u>^ Protection OF I ndustrial Property A Popular Treatise upon the Laws and Rules Relating to Patents for Inventions. BY HENRY SCHREITER. NEW YORK. 1897. t Protection OF I ndustrial Property A Popular Treatise upon the Laws and Rules Relating to Patents for Inventions. BY / HENRY SCHREITER. NEW YORK. 1897. SECOND COPY. OXOIO Copyright, 1897. By Schreiter, Van Iderstine & Mathews. 3 5 | X/ UN* * CO., PRINTER*, 1 BOWLING GREEN A 6* tEAVER ST., N. T. 1^ PREFACE. THE progress and wide expansion of our industries is due not only to the rich resources of our country, the enterprise and relentless energy of our people, but also to a very great extent, to our efficient system of Laws for Protection of Industrial Property. This system is founded upon the broad and equitable principles laid down by the provident and farseeing framers of our Constitution. In framing of our Patent Laws manifold difficulties were encountered in the early years of our national inde- pendence. The then prevailing diversity of opinions, as to the policy of such laws, swayed from one extreme to the other and produced uncertainty in their administration. In course of time those conflicting views were harmon- ized, Congress enacted liberal and effective laws, and the Courts supplemented them progressively by clear, logical and comprehensible decisions. These laws now compose the structure of one of the most liberal and advanced Patent Systems of the world. Our laws, relating to protection of industrial and in- tellectual property, are as important as any other branch of the Laws of Property ; but among the presumptively more intelligent creators of this category of wealth are found many more of those who are devoid of even a rudimental knowledge of these laws, than among any other class of property holders. The purpose of this publication is to diffuse reliable information upon these subjects. Many of the articles, compiled here, were previously published in different periodicals, having been written from time to time during the years of my practice as occasions have arisen ; they are for that reason not less worthy of attention. They have all been revised and brought up to date. The States found it a sound policy to encourage the inventive activity of their citizens by enacting laws se- curing to them liberal privileges for the utilization of the results of their labors ; and, I trust, it will be found no less sound policy for all those most directly interested, to learn how to acquire the greatest share of the privi- leges created by those liberal protective laws. H. S. New York, March, 1897. INTRODUCTORY. THE term " Industrial Property" is used here to desig- nate the products of invention and discovery in arts and industries; it may, in a broader sense, be also applied to results of scientific researches, to literary and artistic inventions, to reproductable creations of scientific, literary or artistic labors, and, in a yet broader sense, to labels or marks, used to distinguish in trade industrial products of one producer from those of others. A " patent" does not create the right of ownership to an invention ; this right was created (and at the same time acquired) by the inventor by the act of his invention. An author or an inventor could not maintain his right of ownership against others (subsequent discoverers or those desiring to use his invention) without help of the government, and for this reason, to save to himself what is his own, he must necessarily obtain a Letters Patent. The mediaeval theories, from which all systems of laws governing industrial property were developed, assumed that a "King" as the "Lord" of all the land, is also the supreme owner of everything produced or acquired by his subjects. From this theory the prerogative (compe- tency) of the King to grant possession of land for use and utilization thereof, and to farm out commercial or manu- facturing privileges was deducted. These rights of the king were never disputed and they were originally utilized mainly for the purpose of enrich- ing the grantor's exchequer by exacting tributes for grants of exclusive privileges, and by taxation of manu- facturers and merchants generally. Owing, to the misuse of this privilege, the Parliament of England revolted, at the beginning of the seventeenth 6 century, against what was then termed monopolies, and after prolonged discussions and negotiations with the King, then James I., the memorable "Act of 1623," the first Patent Law in any country of the world, was drafted and adopted. This act recognized the prerogative of the Crown to grant exclusive privileges (patents) for manufactures, but limited it, expressly stating, that such letters patent or grants of privileges shall not exceed the term of fourteen years, and that they may be granted only to the first and true inventor of a new manufacture or of such improve- ments thereon, which at the time of granting such letters patent, shall not have been used by others or generally known. The phenomenal progress in all industries, that fol- lowed the enactment of this law in England, caused the enactments of similar laws in other continental states. All these laws have been from time to time modified and amended, to keep pace with the progress and devel- opment of new industries, and, subsequently, also laws for the protection of trade-marks and copyrights were added thereto. In the United States, as long as the states, composing the Union, remained English colonies, the same Statute of Monopolies was in force here as in England. After the Declaration of Independence, each of the original thirteen states claimed for itself the right to grant such privileges; there were, however, only a few "Letters Patent" act- ually granted during the revolutionary period. By the eighth section of the first article of the Consti- tution, adopted in 1787, the prerogative or power to grant Patents and Privileges was invested in the Congress of the United States. The legal conditions were thus well provided and it de- pends only on the diligence of inventors to secure to them- selves the results of their labors. THE PATENT LAWS OF UNITED STATES. THE laws relating to the granting of Letters Patent in United States are contained in the Revised Statutes. All patents, certificates, copyrights, etc., are issued in the name of United States and the jurisdiction in all cases arising from patents is vested in the Federal Courts. The United States Supreme Court has repeatedly- passed on the enactment of the Constitution regarding the grant of patents and also on the scope and constitution- ality of the laws enacted by the Congress for the purpose. From the findings of this court the following maxims may be gathered : The power of Congress to grant patents is general, but in the exercise of this power the Congress is limited to authors and inventors only. The powers of Congress to legislate upon the subject of patents are plenary ; it is in its (sound) discretion to de- cree conditions for granting of patents for inventions, their term and limitations. There is no restraint on the exercise of its discretion and no limitation of its right to modify any laws enacted for the purpose at any time. No State can legislate to limit or restrict in any man- ner the privileges of any, or of all inventors which the Letters Patent confer, and any act giving a State legisla- ture or to any executive organ such power, or any act at- tempting to limit the privileges of an inventor, is con- trary to the Constitution and void. The government is bound to grant the patent; it, however, exacts from the inventor, for the sake of public interests, a limitation of his right of ownership expressed in the stipulation, that after a certain time the patented 8 invention shall become public property. Thus a patent becomes a terminable franchise or privilege, vesting in the inventor, by the authority of the government, the exclu- sive right to utilize in every possible manner that particu- lar invention during a period stipulated by law. Such privilege or franchise, granted under a United States Letters Patent, consists of the exclusive right to make, use and vend the invention or the products thereof in the terri- tory of United States for a period of seventeen years. Congress created two kinds of patents : 1. Special Patents to be granted by special acts of Con- gress, and conferring wider or more exclusive privil- eges on individual inventors. 2. General Patents to be granted by the executive de- department of the government in accordance with the provisions of laws enacted for that purpose. The first act of 1790 authorized the Secretaries of State and of War, and the Attorney General (or any two of them) to grant to an inventor, whose invention they considered "sufficiently useful and important," the exclu- sive right to manufacture, use and vend his invention for a period not exceeding fourteen years. This act was amended three years later by relieving the Secretary of War from this duty, and authorizing the Secretary of State to grant patents, subject to the ap- proval of the patent to be granted by the Attorney Gen- eral. This act also stipulated the mode of procedure, penalty for inf ringments, and (for the first time) attempt- ed to define what constitutes an invention as distin- guished from mechanical skill. The patents were to be issued on the statements of inventors describing in general terms the alleged inven- tions, but no examination was made as to its novelty, and not until later (Act of 1800) were the inventors required to file with their applications an oath "that to the best of their knowledge" the invention was never before known or used in this or any foreign country. The same Act (1800) provided that a proof of previous use of an inven- tion described in the application shall prevent the issue of the patent and render any patent void that might have been granted. The patents were engrossed in books, kept in the Department of State at that time, and open to public inspection, but no list of such patents was ever issued. The publication of the lists of issued patents was provided by Chapter 162, Laws of 1832. From that time on, the An- nual Reports of the Commissioner of Patents were regu- larly published. Act of 1836 provided the fundamental organization of the Patent Office, rules for the conduct of its business, made the investigations as to the novelty of inventions mandatory and provided for filing of caveats, defining also the rights of caveators obtained thereby. Until 1839 no patents could be granted in United States for any inventions that were previously patented or used in foreign countries. The Act of 1839 stipulated that patents granted for an invention in foreign countries, shall not prevent the grant of a patent in the United States (to the same inventor) if he applied for it within six months from the issue of the foreign patent. The term of patents was invariably fourteen years, until the Act of 1848, authorizing the Commissioner of Patents to extend the grant for seven years longer. Until 1861 there was no limit to the time in which an application for a patent should be completed and no limit to the time in which the application should be prosecuted. The Act of 1861, which also created Patents for Designs, to be issued for periods of three and one half years, seven and fourteen respectively, according to the petition of the inventor, decreed that all applications for patents must be completed two years from the date of filing. The same act extended the term of patents to seven- teen years, abolishing at the same time the power of the Commissioner to extend the term, and ordered that every patented article shall be so marked "by printing or other- wise afiixing thereon" a label, containing the word "Pat- ented " and the date of patent. GENERAL RULES. The true and first inventor or discoverer of any new and useful art, a new and original design, a new com- position of matter, a new machine, new article or pro- cess of manufacture, or of any improvement thereon, not before known or used in this country, may obtain a patent, if he did not, prior to his application, abandon this invention to public use. The proof of prior (anticipating) knowledge or use of an invention must be practical and complete to defeat an inventor's claim for a patent. The identical invention must have been in use in this country, or patented, or de- scribed in a printed publication at home or abroad before the other was invented. If there be a reasonable doubt as to the identity be- tween a device previously known or used and the one sought to be patented, such doubt will be resolved in favor of the claimant of the patent. If a prior patent is cited as anticipation of an inven- tion, sought to be patented, it must be proven, that the patent cited was a public document, accessible to the public, issued for the same invention, for the same oper- ative means, and that the description or specification thereof is reasonably sufficient to place the idea of the inventor fully in possession of the public. Only such prior patent will defeat the grant of a patent for an in- vention subsequently made. A mere description of an invention in a previously filed application, on which a patent was not granted, or not issued, or the grant of a patent in a country, where patents are not publicly issued, will not prevent the grant of a patent to a subsequent inventor in this country. An inventor in this country can defy a foreign patent, that would otherwise bar the granting of a patent to him, 11 if he can prove that he completed his invention, in this country, before the foreign patent was published. In the same manner a subsequent inventor can defy a previous United States patent describing partly or wholly his invention, but not claiming it, if he can prove that he completed his invention before the application for the prior patent was filed. A prior publication cannot be cited as barring the issue of a patent, unless the publication was made in a work of public character, intended for general use and placed within the reach of the public. Such publication must contain a description of the same complete and operative device as described and claimed in the patent, in such precise and particular man- ner, that any person, skilled in the art to which it per- tains, may reasonably be expected to construct and operate it without necessity of an experiment or further exercise of inventive skill. The United States Patent Laws permit the sale of an invention for a period of two years prior to the applica- tion for a patent. Public use or sale of an invention in foreign countries is not at all a bar to the granting of a patent in the United States. It must, however, be borne in mind, that an inventor who consented to public use or sale of his invention and delayed his application for a patent for more than two years thereafter, will be presumed to have deliberately abandoned his invention to the public. It is not necessary that the sale or use should have been carried on continuously; it is sufficient to prove that an invention was used or sold once at a time more than two years prior to the application for a patent, to render a subsequently granted patent absolutely void. An invention once abandoned to public use cannot be recovered by the inventor. Such an abandonment can be inferred from the inven- tor's aquiescence in the use of the invention by others, or from his neglect to assert his claims, or even by his neg- 12 lect to make efforts to realize a personal advantage from the result of his invention. If a person secures fraudulently a foreign patent, he cannot thereby deprive the original, true and first in- ventor of his right to a Letters Patent of United States. A fraudulently obtained patent will be defeated on proper showing. An inventor could assign or sell his invention before he applies for a patent, but because his assignee could not obtain the patent, it is always required by those who in- terest themselves in an invention, that the inventor first procure the allowance of the patent, before a contract, conveying the invention, is made valid or operative. If an inventor dies before he applies for a patent, the administrator of his estate can make the application, and he is also authorized to prosecute an application which was filed by the inventor before his death. The same right acquires the assignee of an entire interest in an invention, if the inventor himself purposely neglects to prosecute his application or abandons it. If there are more than one inventor, they must apply jointly for one patent; no one of them is entitled to apply for himself alone or for himself and the others; on the other side, if two or more inventors produce, independ- ently of each other, the same invention, they cannot obtain a patent as joint inventors, but each of them must apply for himself, and they must contest their claims in proceedings, instituted to ascertain which of them is the first and true inventor. If in these proceedings is proven, that two of them made practically the same invention independently of each other at the same time, neither is the "first" and neither can receive the patent. In partnerships where one party furnishes the means to an inventor to produce a practical embodiment of his inventive idea, they may obtain the patent as joint hold- ers, (not as joint inventors). The proper course in such case is, that the inventor applies for the patent and with the application files an assignment of an undivided share 13 in the invention, and in the patent to be granted therefor, to the other party. Separate but dependent inventions may be joined in a single application, but separate or distinct inventions, capable of separate use, must be covered by separate patents. The grant of a patent conflicts with no public interest, either actual or possible, and for this reason the Courts are always disposed to construe the grant liberally in cases of conflict, in order to secure to the grantee all the advan- tages that it was intended, or might have been intended, to bestow upon him. A patent is held to be the prima facie proof of the in- ventor's rights. The courts hold invariably that any- one, disputing these rights, must prove the invalidity of the patent. The burden of proof in such cases is imposed upon the party asserting such state of facts. Under these conditions a Patent is the most reliable means of securing to an inventor and to his legal succes- sors and representatives, all the benefits, rights and privil- eges acquired by virtue of his inventions. A patent is like a certificate of ownership, assignable under law, and can be transferred for a valuable consider- ation, deeded, or bequeathed by will. The inventor or his legal successors and representa- tives can also issue licenses, territorial or otherwise, and for any term within the life of the patent, to others. Such licenses may authorize the grantees to exercise either some or all rights and privileges granted unto them. Thus an inventor, who may not be able to utilize his invention di- rectly, may derive benefit therefrom by disposing of his rights to others. PRELIMINARY EXAMINATION. s soon as an inventor succeeds in embodying his inven- tion into a practical form, lie should take steps toward securing to himself the result of his labors, even if the form is yet crude and capable of improvement. The first step in this direction is the lt Preliminary E amination^ as to the patentability of the invention. Th preliminary examination is always useful and necessar Inventors are very apt to assume, that the product ( their labors is certainly original and new, and yet in man cases the preliminary examination reveals that simile inventions or parts of the means used, are already covere by patents. [ If the preliminary examination discloses that patent have already been granted for similar inventions, or fo some parts thereof, the inventor will be benefited b; being thus advised of the means employed by his prede cessors. In most cases he will then be able to devis* some new means, excelling those disclosed in patents, anc to obtain patents for such improved devices. If the preliminary examination discloses that no pat ents have yet been granted touching his invention, he will with the assistance of a capable and reliable counsel secure for himself broad, generic claims for his invention, covering also all means, that might be used for the objecl of his invention. The more promising an invention, the more necessary it is for the inventor to exercise due care to preserve for himself the results of his work. The law is well settled on the point, that the true and first inventor is the one who first reduced the in- vention to practical utility, and to him the patent must 15 be granted, provided he did not neglect to apply for it and to prosecute his application with reasonable diligence. It is only natural to assume that other inventors work on the same field, and will, if successful, claim the patent. There are also always other people who desire to appro- priate the results of an inventors labors, and these do not discard even dishonorable means to obtain the informa- tion. An inventor should keep a diary and enter therein for his own information, any idea that may occur to him in the course of his work. He should also note carefully the progress and results of any experiments he undertakes, nd if he is obliged to disclose to others a part or the whole £ his invention, he should note this, and stating date and VLace of such disclosure, the full name and residence of he party or parties to whom he disclosed his invention .nd have this memorandum attested by their signatures >r by the signature of some disinterested witness. The inventor should keep his memoranda in chrono- ogical order and note everything of importance and inter- est regarding his invention. He should also illustrate by sketches as much as admissible, the means by which he produced his experiments, and the results thereof. CAVEATS. IN cases where the inventor knows or believes that others are working on the solution of the same prob- lem, or when he is obliged to disclose indiscriminately the whole or some part of his invention, he must secure to himself the priority of his inventive idea, and of the means whereby to attain the object of his invention, by filing a caveat. A caveat is in the nature of a notice given to the Patent Office of the caveator's claim as an inventor, to prevent the grant of a patent to a subsequent applicant for the same invention without due notice to the caveator. The right to file a caveat was originally restricted to citi- zens of United States ; since the conclusion of the Inter- national Union this right, however, is extended also to alien residents, who have resided for at least one year, next preceding the application, within the United States, and made oath of their intention to become citizens thereof. The application for filing of a caveat comprises a peti- tion, a specification and an oath. When the nature of the case admits of it, a drawing also must be submitted. The description must disclose, in a preliminary manner, the nature and object of the invention, and the means whereby the attainment of the object is contemplated or reached, as far as the inventor is at that time able to give. The object of the invention, and the distinguishing char- acteristics thereof, must be disclosed in a sufficiently pre- cise manner to enable the Patent Office to judge as to the probable interference with a subsequent application. The fee for filing a caveat is $10.00, and the term thereof is one year from the date of the filing. The petition requests that the preliminary description 17 of the invention be filed in the confidential archives of the Patent Office, and that the caveator be protected in his rights until he shall fully mature his invention. If the invention appears to be such as would be en- titled to be protected by a patent when completed, the preliminary description is accepted by the Commissioner, is sealed, the name of the caveator and a short statement of the nature of the invention indorsed on the envelope, and then filed in the confidential archives of the Patent Office. A certificate of the filing of a caveat is then mailed to the caveator, and proper notice thereof is given to the chief of the division into which the invention would be properly classified. The effect of the filing of a caveat is that if at any time during the term of the caveat some one else applies for a patent claiming substantially the same or similar invention, or a substantial part thereof, the action on such application will be suspended and the caveator will be notified thereof. The caveator will then be required to file within three months from the date of mailing to him of such a notice, a complete application for a patent for his invention as far as he shall have accomplished the same at that time. He will then be entitled to an interference with the con- flicting application for the purpose of proving his priority of invention. He will obtain the patent for the whole or for as much of his invention as he will be able to prove to have completed before the interfering application was filed. Certified copy of a caveat is admissible in evidence as proof of conception of an invention. A caveat can be renewed from year to year, but a new fee must be paid for each renewal. A caveat confers no other rights and affords no other protection except as here explained, nor is it assignable to others, though the invention for which it is filed may be so transferred. The filing of a caveat is advisable only in such cases as stated above, but never when an invention is practically completed. Patent Agents, who cannot be held responsible to any- 18 one for their acts, often unscrupulously urge an inventor to file a caveat, if lie does not possess sufficient means to defray the expenses of a complete application, or they try to induce him to file a caveat as a preliminary or pre- requisite step for procuring the patent. So important it is to file a caveat for an invention which is not yet completed, it should never be done am- biguously when an invention is practically completed. In this matter, as well as in all matters pertaining to patents, every inventor should consult a responsible attorney and abide by his advice. The prevailing notion that a caveat is a prerequisite of an application for a patent, or that a caveat may be used for the protection of an invention until the inventor satisfies himself that it is commercially valuable, is wrong and any such act would be very much adverse to the in- terest of the inventor. If, during the time after filing a caveat and before filing a complete application for a pat- ent, an inventor allows his invention to go into public use, his caveat will not protect him from abandonment. A caveat affords no protection in the nature of a patent; it only serves to establish the proof of priority of the conception of an invention. The filing of a caveat is practically an admission that the invention is not yet completed, whereas the filing of an application for a patent is legally assumed to prove that the invention at the time of filing the application was practically completed. It will be thus seen that by filing a caveat for a com- pleted invention (for the ulterior purpose of securing "patent protection" for an invention at less cost), an in- ventor practically places his claim to the patent in peril, because in a case of interference he would be rigorously held to his statement made in caveat "that at the time of filing of the caveat he considered his invention not yet matured and completed." THE APPLICATION FOR A PATENT. An application for a patent comprises a petition, a power of attorney, an explicit description (specifica- tion) of the invention, (where the case admits, also an illustration thereof by drawings,) and an oath or affirma- tion. The petition is addressed to the Commissioner of Patents and contains the formal request for the grant of the patent. The power of attorney may be included in the petition or written on a separate sheet, and in that case it must be separately signed by the applicant. The specification is a written description of the inven- tion and of the manner of making and using the same. It must contain in its preamble a concise statement of the nature and scope of the invention, and be written in such full, clear, and exact terms as to enable any person, skilled in the art, to which it pertains, to ascertain there- from of what the invention consists. The specification must explain precisely the invention for which the patent is solicited, the principles thereof and the manner in which these principles are applied. This must be done so as to distinguish clearly the inven- tion from what has been known heretofore. If the invention consists of an improvement of some known article, manufacture, or machine, this must be ex- plained in the specification and in the claims; the improv- ment must be strictly distinguished from the device, arti- cle, machine, etc., as previously known. The drafting of specifications and of the claims is of the utmost importance, because the scope and validity of the patent depend thereon. The specification must con- tain all that pertains to the invention, to the way of per- forming and using it, and nothing more. The inventor 20 may describe therein any other or all means and forms known to him of producing the object of his invention, but in such case he must point out the means and forms he considers best suitable. The description must be so complete that an expert in the art to which the invention pertains, will be able to produce the object of the invention by strictly following the specification, and without requiring any further in- structions. An imperfect specification renders a patent void. A failure to describe an essential element of the in- vention renders the patent void ; on the other hand again, nothing can be considered to have been patented unless it is explicitly described in the specification. Ambiguity in the specification is fatal to the patent irrespective of the intention of the inventor. The invention must be explained precisely, the prin- ciples thereof and the best mode of producing it, in such manner as to distinguish it from other inventions, and it must not contain more than what is necessary for this pur- pose. Any ambiguity or indistinctness in the specification is detrimental and often fatal to the claims of the inven- tor. His rights stand and fall with the specification. He cannot make any claim that is not founded upon the spec- ification, and all that he states and fails to claim becomes public property as soon as the patent is issued. The expression a I do not limit myself to the form of producing my invention as disclosed in my specification, etc." whereby unskillful or deceiving attorneys pretend to enlarge the scope of a patent, to cover, as they say, every possible form and every possible future improvement of an invention, is fraudulently misleading, because an in- ventor cannot subsequently claim or preserve for himself anything which he did not fully and clearly disclose and claim in his specification. The formulation of claims must be left absolutely to the skill, experience and honesty of the attorney. The claim or claims are to define the exact scope of 21 the invention and the extent of the protection afforded by a patent is interpreted from the claim. If claims do not define properly or exactly the inven- tion, the courts cannot construe it so as to give relief to the inventor. A patent stands or falls by its claims; even if the claims contain less than the actual invention, the courts will not admit to enlarge a claim by the description. Defect- ive claims are those that usually end with the words "sub- stantially as described and for the purposes set forth." A proper drawing of the claims requires not only a full understanding of the principles and means of pro- ducing the invention, but also knowledge of the laws and rules pertaining to their formulation, and experience in interpreting claims in judicial proceedings. The complaint is often heard that a patent for a use- ful invention, promising fair returns, cannot be utilized. The reason in most of such cases is that the patent is not sufficient to prevent infringement, and consequently no one cares to risk an investment on it though the invention is valuable. It seems almost ridiculous, and still it is true very often, that an inventor who spent months in patient labor and considerable sums of money to produce an invention, will sacrifice, or, at least, imperil all prospective rewards for his labor and expenses by entrusting his case to some irresponsible agent for the sake of saving a few dollars on the costs of procuring his patent. Patents are like contracts or deeds. As long as there is no dispute about it, any patent will do. If, however (and this is oftener the case the more valuable an inven- tion), any question is raised as to its scope or validity, it is subjected to a judicial test the same as a contract or a deed when the possession of property is disputed. Patents for valuable inventions, such as marketable articles, tools, machinery, etc, are subjected to closest scrutiny by op- ponents as soon as issued. If they are found defective, the whole imagined pro- tection is a nullity and competitors in trade appropriate 22 the invention, knowing that no attorney will ever be able to make out a case thereon to successfully stop such in- fringement or enforce damages. The value of such a patent will prove to be less than the paper on which it is printed. The correction of a defective patent is con- siderably more difficult and expensive than the procuring of an original patent in good shape; but a defective patent, once issued, cannot be corrected otherwise than through the process of re-issue. It is in the best interest of an inventor to employ a competent attorney for prosecution of an application for a United States Patent. When suing for an infringment of a patent, the complainant must show to the satisfaction of the court that all requirements of the law for grant of a valid patent have been complied with, otherwise his complaint would be defeated and eventually his patent declared void on account of such formal defects. The specification must be signed by the inventor (or by the administrator of his estate), and the signature attested by two witnesses. These signatures must be given in full,, and must be legibly written. A drawing must be furnished with the application for a patent whenever the invention requires or ad- mits it. There are special rales, formulated as to the manner in which said drawings must be executed, and rigidly enforced at the Patent Office. No patent is allowed until a drawing fully answering the requirements of these rules is furnished. The drawings are signed by the attorney and attested by two witnesses in a manner similar to the specification. In some cases, mostly in those of mechanical inventions or apparatus, the Patent Office requires the submission of a model embodying the invention. Such a model must clearly show every feature of the invention, but must not include anything else, unless it is absolutely necessary to show the operation of the invention. Models must be neatly and substantially made, of durable material (metal is preferable) and not larger than one cubic foot. Models of complicated machines may be made on larger 23 scale; for this, however, the permission of the Commis- sioner must be first obtained. If a model is made of wood, it must be painted or varnished, and all parts must be so connected that the joints will not separate under heat or moisture. The name of the inventor must be engraved or permanently affixed to the model. Models showing the manner of operation (working models) are always pre- ferable. When the invention pertains to a composition of new matter, specimens of such composition and of its ingred- ients, sufficient in quantity for the purpose of experiment, must be furnished at the request of the Patent Office. The inventor is required to make an oath or an affirm- ation "that he does verily believe himself to be the original and first inventor" of that for which he solicits the grant of a patent. He must also state "that he does not know and does not believe that the invention was ever before known or used, and whether the invention has (or has not) been patented to himself or others with his consent.' 7 If the inventor did obtain, or permited others to obtain, a foreign patent previous to his own application, he must also state the date and number of such patent. The oath or affirmation of an application for a United States patent may be made within the United States before any person authorized to administer oaths. If the applicant resides in a foreign country, the oath must be made before a minister, consul or commercial agent of the United States holding a commission for such a foreign country. PROSECUTION OF AN APPLICATION. BEFORE an application is entered on the files of the Patent Office an examination as to its formality and completeness is made and the first government fee, fifteen dollars, must be paid. An informal or incomplete applica- tion is not filed. All pending applications are preserved in secrecy and no information is given without written authority from the inventor. Such information as required to be given in contested cases, is strictly limited to the points and matters absolutely necessary for the proper disposition in the questions at issue. When the patent is issued, all records and documents pertaining thereto become public property. A filed application receives a serial number and is then classified according to the art to which the invention per- tains. The case is then taken up in its order for examin- ation as to the merits and priority of the invention. The examinations are made by examiners, charged with the duty to find oat and reveal whether the application conflicts with some other or with patents already issued, whether the claims are in accordance with the specification and properly drawn, and whether there are any other objections — formal or otherwise — against the grant of the patent. There is, of course, a diversity of character, disposition, and also in mode of action, in the large number of men on the examining force of the Patent Office. Extreme views may be found in the exercise of judgment upon applications in both ways; but as a rule, a very large majority of the examiners are favorably disposed toward the inventor and inclined to liberally interpret the laws and rules governing the cases. 25 There are some cases designated as 4< privileged, " and those are examined before the others; in some divisions longer time is required for actions but, on the whole, there is a marked disposition to expedite cases in the Patent Office. Applications properly presented and cor- rectly and diligently prosecuted receive fair consideration. In cases of conflict, arguments against an adverse decision of the office will receive due attention, the rights of in- ventors are generally recognized, and, in cases of doubt, the benefit thereof is given to the applicant. The result of the examination is communicated to the applicant's attorney. The examiner is bound to state fully and precisely the reasons, if he has any, against the appli- cation or against the claims submitted, and he must also cite the references on which he bases his objections, to enable the applicant to decide whether to insist on his claims or to modify them. In this matter the applicant for a patent must depend on and abide by the advice of his attorney, who will shape the course according to contin- gencies arising in each case. Amendments to a specification and to the claims are permissible while the application is pending. These amend- ments must however be pertinent and substantial. No new matter is permitted to be introduced into a case by an amendment. The application is disposed of in the first instance by the Primary Examiner. If he allows the claims as pre- sented, or if the applicant modifies his claims in accordance with the findings of the Examiner, the application is therewith disposed of finally, and the patent is issued in due course after the payment of the final fee. If the Primary Examiner finally rejects all or any of the claims to which the inventor considers himself entitled, and insists to have embodied in his patent, he may appeal from such adverse decision to the Board of Examiners-in- Chief, and eventually further to the Commissioner of Patents, and from his decision, if adverse, to the Court of Appeals of the District of Columbia. In interference cases the same order of appeals and the same course of proceedings are observed. 26 In these cases, however, the decision of the Commis- sioner of Patents is final, and the party defeated has only the recourse to a Court of Equity with a bill for an order commanding the Commissioner to grant and issue the patent desired. The grant of a patent may also be enforced by a Bill in Equity directed against the Commissioner of Patents, or by a Mandamus which is applicable in such cases where the Commissioner suspends or refuses the issue of an al- lowed patent. An appeal must be directed against all points of the decision upon which it is taken, and the prescribed fee must be paid when the appeal is filed. When the appealed decision is reversed, the case is re- amended to the Primary Examiner with instructions for proper action, and he is then bound to abide by the decision. ISSUE OF PATENTS. FORFEITURE OF ALLOWANCES AND RENEWAL OF APPLICATIONS. When the application is allowed, the case is passed to issue. The notice of allowance calls for the pay- ment of the final fee, $20.00, within six months from the date of such notice. If this final fee is paid in due time the patent is issued. Every patent must be dated on the day of its issue, and this date must not be later than six months from the date of the notice of allowance. All patents are issued in the name of the United States, sealed with the Seal of the United States, signed by the Secretary of Interior, and countersigned by the Com- missioner of Patents. The issued patent is delivered to the attorney of the inventor, or to him directly if so re- quested, and confers on the inventor and his legal suc- cessors or representatives the exclusive right to make, use and vend the invention, or the products thereof, throughout the United States and the territories thereof. If the final fee is not paid in time for the issue of the patent, the allowance (not the patent) will be forfeited. In such case, though the patent is not lost, it is placed in peril because forfeited applications are not entitled to interference, and consequently a subsequent applicant may obtain substantially the same patent. A forfeited appli- cation may be revived by a petition of any person, whether inventor or assignee, who has an interest in the invention for which the patent was originally allowed, within two years from the date of the allowance of the original appli- cation. The original petition, specification and oath may be used in such renewal application, but the government fee ($15.00) must be paid anew. The renewed application is subject to a re- examination like an original application — the claims are revised and may be restricted or declared in interference with another application or with a patent in the same manner as new applications. EXTENSIONS. THE term of a patent (17 years) cannot be extended except by a special Act of Congress. An application for extension of the term of a patent must be directed to Congress, and the applicant is required to furnish with his application a statement (under oath) of the value of in- vention, of his receipts and expenditures on account thereof, in this (and also in foreign countries, if he obtained for- eign patents), a certified abstract of title and a declaration under oath, setting forth the extent of his interest in the extension. If the application is favorably considered by the Congressional Committee on Patents, it is referred to the Commissioner of Patents for investigation and report thereon. In the proceedings thereupon instituted by the Com- missioner of Patents the application can be opposed by anyone interested in the matter, and the applicant must prepare himself to defend his case against all comers He must show that he has taken all reasonable measures to introduce his invention into general use, and that, without neglect or fault on his part, he has failed to obtain from the use and sale of the invention a reasonable remunera- tion for the time, ingenuity and expenses bestowed on the same and its introduction into use. Those who desire to oppose an application for an ex- tension of the term of a patent, must give notice thereof in writing before they will be considered as a party to the case. The proceedings in such cases are governed by rules similar to those established for conduct of cases in equity. FOREIGN PATENTS. THE question whether any and what patents in foreign countries an inventor should procure for his inven- tion, must be considered from the standpoint, whether the industrial and commercial conditions in a particular country are favorable to the invention. It is seldom possible for an inventor to work his invention in more than one country, and the usual practice is, to sell such foreign patents or to sell licenses under such patents. In many cases in our practice inventors have realized from the sale of their foreign patents capital to start the manufacture of their invention in this country; on the other hand, in some cases foreign patents procured heed- lessly may prove an unbearable burden. There is one plan, however, that most inventors, who have obtained United States Patents may safely follow with fair prospect of success and comparatively small risk. The commercial and industrial conditions in the United States, Canada and England are very much alike and it can be accepted as a rule, that any invention promising commercial success in the United States will also find ready disposition in Canada and England. The laws of Canada and England facilitate the procuring of what has been termed, "Pro visional Protection" for a period of nine and twelve months respectively at very moderate costs. By proper arrangement the terms of these "provisional pro- tections " can be made nearly concurrent with the term of of the United States Patent. The issue of this Patent gives the invention wide publicity in this and foreign countries, and if the provisional protections in Canada and England are procured, they can be disposed of for a fair consideration, if the invention is worked in United States 30 and some effort is made to introduce it in these countries. Provisional protection or caveats for inventions in foreign countries can also be procured in all British Colonies, in Argentine, Hawaii, Orange Free State, Switzerland, South African Republic and Russia. InBolivia, Ecuador, Lux- emberg, Norway, Russia, Sweden and Switzerland the government reserves to itself the right to buy and use an invention for which a patent is applied. Next to England, Germany, France and Belgium, and for some branches of industry also the southern and eastern Colonies of England, Switzerland, Denmark, Sweden and Russia, are to be taken into consideration as well promising fields for the utilization of inventions. Austria, Italy, Spain, Greece and the Spanish countries of Central and South America are less promising, and should be taken into consideration only in special cases. Inventors, whose United States Patents were issued, are besieged by circulars and letters of agents presenting to them glowing prospects for utilization of these and those foreign patents, and pressing them to procure such foreign patents, and to intrust them to such agents for sale. We cannot but warn inventors from undertaking anything in response to such importuning propositions. The mutual relations between the United States and foreign Letters Patent are complicated; inventors should not venture on procuring any foreign patents without the advice of their trusted and responsible attorney. An inventor who has previously obtained a foreign patent for his invention, is not debarred from securing a United States Patent for the same invention at any time after the issue of his prior foreign patent or patents, if the invention has not been in the mean time introduced into public use or on sale in the United States for more than two years prior to his application for the patent. In such case, however, the term of the United States Letters Patent is limited to the term of the shortest foreign patent, and would be rendered void and inoperative, if any of these foreign patents be allowed to lapse before its issue. If an inventor procures foreign patents while his appli- 31 cation for a United States Patent is pending, be must make a proper amendment to his application, stating the dates and numbers of any foreign patents procured during the pendency of his application. In such case the term of his United States Letters Patent will also be reduced to the term of the shortest foreign patent, and if after its issue any of such foreign patents are declared invalid or allowed to lapse, the United States Letter Patent will be simultaneously rendered invalid and inoperative. To enable inventors, citizens or residents of United States, to protect their inventions simultaneously in all countries having laws for protection of industrial property, the United States has entered (by proclamation of the President, dated June 11, 1897) into an agreement with the governments of the other countries forming the "Inter- national Union for the Protection of Industrial Property." Under this agreement an inventor may, after filing his application for a United States Patent, obtain certified transcripts thereof, one for each of such countries where he desires to protect his invention, and then, asking the benefit of the final protokol thereof, file these transcripts of his application in these countries, whereupon his inven- tion will be protected in all of those countries from the date on which his application for the United States Patent was filed, and in the same manner as if he had on the same day filed his application for those foreign patents. This beneficial agreement extends equally to mechanical as to patents for designs and to copyrights. PATENTS FOR DESIGNS. WHEKEAS the so-called "Mechanical Patents" are granted for the construction of a machine, the sub- stance of an article of manufacture, an instrument or de- vice, for a process, or the product of a process, Patents for Designs protect the outward shape or ' 'configuration' 7 of an article ; instrument, device, etc. The term " design," in the meaning of the patent law, is defined as the delineation of form, shape or figure of an article in the plane or section, or in both, and a "Design Patent" protects the production of the article in accordance with that delineation, form or shape, as expressed in the design. For this reason the claim in such a patent must always contain the reference, "as shown (in the drawing) and described" (in the specification). A design patent can cover also such modifications of a design, as would not affect its identity, or the elements of a design and their combination, if such combination produces the whole of the design. A design patent protects the reproduction of the design in every possible manner and of every possible material; it is immaterial whether the design is produced as an article of wood, metal or of some plastic or fibrous material, and it is also immaterial how the article is produced, whether pressed, cast, stamped, woven or carved, as long as the form or the shape of the article is produced as represented by the design. Changes in colors used in the reproduction of a design are immaterial. The "identity" of a design for the the purpose of the patent law is established by its impression on the mind of an ordinary observer, giving attention to it, as a purchaser of an article would give. If the resemblance appears to be 33 such, that the imitated article could be substituted for the one produced under a design patent, this imitated ar- ticle must be considered an infringement. A design to be patentable must be new and original. It must not have been known or used by others before, nor patented or described in any printed publication. For this purpose a design is always to be considered as an entirety. By an addition or rearrangement of details, whereby new elements are substituted for others or added to the design, a new design is produced, if the new re- production appears in its entirety differing from the origi- nal. A new design may also be produced by a combina- tion of old designs, but not by a mere aggregation of their elements. Such a combination, to be patentable, must show the exercise of inventive talent. Patents for designs are granted for the term of three years and six months, for seven or for fourteen years, as the applicant elects in his application, but a design patent, when once issued for a shorter term, cannot be extended subsequently. A complete application for a design pat- ent consists of a petition, with power of attorney, a speci- fication, a drawing or a photographic reproduction of the design and a statement under oath to be made by the in- ventor of the design, as to the facts required by law. In the petition must be stated for what term the pat- ent is desired, in other respects the petition and power of attorney are similar to those required in an application for a mechanical patent. The specification must describe the design, pointing out its essential features with reference to the drawing or its photographic reproduction. The statement under oath contains the assertion of the in- ventor upon his best knowledge and belief that he pro- duced the design by his own industry, genius, effort and expense, that the same was not known or used by others before his invention thereof nor patented or described in any printed publication. The procedure in the Patent Office upon such applica- tion is in substance the same as that in regard to applica- tions for mechanical patents. The patent is also issued 34 in the same manner and the grant confers upon the pa- tentee the exclusive privilege to produce the design or to apply it to any article to which it is applicable, and to use and sell the article within the territory of the United States. A design patent can be used to protect an article of manufacture, a bust, statue, alto relievo, bas-relief, a pat- tern for printing or weaving, an impression, ornament, print or picture to be printed, pressed, painted, cast or otherwise produced on any article of manufacture. Design patents are sometimes resorted to as means of protection for improved articles or devices which cannot for some reason be covered by a mechanical patent. Though this affords a sufficient protection where the shape of the device or article is the main feature of its utility, still such pro- tection is limited. What constitutes an infringement of a design patent and the penalty therefor is defined in the amendatory Act of Feb. 4, 1887, U. S. Ev. Stat. 24. The infringement consists in applying the patented design or any imitation thereof to any article of manufacture for the purpose of sale, or in selling or exposing for sale of an article, to which the design was applied. The infringer is liable in the amount of $250.00 if the profit, derived by such infrin- gement, shall be less than that sum, and if the profit should exceed the sum of $250.00 the infringer is further liable for the excess of such profit over and above the sum stated. The owner of the patent can recover the full amount of such penalty in any Circuit Court of the United States, having jurisdiction in the premises. MARKING OF PATENTED ARTICLES. ALL producers of patented inventions and dealers sell- ing such products are required by law to mark every such article before sold or exposed for sale with the word "Patented" and with the date of the patent. This mark- ing is necessary to give the public a notice of the fact that the article is protected by a patent and that consequently it cannot be reproduced by the purchaser. Where the the mark cannot be affixed to or produced on the article itself, the requirement of the law is complied with if the mark is printed on a label attached to the article, or affixed upon the case wherein the article may be contained. It is very important to strictly obey these provisions of the law, because no damages could be obtained for in- fringement of a patent, if it be proven, that articles man- ufactured under the patent were sold without the required mark. The patent law also forbids any person other than the owner of the patent, or those manufacturing under his license, to mark any imitation of the patented article as "patented," to affix thereon the name of the inventor or any other mark calculated to deceive purchasers, or any mark whatever tending to show, that the article was man- ufactured under the patent. Marking of articles that are not protected by a patent is also prohibited. Inventors or manufacturers of articles for which a patent was applied for, but not yet granted, may mark such articles with the words "Patent Application filed" adding thereto the date and Ser. Number of the applica- tion, if they wish to protect themselves against presump- tion, that the article was put in use before the patent was applied for. Such protection is very important in many cases. The marking of articles with the words "Patent 36 applied for" is insufficient for any practical purpose, and is so much misused for fraudulent purposes, that honest in ventors should abstain from using it. The penalty for not marking patented articles is the loss of the privilege afforded by the patent ; the penalty for fraudulently marking articles manufactured either in infringement of a patent (imitation) or of articles not patented at all, is a fine of $100.00 and costs. The fine may be recovered by any person in an action to be insti- tuted in a Circuit Court of the United States, in whose jurisdiction the offense was committed. The prohibition of and the penalty for fraudulent marking of articles as patented is founded on the princi- ple that the right to mark articles produced under a pat- ent is one of the privileges granted to an inventor and obligatory upon him. An unauthorized marking of an imitated article is a fraud on the inventor, whereas the marking of an unpatented article is a fraudulent imposi- tion on the public, because the fact that an article is pat- ented is an indication to the public of its merit, tending to increase its value and to promote its sale and use. INFRINGEMENTS ON PATENTED INVENTIONS. WE have already stated that a patent does not create the right of ownership in an invention, this right being created and at the same time acquired by the in- ventor by his act of original acquisition, and that the in- ventor would be protected in his right of ownership in the invention under common law. Such protection, how- ever, as the common law affords is inadequate for utilization of industrial property. For this reason the inventor must obtain a patent for his invention to secure to himself the special protection of his right afforded to him by the Pat- ent laws. If the inventor would not procure a patent, he would be obliged to keep his invention in secrecy to save it from abandonment; he could not use it publicly nor sell the products thereof, and of course, in such manner could not obtain adequate reward for his labors. The only protection that common law affords against wrongful alienation of an invention is the right of the in- ventor to maintain it in secrecy. It grants to him also the right of recovery against such persons who by force or fraud obtain the possession of his secret. When how- ever the inventor sells the product of his invention, he conveys thereby to the buyer the right of using it to his best advantage, and in any manner that he may choose. The reproduction of any not patented article is not pro- hibited by law, consequently everybody, to whom an in- ventor would sell the embodiment of his invention, could reproduce it and use and sell such reproductions at will, if able and willing to do so. By procuring a Letters Patent the inventor obtains a privileged position not only against imitators but also against rival inventors. Of this privilege he cannot be deprived except by due process of law. The patent grants to him an exclusive right (monopoly) "to enjoy without loss, diminution, or control by others" the results of his inventive acts. The patent confers on him the exclusive 38 right "to make, use and sell" tho product of his inven- tion, thereby abrogating the common law right of all others for the full term of the patent. No one else but the patentee, his heirs or assigns, can obtain — except by license — the right to make, use and sell the patented in- vention, nor anything containing a material or substantial part thereof, and nobody can obtain another patent for the same invention. The Patent Law also provides ample and appropriate remedies for the holder of a patent for any acts of others, tending to encroach upon his privilege or monopoly. The inventor is protected against violation of his exclusive privilege, and also against malicious injury to the repu- tation of his patented invention. The injury to the rep- utation of an invention is called "a slander" and the inventor can by an action at Law in a State Court having jurisdiction, recover adequate damages for such a wrong. Against unauthorized use of the invention in violation of his exclusive privilege the inventor can protect himself by an injuction to be obtained from a Federal (Circuit) Court having jurisdiction in the case. In the same Court he can recover adequate damages and restitution to him of all profits that an infringer did or might have obtained through the infringement of his patent. In these proceed- ings his patent is considered as prima facie proof of his right. The patent grants the exclusive right "to manufacture, use and sell" the product of an invention, and therefore, whoever undertakes, without first obtaining the inventor's consent, to manufacture or to sell or to use the patented invention, violates patentee's rights, and is liable for the consequences thereof. It is not necessary that the whole of an invention be produced, sold or used; any product, containing a substantial or material part thereof, is also an infringement of the patent. It is not necessary that all of these three acts be committed by the same person to constitute an infringement: any one of these acts, com- mitted in the manner specified in the law, constitutes an infringement for which the party will be held responsible. THE SCOPE OF A PATENT. THE extent of protection afforded by a patent and the latitude it allows for changes or modifications in the production or use of the invention is termed the u Scope" of the patent. The wider its scope the more valuable the patent. It is more important that a patent should safely protect all important features of an invention than to allow wide latitude for changes or modifications in pro- ducing it This, however, should never be neglected when it can be done, because in practical utilization of an invention the product may be vastly improved by chang- ing or modifying some part of its construction. Some inventors believe that the larger the number of claims appended to a patent, the better protection it affords. This may be true in some cases, but in most cases it will be found wrong policy. The Commissioner of Patents called attention to this practice, in one of his annual reports. He designated it as "deplorable." The report cites instances wherein the "claim craze" was practiced to great detriment of the rights of inventors, patents for original inventions having been so limited by a string of specific claims, that it would have been absolutely impossible to change or mod- ify even a single part of the construction without vio- lating some of the claims. It is seldom possible to draw a large number of claims except by most directly specify- ing as essential all minor features of the embodiment of an invention, which are often without any importance what- ever. By inserting such claims in his patent the inventor does not enlarge the extent of his protection, he merely burdens himself -with restrictions that in many cases prove fatal to the utilization of his invention. A patent to afford substantial protection must not only cover the invention as a whole and the construction of new 40 essential parts, but also such combinations of elements as co-operate for the production of the object of the invention. But this should not be exaggerated for the mere purpose of enlarging the number of claims. Whatever is claimed specifically is held to be considered by the inventor essen- tial to the end or object of his invention. His rights are defined by the terms of his claims. If he claims inessen- tial parts, or inserts claims, containing such inessential parts in combination with others, he cannot discard these parts or combinations in practical production of his inven- tion; he would thereby imperil the validity of his patent. Nor can he complain of an infringement, if someone else produces the object of his invention leaving out such inessential parts. From this explanation it appears clearly, that one broad (basic) claim is preferable to an indefinite number of specific claims covering some particular features or de- tails It will seldom be possible, except in patents for a simple article or for a single improvement, to embody all features of an invention in one claim ; the law also per- mits a repetition of a claim in different forms of lan- guage, to more clearly express its meaning; but numerous specific claims are as a rule more detrimental by limiting the scope of a patent than beneficial in protecting against infringement. The question is often heard, whether a patented inven- tion must be produced exactly in the same shape as shown and described in the patent. The answer to this question is always dictated by the specification and the claims of the patent, and is also a test of its quality. A good pat- ent protects the invention "as shown and described" and also its permissible modifications. A weak patent is either one having insufficient claims to protect the invention "as shown and described" or one having specific claims point- ing out particularly as essential features of the invention almost every screw and every dent. The one will not protect against infringement and the other will not permit any deviation from the shape or arrangement of parts of the invention described in the patent. CORRECTION OF DEFECTIVE LETTERS PATENT. THE right of the inventor, and the scope of protection afforded to him by Letters Patent, is distinctly de- nned by the language of his specification and claims as construed by judicial authorities. In early times there was no remedy provided for an inventor whose Letters Patent had been found invalid by reason of faulty or defective specification or by reason of faulty or defective claims. In the course of time the number of cases in which honest inventors were defeated and deprived of their rights through ignorance, carelessness or downright dishonesty of agents, to whom they intrusted their cases, was so large, that Congress recognized the necessity to amend the Patent Law, (Acts of 1832, 1836, 1837, 1870 and of 1874) so as to facilitate correction of defective patents. Such a correction may now be effected through a "Disclaimer" or through a Re-issue. Clerical errors, as some times occur by mistake of the employees of the Patent Office, are readily corrected upon application, when discovered and verified. A material or substantial part of an invention, described in a defective patent but not claimed therein, may be secured subsequently in a separate patent if such part is patentable in itself. DISCLAIMERS. WHEN an inventor obtained a United States patent wherein, through inadvertence or mistake, and without any fraudulent or deceptive intention, he claimed more as his invention than he had a right to claim at the time when his application was filed, his patent, which would otherwise be void by reason of excessive claims, . 42 may be restored to validity as to that part, which is truly and justly his invention, if such part is a material or sub- stantial part of the contrivance, by "disclaiming" that to which he was not legally entitled. This may be done by such inventor, his legal successor or representative, whether he or they are holders of the whole or of only a part of the patent. A disclaimer is recorded in the Patent Office on payment of a fee of $10.00, and is then con- sidered as a part of the original specification. Such disclaimer shall be attested by at least one witness, and disclaim all such parts of the invention which should not have been claimed originally. A disclaimer is thus the proper remedy when the claim or claims of a patent embrace more than the actual inven- tion disclosed at the time when the application for a patent was made. It is based on the theory, that the in- ventor thereby relinquishes what he erroneously or inad- vertently claimed as his. A disclaimer, to be valid and effective in saving a patent (that otherwise would be void), must be made as soon as the inventor discovers, or is made aware by others, that his claim exceeds that which he actually invented. RE-ISSUES. A PATENT defective in specification or in claims, or in ** both, can only be corrected by a re-issue, and only then if such defects resulted from inadvertence, accident or mistake. The invention shown and described in such a defective patent but not fully claimed therein, cannot be subsequently claimed by the same inventor in a separate patent. The proper remedy in such cases can be obtained only by an application for a re-issue of the original patent. Such re-issue can be procured by the original patentee, his legal representatives, or by the assignee of the entire inter- est, whenever the original patent is found to be insufficient or inoperative. In the proceedings it must be proven be- yond any doubt, that the defects are not due to any fraudulent or deceptive intention. If the original inventor is living at the time, he must 43 himself make the application, sign and swear to the speci- fication, and if the patent passed in the possession of an assignee, a written consent of such an assignee must be obtained and filed with the application. The original patent must be surrendered with the application. In the application for a re-issue all the defects or insuf- ficiencies of the patent must be distinctly stated and elabor- ately explained. In regard to every one of the stated defects, it must be particularly specified, how the mis- takes or defects arose, and why they have not been previ- ously discovered. The applicant must make an oath of all the facts required to substantiate the claim for a re-issue. The specification must not under any pretext, contain anything more or new beyond the scope of invention dis- closed in the original application, but valid claims can be made to include such parts of the invention as the original patent failed to cover. With the application for a re-issue a fee of $30.00 must be paid and a new set of drawings filed. The draw- ings must in substance and scale conform to the drawings filed with the original application. A re-issue patent is limited to the term of the original patent, and is also subject to all such limitations by reason of co-related foreign patents, but every patent, or sub- division of a patent, issued or re-issued for the whole or for a material part of an invention, will have the same effect and operation in law on the trial of actions, and in the cases of re-issue for any causes thereafter arising, in the same manner as if it had been originally issued in such amended or divided form. In acting upon an application for a re-issue, every claim presented, even those submitted in their original formulation, are subject to re-examination, references and restrictions. The application for a re-issue may also be involved in interference with a new, subsequent applica- tion for the same or similar invention, either then pend- ing or subsequently filed by another inventor. The applicant for a United States Patent might have included in one application an invention which can be 44 divided into independent parts, as, for instance, a machine capable of different uses, or an invention compris- ing a process and the product of the process, or an article of manufacture, and the like. Such applicant may divide his application before the original patent is issued, and upon payment of the required fees have separate patents issued for each selfcontained part of his invention, or he may apply for separate re-issues for such parts thereafter. This is done in cases where the inventor desires to retain a part of his invention, or use it for one purpose, independently of another which he can or desires to sell. The granting of such request is within the discretion of the Commissioner, whether the request is made in the original application or in an application for a re-issue. In every such case the specification and claims are subject to revision and restriction in the same manner as in original applications. ASSIGNMENT OF PATENT— TRANSFER OF RIGHTS AND PRIVILEGES. ALETTEKS Patent of United States is assignable by a proper instrument in writing. The assignee of the whole right, title and interest in the patent acquires by the assignment all the rights granted or intended to be granted to the inventor. If the patent is assigned while the application is yet pending, or before the patent is issued, the patent is issued to such an assignee (or jointly to him and to the inventor if only a part is assigned) if the assignment contains a request to that effect and is recorded before the final fee is paid. An "assignee" may hold the whole or only an un- divided part of the right, title and interest in a patent; his right is acquired by the assignment of the inventor; it includes all privileges and extends to every part of the United States. He may make, use and sell, and grant to others the right to make use and sell the invention in any part of, or within the whole, territory of the United States. The assignee of an undivided part — no matter how small, or whether the assignment was made before or after the grant — is a joint owner with the inventor, grantee or subsequent holder of the patent. Joint inventors or joint grantees (inventor and assignee or joint assignees) are also joint owners (tenants in com- mon) of the patent. Joint holders of a patent are not necessarily partners; such partnership must be expressly stipulated in a contract. The rights of joint holders are not limited territorially and include every privilege grant- ed, or intended to be granted by the patent. Every one of such joint owners may make, use and sell the invention, 46 and may also grant licenses to third parties without re- sponsibility to the other co-owner or co-owners of the pat- ent, if there is not an agreement between them, limiting their individual privileges. Every assignment, or any other instrument affecting the title to a patent, is required to identify the patent by number and date, and to be duly recorded in the Books of Transfers of Patents in the United States Patent Offices within three monts from the date of execution and deliv- ery thereof, otherwise it will be void as against all sub- sequent holders or bona fide purchasers for a valuable consideration without notice. A license, granted by a patentee, an assignee or joint owner of a patent may confer upon the " licensee" a limited or exclusive right and either for the whole or for some specified part of the territory of United States. This right is determined and limited by the instru- ment. He may have all rights granted by the patent or only some of them, such as the right to make and use the patented invention for himself, or he may have the right to make it and sell it to others; or he may have only the right to manufacture but not to sell, except as stipulated in the license. His rights may be absolute or may depend on his discharge of obligations stipulated in the contract. Such grants or " licenses" do not require to be recor- ed, and are not affected by subsequent transfers of the patent, unless the license was granted conditionally and was made revocable by a subsequent holder of the patent. A mortgagee holds the patent as a security for a loan or other obligation. He may become the owner of it or of the part mortgaged, as stipulated in the mortgage. CONSTRUCTIVE LICENSE. THERE are certain acts and omissions defined in Patent Law and in the Decisions of Judicial Tribunals which imply or constitute a license (or prove the acqui- escence) of an inventor granting to others the right to exercise or enjoy some or all of the privileges granted to him by the patent. One form of such implied license is the sale of the patented article (or other product of an invention) with- out specific restriction. The purchaser of such article or product without any special restriction from the inventor acquires the right to use and to sell it again. This impli- cation of a license is founded in law. If the inventor or patentee desires to restrict the purchaser in this right, he must make it expressly the condition of the sale that the product of his invention is not to be sold again by the purchaser. He may also stipulate that only the purchaser alone shall have the right to use the article, and he may also exact a nominal royalty beside the purchasing price, as compensation for the right of use. This provision is very important in cases where the object of the invention is a manufacturing process or an automaticaly working machine. The purchaser of a patented apparatus or machine ac- quires the right to reproduce such parts of it as may be broken or worn out in use; but the question is not yet finally settled, how far this right can be exercised, namely whether the purchaser may carry on the process of repro- duction so far as to reproduce successively the whole machine or apparatus, If the inventor of an apparatus or of a machine pro- duces such apparatus or machine for some one before he applies for a patent, he confers thereby upon this party a 48 free license to use this apparatus or machine. The subse- quent grant of a patent to him will not invalidate this license nor give him a right to demand a royalty for the use of such apparatus or machine. If an employee produces an invention of the material and with the tools of his employer, the employer acquires thereby the privilege to use that invention in his factory. The inventor will have no claim to any compensation for such use, nor will he be able to restrain his employer from such use after he procures the patent, regardless whether he produced his invention before or after he applied for the patent. Such license of an employer is only personal and not transferable, whereas the license acquired by pur- chase without notice or restriction is transferable to others, the right to use is however dependent on the possession of the original apparatus or machine. The employer of an inventor has no legal or equitable claim to any invention made by his employee during the time of his employment with him, if the employee was not expressly hired to produce such invention or if the em- ployer violates such an agreement. If an employer contracts with his employee and pays him for exercising his inventive talent, he acquires an equitable interest in any invention that the employee pro- duces during such time, and may demand the assignment of a patent granted therefor. If a co-partner in business produces an invention, using the co-partnership resources for the purpose, the co-partnership acquires thereby an implied license to use this invention for the benefit of the co-partnership. Such license is terminated by dissolution of the co-partnership. INVENTION. AN INVENTION is the collective product of an in- ventor's talent, his knowledge of scientific or mechan- ical principles, and of his skill in devising the " means" wherewith to carry out (reduce to practice) his inventive idea. An invention thus consists of the conception of an idea and of devising (or adaptation) of means whereby the idea is realized in practical manner. The mere conception of an idea is not in itself an invention; the devising of means, whereby to produce the object of an inventive idea, is, for practical purposes and results, the more important part of an inventive act. There may be two or more inventions developed from one and the same inventive idea. A steam engine, a gas machine, an oil engine, a compressed air motor, etc , are each a different invention, but they all originated from one and the same inventive idea — to transform into work the expansive power of elastic gases. Such examples are very numerous in all industries. Improvements in the means for producing the object of an inventive idea may also constitute an independent invention. Such improve- ments prove often to be more important than the original invention. The most notable instance of such inventions is the substitution of the screw propeller for paddle wheels in propelling vessels. No invention should be discarded as of too small im- portance, and no inventive idea should be given up if the inventor does not succeed readily in producing the object of his invention in practical form. It is not necessary that the inventor should have him- self conceived the primordial idea of the invention. He may have received hints or advice concerning the object of the invention from others; if he devises the means and 50 succeeds first in embodying his idea of these means in a useful and practical form, he is the first and true inventor, and as such he is entitled to the patent and to all rights and privileges arising therefrom. This maxim is not to be so construed, that a practical mechanic would have a claim to the patent if he produces in practical form an invention as directed by another who conceived the idea, even if the practical mechanic is re- quired to exercise his skill (not his inventive talent) in producing the parts designated to carry out the idea of the original inventor. In such cases the practical mechanic does not have any right to claim even a share in the pat- tent. If, however, the efforts to produce the " means" as directed by the originator of the inventive idea prove futile, and he gives up his experiments, then the practical mechanic, if he starts to devise the u means" and succeeds therein, then he is the true and first inventor of what he accomplishes, and is entitled to the patent. The fields of inventions are many and their extent is practically unlimited. Every intelligent worker, turning his attention to devising of means, wherewith to improve his tools, machines, the process of manufacture, the article produced, or the apparatus used for the purpose, will by diligent exercise of his inventive talent, and guided by his experience in the particular trade, succeed in devising valuable improvements. He will improve the manufac- ture or simplify the process or improve the tools and machinery used, thereby saving labor or time. The widest range for the exercise of inventive talent is offered in the production of new articles of manufacture in all lines of trade, especially of articles and implements for general use. The variety of such articles of manu- facture is very large, and so is the number of inventors who achieved prosperity by inventions of this kind. Though this field of inventions is very promising as to the financial results, inventions pertaining to improve- ments in tools, machines and of industrial processes are as a rule yet more remunerative. In many instances the invention of a single improvement in a machine or in a 51 tool secure to the inventor a well paying position besides a source of revenue from royalties and other fees. An invention, to be patentable, must be complete, operative and actual; it must also be new and useful. It must be the product of the exercise of inventive talent, must involve something more than what is obvious to persons skilled in the art to which it relates. The exercise of inventive talent must be apparent as distinguished from mechanical skill. An invention is not always necessarily a new machine, a new article of manufacture or a new process; it may be an improvement on what is known or used. For example, an improvement of a machine, whereby some parts of the machine are dispensed with and the remaining re-arranged so that they will perform the same work, constitutes a patentable invention; the same an improvement, whereby some new parts are substituted in a tool or machine, pro- ducing either more or better results, or a combination of devices or parts, however well known in their applications, whereby some new results of their co-operation are obtain- ed, would also constitute a patentable invention. The adaptation of an old device for a new purpose constitutes an invention, if the old device is not used in the same manner as it was known before. For instance: a ratchet wheel and a pawl are well known machine elements; to use them for imparting an intermitent motion to a shaft would not constitute an invention, because this is a known use of the combination; if, however, this device be introduced in a machine for some new purpose, for instance, for governing or reversing the motion of a screw or roller, such combination of the device with the other co-operating parts in the machine would constitute an invention. A mere aggregation of known elements or a re-arrange- ment of a combination with no showing of a new and useful result, does not constitute an invention, nor does the discovery of a mere elementary or theoretical principle. But a demonstration of such a principle in practice as ap- 52 plied to some art, machine, manufacture or composition of matter, would constitute a patentable invention. The application of an inventive idea must be new and not known or used before; it must be " created" by the inventor. It is immaterial whether the practical embodi- ment of an invention is simple or complicated, whether it was achieved accidentally or by long and laborious work. The law recognizes the fact and not the process by which it was accomplished. A successful and operative reduction to practice of an inventive idea is absolutely essential to the completion of an invention; an invention is not completed within the meaning of the patent law until this has been done. Crude and imperfect experiments are not sufficient to create the right to a patent. An inventive idea and the results of imperfect experiments (as to the means for ac- quiring the ultimate end) may be protected by a caveat, but an application for a patent cannot be made until the inventive idea is finally embodied in some practically applicable form. INTERFERENCES. IF AN INVENTOR, whose application for a patent * was rejected upon reference to an unexpired domestic patent, describing and claiming the same (or substantially the same) invention, makes claim to the patent, stating under oath, that he completed his invention before the application was filed, on which the interfering patent was granted ; or if two or more contemporary applicants for patents (or for re-issues of patents) claim substantially the same inventions, or if they present conflicting claims for similar parts of different inventions, and the examina- tion shows, that each of them would be entitled to such a patent or to such a claim, if the patent or the other appli- cations would not interfere, then the Primary Examiner having charge of the cases, is required to declare such applications to be "in interference." Thereupon a pro- ceeding is instituted to determine which of the claimants is the first and true inventor. The parties to an interference are then required to file a "Preliminary Statement" as to the dates of their in- ventive acts and to prove their claimed priority by testi- mony of competent witnesses. The proceeding in Inter- ference cases is similar to that in cases of Equity. When all testimony is taken, or upon expiration of the time allotted for taking such testimony, a hearing is set for arguing the case on the basis of the testimony, and then judgment is rendered thereon in accordance with the proofs upon the following rules : Of all rival inventors equally qualified, the one who first produced the practical embodiment of his invention is entitled to the patent. Where the rival claimants reduced their inventive ideas to practical form at the same time, the one who can 54 prove priority of conception, due diligence in reducing it to practice and in applying for the patent, will be ad- judged to be the prior inventor. Where all parties to an interference are Americans, judgment must be awarded to the claimant who proves priority of his inventive act. When one party is an American and the others foreign- ers, the American inventor is entitled to priority, unless the foreign invention was known or used in the United States or patented or published before his (the American Inventor's) conception of the invention. If both (or all) claimants are foreigners, the same rule prevails as if all be Americans, but if one of them obtained a foreign patent, the priority must be awarded to him, even if the other was in fact the first inventor. If both foreign claimants obtained patents, the one, whose patent bears an earlier date, will prevail; if none obtained a foreign patent, the one who first introduced his invention into the United States will be awarded the patent. A foreign inventor cannot claim priority of his inven- tion against an American inventor beyond the date of his foreign patent. If one of the parties, whose applications have been declared to be in interference, fails to prosecute his case, he will be considered to have abandoned his claim, and the judgment will be rendered for the other party. An assignee is admitted as a party to an interfer- ence when the inventor refuses, neglects or is unable to prosecute his case against the other parties. When the interference i-s once declared, it will not be dissolved without rendering the judgment of priority, either upon the testimony or upon written concession of priority (confession) or upon written declaration of abandonment of the invention by one of the parties to the invention, except on motion of the Primary Examiner stating such grounds as would have precluded the declaration of the interference. A decision (judgment) in an interference is binding and conclusive upon all parties to the case. From an 55 adverse judgment appeals may be taken, successively to the Examiners-in-Chief and to the Commissioner of Pat- ents in a similar manner as from the rejection of an application. If the Commissioner, on appeal from the Examiners-in-Chief, confirms the adverse decision, the party thus defeated may then proceed further by a Bill in Equity against the Commissioner in the Circuit Court of the District of Columbia, whose power to grant a patent is independent of the powers of the Patent Office. If the complainant in such case prevails, a copy of the judgment is filed in the Patent Office and the patent is issued pursu- ant to the order of the Court. An adverse decision may also, at any stage of the pro- ceedings, be set aside by a motion for a new trial of the case, if the defeated party is able to show such grounds as in a Court of Equity would be held sufficient for the granting of a new trial. New trials of a disposed case are, however, granted only on such grounds and with the same restrictions as in courts, the principal ground being the disclosure of new and important evidence, fraud or mistake in the former trial, and only then such a new trial is granted, if it can be shown, that such evidence, fraud or mistake would have had bearing on the decision of the real points at issue. In presenting the motion for a new trial, it must also be proven, beyond any reasonable doubt, that due diligence was used then, and nothing neglected to procure that evidence or to prevent the fraud or mistake during the first trial of the case. GOVERNMENT FEES. A LL fees required in the procedure in the Patent Office **■ must be paid in advance, and no fees so paid are refunded, except where money was paid in excess or by actual mistake, such as where a payment was demanded when not required by law, or by reason of neglect or mis- information on the part of the office. These fees are : On filing of an application : For a mechanical patent, $15.00. For a caveat, $10.00. For a design patent, $10.00, $15.00 or $30.00, accord- ing to the term of the patent. For the issue of an allowed patent, $20.00. For a re-issue, $30.00. On filing of a disclaimer, $10.00. Of appeal from the decision of the primary examiner to the Examiners-in- Chief, $10.00. Of appeal to the Commissioner of Patents, $20.00. Of appeal from the decision of the Commissioner of Patents to the Court of Appeals, docket fee of $10.00. For recording of instruments a fee is required in ac- cordance with the extent of the instrument, the smallest fee being one dollar. CURRENT PUBLICATIONS OF PATENTS. AN Official Gazette, containing brief extracts of issued patents is published every Tuesday and may be sub- scribed by any one. All subscriptions ($5.00 per year in advance) must commence with the beginning of a volume; none taken for less than three months. Full copies of all patents with drawings are issued in monthly volumes, price $12.00 per month; copies of single patents, 10 cents and postage; these copies may be obtained from the patent office or from any attorney or agent. All pay- ments are required in advance. The publications of the following foreign patents may be found in the Scientific Library of the Patent Office: Austria-Hungary, Barbadoes, Belgium, British Honduras, Canada, Ceylon, Denmark, Finland, France, Germany, Great Britain, Hawaii, India, Italy, Jamaica, Japan, Luxemburg, Malta, Mauritius, New South Wales, New Zealand, Norway, Portugal, Queensland, Russia, South Australia, Spain, Strait Settlements, Sweden, Switzer- land, Tasmania, Trinidad, Victoria. West Australia. Extracts of the Scientific Library may be made under the supervision and direction of the Librarian. Such ex- tracts must be made only in pencil and must not exceed one-third of the description or drawings from which the copies are made. Violation of this order will subject all persons concerned therein to exclusion from making any such extracts or copies whatever. Full copies may be obtained at the rate of 10 cents per 100 words from the Patent Office, and copies (blueprints) of drawings at reasonable cost. The Commissioners' Report is now issued every year, and contains alphabetical lists of all inventors to whom patents were issued, and a list of inventions. 58 The report of the Commissioner of Patents for the year 1896 contains the following list of inventors who have taken out more than 100 patents during the last 25 years: Edward J. Brooks 116 George D. Burton 128 Luther C. Crowell 147 Peter C. Dederick 107 Thomas A. Edison 711 Rudolf Eickemeyer 158 Louis Goddu 131 Rudolph M. Hunter 228 John W. Hyatt 198 Hiram S. Maxim 131 Arthur J, Moxham 144 Lewis Hallock Nash 119 Edwin Norton 125 Freeborn F. Raymonds, 2d . . 144 George H. Reynolds 101 Francis H. Richards 343 Cyrus W. Saladee 148 Walter Scott 109 Charles E. Scribner 248 Sidney H. Short Ill Elihu Thomson 394 Charles J. Van Depoele 244 George Westinghouse, Jr. . . . 217 Edward Weston 274 William N. Whiteley 118 It is not an incident that all these inventors are men who raised themselves by diligent work and wise atten- tion to the protection of their interests from small beginnings and reduced circumstances to riches and fame. INDEX. PAGE Preface -----..3 Introductory -.-... 5 The Patent Laws of United States - - - 7 General Rules ------ 10 Preliminary Examination - - - - - - 14 Caveats ------- 16 The Application for a Patent - - - - - 19 Prosecution of an Application 24 Issue of Patents. Forfeiture of Allowances and Renewal of Applications 27 Extensions ------- 28 Foreign Patents -- - - - - -29 Patents for Designs ----- 32 Marking of Patented Articles - 35 Infringement of Patented Inventions 37 The Scope of a Patent - - - - - - 39 Correction of Defective Letters Patent. Disclaimers - - 41 Re-issues - - - - - - -42 Assignment of Patent, Transfers of Rights and Privileges - 45 Constructive License - - - - - - 47 Invention -------49 Interferences - - - - - - - 53 Government Fees ------ 56 Current Publications of Patents - - - - - 57 LIBRARY OF CONGRESS 019 935 717 7 SCHREITER, VAN IDERSTINE & MATHEWS, Btrorncvs ano Counsellors at law, ant* Solicitors of patents, 20 NASSAU STREET, NEW YORK CITY, TELEPHONE, 3246 CORTLANDT. WASHINGTON OFFICE : McQill Building, F & 9th Sts., N. W. BROOKLYN OFFICE: 189 Montague St., telephone, 711 brooklyn. t *