The indictment negatives the statements in the oath in the following language:

Whereas in truth and in fact the said Charles A. Patterson at the time when he so swore and made his said declaration and affidavit as aforesaid, well knew that he was not the original, first and sole inventor of said improvement in buckles-

and that he-

well knew and believed that the same had been known and used before his alleged invention and discovery thereof.

The theory upon which the case was tried, and upon which the court instructed the jury, was that the charge of perjury was based upon the words contained in the oath, namely

that he verily believes himself to be the original, first and sole inventor of the improvement in buckles.

This is indicated by the instructions of the Court, as follows:

Was it Van Emon or was it the defendant who was the inventor of this new improvement? Both of these men claim to be the original or first inventor of said improvement. If the defendant was the original, first, and sole inventor of such improvement, then that is the end of this case; because if so, his oath or declaration would be true, and he would not be guilty of perjury under the indictment. But if Van Emon was the original, first, and sole inventor-and this you must ascertain-then another question will arise, which has two aspects, namely: whether the defendant knew that Van Emon was such original, first, and sole inventor, and, having such knowledge, took the oath or made the declaration in question; or, whether he had no such knowledge of such fact, but, knowing that he himself was not such inventor, verified said oath or declaration, because in either event he could not have believed the alleged facts stated in said oath or declaration to be true.

It will be seen that the word "sole" has a material bearing, both on the theory upon which the case was tried and on that upon which it was put to the jury by the instructions of the court. If perjury cannot be predicated upon the use of that word, in connection with the words "original" and "first" the oath having been made in a proceeding to obtain a patent, then a new trial should be granted. Otherwise, it must be conceded that the judgment is proper. The theory upon which the court proceeded is, that the oath was taken in an inquiry before the Commissioner of Patents as to whether a patent should issue for this improvement in buckles to Patterson, the applicant for the patent.

Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor. (Sec. 4886, R. S.)

It is further provided (Sec. 4888, R. S.) that before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the Commissioner of Patents (specifying what the application shall contain,) which application shall be signed by the inventor and attested by two witnesses. Then follows the requirement of section 4892, which is as follows:

The applicant shall make oath that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, manufacture, composition or improvement for which he solicits a patent; that he does not know and does not believe that the same was ever before known or used.

Then by section 4893:

On the filing of any such application and the payment of the fees required by law, the Commissioner of Patents shall cause an examination to be made of the alleged new invention or discovery; and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner of Patents shall issue a patent therefor.

It is plain to be seen from these statutes that the Commissioner of Patents has a very important duty to perform in this relation, namely, that of an examination of the application and proofs, for a determination as to whether or not the applicant is entitled to the patent applied for. It seems to me, therefore, that the subscribing of the oath in question was the production of matter material to that inquiry, and a false oath taken with reference thereto would bring the case within the intendment of section 5392 of the Revised Statutes, and would render the affiant guilty of perjury. And this is the especial theory upon which the court instructed the jury in

the case.

By Rule 46, adopted by the Commissioner of Patents with the approval of the Secretary of the Interior

The applicant, if the inventor, must make oath or affirmation that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, manufacture, composition or improvement for which he solicits a patent; that he does not know and does not believe that the same was ever before known or used, and shall state of what country he is a citizen and where he resides, and whether he is a sole or joint inventor of the invention claimed in his application.

This rule, if not authorized by law, of course, could not make that perjury which is not constituted perjury under the statute of Congress.

One of the purposes of the inquiry, as indicated by the rule, was to determine whether the applicant was the sole inventor, or whether he had invented a device jointly with some one else. If he were jointly interested with some one else, it is plain that he would not be entitled to a patent in his own right. So that this condition was one very material to the inquiry before the Commissioner of Patents.

The Commissioner, if it had appeared by the application in question and under the affidavit made by the defendant Patterson that he was a joint inventor with some other person, would not have issued him any patent at all, or else would have issued the same to Patterson jointly with the other individual entitled with him to an interest therein. So it is the use of the word "sole" was a thing material and important in the inquiry being made, and that an oath taken with reference thereto, if false, constituted perjury under section 5392. After all, the word "sole " is a shorter way of saying that the applicant does not know and does not believe that the same, namely, the invention, was ever before known or used. If the applicant was a joint inventor with some one else, it follows, without question, that it would have been previously known and used. Hence the word "sole" means the same thing, practically, as is couched by signification in the clause just alluded to. But it seems to me, however, that the use of the word "sole" in the affidavit as subscribed, in connection with the words "original" and "first," has a significant and material bearing in the inquiry which was then being prosecuted before the Commissioner of Patents, and that a false oath with reference thereto renders the affiant guilty of perjury.

I am familiar with the doctrine as announced in the cases of Williamson v. United States (207 U. S., 425) and Robnett v. United States, (169 Fed., 778,) but in those cases the oath was taken with reference to matter not deemed material to the inquiry, and it seems to me they do not have application here.

For these reasons, the motion for a new trial will be denied.

NOTE. The defendant was sentenced to serve thirteen months in the United States penitentiary at McNeil's Island.

[U. S. Circuit Court-Eastern District of Pennsylvania.]

HESS-BRIGHT MFG. Co. et al. v. STANDARD ROLLER BEARING CO.

Decided June 26, 1909.

147 O. G., 521.

FOREIGN APPLICATIONS-TIME FOR FILING DOMESTIC APPLICATIONS-SECTION 4887 OF THE REVISED STATUTES CONSTRUED.

In computing the time under Revised Statutes, section 4887, as amended by act of March 3, 1903, the day upon which the application in a foreign country was filed should be excluded, and where such an application was filed on February 23, 1903, an application filed in this country February 23, 1904, was in time.

Mr. Dwight M. Lowrey and Mr. Robert Fletcher Rogers for the complainants.

Mr. Augustus B. Stoughton for the defendant.

LANNING, Cir. J.:

The single question raised by the plea in this case has to do with the method of computing time under the provisions of section 4887 of the Revised Statutes, as amended by act March 3, 1903, (c. 1019, 32 Stat., 1225; U. S. Comp. St. Supp., 1907, p. 1003.) That section provides that no person otherwise entitled thereto shall be debarred. from receiving a patent for his invention, nor shall any patent be declared invalid by reason of its having been first patented in a foreign country

unless the application for said foreign patent was filed more than twelve months prior to the filing of the application in this country.

A further provision of the section is to the effect that an application for a patent for an invention by any person who has previously regularly filed an application for a patent for the same invention in a foreign country which by treaty, convention, or law affords similar privileges to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was filed in such foreign country

provided the application in this country is filed within twelve months from the earliest date on which any such foreign application was filed.

By the plea it appears that the inventions covered by the two patents in suit were patented in Germany on an application filed in that country February 23, 1903. The earlier of the applications on which the two patents in suit were allowed was filed in this country on February 23, 1904. The contention of the defendant is that the period of twelve months referred to in section 4887 of the Revised Statutes had expired before the earlier application was filed in this country. Is this contention sound?

The defendant relies in part upon Russell v. Ledsam, (14 M. & W., 574,) where the plaintiff averred that original Letters Patent had been granted to him on February 26, 1825, for a term of fourteen years, and that these Letters Patent were renewed on February 26, 1839. The defendant there contended that the renewal Letters were granted after the expiration of the term of fourteen years for which the original Letters were granted. Baron Parke said:

*

The next question arises on a point reserved at the trial on the evidence in support of the seventh plea. That plea was that the second or renewed Letters Patent were granted after the expiration of the term of fourteen years granted by the first Letters Patent. The proof was that the original Letters Patent were dated on the 26th February, 1825, the second on the 26th February, 1839, and the question is whether the day of the date of the first Letters Patent was inclusive or exclusive. The usual course in recent times has been to construe the day exclusively, whenever anything was to be done in a certain time after a given event or date; and consequently the time for enrolling a specification within six months given by the proviso is reckoned exclusively of the day

of the date. * * * But in this case the question is when the term given by a patent commences; and the same rule would apply as to the commencement of a term, which, if it is to run from the date of the lease, includes the day of the date. It was asked by Mr. Kelly whether, if there had been an imitation of the invention on the day the patent was dated, it would have been an infringement of it, and we have no doubt that the answer ought to be that it would; and, if so, the day of the date would be included, and the patent would expire at midnight on the 25th day of February, 1839, for the law never takes notice of the fraction of a day, except where there are conflicting rights between subjects.

This case was referred to in the later case of Williams v. Nash, (28 Beav., 93.) In this latter case it appeared that by act of Parliament it was provided that

Letters Patent should be void at the expiration of three years from the date thereof unless there be paid before the expiration of the said three years the stamp duties in the schedule to this act annexed.

It was held that the payment of the stamp duty on February 26, 1858, upon Letters dated February 26, 1855, was in time to save the patent, and the language of Baron Parke from the Ledsam case as to the usual course in recent times of excluding the day from which the computation is to be made was commented on as establishing the general rule of computation. To the same effect are the cases of Hicks v. National Life Ins. Co., (60 Fed., 690; 9 C. C. A., 215,) Supreme Council v. Gootee, (89 Fed., 941; 32 C. C. A., 436,) and Sheets v. Selden's Lessee, (2 Wall., 190; 17 L. Ed., 822.) Following these cases, as I understand them, I conclude that in the computation of time February 23, 1903, should be excluded, and that February 23, 1904, was available for the purpose of filing the original application for the patents now in suit. It is admitted that the latter of the two patents in suit was issued as a division of the application of the first patent.

The plea will therefore be overruled, and the defendant allowed twenty days after the service of a copy of the order overruling the plea within which to file its answer.

[U. S. Circuit Court-District of New Jersey.]

THE OLD LEXINGTON CLUB DISTILLERY COMPANY v. KENTUCKY DISTILLERIES AND WAREHOUSE COMPANY.

Decided November 1, 1909.

148 O. G., 1346.

TRADE-MARKS-SUIT UNDER SECTION 4915, REVISED STATUTES-DEMURRER. In a suit under section 4915, Revised Statutes, to obtain the registration of the words "Old Lexington Club" as a trade-mark a demurrer was filed alleging that the mark is invalid. Held that the invalidity of the mark is not obvious and that the demurrer should be overruled.