaining, before a 
 patent is granted, that the invention 
 is new, useful, and clearly described 
 and claimed. 
 
 But perhaps the intent and eflfect of 
 this previous examination can best 
 be understood by comparison with 
 foreign systems, of which it forms no 
 part ; that of England, for example. 
 
 In England patents are, to all 
 practical intents and purposes, 
 granted for the asking, without in- 
 quiry as to whether the inventions 
 sought to be patented are either new 
 or tiseful, or suflSciently described. 
 
 The time and mode for determin- 
 ing these questions are after the 
 grant of the patent, through the 
 medium of court or jury. 
 
 It is plain, therefore, that an 
 English patent carries with it no pre- 
 simiption of validity, unless, having 
 undergone thorough scrutiny in the 
 
20 
 
 course of litigation, it has been in- 
 dorsed by court or jury. 
 
 Of what satisfaction and value to 
 the inventor, it may be asked, is a 
 patent upon which he cannot place, 
 nor expect others to place, any de- 
 gree of confidence, unless it shall 
 have successfully passed through the 
 fire of litigation. 
 
 Such a system is a departure from 
 the true principles of good legisla- 
 tion, whose highest office it is to cut 
 off sources of litigation. 
 
 Por this end are designed the 
 numerous regulations which the 
 laws provide, touching the acquisi- 
 tion, holding, and transmission of 
 all kinds of property, with a view 
 to ascertain, define, and publish the 
 nature and extent of individual 
 rights, that there may be the least 
 possible occasion for those mis- 
 takes, and that confusion or conflict 
 of claims from which litigation 
 springs. 
 
 And certainly patent property 
 should not be excepted from, but 
 should rather receive an unusual, 
 degree of this solicitude of the law, 
 for it is property which the law itself 
 has created for the public benefit, 
 and which, therefore, not only pub- 
 lic policy but public good faith re- 
 quires should be most carefully and 
 tenderly guarded from the mischiefs 
 of litigation. 
 
 The English patent law, there- 
 fore, in making htigation necessary 
 to raise any practical presumption 
 of the validity of a patent, is cer- 
 tainly an anomalous law. 
 
 An English patent which has not 
 yet been successfully litigated is 
 naturally an object of doubt and 
 suspicion — a state of affairs produc- 
 tive of two classes of evils : First, 
 the very inferior value of patents as 
 negotiable property, an evil which 
 that large class of inventors lacking 
 capital will readily appreciate ; and, 
 second, the constant and aggrava- 
 ted violation of patent rights which 
 must ensue from the general disre- 
 gard in which those rights, from 
 their uncertainty, are held. 
 
 It is manifest that under such a 
 system the field of patent property 
 is a mere scrambling-ground, with 
 all the odds in favor of the wealthy 
 and the unscrupulous. A poor pat- 
 entee will be fortunate indeed if he 
 is able to make his patent a source 
 of profit to himself ; the chances are 
 that he will be driven to Ms election 
 whether quietly to submit to the 
 wholesale piracy of his rights, or 
 whether dearly to purchase the alli- 
 ance of capital for the maintenance 
 of those rights at the sacrifice of the 
 lion's share in them. 
 
 In this way patents, while they 
 may serve to enrich the rich, are a 
 very doubtful blessing to the poor. 
 The privilege which such a patent 
 confers, is, substantially, the privi- 
 lege of establishing a right, if one 
 can, by a lawsuit, a species of in- 
 vestment in litigation in which none 
 but a litigious man can find enjoy- 
 ment, and none but a wealthy man 
 can indulge. 
 
 It is true, that the inventor of a 
 
21 
 
 really valuable improvement may 
 find some protection iuthe enterprise 
 of capitalists desirous of obtaining 
 the benefit of it, but this is an acci- 
 dental and not always desirable sort 
 of protection. 
 
 It is, perhaps, one of the strongest 
 possible arguments in favor of a 
 patent system, that the English 
 system, inefficient and unjust, as 
 in many respects it is, and very ex- 
 pensive, has yet undoubtedly done 
 mucB to foster the practical arts, 
 and is resorted to by a large number 
 of inventors. 
 
 Such evils as we have indicated, 
 the system of previous examination 
 adopted by our law is intended to 
 obviate as far as possible. Abso- 
 lutely to remove patent or any other 
 property from the region of doubt 
 and litigation is impossible, and 
 however perfectly adapted to this 
 end the theory of a law may be, its 
 administration must, if only from 
 unavoidable errors of judgment, faU 
 short of attaining a practical reaUza- 
 tion of that theory. We say this be- 
 cause of the complaints and crit- 
 icisms which have from time to time 
 been directed against our law ; un- 
 doubtedly the majority have arisen 
 from particular instances of failure 
 or shortcoming in the ad/ministror- 
 tion of the law. 
 
 It is not our purpose here to con- 
 tend that the past or present ad- 
 ministration of the examining sys- 
 tem was or is perfect, or so nearly 
 perfect as it might be. It is no 
 
 doubt the case that the capacity of 
 the machinery of administration 
 has not kept pace with the rapidly 
 growing demand upon it, and time 
 and experience have suggested, and 
 will continue to suggest desirable 
 additions and modifications in de- 
 tail. 
 
 But from the complaints, just and 
 unjust, made against the adminis- 
 tration of the examining system, 
 have been deduced arguments that 
 the system itself is a failure, a posi- 
 tive disadvantage and should be 
 abolished. 
 
 The very doubtful soundness of a 
 conclusion thus arrived at is pretty 
 apparent. It is not a fair conclu- 
 sion, unless it be shown that the 
 defects of administration are not 
 the accidents liable to arise in any 
 administration, but are defects origi- 
 nating and inherent in, and insepa- 
 rable from the very nature of the 
 particular system administered. 
 When it is shown that the best at- 
 tainable means of administration 
 have been tried and have resulted 
 in the same faults and defects as 
 inferior means, then it is allow- 
 able to assume that the system can- 
 not be administered, and should 
 be abolished ; but in this case the 
 complaints, so far as they are true, 
 are such as indicate very possible 
 improvements of administration. 
 
 Since, however, this subject of the 
 advantage or disadvantage of an 
 examining system is one of great 
 importance and has attracted much 
 discussion pro and con, it is worth 
 
22 
 
 while to look into the complaints 
 which have been urged against our 
 system to see how far these com- 
 plaints are justifiable, and entitled 
 to the great weight which has been 
 given to them. 
 
 It is necessary, first, to strip the 
 question of a very common fallacy, 
 arising from an utter misunder- 
 standing of the law, but which is 
 often advanced as a proof that the 
 system of previous examination is 
 not efiective. It is undoubtedly 
 the fact that an exceedingly large 
 proportion of patents granted are 
 for trifling things, or for things 
 valueless, because inferior to pre- 
 viously existing things, for the saijie 
 or a similar purpose. Kow, it is 
 asked, why does the government, 
 which pretends to grant patents 
 for new and useful inventions only, 
 constantly issue patents in large 
 numbers for useless and trifling no- 
 tions? Such a question is simply 
 an entire misapprehension of the 
 intent of the law, and of the mean- 
 ing of the word useful as employed 
 in the statute. The word " useful " 
 is not there synonymous with the 
 word "valuable," nor does it indi- 
 cate that an invention to be pat- 
 entable must appear to be more 
 efficient than, or even equally effi- 
 cient with, prior inventions of the 
 same class ; but it simply means 
 that to be patentable, an invention 
 must be capable of use for some bene- 
 ficial purpose, and not inoperative, 
 vicious, or immoral. These are 
 questions which can be decided 
 
 soundly and justly by a competent 
 tribunal, from the evidence afforded 
 by the application for a patent. 
 
 But the value of an invention, 
 which consists in its utility to the 
 public at large, or more immedi- 
 ately to those concerned in that 
 branch of art to which it relates, 
 can evidently be determined only 
 by time and experience in actual 
 use ; the only just verdict must 
 be one rendered by the public from 
 use ; no law, nor man, nor set of 
 men, can justly undertake to pre- 
 determine the question, since such 
 a decision must necessarily be utter- 
 ly arbitrary, and mere matter of 
 opinion based upon insufficient evi- 
 dence. 
 
 This point we have already un- 
 dertaken to illustrate, in discussing 
 the question of the proper mode of 
 paying inventors for their contribu- 
 tions to the progress of the useful 
 arts ; and we observed that patents 
 were the fairest mode, because in 
 leaving the question of the value of 
 each particular contribution open, 
 to be decided in the only proper 
 way, they give to the inventor the 
 opportunity, by the exercise of ordi- 
 nary diligence and discretion, of 
 deriving a remuneration proportion- 
 ate to that value, as thus most 
 soundly tested and determined. 
 
 To be sure there are many cases 
 in which ordinary perception and 
 common sense, could without ap- 
 plying the tests of use and experi- 
 ence, soundly and justly determine 
 the worthlessness of an invention, 
 
23 
 
 but in all cases such a mode of 
 decision would be objectionable as 
 arbitrary, and in very many cases 
 would be at fault and unjust. 
 
 It would not l^e just to inven- 
 tors generally, and there must be 
 one rule of justice for all, to at- 
 tempt to make this question of value 
 a subject forlegal or official decision, 
 nor would it be in any way benefi- 
 cial to the public. It is equally to 
 their interest and to that of inven- 
 tors, that every new idea should be 
 allowed the test of practical experi- 
 ence. There is no reason why in- 
 ventors should not have the same 
 opportunity, as other producers, of 
 submitting their productions to pub- 
 lic arbitrament. Nor can patents 
 for valueless inventions be objected 
 to as working any legal injury to the 
 public, for patents cannot practi- 
 cally operate as a restraint or as a 
 tax upon the pubUc with reference 
 to things which, being of no advan- 
 tage, they do not care to use. 
 
 There is no doubt that patents 
 for valueless inventions have a mis- 
 chievous effect in leading to lament- 
 able wastes of valuable time and 
 money ; but this palpably is some- 
 thing for which the patent laws and 
 their administration are in no way 
 answerable. The evil in great mea- 
 sure arises from the very misappre- 
 hension of the law which we have 
 been discussing, and which causes 
 people to accept patents in the way 
 of official evidence, which they are 
 not, of the value of the things pat- 
 ented, and thus to conclude that 
 
 they are valuable, without inquiry 
 or even against the evidence of their 
 own senses. This of course is a 
 voluntary error, for which the person 
 in error is alone responsible. 
 
 And for the evil, so far as it arises 
 from mere lack of discretion, or 
 knowledge in individuals investing 
 their time and money in patented 
 inventions, to hold the patent sys- 
 tem responsible, or to draw there- 
 from an argument against that sys- 
 tem, is about as reasonable and logi- 
 cal as though a man, having stupidly 
 wasted his money upon a poor piece 
 of land, should cast the blame upon 
 N'ature for having placed the land in 
 his way. 
 
 It is true that our Patent Act au- 
 thorizes the Commissioner to issue 
 patents where he shaU find the in- 
 ventions sufficiently useful and im- 
 portant, and this might seem to give 
 the Cormnissioner a discretion ca- 
 pable of much latitude in its exer- 
 cise, in adjudging as to the patent- 
 ability of inventions. But this 
 discretion is to be exercised in ac- 
 cordance with the known policy and 
 principles of the law — as judicially 
 settled — and the inquiry of the Com- 
 missioner is to proceed no further 
 than to ascertain that the invention 
 has that negative sort of utility 
 which is necessary for the support 
 of a pateilt if granted. 
 
 "By useful invention in the 
 statute (said Judge Story) is meant 
 such a one as may he applied to some 
 use ; beneficial to society in contra- 
 distinction to an invention which is 
 
24 
 
 injurious to the morals, the health, 
 or the good order of society. It is 
 not necessary to estahlish that the 
 invention is of such general utility 
 as to supersede all other inventions 
 now in practice, to accomplish the 
 same purpose. It is suiflcient that 
 it has no noxious or mischievous 
 tendency, that it may he applied to 
 practical uses, and that so far as it 
 is applied it is salutary. If its prac- 
 tical utility be very limited, it will 
 follow that it will he of little or no 
 profit to the inventor; and if it be 
 trifling, it will sinlc into utter ne- 
 glect. The law, however, does not 
 look to the DEGEEB of utility ; it 
 simply requires that it shall be 
 capable of use, and that the use is 
 such as sound morals and policy do 
 not discountenance or prohibit." 
 
 The same doctrine is enunciated 
 in numerous decisions, and points 
 clearly to the bounds of the Com- 
 missioner's discretion in this matter. 
 It extends no further than that, be- 
 fore issuing a patent, he should sat- 
 isfy himself that the invention has 
 utility as distinguished from utter 
 impracticability or noxious ten- 
 dency, and importance as distin- 
 guished from absolute frivolity. 
 The question of value then, in its 
 ordinary relative signification, the 
 patent laws very properly do not 
 bring into consideration as in any 
 way entering into the question of an 
 inventor's legal title to a patent, 
 and it is a fallacy to suppose that 
 the system of previous examination 
 is intended to inquire into or deter- 
 
 mine the point of value as thus 
 understood. 
 
 Curiously enough upon this same 
 fallacy is based a very common ac- 
 cusation of injustice against the ex- 
 amining system and its adminis- 
 tration. It is often gravely ob- 
 jected, and was so but a short time 
 since by one of our leading public 
 journals, that the power conferred 
 upon the oflScers of the patent oflOice, 
 of judging upon the valv^ of inven- 
 tions, is too arbitrary and danger- 
 ous a power. 
 
 So it would be if it did but exist. 
 This objection in fact evidences a 
 popular recognition of the truth 
 which we have been endeavoring 
 to illustrate, that an examining 
 system extending to the question 
 of value could not be justly ad- 
 ministered. To the assertion that 
 no such power exists, it may be re- 
 plied that officers of the patent office 
 have been known to exercise such 
 a power. True enough, and this 
 merely goes to show that among 
 the numerous officials of the patent 
 office some may, from time to time, 
 be found who, from misunderstand- 
 ing of duty, exceed their powers, ' 
 and usurp an unlawful jurisdiction. 
 
 That ordinarily no such power is 
 attempted to be exercised is best 
 proven by the large number of pat- 
 ents issued for tilings of indifferent 
 value or of no value at all. This 
 fact, used as an argument against 
 the efficiency of the examining sys- 
 tem upon the hypothesis that an 
 inquiry into value is part of that 
 
25 
 
 system, exposes at once the fallacy 
 of that hypothesis, and that of the 
 allegs.tion of injustice hased upon 
 it. 
 
 Returning to the fact that officers 
 of the Patent Office have heen known 
 to exceed their duty, by pronouncing 
 judgment upon the value of inven- 
 tions, this of course is a just ground 
 of complaint, certainly, however, 
 not against the examining system, 
 in a departure from whose princi- 
 ples the wrong consists. 
 
 If the wrong were prevalent, there 
 would be very good ground for as- 
 serting that the administration of 
 the law was not in accordance with 
 the law ; but that the wrong is hot 
 prevalent the patent lists are con- 
 vincing proof. 
 
 Still another very common falla- 
 cy is that which holds the examin- 
 ing system responsible for the many 
 patents of little or no value, not 
 because they refer to inventions 
 of little or no value, but because 
 the specifications and claims have 
 been defectively and insufficiently 
 drawn. This is something for which 
 the patentees are alone responsi- 
 ble ; it is at once their privilege 
 and their duty to specify what 
 it is they claim to have invented. 
 The functions of the officers of the 
 Patent Office are advisory no fur- 
 ther than to ascertain before grant- 
 ing a patent that the alleged inven- 
 tion is intelligibly described, and 
 that the claim made is certain and 
 distinct. This much they must of 
 necessity do in undertaking to look 
 
 into the question of novelty and 
 utility. And if the description be 
 not sufficiently clear, or more is 
 claimed than the applicant is enti- 
 tled to, it is their duty to tell him so, 
 that he may amend or modify his de- 
 scription or claim accordingly. But 
 it is no part of their duty to volun- 
 teer information that less has been 
 stated or claimed than might have 
 been ; this would be uniting the 
 functions of judge and counsel, and 
 assuming a duty which the law very 
 properly leaves to the inventor him- 
 self. It is a fair presumption that 
 the inventor is a competent guar- 
 dian of his own interests, so far as 
 concerns the disclosure of his own 
 ■ ideas, and the presentation of his 
 own claim. That he will claim less 
 than he thinks himself entitled to is 
 not to be supposed. Nor does the 
 case dififer, though the inventor him- 
 self be incompetent to state his in- 
 vention and claim with proper skill, 
 for in such case it is incumbent 
 upon him to seek the counsel of 
 those who can perform thig duty for 
 him. The strict impartiality requi- 
 site to the faithful performanoe of 
 the duties of an officer of the Pat- 
 ent Office must prohibit any such 
 officer from placing himself in the 
 position of an advocate for the in- 
 ventor whose claim he is to pass 
 upon. It is a common expression 
 that the Patent Office is the guar- 
 dian of the interests both of inven- 
 tors and the public ; and this is true 
 so far as its meaning refers to the 
 exercise of careful and impartial dis- 
 
26 
 
 crimination and judgment in pass- 
 ing upon claims of invention. 
 
 It is the duty of the Office to give 
 tlie patent asked for, if the claimant 
 appears entitled to it, or to give him 
 information as to any facts which 
 may appear to render the claim 
 made inadmissible. The rest may 
 well be left to the inventor himself, 
 for he is to be dealt with as an in- 
 telligent man, capable of taking care 
 of his own interests, and not as an 
 incompetent under wardship. 
 
 CHAPTER VI. 
 
 BENEFITS OF AK EXAMIKING 
 SYSTEM. 
 
 Official figures show that in the 
 year 1870 to a little more thfin 
 19,000 applications made, the num- 
 ber rejected was nearly 5,000. 
 
 What saving of time, and money, 
 and labor, that might otherwise have 
 been thrown away in fruitless enter- 
 prise or litigation, is here repre- 
 sented, what value in protection to 
 the respectability and consequent 
 value of patent property in general, 
 is represented by the withholding in 
 one year of hundreds of patents, 
 which, granted, would not have been 
 worth the paper on which they were 
 printed. 
 
 We may point to another effect of 
 an examining system, and hardly 
 less beneficial ; we allude to what may 
 be termed its advisory and restrain- 
 ing effect. It is the very clear interest 
 
 of inventors to claim all that they 
 imagine themselves entitled to, and 
 this is exceedingly likely to be more 
 than in fact they are entitled to. 
 Claims often include with that which 
 is new, that also which is old, and 
 either public property or the prop- 
 erty of some prior patentee. No can- 
 did man, having experience in these 
 matters, will deny that the admin- 
 istration of the examining system 
 has worked almost incalculable 
 good to applicants, to patentees, ancl 
 to the public, in pointing out and 
 checking these unwitting or deliber- 
 ate intrusions upon public or appro- 
 priated ground, and indicating the 
 real bounds of invention. This 
 service has protected the interests 
 of many a patentee, has thrown 
 much needed light upon many an 
 inventor's path, has tempered his 
 too buoyant anticipations before 
 they had led him into expenditures 
 and enterprises, which blindly pur- 
 sued, would have resulted in com- 
 plications, loss, and bitter disap- 
 pointment, and in every such saving 
 to inventors is reflected a saving to 
 the public. 
 
 And there is still another benefit 
 necessarily proceeding from exam- 
 ination, a benefit of such importance 
 that it might in itself be deemed 
 an offset to many mischiefs. We 
 refer to the necessity for clear 
 and full specifications, and precise 
 claims. 
 
 The scrutiny which, in examina- 
 tion, descriptions and claims un- 
 dergo, must act as an effectual curb 
 
27 
 
 ^upon carelessness, duplicity, and 
 vagueness in their preparation. An 
 applicant must, in his own interest, 
 he frank and precise in his state- 
 ments, and thus a general correct- 
 ness is engendered, the importance 
 of which to public and private in- 
 terests cannot he overestimated. 
 There cannot be in American pat- 
 ents that indefiniteness or vague 
 generality of description and claim 
 which is so conspicuous in many 
 foreign patents, and which at once 
 requires litigation to unravel, and 
 renders litigation tedious, expen- 
 sive, and unsatisfactory. 
 
 And who can estimate the value 
 of the Patent Office records, under 
 the examining system, in respect to 
 the light which they serve to throw 
 on the legal status and the commer- 
 cial value of patents ? Upon every 
 patent Issued, the record of the ap- 
 plication, of the rejections it may 
 have met, the reasons for these re- 
 jections, the references given to prior 
 inventions, forms a compact com- 
 mentary, which, while at times it 
 may only show how singularly 
 at fault the official judgment has 
 been, is yet calculated to be of in- 
 valuable service in aiding and guid- 
 ing those who may desire to judge 
 for themselves to what extent the 
 value of a patent is aflFectedby what 
 has gone before. 
 
 Nor will it escape the notice of 
 the impartial critic that the admin- 
 istration of the examining system, 
 with all its imperfections and short- 
 comings, has done very much to 
 
 give to patents, as was intended, a 
 higher legal and commercial status 
 than they have in any other coun- 
 try. That is certain, which can be 
 made certain, and every aid to ar- 
 riving at certainty is of moment. 
 How much of that all-important ele- 
 ment, certainty, must be given to 
 patent property by the means of ar- 
 riving at it which the Office records 
 furnish I 
 
 There can he no doubt that the 
 moral weight, the weight of pre- 
 sumption which letters-patent here 
 carry with them into the courts, 
 and among that portion of the puh- 
 hc who have any understanding of 
 the Patent System, has done very 
 much, not only to simplify and 
 economize, but to cut oflf litigation 
 by inspiring confidence on the side 
 of right, and caution upon that of 
 ■wrong. 
 
 Nor has this moral power as we 
 may term it, of patent property, de- 
 creased, as, if the administration of 
 the examining system were on the 
 whole a failure, it must have done, 
 in proportion to the marvellous in- 
 crease in the quantity of such prop- 
 erty existing, although it has 
 doubtless fluctuated with the ap- 
 parent competence and honesty, or 
 their opposites, in the ruling powers 
 at the Patent Office. 
 • The Patent Office is a very exten- 
 sive institution, in which is collected 
 a vast amount of material, rapidly 
 augmented by constant accessions. 
 This fact has led many to regard 
 the organization as one which if 
 
28 
 
 not already cumbrous and unwieldy, 
 must speedily become so, and alarm- 
 ing pictures have been given of the 
 tremendous accretions of matter. 
 It is asked how is it possible for 
 men to conduct searches with speed 
 and certainty amidst such records. 
 Much has already been done to 
 solve the question, by division of 
 material and labor, by reducing the 
 records* to compact and accessible 
 shape, and by elaborate classiiica- 
 tion, and no doubt experience will 
 suggest further improvements in this 
 direction. There is in truth no 
 organization so large or complex, 
 that a spirit of system and order 
 cannot mould it into a simple and 
 smoothly working unit. When 
 the same correct principles have 
 been applied to the arrangement of 
 duties which have already worked 
 such wonders in the arrangement 
 of material, the Patent Office will 
 become an example of efficiency and 
 order and uniformity of action. 
 
 CHAPTEE VII. 
 
 THE EXAMINIITG SYSTEM AS 
 VIEWED FKOM ABROAD. 
 
 While upon the subject of an ex- 
 amining system it will not be out of 
 place to see how it is regarded 
 abroad, since the foreign views of 
 the subject have been largely gov- 
 erned by observance or report of the 
 effect of the system as administered 
 in this country. 
 
 We have already had occasion to 
 refer to some of the peculiarities and 
 
 defects of the English Patent Sys- 
 tem, wnich have recently attracted 
 great attention. The subject has 
 been much discussed both in and 
 out of Parliament, and committees 
 of inquiry have had before them the 
 testimony of many prominent men, 
 whose position, in respect to the 
 practical arts, or whose legal attain- 
 ment entitle their opinions to great 
 consideration. 
 
 The defects of the present English 
 system are generally acknowledged, 
 and seem to have divided those tak- 
 ing part in the discussion into two 
 parties : 1. Those who would abol- 
 ish patents altogether, and 2. Those 
 who, favoring patents, yet perceiv- 
 ing the deficiency of the present 
 laws, proposed a variety of remedial 
 measures. 
 
 Of the former parties the number 
 is not large, nor the reasoning such 
 as to carry any weight with it. 
 
 Apart from the great cost of pat- 
 ents, the one great deficiency of the 
 law, admitted on all sides, lies in the 
 practically indiscriminate and un- 
 controlled issue of patents, which 
 leaves bond fide inventors at the 
 mercy, to a great extent, of unscru- 
 pulous pirates, and opens the door 
 to- patents for merely pretended in- 
 ventions, or for absurd and imprac- 
 ticable schemes, and of patents with 
 insufficient, vague, and deceitful 
 specifications and claims. Still 
 worse, — there is no check upon the 
 repeated patenting of similar inven- 
 tions •, and the rights of patentees 
 are left in a cloud of darkness which 
 
29 
 
 litigation alone can break ; this last 
 evil being aggravated by insufficient 
 means for trying patent causes. 
 
 The various remedies proposed 
 agree in this, — that they all point to 
 some mode of controlling the issue 
 of patents, and the establishment of 
 some special tribunal to deal with 
 patent questions. As to the precise 
 mode by which, and the time when, 
 the ends aimed at should be at- 
 tained, there seems to have been 
 some difference of opinion. 
 
 Of course in a discussion of this 
 kind our examining system did not 
 escape attention, and its merits and 
 defects, real or supposed, were freely 
 canvassed. 
 
 It is worthy of note, however, that 
 those who advocated the adoption 
 in England of a system more or less 
 analogous were men whose opinions 
 were entitled to the greater weight, 
 as they spoke from personal obser- 
 vation and experience. 
 
 Among these was Mr. Aston, a 
 prominent barrister, who, after can- 
 vassing the defects of the English 
 law, proceeds to suggest certain 
 remedies ; and speaking of them as 
 being not merely speculative, but 
 such as had been tried, thus re- 
 marks : " Those to which I attach 
 the most importance have been fully 
 tried in the United States of Amer- 
 ica, and found to work well. I mean 
 the exercise of discrimination in the 
 grant of patents, and what is still 
 more important, the deposit be- 
 fore a patent is granted of a pre- 
 cise description of the inoention and 
 
 claims, given in a complete specifi- 
 cation, which is submitted to* a 
 proper official examination before 
 it is passed as sufficient. My own 
 opinions upon the working of the 
 American Patent Laws are founded 
 upon a personal investigation of the 
 system adopted in the United States, 
 and from continued experience gath- 
 ered in professional practice. My 
 conviction is that the American sys- 
 tem, though it has its imperfections, 
 does work better than ours, and thai 
 because it has cured in a great meas- 
 ure the defects under which our sys- 
 tem is still laboring.^' 
 
 Mr. J. Howard, an inventor, man^i 
 ufacturer, and a Member of Parlia- 
 ment, while replying to the argument 
 of those who would abolish patents 
 altogether, remarked, that it ap- 
 peared to him, that most of the ar- 
 guments that had been urged did 
 not touch the principles of a patent 
 law, but went rather to the defects of 
 the existing law and its administra- • 
 tion. Mr. Howard took occasion to 
 allude to the great and favorable im- 
 pression which had been made on his 
 mind by a visit to the United States 
 Patent Office. He referred to the 
 vital necessity for amendments in 
 the English law, and expressed the 
 hope that when the subject was 
 taken in hand by the law officers of 
 the Crown, fhey wmM provide the 
 means far a bond fide examination of 
 all inventions before patents were 
 granted; and also provide that the 
 specification should be so clear that 
 tM public may hnow what really the 
 
30 
 
 patent was granted for, and thus save 
 the ruinous cost of legal proceedings. 
 Lord Romilly , Master of the EoUs, 
 ■while among those inclined to the 
 abolition of patents, on the theory 
 that they had little to do with the 
 progress of art and civilization, sug- 
 gested as a remedy for the present 
 inefficient state of the laws, " the ap- 
 pointment of a special tribunal of 
 thoroughly efficient men, who should 
 examine and pronounce upon all 
 applications for patents, and grant 
 them according as they might think 
 the invention new and useful ; or 
 withhold them if the application 
 was for what was trivial, worthless, 
 injurious, or not new." 
 
 Still another advocate for the 
 adoption in England pf an examin- 
 ing system analogous to ours was 
 found in the person of Mr. Mundella, 
 himself a manufacturer of wide re- 
 pute, and who has been a visitor in 
 this country. 
 
 Of course argument against the 
 adoption of such a system was not 
 wanting. Eeference was made to re- 
 marks proceeding, it would appear, 
 some time ago, from Mr. Woodcroft, 
 the accomplished Chief Clerk of the 
 English Patent Office, whose invalu- 
 able services in superintending the 
 publications of that office have gain- 
 ed him a well-earned repute. But Mr. 
 Woodcroft's objections to an exam- 
 ining system seem to have been 
 singularly unhappy in the supposed 
 facts upon which they are based. 
 
 Said Mr. Woodcroft, " The Amer- 
 icans pay about £23,000 a year for 
 
 preliminary examination, and they 
 are very much dissatisfied with it. 
 The system of preliminary examina- 
 tion has been tried and found want- 
 ing. It is in operation in Prussia, 
 but does not give satisfaction. It 
 was tried in France, Austria, Sar- 
 dinia, and Belgium, but being most 
 unsatisfactory, was abandoned in 
 each country. It is now going on 
 in America at an enormous expense, 
 and the Chief Conunissioner (?) 
 wrote to me to say that it was a very 
 inadequate system, and a Very un- 
 fair one." 
 
 These remarks of Mr. "Woodcroft's 
 have been frequently quoted by op- 
 ponents of the American examining 
 system, and much greater impor- 
 tance has been attached abroad to 
 the dictum of an ex-officer of our 
 Patent Office, who is styled a Chief 
 Commissioner, than we should be 
 willing to accord to it here' in view 
 of the overwhelming opinions of our 
 best authorities in favor of an ex- 
 amining system. 
 
 But we find Mr. "Woodcroft, at a 
 more recent date, saying: "Let 
 every man have his patent, but be- 
 fore action is brought let the origi- 
 nality of the claim of the invention 
 be sifted by the most competent men 
 of the day," a theory to which we 
 shall have occasion to refer to here- 
 after. 
 
 That in Prussia the system should 
 have been a failure, no one will won- 
 der when he reads the testimony of 
 Mr. Bessemer, who speaks from ex- 
 perience of the honesty and benevo- 
 
31 
 
 lence of the working of the Prussian 
 system, in regard to foreigners at 
 least. Mr. Bessemer says that he 
 did not take out a patent for his in- 
 vention in Prussia, and explains the 
 reason thus : " He sent his paper to 
 Prussia in the care of Mr. Krupp, 
 who paid him £5000 for the use of 
 his patent. He applied in due 
 course for a patent, and was in- 
 formed by the Prussian Patent 
 Office that the invention was not 
 new. The Prussian Patent Office 
 grant occasional patents ; they take 
 the fees and the drawings from 
 British inventors in any case, and 
 afterwards publish them for the 
 benefit of Prussia. The Office said 
 that Mr. Nasmyth was the inventor 
 of the process ; Mr. N&smyth said 
 he was not. They next said they 
 would give the name of the real 
 man in a few days. Six weeks 
 passed, and they said, ' If we don't 
 find the name of the real man to- 
 morrow, we win give you a patent.' 
 A week of these to-morrows passed, 
 after which they showed an English 
 blue-book with his own invention pub- 
 lished in it, and they said, '■Your 
 invention is published, so according 
 to the law of Prussia we cannot grant 
 you a patent.^ All the time they 
 had been promising to grant it. 
 The process is now worked very 
 largely in Prussia." 
 
 It is to be hoped indeed that this 
 was an extreme case in the working 
 of the Prussian system, but it is a 
 well-known fact that that system is 
 utterly arbitrary both as to end and 
 
 means, which is to say that it is nec- 
 essarily and essentially a failure. 
 
 The example of Prussia, then, 
 was a singularly unhappy and in- 
 applicable argument against the 
 adoption of a system of examination 
 suited to a free country. 
 
 As to the failure of examining 
 systems in France, Austria, Sar- 
 dinia, and Belgium, in the absence 
 of express information as to princi- 
 ples and details, the means adopted 
 for carrying them out, or the extent 
 of trial given them, it is not of course 
 possible to examine into the causes 
 of failure, bwt it would doubtless be 
 found in the existence of some ar- 
 bitrary features in either end or 
 mode. 
 
 Returning to Mr. Woodcroft's 
 theory, it wlU be seen that he is not 
 opposed to an examining system, 
 but to our system of examination io 
 advance of the grant; he would 
 grant any man a patent for any- 
 thing, but before the patentee could 
 exercise any rights against infringers 
 of his patent, the latter must be sub- 
 mitted to the scrutiny of the "most 
 competent men of the day." If an 
 examination is to be made, why 
 should it not be in advance of the 
 grant, so that the deed itself may be 
 prima facie evidence of the paten- 
 tee's rights? Why should one 
 branch of the government indiscrim- 
 inately grant patents for another 
 branch to scrutinize before the pat- 
 entees can go into court, or can 
 go before the public with any ascer- 
 tained rights ? "Why postpone lock- 
 
32 
 
 ing the stable door till after the 
 horse is out ? 
 
 Curiously enough, ideas somewhat 
 similar to Mr. Woodcroft's have 
 prevailed, but tcr a very limited ex- 
 tent, in this country. 
 
 It has been proposed to continue 
 an examining system, and if the 
 OflSce refuses a patent to let the ap- 
 plicant take one on his own respon- 
 sibility, the patent however to be 
 accompanied with the taint of offi- 
 cial refusal. 
 
 Of what earthly use would such 
 a patent be to the holder, who would 
 be in a position analogflus to that of 
 the man who bases his ownership to 
 real estate on a deed either invalid 
 on its face, or bearing such a taint 
 that it is worthless ? 
 
 Argument against the American 
 system was also found in an article 
 coming' at secondhand from the 
 columns of the "New York Trib- 
 une," quoted in other papers, both 
 here and abroad. 
 
 This was the article to which we 
 have had occasion to refer in an 
 earlier part of this treatise as show- 
 ing such an entire and singular 
 misapprehension of the true prin- 
 ciples of our system. The article 
 animadverts upon the dangerous 
 power exercised by our officials in 
 pronouncing upon the novelty and 
 VALTJE of inventions; — "Power," 
 says the article, "which the best 
 functionaries might abuse through 
 defect of information, or error in 
 judgment, which the worst certainly 
 will and do use most unrighteously. ' ' 
 
 That the law does not authorize 
 inquiry into the value of inventions, 
 we have shown, and as to the in- 
 quiry into novelty, is not the exer- 
 cise of power in this respect suffici- 
 ently prevented, by the very nature 
 of the inquiry, by the rights of the 
 applicant to full information as to 
 any cause of rejection, and by his 
 right of appeal, from being improp- 
 erly and unjustly exercised ? 
 
 What must have been the sur- 
 prise of those Englishmen who so 
 keenly appreciated the evils of their 
 patent system that they desired any 
 mode of getting rid of it, even by 
 the total aboUtion of patents, if no 
 other way could be devised, to find 
 this article gravely arguing that 
 "our patent laws should be assim- 
 ilated to the British ; that the Pat- 
 ent Office should here, as there, 
 simply register claims to have made 
 inventions or discoveries in their 
 order, and all questions thence aris- 
 ing should be taken to the courts 
 and there settled." 
 
 Such a proposition as this must 
 have given rise to the thought that 
 the American examining system 
 must be bad indeed, if it warrants 
 the presenting to American in- 
 ventors of this alternative as pref- 
 erable. 
 
 The delightful results as they 
 have been experienced in England, 
 of treating property in invention as 
 a bone to be carried off in triumph 
 by the lucky winner among those 
 who choose to fight for it, may be 
 gathered from the testimony of Mr. 
 
33 
 
 ISTasmyth, the well-known inventor 
 of the steam-hammer. "He had 
 been called as a witness in patent 
 cases, and had seen much of the ad- 
 vantages and disadvantages of pat- 
 ent litigation. He thought there 
 was a natural tendency to partisan- 
 ship among scientific witnesses, and 
 had felt this tendency to become an 
 advocate rather than a witness. 
 His steam hammer had been in- 
 fringed, but he took a commercial 
 view of the matter. He had seen 
 so rrntch of the enormous ea^jense of 
 litigation that he had always resolved 
 to submit to any infringement rather 
 than fight a battle at Zaw." 
 
 Mr. Webster, a prominent barris- 
 ter, characterized patent litigation 
 as " nothing but speculations on the 
 part of the litigants on the ignorance 
 of the judge and jury ; a jury is often 
 very ignorant, and a judge more ig- 
 norant than all of them." 
 
 Other prominent and experienced 
 men testified to like eflFect. 
 
 When we take into consideration 
 the ambiguous character of many 
 English patents, and the absence of 
 definite claims, the ignorance of 
 jtidges and juries is not much to be 
 wondered at. In this country, how- 
 ever, a well-defined claim is de- 
 manded before the patent can issue; 
 and in litigated cases the matters 
 to be adjudicated on come before 
 the courts in such a shape that the 
 judges, assisted by intelligent wit- 
 nesses, are very rarely at a loss to 
 understand the invention. 
 
 Patent litigation in this country 
 
 is not so costly, nor so unsatisfac- 
 tory, as in England, and this fact 
 may be very largely attributed to the 
 effect of our examining system, in 
 reducing and simplifying the ques- 
 tions coming before the courts. But 
 evils, like in kind if not in degree, 
 attend such litigation here, neces- 
 sary evils where judges are called 
 amidst other duties to deal with a va- 
 riety of mechanical subjects, of which 
 it is not to be expected that they 
 have personal knowledge, so that 
 they must arrive at their conclusions 
 by such Ught as the adverse argu- 
 ment of counsel and testimony of 
 experts may throw on the matter. 
 
 There is, perhaps, more patent 
 litigation in this country than in 
 England, as there are also very 
 many more patents, the annual 
 number of patents granted being 
 not less than five times more nu- 
 merous. But it may be gathered 
 from the testimony of Mr. Nasmyth 
 and of others, that in England pat- 
 ent litigation is governed not at all 
 by the number of patents, but by 
 the wealth and courage of patentees. 
 There is likely to be little litigation 
 when it is so expensive as to task 
 the purse of a rich man, and so un- 
 certain that both poor and rich are 
 Ukely to prefer quiet submission to 
 injustice rather than resort to the 
 courts. It is the characteristic of the 
 English patent system, to the known 
 evils of which the sage newspaper 
 article we have quoted would have 
 us flee from the imaginary evils of 
 our own, that in leaving the validity 
 
34 
 
 of a patent, as a title-deed, an open 
 question upon which litigation alone 
 can throw any light, it makes litiga- 
 tion so terrible an ordeal, that soon- 
 er than invite it, most ordinary 
 mortals would be content to have 
 their rights remain forever unde- 
 fined and unrespeeted. 
 
 We fancy the most inveterate aud 
 unreasonable grumblers would re- 
 gard an exchange of our own for 
 this system as a jump out of the fry- 
 ing-pan into the fire. 
 
 Patent litigation must always, 
 from the very nature of the subject, 
 be costly ; the least that can be done 
 then, in justice to inventors, is to 
 insure that they may enter upon it, 
 when necessary, with a tolerable de- 
 gree of confidence and certainty, that 
 they have something to stand upon. 
 
 One of the remedies proposed by 
 those who understand the subject 
 best, for the present state of patent 
 property in England, is the estab- 
 lishment of special tribunals for the 
 trial of patent causes, in which the 
 judges shall have the assistance of 
 impartial experts upon practical sub- 
 jects. This, perhaps, is something 
 which might be considered to ad- 
 vantage here. It certainly holds 
 out the prospect of giving patentees 
 the benefit of the most intelligent 
 and satisfactory adjudication of their 
 rights. 
 
 But this is only a secondary 
 matter. Among inventors and their 
 advisers there must be many who 
 will be disposed, in drawing up de- 
 scriptions and claims, to adopt the 
 
 maxim that "language was made 
 for the concealment of thought," 
 and this tendency must be aggrar 
 vated if patents are so loosely 
 granted, and there is such uncer- 
 tainty and risk attending them as 
 to lead to a general impression that 
 vagueness and generality of language 
 may be of service in furnishing some 
 ground, however small, to stand 
 upon. In this way patents become 
 an abomination and a snare, both 
 to inventors and to the pubhc. 
 
 Such has been the experience in 
 England ; the result of allowing 
 patents to issue without proper ex- 
 amination, mthout ascertaining whe- 
 ther the specifications and claims 
 be clear, precise, and well defined, is 
 thus graphically stated by Mr. 
 Aston: "Patentees complain that 
 they have not sufficient protection 
 for their property, and the public 
 complain that they cannot defend 
 themselves from the patent. There 
 are some intelligent patent agents ; 
 there are also some who are not so. 
 It is very commonly the case that 
 an uninformed man goes with his 
 invention to an uninformed patent 
 agent for assistance ; the patentee in 
 the latter case is frequently tempted 
 to put in a very wide claim, or one 
 capable of a very wide interpretation. 
 He, therefore, does not as a rule find 
 out the real value of his title-deed 
 till he goes into court with it ; there, 
 for the first time, it undergoes strict 
 examination by the judge on the bench, 
 which is an ordeal which very few 
 specifications can stand." 
 
35 
 
 All this gives point to what we 
 have said in the preceding chapter 
 as to the important heneficial effects 
 of our previous examination in com- 
 pelling clearness and precision in 
 the drawing of specifications and 
 claims. 
 
 To overcome these evils, Mr. 
 Aston suggested that there should 
 be an official examination of the 
 document which constitutes the title- 
 deed ; he thought that the examiner 
 should be a lawyer, assisted by per- 
 sons with technical knowledge. 
 
 Mrf Webster, an eminent Queen's 
 counsel, says, alluding to the duties 
 which the law officers of the Crown 
 under the present system, are called 
 upon to perform : " The law officers 
 do not obtain a sufficient description 
 of the nature of inventions in prac- 
 tice ; they are not competent to deal 
 with such subjects ; they cannot give 
 the requisite time, and they know 
 nothing about mechanical details. 
 A law officer is the very worst per- 
 son to discharge the duties for which 
 he is appointed." The act of 1852 
 made it optional whether they should 
 call in scientific aid, but generally 
 he believed, they call in no such aid. 
 Every application for a patent should 
 he eanmined by some ons competent 
 person who thoroughly understands 
 the subject of the patent. If an in- 
 vention had been patented before, 
 the applicant for the patent should 
 be informed of it. 
 
 In a Parliamentary debate on the 
 subject, Mr. Carr, M. P., said, "his 
 impression was that at the root of all 
 
 the mischief of the present patent 
 law lay the want of a proper tribunal, 
 the members of which, combining 
 legal and special knowledge, should 
 refuse patents which ought to be re- 
 fused.''^ 
 
 Another member of Parliament 
 stated his belief that "if the patent 
 laws were to be maintained, it was 
 necessary that there should be, in 
 the first place, an examination to 
 ascertain that the invention was new, 
 that it UMS sufficiently described, and 
 that it was usefuU^ 
 
 Still another well-known Queen's 
 counsel, Mr. Grove, stated that "he 
 was in favor of the establishment of 
 a special patent tribunal armed with 
 the power of granting or refusing 
 patents on the ground that they are 
 or are not for novel inventions." 
 
 Other important evidence to like 
 effect might be cited, but we have 
 given enough to show that among 
 those learned and experienced Eng- 
 lishmen who have given their atten- 
 tion to patent law reform, there is a 
 singular unanimity in the belief that 
 discrimination in the grant of pat- 
 ents is of vital necessity, and it may 
 be noted that those are the most ur- 
 gent in advancing this theory who 
 have had opportunity for practical 
 observation of the exercising of such 
 discrimination in our own country. 
 
 We see the evils of the want of 
 such discrimination forcibly repre- 
 sented : patents granted with vague 
 and indefinite specifications and 
 claims; patents for old or for use- 
 less things, and for things already 
 
patented; patentees left to ascer- 
 tain in the courts the nature and 
 extent of their rights, and yet afraid 
 to resort to the courts, so that both 
 patentees and pubUc are left in doubt 
 and perplexity as to what the major- 
 ity of patents are for, whether they 
 cover much ground or little, whether 
 they are valid or worthless. 
 
 Surely such a state of affairs as 
 this is infinitely worse and more un- 
 bearable than any evils which have 
 been or can be engendered by our 
 examining system. 
 
 One of the most prominent objec- 
 tions advanced in England to the 
 adoption of an examining system 
 analogous to our own is the demand 
 which the system is supposed to re- 
 quire for highly scientific officers, and 
 the supposition prevails here to 
 some extent that the officers of our 
 own Patent Office are or should be 
 highly scientific men, and not unfre- 
 quently positions in that Bureau are 
 sought on the strength of no other 
 qualification than an assumption of 
 philosophical knowledge acquired 
 by cramming at our schools and 
 colleges. 
 
 We cannot conceive a more disas- 
 trous event than the filling of our 
 !f atent Office with quasi philoso- 
 phers. 
 
 Forty-nine fiftieths of aU the ap- 
 plications for patents are based on 
 absolute facts, to be best dealt with 
 practically by matter-of-fact men, 
 who can bring to bear good general 
 and practical knowledge, and pow- 
 ers of discrimination and concentra- 
 
 tion, without being biased by pet 
 theories of their own. 
 
 Purely theoretical knowledge ac- 
 quired apart from practice is treach- 
 erous, and standing alone is but 
 poor capital for an officer of the Pat- 
 ent Office. There have not been 
 wanting instances of theoretical ex- 
 aminers declaring machines and ap- 
 paratus to be inoperative and im- 
 practicable which have been shown 
 to be in every-day successful opera- 
 tion. "Whatever science or skill may 
 have been exercised in the produc- 
 tion of an invention, the application 
 for a patent goes before the Office, 
 or rather should do, in a dry matter- 
 of-fact condition, and may be better 
 examined by a man of shrewdness, 
 tact, and practical knowledge, than 
 by one who can only bring theoreti- 
 cal lore to bear on the duty. Pew 
 theorists think alike, and their ef- 
 forts to elucidate a simple subject 
 often result in confusing it, precisely 
 as scientific experts in poisoning 
 cases, and in not a few patent 
 cases, by their opposite views, fre- 
 quently succeed in confusing judges 
 and juries, and in obscuring the 
 truth. 
 
 There are classes oi mventions 
 which demand from the Examiner 
 a degree of scientific knowledge, but 
 the more practical experience tliis 
 knowledge may be combined with 
 the better will the duties be per- 
 formed. 
 
 We cannot but think that the 
 alarm in England concerning the dif- 
 ficulty of obtaining efficient officers 
 
37 
 
 wherewith to carry out an examin- 
 ing system is a false alarm. 
 
 To say that an examining sys- 
 tem gives discretion to officials, 
 which good ones may abuse through 
 error or mistake of judgment, and 
 which bad ones will abuse delib- 
 erately, is merely to say what is 
 equally true of any system of legal 
 administration depending to any 
 extent upon the discretion of man. 
 If we are to abolish any system 
 in which official discretion is ex- 
 ercised, because good men are not 
 infallible and bad men will do mis- 
 chief, what branch of government 
 can we permit to sxrrvive ? To 
 apply such an argument to the 
 examining system is to say that a 
 system proper in its theory and 
 beneficial in its aim is bad for the 
 want of capable and honest men to 
 carry it out, an argument to which 
 we think few of our readers wiU be 
 willing to subscribe, 
 
 "We have shown that the discre- 
 tionary power which the examin- 
 ing system does confer on those who 
 carry it out, is so limited and well- 
 defined that if placed in the hands 
 that the law intended it should be, 
 the chances of injurious abuses of it 
 are small indeed. 
 
 "We have shown how beneficial 
 the system has been, even admitting 
 it to have been but imperfectly ad- 
 ministered, how grossly its defects 
 have been, from natural causes, ex- 
 aggerated, wherein the real defects 
 lay, and what kind of changes will 
 be likely to remove those defects. 
 
 We have brought proof, too, of 
 the evils ensuing from the lack of 
 such a system. 
 
 "We believe that our readers, can- 
 didly weighing all sides of the ques- 
 tion, will coincide with us in the 
 belief that the examining system 
 whatever may have been the defects 
 of admini'ration, has been, upon 
 the whole, of mcalculable benefit 
 both to inventors and the public, 
 that its abolition would be a great 
 misfortune, a signal for the reduc- 
 tion of patent property to a state 
 of confusion, and that earnest en- 
 deavors to improve the organiza- 
 tion of the Patent Office, in those 
 respects wherein it very evidently 
 may be improved, will do much to 
 make the system as successful in 
 practice as it is beneficent and just 
 in theory. 
 
 CHAPTEE VIII. 
 
 EEMEDEES FOE DEFECTIVE 
 IBATENTS. 
 
 Having in the preceding chapters 
 discussed as fully as our proposed 
 limits will allow, the examining sys- 
 tem, peculiar in its character and 
 intent to our law, we wiU now turn 
 attention to other provisions, which 
 will be found to be equally endued 
 with the spirit of justice and liber- 
 ality to inventors. 
 
 With a patent granted to him 
 after an inquiry into the novelty 
 and utility of the invention claimed, 
 the patentee may come before the 
 public with a reasonable confidence 
 that his title-deed is clear and dis- 
 
38 
 
 tinct, and should infringements 
 upon his patent oblige him to resort 
 to a court of justice, he will in doing 
 so, have the legal and moral benefit 
 of a primd facie presumption of 
 the validity of the right he seeks to 
 vindicate. 
 
 Inventors have at ^imes erro- 
 neously supposed that the grant of 
 a patent after the examination as to 
 novelty and utility is conclusive 
 upon those questions, and that a 
 patent is a guarantee of the novelty 
 and utility of the invention claimed 
 therein. This, of course, is a mis- 
 take. An application for a patent 
 is an ex parte proceeding, of which 
 the public at large know nothing. 
 That this should be so, is essential 
 for the protection of the interests of • 
 inventors. If before the grant of a 
 patent, the particularsof any claim 
 of invention should be allowed to 
 become matter of public notorie- 
 ty, very mischievous consequences 
 would be likely to follow. 
 
 There are never wanting unscru- 
 pulous and narrow-minded men, who 
 if allowed, the opportunity would 
 exercise all means in their power 
 to impede and harass inventors and 
 hinder them from attaining their 
 rights. To publish applications for 
 patents would be to invite conspir- 
 acy and factious opposition of all 
 kinds from interested parties, with 
 results injurious not «nly to in- 
 ventors, but to the peace and morals 
 of society. 
 
 It is requisite, therefore, to pro- 
 vide that no claim of invention 
 
 shall be published prior to the grant 
 of a patent : till then the only 
 parties cognizant of the claim are, 
 as a rule, the applicant and his at- 
 torney, if he have onfe, and the 
 Patent Office. 
 
 But it is an inviolable maxim 
 that the rights of individuals can- 
 not be bound by proceedings to 
 which the individuals affected were 
 not a party. 
 
 Hence the members of the public 
 at large cannot be bound by those 
 proceedings in the Patent OfQce rela- 
 tive to applications for patents, of 
 which the law does not permit them 
 toknow, ortobecome parties therein. 
 Any member of the public, there- 
 fore, is at liberty to show by proper 
 proof, if he can, in legal proceedings 
 upon a patent, that the invention 
 claimed therein was not new or 
 original with the patentee ; that it 
 is not useful, or that for other rea- 
 son the patent should not have been 
 granted, or is invalid. 
 
 The patent is primd facie evidence 
 in any suit, for the patentee, this 
 far : that the officials authorized by 
 law have after due examination 
 granted the patent, as for a new and 
 useful invention, which the patentee 
 has sworn that he beheves to be his 
 own, and which, in the opinion of 
 these officials, he has clearly and 
 sufficiently set forth and claimed in 
 his specification. 
 
 But it may very well be that the 
 patentee was mistaken in his belief 
 that the invention was original with 
 himself, or that he may have taken 
 
39 
 
 a false oath, and it may also be 
 that members of the public 'whose 
 rights the patent may affect, can by 
 facts and proof which were not be- 
 fore the Patent Ofllce, show that 
 such was the case, or that the in- ■ 
 vention is not useful, -or that it is 
 not so clearly and sufficiently de- 
 scribed as to enable those skilled in 
 the art to which the invention ap- 
 pertains, or with which it is most 
 nearly connected, to make use of it, 
 from the information which the 
 specification conveys. Any of these 
 defences — as well as others which it 
 is not to our purpose here to speak 
 of, since they are fitter subjects for a 
 legal than for a practical treatise — 
 any member of the public is at lib- 
 erty to make in a suit which a 
 patentee may bring against him for 
 infringement of the patent. The 
 burden is upon him, however, to es- 
 tablish any of such defences by clear 
 and unmistakable proof, in order to 
 overcome the weight of the Tprimd 
 fade presumption which the exist- 
 ence of a patent raises in favor of 
 the holder. 
 
 Mere technical defences against 
 patents are not favored, but the 
 courts wUl always so construe spe- 
 cifications and claims that if possi- 
 ble the patent may stand. 
 
 "While, therefore, a patent is not 
 to be taken as in any sense a guar- 
 antee of the patentee's rights, but 
 on the contrary, any member of the 
 public sued for alleged infringement 
 of a patent is at full liberty to show, 
 if he can, that the patent should 
 
 not have been granted, and that 
 therefore, the grant of it conferred 
 no lawful right upon the patentee, 
 the latter may be sure that he will 
 not have to contend against hostile 
 judicial criticism which would give 
 a favorable ear to those technical 
 pleas to which dishonest defend- 
 ants will be likely to resort. 
 
 But though the tendency of our 
 courts is to deal in a liberal spirit 
 with the rights of patentees, this 
 liberahty of course cannot extend 
 so far as to givp efiect to patents 
 palpably deficient in respect to any 
 of the legal requirements. Litiga- 
 tion not unfrequently has the effect 
 of showing the patentee that his 
 patent is defective in some material 
 particular; and that, therefore, his 
 right under it is not such as a court 
 of justice can maintain and enforce. 
 If this defect lie in total lack of 
 novelty or utility in the invention 
 claimed, it is of course beyond rem- 
 edy. But it may be that the defect 
 consists in the lack of one of these 
 requisites in some part only of the 
 thing claimed, or merely in the mode 
 in which" the invention is described 
 or claimed. In jts liberal dealings 
 with the rights of patentees, whose 
 patents are thus only partially or 
 technically defective, our law is dis- 
 tinguished from that of any other 
 country. 
 
 Under the English law, in a suit 
 for infringement of a patent, proof 
 that the patent includes more than 
 was new and original with the pat- 
 entee, is altogether fatal to the suit. 
 
40 
 
 Our statutes, however, provide 
 (section 60) that if, tlirough inad- 
 vertence, accident, or mistake, and 
 without any wilful default, or intent 
 to defraud, or mislead the public, a 
 patentee shall have claimed in his 
 specification to be the original and 
 first inventor or discoverer of any 
 material or substantial part of the 
 thing patented, of which he was not 
 so, he or his legal representative 
 may yet maintain suit at law or in 
 equity for the infringement of any part 
 thereof which was bondfde his own, 
 provided it shall be a material and 
 substantial part of the thing pat- 
 ented, and be definitely distin- 
 guishable from the parts claimed 
 without right, notwithstanding the 
 specification may embrace more than 
 that of which the patentee was the 
 original or first inventor or dis- 
 coverer. 
 
 It will be noted that a patent 
 which is too broad cannot under 
 this section be partially effective, 
 unless upon the face of the patent 
 as it stands the old and the new mat- 
 ter be clearly distinguishable and 
 separalDle, and the new matter be a 
 material and substantial part of the 
 thing patented. If the old and new 
 matter are not thus definitely dis- 
 tinguishable, the patent as it stands 
 is altogether bad, and no suit c^n 
 be maintained upon it ; but such a 
 state of affairs is not fatal to the 
 inventor's right : he may remedy 
 the error in a mode which we shall 
 aUude to hereafter. 
 
 The provision in favor of pat- 
 
 entees in the section we have quoted 
 is very properly coupled with the 
 condition that in such case no costs 
 shall be recovered in the suit, unless 
 the proper disclaimer has been en- 
 tered at the Patent Office before the 
 commencement of the suit ; nor shall 
 the patentee be entitled tothebeneflt 
 of the section if he shaU have un- 
 reasonably neglected or delayed to 
 enter said disclaimer. 
 
 This proviso is to protect the pub- 
 lic against the carelessness or bad 
 faith of patentees, who might wit- 
 tingly mislead and deceive the pub- 
 Uc by continuing to claim that which 
 they themselves were aware they 
 had no right to claim. 
 
 It is the right of the public that 
 no patent should purport to grant 
 to the patentee more than he is 
 fairly entitled to. The true extent 
 of his right should distinctly appear 
 on the face of his patent, that the 
 public may be informed of it. 
 
 "When, therefore, a patentee shall 
 have discovered that his claims in- 
 clude more than that of which he 
 was actual first inventor, he acts in 
 bad faith towards the pubUc, from 
 whom he holds his patent, if he de- 
 lays to rectify the error, and reduce 
 his claim to its legitimate extent; 
 and much more does he act in bad 
 faith if, with such knowledge, . he 
 attempts to enforce submission to 
 his unjust claim by proceedings in 
 the courts. 
 
 When, therefbre, a patentee dis- 
 covers that his patent covers more 
 than that of which he was the ac- 
 
41 
 
 tual first inventor, and finds that 
 the old matter is definitely distin- 
 guishable and separable from the 
 new, he is morally bound to avail 
 himself without delay of the sec- 
 tion of the law which permits him to 
 remedy such an error by filing in the 
 Patent Office what is termed a 
 
 Disclaimer. 
 
 This is a statement in writing, 
 signed by the party disclaiming, 
 attested by one • or more witnesses, 
 and recorded in the Patent Office, 
 making disclaimer of such parts of 
 the thing patented as the party in 
 interest shall not choose to claim or 
 hold by virtue of the patent. The 
 right to file a disclaimer is not con- 
 fined to the patentee, but his heirs 
 or his assigns, whether of the whole 
 or of a sectional interest in the pat- 
 ent, have the like right. Of course, 
 when the assignee of a sectional in- 
 terest makes such a disclaimer, his 
 interest only is affected by it. 
 
 But it is not every patent which 
 is too broad that can be thus cured. 
 The remedy of disclaimer is of course 
 applicable only to cases where the 
 patent specifies and claims divisible 
 features of invention. The part re- 
 tained and the part disclaimed must 
 be clearly separable and distinguish- 
 able, and the part to be retained 
 must be a material and substantial 
 part of the thing originally patented. 
 
 When, therefore, the patent is not 
 thus divisible, when the original 
 claim is not of such character as to 
 allow of a correction of the patentee's 
 
 error by cutting out some clearly 
 separable part, the removal of which 
 will yet leave in the patent a ma- 
 terial and substantial patentable 
 subject of claim, the remedy of dis- 
 claimer cannot be resorted to. 
 
 Now there are very many patents 
 inadvertently made too broad, in 
 which the character of the inven- 
 tion, or of the description or claim, 
 would prevent any such rectifica- 
 tion of the patent by mere excision. 
 In such case the patentees would be 
 without remedy, and would find 
 themselves deprived of all right 
 without default of their own, — a 
 state of affairs by which very many 
 really meritorious and useful inven- 
 tors would be irreparably injured. 
 
 To obviate such mischief the law 
 has provided the remedy of 
 Beissue. 
 
 This provision is one which has 
 no parallel in any other patent law, 
 and is one of those really beneficent 
 measures which have tended to make 
 our law so effective, because so just 
 and hberal. 
 
 Section 53 of the act provides, 
 that "whenever any patent is in- 
 operative or invalid, by reason of a 
 defective or insufficient specifica- 
 tion, or by reason, of the patentee 
 claiming as his own invention or dis- 
 covery more than he had a right to 
 claim as new, if the error has arisen 
 by inadvertence, accident, or mis- 
 take, and without any fraudulent or 
 deceptive intention, the Commis- 
 sioner shall, on the surrender of 
 such patent, and the jjayment of the 
 
42 
 
 duty required by law, cause a new 
 patent for the same invention, and 
 in accordance with, the corrected 
 specifications, to be issued to the 
 patentee, 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 unexpired part of 
 the term of the original patent, tlie 
 surrender of which shall take effect 
 upon the issue of the amended pat- 
 ent." 
 
 !For patents which are too broad 
 the remedy of reissue is applicable, 
 when the defect is such as to render 
 the original patent altogether in- 
 operative or invalid, because the 
 character of the invention, or of the 
 description and claim is such that 
 there is no material or substantial 
 part of the thing patented, which 
 being truly and justly the patentee's 
 own, is clearly separable and dis- 
 tinguishable in the patent as it 
 stands from that which is not the 
 patentee's own. In other words, 
 the remedy of reissue is applicable 
 when that of disclaimer is not. 
 
 A patent which being too broad 
 may yet be remedied by disclaimer, 
 is not in its original condition alto- 
 gether inoperative and invahd, but, 
 as we have seen, is by the terms of 
 the law valid, for all that which 
 being a material and substantial 
 part of the thing patented is truly 
 and justly the patentee's own. 
 
 Upon such a patent, and for the 
 infringement of such material and 
 substantial part thereof as is bond 
 
 fide the patentee's own, he is allowed 
 to maintain a suit, because such 
 part is definitely distinguishable and 
 divisible in the patent as it stands 
 from the parts claimed without right, 
 which latter may, therefore, be re- 
 moved from the patent by simple 
 excision. 
 
 But a patent which being too 
 broad must be remedied by surrender 
 and reissue, is inoperative and in- 
 valid, and no suit can be maintained 
 upon it, because the old and new 
 matter cannot be separated in the 
 description and claim as they stand ; 
 no distinct part can be taken away 
 and still leave a material and sub- 
 stantial part of the thing patented, 
 definitely distinguishable from the 
 parts claimed without right. Divi- 
 sion therefore being impossible, and 
 since the patent as it stands, not 
 being so divisible is whoUy invalid, 
 the only remedy is reconstruction 
 of the description and claim, and 
 this can be efiected by way of sur- 
 render and reissue. 
 
 But it is not only as a remedy for 
 patents, which, being too broad, can- 
 not be cured by disclaimer, that re- 
 issue is available. It is, in fact, a 
 sort of universal medicine — a cure 
 for all the ills that specifications and 
 claims are heir to. The section we 
 have quoted makes the remedy of 
 reissue available whenever, through 
 innocent inadvertence, accident, or 
 mistake, a defective or insufficient 
 specification renders the patent in- 
 operative or invalid. 
 
 The importance of this is appar- 
 
43 
 
 ent when it is remembered that the 
 consideration passing from the in- 
 ventor to the public, for which a 
 patent is granted, is the making and 
 discZoswre of an invention. The word 
 disclosure argues a full and candid 
 imparting of all the knowledge nec- 
 essary to enable others to carry the 
 invention into effect as fully and 
 effectually as the Inventor himself ; 
 otherwise he has not given the con- 
 sideration required of him, and there- 
 fore his patent is not good. Thus, in 
 the words of our law, " the inventor 
 is required to file in the Patent 
 Office a written description of his 
 invention, and of the manner and ' 
 process of making, constructing, 
 compoimding, and using the same, 
 in such clear, fuU, and concise and 
 exact terms as to enable any person 
 skilled in the art or science to which 
 it appertains, or with which it is 
 most nearly connected, to make, 
 construct, compound, and use the 
 same. " A patent, then, is not valid 
 if essential information is omitted, 
 or if anything be so scantily, ob- 
 scurely, or unintelligibly stated that 
 the whole description taken together 
 is not sufficient to guide those skUled 
 iit the art to a correct and beneficial 
 use of the invention. How Ukely 
 such defects are to exist where an 
 uninformed inventor has attempted 
 to draw his own description, or has 
 ^ employed an incompetent attorney 
 to do it for him, can readily be ap- 
 prehended. The right of reissue 
 enables a patentee so to correct 
 or amplify his description as that 
 
 it shall present a fair and faith- 
 ful performance of his contract with 
 the public, and so his privilege will 
 be saved to him. 
 
 Still another end, beneficial to in- 
 ventors, is served by the power of 
 reissue. 
 
 It is essential to the faithful per- 
 formance by the inventor of his part 
 of the contract between the public 
 and himself that he should clearly 
 and candidly state what it is that 
 he claims to be his invention, so 
 that the public may be fully advised, 
 from his own statement, of the ex- 
 tent of his right ; or, as the law has 
 it, he must " particularly point out 
 and distinctly claim the part, im- 
 provement, or combination, whiclt 
 he claims as his invention or dis- 
 covery." 
 
 "What is termed the specification 
 comprises the description and this 
 necessary claim, which latter is to 
 be construed with reference to the 
 description. The courts, therefore, 
 thus construing the claim, will al- 
 ways, if possible, give it meaning 
 and effect ; and meaning and effect 
 the very fullest, — consistent with 
 the patentee's apparent right, — that 
 by the Ught which the description 
 affords, they can give it. Tor not 
 only will they endeavor so to 
 construe the patent that it shah 
 stand ; but, if possible, so that it 
 shall be effective to protect the 
 whole of the patentee's apparent 
 invention. But, in doing this, 
 they cannot of course go beyond 
 what appears on the face of the 
 
44 
 
 patent. Their liberality must be 
 bounded by the actual contents of 
 the specification. By a liberal con- 
 struction of the whole document 
 together they can give definite sig- 
 nificance to an apparently obscure 
 claim, or give wider meaning to an 
 apparently limited claim, than if it 
 were taken by itself its mere lan- 
 guage would imply. But they can- 
 not supply omissions, or construe 
 the patent to cover that which is 
 not directly or indirectly claimed. 
 
 Now it may happen, and fre- 
 quently doeshappen,that aninventor 
 inadvertently omits such reference 
 in his description or claim to some 
 material and substantial part of his 
 invention as would warrant a j udicial 
 construction of his patent as cover- 
 ing that part. This then is a case 
 where the patent, by reason of a de- 
 fective and insuflScient specification, 
 is inoperative to give an exclusive 
 right to the actual invention. In 
 such event the patentee may sur- 
 render his patent and take a new, or 
 as it is termed, a reissue patent upon 
 an amended specification, which 
 shall distinctly specify and claim the 
 whole of the actual invention shown, 
 but not claimed in the original 
 patent. 
 
 Again it sometimes happens that 
 one patent has been made to em- 
 brace several distinct patentable im- 
 provements, each of which might 
 have been made the subject of a dis- 
 tinct patent, and it may become 
 proper and desirable thus to separate 
 them. For this the law provides 
 
 that the Commissioner may in his 
 discretion cause several patents to be 
 issued for distinct and separate parts 
 of the thing patented, upon de- 
 mand of the applicant, and the pay- 
 ment of the required fee for a re- 
 issue, for each of such reissued let- 
 ters-patent. 
 
 It is carefully to be borne in mind 
 that the legitimate object of a reissue 
 is simply to correct that wherein the 
 original patent was defective, more 
 ftiUy or correctly to describe or claim 
 the whole of that invention which 
 the original patent should have de- 
 scribed or claimed. The words of 
 the law are that the Commissioner 
 shall, on the surrender of a patent, 
 and payment of the required duty, 
 cause a new patent for the some in- 
 vention, and in accordance with the 
 corrected specifications, to be issued; 
 and it is distinctly provided that no 
 new matter shall be introduced into 
 the specification. This term, new 
 matter, has reference not to mere 
 language, but to substance. Such 
 changes or amplifications of language 
 may be made as are necessary to 
 effect the legitimate object, the cor- 
 rection of that "wherein the original 
 patent was defective, whether in de- 
 scription, or in claim. But no new 
 or changed feature of invention can 
 be introduced, because the reissue 
 patent is to be for the identical 
 thing which constituted the acttml 
 invention of the patentee when he 
 applied for his original patent, and 
 for which that patent would then 
 have been granted had the descrip- 
 
45 
 
 tion or claim not been defective or 
 insuflScient. 
 
 The nature and object of reissues 
 have been greatly misunderstood, 
 and what is intended as a remedial 
 measure in favor of the rights of 
 inventors was, until very recently, 
 oftentimes perverted into a means 
 for unlawfully stretching the ap- 
 parent scope of patents beyond the 
 true invention, and thus imposing 
 upon and injuring the pubUc. 
 
 This was effected, sometimes by 
 basing upon such rudimentary traces 
 of important principles as might 
 be found in a patented invention, 
 broad and sweeping claims couched 
 in language designed, in effect, to 
 cover any known application of such 
 principles to a like purpose, and 
 sometimes by a deliberate interpola- 
 tion in the amended specification of 
 new matter not to be found in the 
 original patent at aU. 
 
 Under careless and incompetent 
 administrations this evil practice 
 grew, until it had assumed alarming 
 proportions. No sooner did a patent 
 for some reaUy useful invention be- 
 come remunerative, and so draw 
 attention, than it became the object 
 of the greedy and unscrupulous to 
 find some old patent worthless in 
 itself, and purchasable for a song, 
 but in which might be found some 
 rude embryonic traces of the princi- 
 ples involved in the valuable patent. 
 Then a reissue was obtained, and 
 all the ingenuity of language was 
 called into play to give this reissue 
 the apparent effect of anticipating 
 
 and covering whatever was valuable 
 in the later patent. This species of 
 reissue^ became a weapon wherewith 
 to embarrass and levy blackmail 
 upon meritorious patentees and 
 manufacturers, and either to cut off 
 or compel a division of the hard- 
 earned fruits of their ingenuity, or 
 of their enterprise and invested 
 capital. 
 
 This had the effect too of casting 
 a taint of suspicion upon reissues 
 generally, to the great injury of 
 bond fide meritorious inventors. 
 
 It was found necessary to cast 
 some restraints upon the grant of 
 reissues, so as to put a stop to this 
 mischievous practice. 
 
 Whereas, therefore, previous to 
 the passage of the last act (July, 
 1870), reissues might be obtained by 
 the assignees of patejits without 
 any reference to the original pat- 
 entees whatever, it is now required 
 by Sec. 33, that though patents may 
 be reissued to assignees, yet the ap- 
 plication must be made, and the 
 new specification sworn to by the 
 inventor or discoverer, who may 
 reasonably be supposed to know 
 best what his own actual inven- 
 tion was, and to be the least likely 
 person to make false or rash rep- 
 resentations in regard thereto, 
 while the doubt whether the pat- 
 entee will prove a complacent tool, 
 must tend greatly to check and 
 lessen- the speculation which for- 
 merly traded- in old patents, for no 
 better purpose than the obtaining 
 of brummagem reissues. This prtf- 
 
46 
 
 vision, however, is not applicable to 
 patents assigned previous to July, 
 1870. This requirement of the law 
 has been somewhat complained of, 
 on the ground that it places as- 
 signees of patents too much at the 
 mercy of patentees, and enables the 
 latter, should they be so disposed, 
 to levy blackmail upon those who 
 have already paid them for the prop- 
 erty, the title to which it may be 
 found necessary to better by reissue. 
 There may be some ground for this, 
 but the apprehended evil seems to 
 be one which the exercise of proper 
 discretion and care will prevent. 
 More caution than was formerly ex- 
 ercised by purchasers of patents 
 will certainly be required under the 
 present state of the law : this, how- 
 ever, is a material advantage, for 
 the caution .required of purchasers 
 must necessarily reflect itself in 
 greater caution upon the part ot 
 patentees in the mode of obtaining 
 their patents, since imperfect patents 
 will be found less available com- 
 mercially. 
 
 The same causes (the creation of a 
 spirit of inquiry and discrimination 
 as to patents) which will check the 
 trading in patents for mere specula- 
 tive purposes, wiU ultimately serve 
 to check, to some extent, at least, 
 the practices of that class of men, 
 who, under too lax a state of the 
 law, undeservedly flourish, and who 
 may be termed professional pat- 
 entees ; men who, without any merit 
 as inventors, find in small patents 
 a ready means of supplying their 
 
 pockets, at the expense of the pub- 
 lic. While it would be impolitic 
 and wrong to make any distinctions 
 as regards title to the benefit of 
 the patent law, between inventions 
 of different degrees of apparent im- 
 portance, it is both politic and 
 right to establish any measures 
 which will be likely to raise the 
 general standard of patents in point 
 of legal value. This is not more to 
 the interests of the public^ than it 
 is to the true interest of bond fide 
 inventors. Any measure, there- 
 fore, which, while it does not tend to 
 work any real hardship to patentees 
 or patent owners, yet tends to im- 
 press upon inventors the necessity 
 in their own interest of exercising 
 circumspection in drawing their 
 specifications, is beneficial, and as 
 such a measure may this touching 
 reissues be regarded. 
 
 "When the patent has been as- 
 signed, and there are several as- 
 signees, they must all be assenting 
 parties to an application for a re- 
 issue. 
 
 It is also distinctly specified by 
 the letter of the last act that "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." 
 
 This proviso, however, is added : 
 " But, where there is neither model 
 nor drawing, amendments may be 
 made, upon proof satisfactory to the 
 Commissioner that such new mat- 
 ter or amendment was a part of the 
 
47 
 
 original invention, and was omitted 
 from the specification by inadver- 
 tence, accident, or mistake, as afore- 
 said." 
 
 The -wisdom of this last provis- 
 ion, or of the admission under any 
 circumstances of eodrinsio evidence 
 in applications for reissue, may be 
 doubted. Bond jide cases for the 
 exercise of this rather sweeping dis- 
 cretion by the Commissioner, must 
 be comparatively very rare, and the 
 measure might seem fairly obnox- 
 ious to the charge of extending 
 temptation for much misrepresenta- 
 tion and imposition, without the 
 likelihood of working any very ma- 
 terial measure of justice. 
 
 As a further necessary check upon 
 the grant of reissues, the law re- 
 quires that applications therefor 
 shall be subject to revision and re- 
 striction, in the same manner as 
 original a;pplications are. 
 
 As the surrender of an original 
 patent does not take efiect until the 
 issite of the amended patent, if ap- 
 plication for the latter be refused 
 and withdrawn, the original remains 
 in force. 
 
 It is provided that a reissue 
 patent, with its corrected specifica- 
 tion, shall have the effect and ope- 
 ration in law, on the trial of all 
 actions for causes thereafter arising, 
 as though the same had been origi- 
 nally filed in such corrected form. 
 Of causes of action under the origi- 
 nal patent, the surrender and reis- 
 sue, since it involves a distinct 
 avowal by the patentee that such 
 
 original patent was inoperative and 
 invalid, is of course an abandon- 
 ment. 
 
 CHAPTER IX. 
 
 GBITEEAI. FEATITBES OF THE 
 tTNITED STATES PATENT LAWS. 
 
 In this, our concluding chapter, 
 we shall refer briefly to those pro- 
 visions of our patent law which in 
 the preceding chapter have escaped 
 notice. 
 
 It is, perhaps, one of the most 
 striking illustrations of the differ- 
 ence in spirit and principle between 
 our patent law and that of Eng- 
 land, that whereas in the latter the 
 patentee's right rests upon his being 
 first to disclose the invention to the 
 public by his patent, with us the 
 question of right is determined by 
 reference to the date of invention. 
 The inquiry is, who first made, not 
 who first disclosed to the public, 
 an invention which may be in dis- 
 pute. 
 
 Under otir law an inventor does 
 not lose his rights merely by public 
 use or sale of his invention during 
 a period nx)t exceeding two years prior 
 to his application for a patent. It 
 may be questioned, perhaps, whether 
 this two years grace be not too great 
 a stretch of liberality; certainly, 
 however, it allows time, which in' 
 most cases would be ample either 
 for ascertaining practically the posi- 
 tive and relative utility of an idea, 
 or for obtaining that pecuniary aid 
 which a poor inventor may need for 
 
48 
 
 the bringing of his invention into 
 use. 
 
 Time taken in conducting experi- 
 ments with an invention is attended 
 with the risk that the invention may- 
 be made by some other person in the 
 meantime, or that the idea may 
 come to the knowledge of some un- 
 scrupulous party, who will not hesi- 
 tate to appropriate and patent as 
 his own, the original conception of 
 another, if it seem likely to prove at 
 all valuable. As applications for 
 patent are secret ex parte transac- 
 tions, such theft might be consum- 
 mated without the knowledge of the 
 true inventor, until on applying 
 for his patent, he should find an- 
 other party already in possession of 
 a patent wrongfully obtained. This 
 probataiUty , were there no check upon 
 it, would prevent, by making too 
 hazardous, that expenditure of time, 
 money, and skill, which is necessary 
 to reduce many original inventions 
 to the best practical shape, and 
 would compel the premature patent- 
 ing of half-hatched ideas. This 
 danger the law cannot entirely 
 obviate, but it has provided some 
 measure oi protection to inventors 
 during the time which may be re- 
 quired by them for conducting ex- 
 periments to mature their ideas. 
 
 Section 40 of the act provides that 
 »any citizen of the United States who 
 has made a new invention or dis- 
 covery, and desires further time to 
 mature the same, may file a caveat 
 in the secret archives of the Patent 
 Office. 
 
 Caveats 
 Are simply brief descriptions set- 
 ting forth the design of an invention 
 and its distinguishing characteris- 
 tics, accompanied by a statement 
 that the caveator who claims the 
 invention as his own, is engaged in 
 taking steps to perfect it, prior to 
 applying for letters-patent. This 
 caveat is filed in the secret archives 
 of the OflSce, and is accessible only 
 to the officials and the caveator, or 
 such persons as he may duly author- 
 ize to have access to it. As a caveat 
 refers to an avowedly uncompleted 
 invention, while letters-patent are 
 granted only for one which is com- 
 plete, no proceedings are taken 
 upon a caveat by the Office, but it re- 
 mains for the caveator to mature his 
 invention and file his application for 
 a patent within one year; which 
 time, however, may be extended 
 from year to year by renewing the 
 caveat. It is common to allude to 
 caveats as affording a temporary 
 security, thus leading many inven- 
 tors to a mistaken impression that 
 a caveat is a sort of temporary 
 patent. This it is not ; a patent 
 being a grant of the exclusive right 
 for a certain period to make, use, 
 and sell a completed invention, is 
 the act of the public in consideration 
 of the disclosure of such completed 
 invention. A caveat is merely 
 the caveator's own act in reference 
 to an incoviplete invention which he 
 desires to keep secret till he has had 
 time to mature it, in order that he 
 may then disclose it and obtain from 
 
49 
 
 the public the exclusive right to 
 make, use, and sell it. A caveat, 
 therefore, is, as its name implies, sim- 
 ply a warning, notifying the Patent 
 Office that the caveator has made 
 an invention, which he intends to 
 mature and to apply for a patent 
 therefor within one year. 
 
 The effect Which the law gives to 
 this warning is to mate it obligatory 
 upon the Patent Office during one 
 year after the filing or the renewal 
 of a caveat, to grant no patent for 
 the invention to any other claim- 
 ant without giving the caveator op- 
 portunity to establish his priority of 
 right. To this end, notice is to be 
 given to the caveator of the filing of 
 any interfering application for a 
 patent, without, however, informing 
 him as to the name or whereabouts 
 of the applicant, and he is allowed 
 three months from the time of such 
 notice to complete his invention and 
 file his application for a patent. If 
 he fell to do this, he will be con- 
 sidered to have waived his claim, 
 and that of the other applicant will 
 be considered and passed upon with- 
 out reference to the caveat. 
 
 Section 24 of the Patent Act pro- 
 vides, that any person who has in- 
 vented or discovered any new and 
 useful art, machine, manufacture, 
 or composition of matter, or any 
 new and useful improvement there- 
 of, not Icnown cf 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 ap- 
 plication, 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. 
 » It is first to be noticed in this sec- 
 tion that the term "any person" 
 includes citizens and aliens, who in 
 reference to the patent laws stand 
 upon precisely the same footing. 
 
 And it may be here stated that 
 an inventor, whether citizen or al- 
 ien, who may have previously pat- 
 ented his invention in foreign coun- 
 tries, does not thereby prejudice his 
 right to a patent here, provided that 
 the invention has not been intro- 
 duced into piMic use — by which is 
 meant a use in public — in the United 
 States /or more than two years prior 
 to his application for the patent, but 
 his patent wiU expire at the same 
 time with the foreign patent, or if 
 there are several foreign patents, 
 then with that having the shortest 
 term, and in no case can the term 
 of a United States patent exceed 
 sevenj;een vears from its date (sec- 
 tion 25). 
 
 K'ext comes the recital of patent- 
 able subject-matters, and then the 
 recital of conditions essential to the 
 obtaining of a patent, and which of 
 course therefore are essential to the 
 maintenance of a patent which may 
 have been granted. 
 
 These conditions are — 
 
 1st. That the thing for which a 
 
50 
 
 patent is sought shall not have heen 
 known or used by others in this 
 country before the invention thereof 
 by the claimant. 
 
 The mere knowledge or use of the 
 thing in a, foreign country will not, 
 of itself, bar or invalidate a patent, 
 and proof of such knowledge or use, 
 except it be in the nature of | 
 paient, or printed publication, is 
 not admissible against a patent 
 excepting where it is proposed, by 
 bringing home to the patentee a 
 knowledge thereof, to show that his 
 claim of invention was not a hand 
 fide claim, and that his patent was 
 obtained by fraudulent representa- 
 tion. As to what knowledge or use 
 in this country will suffice to bar or 
 invalidate a patent, the rule would 
 seem to be that it must not have 
 been an entirely secret knowledge or 
 use, but open so far as to argue ac- 
 cessibility by the public : beyond this 
 it matters not how limited the prior 
 knowledge or use may have been. 
 
 2d. That the thing for which a 
 patent is sought shall not, prior to 
 the invention thereof by the appli- 
 'cant, have heen patented or described 
 In any printed publication in this or 
 any foreign country. 
 
 A prior patent for, or printed 
 publication of, a similar thing is the 
 best possible evidence of want of 
 novelty in an invention, and to this 
 end a foreign patent or printed pub- 
 lication is equally effective with a 
 domestic one. In either case it is a 
 record, accessible to the public, of 
 the prior existence of the invention 
 
 claimed by the applicant or patentee 
 as original with himself. But to 
 bar an application or invalidate a 
 patent, a prior patent or printed 
 pubUcation, whether domestic or 
 foreign, should set forth the inven- 
 tion so clearly and intelligibly, as to 
 enable a competent person skilled in 
 that branch of the arts to which the 
 alleged invention may appertain, to 
 make or use it. Mere vague sug- 
 gestions of something similar will 
 not suffice. 
 
 In the absence, then, of any prior 
 knowledge or use in this country, 
 and of any patent or printed publi- 
 cation in this or any foreign country, 
 an invention is neio in the eye of the 
 law, and the inventor has an in- 
 choate right therein which he may 
 perfect and secure by a patent. 
 
 He is not bound to apply for a 
 patent within any specified time, 
 nor will delay to do so, for however 
 long a time, of itself, there being no 
 other claimant, forfeit his right. The 
 statute, however, points out two 
 ways in which the right may be lost : 
 
 1. By public use or sale of the 
 invention for more than two years 
 prior to application for a patent. 
 
 Public use is a use, not ly the 
 pubUc necessarily, but any use — 
 though it may be only limited — in 
 public, so that there may be public 
 knowledge of the thing for more 
 than two years. 
 
 As public use or sale for less than 
 two years is not a bar to a patent, 
 and as within such period an inven- 
 tor might have made his invention 
 
51 
 
 a source of profit to himself by 
 manufacture and sale, or by allow- 
 ing the use of it to others, it would 
 not be right if under a patent sub- 
 sequently obtained he could disturb 
 or prohibit the further use of the 
 articles thus previously sold by him, 
 or which he had permitted to be 
 made and used. It is therefore en- 
 acted by Section 37 that every per- 
 son who may have purchased of the 
 inventor, or with his knowledge and 
 consent may have constructed, any 
 newly invented or discovered ma- 
 chine, or other patentable article, 
 prior to the application for a patent, 
 or sold or used one so constructed, 
 shall have the right to use, and vend 
 to others to be used, the specific thing 
 so made or purchased, without lia- 
 bility therefor. 
 
 The terms of this section exclude 
 from its benefit those who may, 
 prior to application for patent, have 
 constructed or applied the invention, 
 in defiance of the inventor's right, 
 or without his assent or knowledge. 
 
 2. By abandonment. 
 
 An invention may be abandoned 
 at any time prior to apphcation for 
 patent. But the law does not favor 
 and will never raise, except in the 
 case of pubUc use or sale for more 
 than two years, a presumption of 
 the abandonment of an invention. 
 Before it wiU be concluded that an 
 invention has been abandoned, there 
 must be some clearly proven act or 
 expression on the part of the in- 
 ventor, unmistakably indicating his 
 intention not to claim any exclusive 
 
 right in the invention, but to allow 
 it to become public property, for an 
 invention can be abandoned only to 
 the public at large. 
 
 As a rule, therefore, a valid pat- 
 ent may be obtained for any im- 
 provement which has not been 
 known or used by others in this 
 country, nor been patented or de- 
 scribed in any printed publication 
 in this or any foreign country before 
 the date of its invention or dis- 
 covery by the party claiming it as 
 his own, unless he has allowed it to 
 be in public use or on sale for more 
 than two years before his application 
 for a patent, or has at any time be- 
 fore such application by a voluntary 
 and deliberate act abandoned it to 
 the public. 
 
 Should the claim of an applicant 
 for a patent be rejected, or should 
 a patent granted be assailed in liti- 
 gation, on the ground of a prior 
 foreign patent or description in a 
 foreign printed publication, if the 
 applicant or patentee can establish 
 by competent proof that his inven- 
 tion preceded the date of such prior 
 foreign patent or publication, a pat- 
 ent will be granted him if he be an 
 applicant ; or, if he be a patentee, 
 his patent wiU be sustained. 
 
 And, in the case of an applicant 
 for a patent, ex parte evidence in 
 such case suffices to establish his 
 priority of right. 
 
 Such evidence is also competent 
 to overcome the rejection of a claim 
 for a patent on the ground of de- 
 scription in a printed publication in 
 
52 
 
 this country, or a rejection on the 
 ground that the iuYention is already 
 in public use" or on sale, unless it 
 shall appear that such public use or 
 sale has been for more than two 
 years prior to the application for a 
 patent. 
 
 But if application for a patent 
 be made for something already pat- 
 ented in this country, or which an- 
 other party is at the same time 
 to patent here, it may be 
 
 necessary in either case to try the 
 question of priority of invention in 
 the Office. This is done by means 
 of what is termed an interference — 
 a judicial proceeding in which the 
 rival claimants of the same inven- 
 tion are allowed to present testi- 
 mony in support of their respective 
 claims, the testimony being taken 
 in the same mode as in a cause in 
 equity, and each party having the 
 right to be present at the examina- 
 tion of, and to cross-examine, his op- 
 ponent's witnesses. This departure 
 from the general rule, which makes 
 applications for patents altogether 
 ex parte proceedings, is necessitated 
 by the circumstances of the case. 
 The Patent Office can lawfully grant 
 a patent only to the tf ue and first 
 inventor, and can lawfully grant a 
 second patent for the same thing 
 only to him who shall appear to be 
 the actual true and first inventor, 
 and therefore to have a claim supe- 
 rior to that of the first patentee. If, 
 therefore, there be before the Office 
 at the same time two or more par- 
 ties, each claiming to be the true 
 
 and first inventor of the same 
 thing; or, if application be made 
 for a patent for the same thing, in 
 which another party already has, by 
 patent granted, a vested exclusive 
 right, testimony must be adduced 
 and proceedings had to determine 
 the question of priority of inven- 
 tion. To these proceedings it is 
 absolutely necessary that the rival 
 applicants in the one case, or the 
 applicant and prior patentee in the 
 other, should both be made parties ; 
 for by these proceedings their re- 
 spective rights in the Patent Office 
 are to be bound ; and no man's rights 
 are to be bound except by proceed- 
 ings to which he is a party. 
 
 It is provided, therefore, by Section 
 42 of the Patent Act, that "when- 
 ever an application for a patent 
 which, in the opinion of the Com- 
 missioner, would interfere with any 
 pending application, or with any 
 unexpired patent, ke shall give notice 
 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 adjudged 
 the prior inventor." 
 
 Some years ago, the proceedings 
 in interference cases were very loose 
 and unsatisfactory. There was no 
 mode of compelling the attendance 
 of necessary witnesses ; there was 
 no system or order as to the time 
 and mode of taking- the testimony, 
 and the parties were left to develop 
 
53 
 
 by such evidence as they could, such 
 a case as they might choose. Con- 
 sequently, the endeavor of each 
 party was to make out his own case, 
 by the light of that made out by 
 his opponent ; and there was every 
 opportunity and temptation to the 
 parties to adapt their proof to the 
 emergencies of the occasion, rather 
 than to the true facts of the case. 
 
 Judicious improvements, how- 
 ever, in the law, and in the rules 
 and regulations of the Patent Office, 
 have, by assimilating the proceed- 
 ings in interference cases as far as 
 possible to those in a court of justice, 
 given them a fair degree of the 
 justice and certainty attending or- 
 dinary judicial proceedings. 
 
 The law has provided for securing 
 the attendance of necessary wit- 
 nesses by subpoena. 
 
 The rule of the Office is, that in 
 all cases the prior patentee or ear- 
 liest applicant for patent, shall be 
 deemed primd facie the first in- 
 ventor, thus putting him in the posi- 
 tion of a quasi defendant. 
 
 The later applicant, therefore, or 
 party complainant, must first take 
 testimony to show the date of his 
 invention, for which purpose a cer- 
 tain limit of time is allowed him, 
 after which, within another set 
 period, the prior patentee or appli- 
 cant must take the testimony in 
 support of his claim, and after the 
 closing of all such direct testimony 
 the party who first took testimony 
 may take rebutting testimony. 
 
 As the main object of each party 
 to an interference is to establish a 
 date of invention earlier than that 
 proved by his opponent ; if, as under 
 the old rules, the cases to be proved 
 were left entirely in the dark till 
 developed by the evidence, the party 
 taking evidence last would have the 
 opportunity, which he might not 
 always scorn to use, to adapt his 
 proof to the emergencies of the case. 
 The late Commissioner of Patents, 
 Pisher, consequently established the 
 following beneficial rule : 
 
 Before declaring an interference 
 proper, a preliminary interference 
 will be declared, requiring each party 
 to file a statement under oath, giving 
 a detailed history of the invention. 
 The statement of each party re- 
 mains sealed till opened at an ap- 
 pointed time by the examiner of 
 interferences. If that officer then 
 determines that the respective state- 
 ments call for an interference, he 
 declares it. 
 
 If the party upon whom rests the 
 burden of proof— i. c, the latest ap- 
 plicant fails to file a statement, or 
 if his statement fails to overcome 
 the prima fade case made by the 
 respective applications — i. e., if the 
 date of invention given by the later 
 applicant should not be anterior to 
 the date of application by the earlier 
 — or if it shows that he has aban- 
 doned his invention, or that it has 
 been in public use more than two 
 years before his application, the 
 other party will be entitled to an 
 immediate adjudication of the case 
 
54 
 
 upon the record : unless a presump- 
 tion is created that his right to a 
 patent is affected hy the alleged pub- 
 lic use of the invention, in which 
 case the interference may be pro- 
 ceeded with. This latter proviso is 
 necessary because a determination 
 against the right of one man to a 
 patent cannot be made upon the ex 
 parte statement of another. A per- 
 son's ex parte sworn statement may 
 be allowed to determine the question 
 of his own right, but not that of the 
 right of another. It is further pro- 
 vided that if the earlier applicant 
 fail to file a preUminary statement, 
 he will not be allowed to present any 
 testimony going to prove that he 
 made the invention at a date prior 
 to his appUcation. 
 
 The preliminary statements are 
 not evidence for the parties making 
 them. 
 
 Under the present law and office 
 rules, then, cases of interferences 
 may be regarded as a fair and effi- 
 cient means of trying and determin- 
 ing questions of priority of inven- 
 tion, and a just ultimate decision 
 may be expected in every case, for 
 parties to such a case have the same 
 rights of appeal from the Examiner 
 to the Board of Examiners in chief, 
 and from that Board to the Com- 
 missioner of Patents in person, as 
 in other questions touching the 
 rights of applicants for patents. 
 
 As regards the cases in which 
 under the law the Commissioner 
 may declare an interference, they 
 include any and every case in which 
 
 there may arise adverse claims of 
 invention, whether by reason of two 
 or more contemporary pending ap- 
 plications for patents for inventions 
 altogether or in some material part 
 the same, or by reason of an appli- 
 cation for a patent or for a reissue 
 with a claim to something claimed 
 or clearly shown in any patent or 
 patents previously granted. 
 
 This power may be very benefi- 
 cially used to check what was at 
 one time a practice as common as 
 it is mischievous, that of reissu- 
 ing patents for the sole purpose 
 of so extending their claims as to 
 cover some feature of value in pat- 
 ents granted subsequently to those 
 sought to be reissued. 
 
 In the case of an interference 
 between an application for a patent 
 and a patent granted, the power of 
 the Commissioner extends only to 
 granting another patent to the ap- 
 pUcant, should he appear to have 
 been the actual first and true inven- 
 tor. He cannot recall or cancel the 
 prior patent. 
 
 His office is in its nature minis- 
 terial, and concerns only the grant- 
 ing of patents ; and his discretion- 
 ary, or, what may be termed his 
 quasi-judicial powers, therefore, are 
 confined to the consideration and 
 determination of such questions only 
 as concern the granting of patents. 
 His duty is to grant a patent to 
 whomsoever may appear to be the 
 true and first inventor of a patent- 
 able subject-matter, and justly en- 
 titled under the law to receive a 
 
65 
 
 patent therefor. In the execution 
 of this duty it is necessary for him 
 to consider and ' decide disputed 
 questions of priority of invention ; 
 hut with that and the grant or re- 
 fusal of a patent, in accordance with 
 his determination, his duty and 
 power end. 
 
 The power of annulling or de- 
 creeing the invalidity of patents, or 
 other public grants, is one of the 
 chancery powers of the courts of 
 the United States. 
 
 Consequently where, through the 
 issue of an interference in the Pat- 
 ent Office, or through ac^dent, there 
 are two or*more patents for the same 
 thing, of which only one of course 
 can be» valid, the invalidity of the 
 others can be authoritatively as- 
 certained and decreed only by a 
 court of the United States having 
 jurisdiction of such questions. 
 
 Under Section 58 of the Patent 
 Act : " Whenever there shall be in- 
 terfering patents, any person inter- 
 ested in any one of such interfering 
 patents, or in the working of the in- 
 vention claimed under either of such 
 patents, may have relief against the 
 interfering patentee, and all parties 
 interested under him, by suit in 
 equity against the owners of the 
 interfering patent ; and the court 
 having cognizance thereof, on notice 
 to adverse parties and other due 
 proceedings had, may adjudge and 
 declare either of the patents void in 
 whole or in part, or inoperative, or 
 invalid in any particular part of the 
 United States according to the in- 
 
 terest of the parties in the patent or 
 the invention patented. But no 
 such judgment or adjudication shall 
 affect the right of any person ex- 
 cept the parties to the suit and 
 those deriving title under them 
 subsequent to the rendition of such 
 judgment." 
 
 In the case of an interference in 
 the Patent Office between an ap- 
 plication and a prior patent, 
 should the applicant be adjudged 
 the prior inventor, the only measure 
 of justice which the Commissioner 
 has power to perform is, by grant- 
 ing a patent to the appUcant, to put 
 him in a position to avail himself, 
 should he desire to do so, of the 
 remedy presented by this section 
 against the prior patentee. 
 
 The point to be adjudged in a 
 case of interference is " priority of 
 invention." The general rule is 
 that he is in the eye of the law the 
 first inventor who has first perfected 
 and adapted the invention to use. 
 
 But this rule is subject to the 
 qualification that he . who first in- 
 vents, i. e., mentally originates, 
 shall have the prior right, if he were 
 using reasonable diligence in adapt- 
 ing and perfecting the invention. 
 Thus it is made by the statute a de- 
 fence against a patent, that the pat- 
 entee 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. 
 
 It has been held that the words 
 
56 
 
 "surreptitiously," or "unjustly," 
 as here used, do not necessarily im- 
 ply that had faith on the part of the 
 patentee must be shown to make 
 this defence available. But it will 
 be deemed that a patent has been 
 wrongfully obtained, when it is for 
 something which was in fact first 
 invented, by another than the pat- 
 entee, if the prior inventor was at 
 the time using reasonable diligence 
 in adapting and perfecting the in- 
 vention. 
 
 This reconciles the reference in 
 our patent law of the doctrine that 
 "he who is prior in time has the 
 better right" to the time of the 
 making of an invention, with the 
 general maxim that "the laws 
 serve the diligent, and not the sloth- 
 ful." A right oi priority must be 
 perfected by diligence. 
 
 The courts wiU not allow the plea 
 of "prior invention" to overcome 
 the title of a patentee whose patent 
 was obtained in good faith, unless 
 it be shown that the alleged prior 
 inventor had actually reduced his 
 conception to practice in a practi- 
 cally useful and operative form, or 
 that being the first to invent, he was, 
 at the time the 'patentee obtained his 
 patent, exercising reasonable dili- 
 gence to adapt and perfect the in- 
 vention. 
 
 A mere prior conception of an 
 idea, ending in experiment, and 
 never reduced to that practical 
 shape in which alone it can be use- 
 ful to the public, and can attract 
 public attention, will not suffice to 
 
 destroy the title of a patentee, who 
 being himself a lond fide original 
 inventor, has reduced the invention 
 to successful practice, and published 
 it by obtaining his patent. 
 
 By these judicially established 
 principles the Patent Oflice is guided 
 in determining the questions of 
 "priority of invention," in cases of 
 interference. 
 
 If the interference be between the 
 claim of an applicant and that of 
 a patentee, the primu facie presump- 
 tion is in favor of the latter, and 
 the burden is upon the applicant to 
 show that He was the first inventor, 
 and also that he had either actually 
 reduced the invention to a practi- 
 cally operative shape before the in- 
 terfering patent was obtained, or 
 that at the time it was obtained, he 
 was exercising reasonable diligence 
 to bring it into such shape ; and, 
 furthermore, it must appear that the 
 applicant has not unnecessarily de- 
 layed bringing his claim, but that 
 he has been reasonably diligent, as 
 well in bringing his application as 
 in perfecting his invention. If he 
 cannot show this, the first patent 
 will not be disturbed by the grant 
 of a second 
 
 Where the interference is between 
 independent applicants for patents, 
 there is not that strength of pre- 
 sumption in favor of either party 
 which the possession of a patent, a 
 vested right, creates : still there is 
 a presumption in favor of the earli- 
 est applicant, on the reasonable prin- 
 ciple that, in the absence of proof to 
 
57 
 
 the contrary, the first to seek the 
 benefit of the law must be presumed 
 to have the prior and better right. 
 This presumption goes no further 
 than to require that the later appli- 
 cant must first prove a date for his 
 invention anterior to the application 
 of his opponent, before the latter 
 need offer proof as to the date of his 
 invention other than that which his 
 appUcation affords. 
 
 The general pr^ciples applied to 
 the decision of priority, as between 
 applicants for patents, are the same 
 as in other cases. He will, as a rule, 
 be held the first inventor, entitled 
 to the benefit of the law, who being 
 bond fide an inventor first reduced 
 the invention to a practical form 
 beneficial to the public. 
 
 As to the evidence which will 
 sufllce to prove invention, the rule 
 would seem to be that the idea must 
 have been so far reduced to practice 
 as to have been Ulustrated or de- 
 scribed in a mode sufficient to en- 
 able a person skilled in the art to 
 which the invention may refer, to 
 make or practice it, without calling 
 for the exercise on his part of more 
 than the ordinary skill of his trade. 
 Less than this will not evidence a 
 matured, and therefore patentable, 
 invention ; such an invention as the 
 law will protect. 
 
 It will be seen that the question 
 of " diligence " has a most material 
 bearing upon that of "priority of 
 right in law," and this matter of 
 diUgence enters not only into the 
 reduction of an invention to prac- 
 
 tice, but into the making and prose- 
 cution of application for a patent, 
 wherever there is a question of right 
 between independent inventors. Es- 
 pecially is this the case where one 
 or otWfr of the disputants is in pos- 
 session of a patent obtained in good 
 faith : the right of such a patentee 
 will not be disturbed in favor of a 
 slothful inventor, prior in point of 
 conception, but who, after the grant 
 of the patent to his competitor, of 
 which as matter of public record he 
 in common with the rest of the pub- 
 lic is presumed to have knowledge, 
 has unnecessarily delayed perfecting 
 and adapting the invention to use, 
 and presenting his claim. 
 
 It has been found necessary to 
 spur the diligence of applicants for 
 patents even in cases entirely ex 
 parte by providing (Sec. 32) that all 
 appUcations for patents shall be com- 
 pleted and prepared for examination 
 within two years after the filing of 
 the petition, and in default thereof, 
 or upon failure of the applicant to 
 prosecute the same within two years 
 after any action therein, of which no- 
 tice shxill have been given to the ap- 
 plicant, they shall be regarded as 
 abandoned by the parties thereto, 
 unless it be shown to the satisfac- 
 tion of the Commissioner that such 
 delay was unavoidable. 
 
 If an applicant for a patent is not 
 satisfied with the justice of a de- 
 cision of the Commissioner of Pat- 
 ents, refusing him a patent, he may 
 appeal to the Supreme Court of the 
 
58 
 
 District of Columbia, which may- 
 reverse the decision of the Commis- 
 sioner. By the decision of the court, 
 duly certified to and recorded in the 
 Patent Office, the further proceed- 
 ings in that office are to be regula- 
 ted, and if no reasons are found for 
 refusing a patent, beyond those 
 raised and adjudicated in the ap- 
 peal, the Commissioner is bound by 
 a decision favorable to the appli- 
 cant to issue a patent. But as the 
 court is to consider the case, on the 
 evidence produced before the Commis- 
 sioner, and its decision is confined 
 to the points raised in the appeal, if 
 the Commissioner after such de- 
 cision finds good reasons, not in- 
 volved in the appeal, or depending 
 upon new evidence not formerly be- 
 fore him, for still withholding the 
 patent, it is within his discretionary 
 power so to do. In other words, the 
 decision of the court upon appeal, if 
 favorable to the applicant, is not 
 that the Commissioner shall issue a 
 patent, but that he shall not with, 
 hold it upon the grounds raised in 
 the appeal ; and it might seem that 
 as often as the Commissioner may 
 refuse a patent upon new groimds, 
 the applicant may appeal to the 
 court. The right of appeal to the 
 Supreme Court of the District of 
 Columbia does not extend to parties 
 in interference. 
 
 The remedy of an inventor against 
 what he may consider an unjust re- 
 fusal of a patent does not end even 
 here. 
 
 Section 52 of the act provides 
 
 that when an application for a pat- 
 ent is refused /or any reason what- 
 ever, either by the Commissioner, 
 or by the Supreme Court of the Dis- 
 trict of Columbia on appeal from the 
 Commissioner, the applicant may 
 have remedy by bill in equity in a 
 court of the United States having 
 cognizance of such cases under the 
 patent law ; and the court upon 
 notice to adverse parties, and other 
 due proceedings had, may adjudge 
 that such applicant is entitled, ac- 
 cording to law, to receive a patent 
 for his invention, as specified in his 
 claim, or for any part thereof, as the 
 facts in the case may appear. 
 
 This remedy bybiU in equity is 
 applicable to all cases where a pat- 
 ent may have been refused. 
 
 If the refusal has been on account 
 of an adverse decision by the Com- 
 missioner, in a case of interference, 
 the party in whose favor the Com- 
 missioner's decision was rendered is 
 entitled to notice, and to become a 
 party in the proceedings upon the 
 bill. Where there is no opposing 
 party a copy of the bill is to be 
 served on the Commissioner. 
 
 Proceedings under this section are 
 not in the nature of an appeal, and 
 are not to be governed by the evi- 
 dence in the case before the Com- 
 missioner, but they are original 
 proceedings, in which such original 
 evidence may be adduced as shall 
 be considered essential to arriving 
 at a just decision. 
 
 An adjudication in favor of the 
 appUcant authorizes the Commis- 
 
59 
 
 sioner to issue such patent as if 
 shall be decided the applicant is en- 
 titled to, upon the applicant filing 
 in the Patent Office a copy of the 
 adjudication, and otherwise com- 
 plying with the provisions of the 
 law. 
 
 It only remains now briefly to in- 
 quire as to the modes in which a rem- 
 edy may be had for the infringement 
 of a patent. 
 
 There are two ends which it is 
 generally essential to the interests 
 of a patentee he should have the 
 means of accomplishing by resort 
 to the courts, — a remedy for injury 
 from past infringement, and the 
 prevention of Infringement in the 
 future. 
 
 Damages for infringement may be 
 had by action at law in the Circuit 
 Courts of the United States, or 
 those District Courts exercising cir- 
 cuit court jurisdiction. And as a 
 check upon deliberate, wrongful in- 
 fringements, the courts are empow- 
 ered, "whenever in any such ac- 
 tion a verdict is rendered for the 
 plaintiff, to enter judgment thereon 
 for any sum above the amount 
 found by the verdict as the actual 
 damages sustained, according to 
 the circumstances of the case, not 
 exceeding three times the amount 
 of such verdict, together with the 
 costs. But this remedy at law is 
 generally quite inadequate to the 
 needs of patentees, since it does not 
 prevent further infringement by the 
 party sued, and for each new act of 
 
 infringement fresh suit must be 
 brought. For the purpose of pre- 
 venting further infringement, it is 
 necessary to resort to proceedings in 
 equity, which may be brought in the 
 same courts. Section 55 of the law 
 empowers the courts, upon bill in 
 equity filed by any party aggrieved, 
 to grant iryunctions to prevent the 
 violation of any right secured by 
 patent, on such terms as the court 
 may deem reasonable." 
 
 Injunctions are either temporary 
 or perpetual. A temporary injunc- 
 tion is one granted before a final 
 hearing of the cause, and may be 
 granted at the discretion of the 
 court at any time after the filing of 
 the bill, upon motion, of which rea- 
 sonable previous notice shall have 
 been given to the defendant, accom- 
 panied by copies of the affidavits to 
 be read in support of the motion. 
 
 A temporary injunction prohibits 
 continuance of the infringement 
 complained of in the bill until the 
 question of the complainant's right 
 under his patent shall have been 
 tried, or until further order of the 
 court. It is a summary proceed- 
 ing, in order to protect a patentee 
 against the irreparable injury that 
 might ensue to him by an unchecked 
 continuance of infringement during 
 the time necessary for bringing a 
 cause to final hearing. 
 
 But as it is a proceeding tending 
 to bind the rights of a defendant, 
 before a fair and full trial has been 
 had, and one which may work 
 great, ahd, as it may prove, unwar- 
 
60 
 
 ranted injury to the party enjoined, 
 the courts exercise the power with 
 great caution, and only where there 
 has been exclusive possession under 
 the patent for some years, with ac- 
 quiescence of the public in the pat- 
 entee's right, or where the patent has 
 been previously judicially sustained 
 after full trial at law or in equity ; 
 nor will the power be exercised if 
 the defendant by affidavits, rebut- 
 ting and overbearing the weight of 
 those of the complainant, can throw 
 reasonable doubt, on grounds not 
 theretofore adjudicated, upon the 
 patentee's title, or can indicate that 
 he is not a mere wrongdoer, but has 
 a good defence against the action. 
 The court in granting a temporary 
 injunction, may couple with the 
 grant such conditions, either on one 
 or on both sides, as under the cir- 
 cumstances of the case may seem 
 reasonable ; or, it may allow the 
 defendant to give security to keep 
 an account of profits from the use of 
 the invention, and this it will do, 
 where it appears from the circum- 
 stances that in this way the interests 
 of the patentee will be substantially 
 protected, while an injunction would 
 work disproportionate mischief to 
 the defendant. A temporary injunc- 
 tion will not be granted where it 
 appears that the patentee has not 
 been diligent in seeking his remedy, 
 but has allowed infringement to con- 
 tinue for a considerable period of 
 time without taking steps to pre- 
 vent it. 
 A temporary injunction may be 
 
 'dissolved at any time upon motion 
 of the party enjoined, made after 
 reasonable previous notice to the 
 complainant, and supported by aflEi- 
 davits showing good and sufficient 
 reason. 
 
 A perpetual injunction is one 
 granted upon a decree in favor of 
 the patentee upon full proofs and 
 argument, and its effect is to enjoin 
 the defendant from infringement 
 during the term of the patent. 
 
 Formerly it was the practice for 
 the court in equity, when an appli- 
 cation for an injunction raised dis- 
 puted questions of fact affecting the 
 patentee's title, to order a trial at 
 law, that these questions of fact 
 might be passed upon by a jury ; but 
 since patent causes, whether in law 
 or in equity, are cognizable in the 
 same court, and since it is competent 
 for the court in equity to consider 
 and determine all disputed points in 
 such causes, whether of fact or of 
 law, generally patent cases are now 
 so tried and determined, upon proofs 
 taken after the course in equity, be- 
 fore an examiner appointed by the 
 court. 
 
 The questions of fact arising in 
 patent causes are generally of such 
 a nature that they may be deter- 
 mined much more speedily, readily, 
 and satisfactorily by a judge than 
 by a jury, and under the present 
 law all the remedies which proceed- 
 ings at law might afford a patentee 
 for infringement of his right, he can 
 obtain by proceedings in equity, 
 while the latter will also afford him 
 
61 
 
 further remedy, very much more 
 complete and beneficial than he 
 could possibly obtain by proceed- 
 ings at law. 
 
 "Upon a decree being rendered 
 for infringement, the complainant 
 shall be entitled to recover, in addi- 
 tion to the profits to be accounted 
 for by the defendant, the damages the 
 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 in- 
 crease the same, in its discretion, 
 that are given by this Act to increase 
 the damages found by verdict in 
 actions upon the case." (Sec. 55.) 
 
 It is not necessary to sustain an 
 action for infringement, that the ■ 
 whole of the invention patented 
 should have been infringed, but . 
 remedy may be had for the infringe- . 
 ment of any material or substantial 
 part thereof claimed. 
 
 Actions for infringement may be 
 brought in the name of the owner 
 or joint owners of the legal title to 
 the patent throughout the whole of 
 the United States, or within the 
 particular part or portion of the 
 United States in which the action 
 is brought. A licensee cannot bring 
 such an action, except he join with 
 him the party or parties in whom 
 the legal title to the patent is vested 
 within the territory over which the 
 court wherein the action is brought 
 has jurisdiction. Actions for in- 
 fringement must be brought during 
 
 the term of the patent, or within 
 six years after its expiry. 
 
 CHAPTEE X. 
 
 THE STATUS OF FOEEIGN 
 IKVEN-TOES. 
 
 It is interesting and instructive 
 to trace the history of our patent 
 legislation as touching foreigners — 
 to note the narrow and exceedingly 
 exclusive spirit by which it was form- 
 erly characterized, and how, gradu- 
 ally but surely, this gave way to 
 more liberal and enlightened no- 
 tions, until at last the true policy 
 was perceived and adopted of treat- 
 ing all inventors alike, without re- 
 gard to nationality. 
 
 The original Patent Act of 1790 
 provided in general terms for the 
 grant of patents upon the petition 
 " of any person or persons," but the 
 Act of 1793 limited the right of ob- 
 taining patents to citizens of the 
 United States. The Act of 1800 
 extended the privilege to such aliens 
 as should, at the time of petitioning 
 for a patent, have resided within 
 the United States for two years, 
 and thirty-two years later the right 
 was further extended to "every 
 alien who, at the time of petitioning, 
 shall be resident in the United 
 States, and shall have declared his 
 intention, according to law, to be- 
 come a citizen thereof." The right 
 thus conferred upon resident aliens 
 was coupled with provisos and con- 
 ditions placing them on a less ad- 
 vantageous footing than citizens. 
 
62 
 
 Non-resident aliens were totally 
 excluded from the benefit of the law 
 until 1836, the Act of which year 
 returned to the wording of the origi- 
 nal Act of 1790, "any person or 
 persons," and embodied a distinct 
 provision recognizing foreign pat- 
 entees in a very peculiar way. We 
 refer to the regulation of fees for ap- 
 plication. The scale of fees adopted 
 was, for citizens or resident aliens, 
 who had made oath of their inten- 
 tion to become citizens, thirty dol- 
 lars ; for subjects of the kingdom 
 of Great Britain, five hundred dol- 
 lars ; and for all other foreigners, 
 three hundred dollars. This very 
 peculiar distinction could be vindi- 
 cated only upon the ground of the 
 expense to Americans of obtaining 
 patents in other countries, and espe- 
 cially in Great Biitain ; it appears 
 to have been forgotten that as this 
 expense was not a matter of any 
 discrimination between natives and 
 foreigners there, it did not warrant 
 such discrimination here. 
 
 The Act of 1836 further discrimi- 
 nated against aliens, by providing 
 that it should be a good defence 
 against a patent that the patentee, 
 if an alien at the time the patent 
 was granted, had failed and neg- 
 lected, for a period of eighteen 
 months, to put and continue on sale 
 to the public, on reasonable terms, 
 the patented invention or discovery. 
 
 The Act of 1842, which first pro- 
 vided for patents for designs, limited 
 the right to obtain them to citizens, 
 or aliens who, having resided in the 
 
 United States one year, had taken 
 the oath of intention to become citi- 
 zens. 
 
 So the law stood until 1861, the 
 Act of which year repeals all laws 
 then in force, "discriminating as to 
 the rates of fees between the inhabi- 
 tants of the United States and those 
 of other countries which shall not 
 discriminate against inhabitants of 
 the United States." 
 
 Finally, the Act of 1870 has, in a 
 still more liberal spirit, established 
 one rate of fees for natives and 
 foreigners alike, without regard to 
 reciprocity. 
 
 Furthermore, this Act, insomuch 
 as it repeals the Act of 1836, among 
 others, removes from foreigners all 
 obligation to put or continue on 
 sale their inventions for which they 
 have obtained American patents 
 since July, 1870. The Act also ex- 
 tends to ' ' any persons, ' ' irrespective 
 of nationality, the right, which was 
 previously limited to citizens, of ob- 
 taining patents for "designs." 
 
 The only right from which the 
 law, as it now stands, excludes non- 
 resident aliens is that of filing ca- 
 veats. The nature of this solitary 
 exception will be understood by re- 
 ference to pages 46 and 47, where 
 the character and object of a caveat 
 are explained. 
 
 For the information of foreign in- 
 ventors it is proper to draw atten- 
 tion to two features of the law — 
 which, though they be not features 
 of discrimination against them, are 
 much more likely to affect their in- 
 
63 
 
 terests, than those of native inven- 
 tors. 
 
 The first is; the provision that an 
 American patent, for an invention or 
 discovery previously patented or 
 caused to be patented in a foreign 
 country, 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 short- 
 est term. 
 
 The second matter is a rule of 
 evidence proceeding out of the law, 
 which makes patentable new and 
 useful improvements not known 
 or used by others in this country, 
 and not patented or described in 
 any printed publication in this or 
 any foreign country. It is conse- 
 quently held that, as a rule, the only 
 proof of prior invention abroad, ad- 
 missible to bar the grant of a patent, 
 or to invalidate a patent granted, is 
 a foreign patent, or printed publica- 
 tion. The only exception to this 
 rule is that which we have already 
 referred to — admitting oral testi- 
 mony to bring home to the party 
 against whom it is offered, a knowl- 
 edge of the prior foreign invention, 
 thus showing that his claim of origi- 
 nality is not a bond fide claim. It 
 is important, then, for the foreign 
 inventor to bear in mind that mere 
 oral testimony of the existence of 
 his invention abroad cannot be re- 
 
 ceived solely to establish priority of 
 invention ; that fi^'- this particular 
 purpose his available proof is limited 
 to a patent or a printed publication. 
 This limitation, of course, applies 
 to all cases of the existence of inven- 
 tions abroad, whether made by for- 
 eigners or by citizens of the United 
 States. 
 
 CONCLUSION. 
 
 At this point we close our brief 
 summary of the general features of 
 the Patent Laws of the United 
 States, and with it the treatise. 
 
 As far as was possible, we have 
 ranged the subjects together in such 
 a way as to produce a connected 
 review of the entire ground. Of 
 course, there are many special mat- 
 ters of law and doctrine respecting 
 patents which have not been touched 
 upon, specialties out of place in a 
 pamphlet avowedly devoted to a 
 grouping of information of a merely 
 general character. 
 
 As to those subjects which are 
 treated more at length, we venture 
 to express a hope that our endeavors 
 plainly and concisely to illustrate 
 the principles governing property in 
 invention, will not be altogether in- 
 effectual in throwing light upon 
 matters which have heretofore, by 
 so many minds, been but partially 
 and obscurely understood. 
 
 H. & C. H.