Union Bank of Georgetown v. Magruder. 7 P. it would become valuable. Mr. Thompson had had a previous conversation with him; the defendant had not been informed by me that the note was overdue, and not demanded. Also, James Thompson, who proved that, as soon as it was discovered that the note was over, he and the cashier conversed about it; and about three or four days after it was overdue, he determined to call on defendant, and request him to arrange it, and state *the circumstances attending the note; that he then called [289] on defendant, and found him from home; left word he wanted him, and a day or two after defendant called at bank; he went aside with him, told him the circumstances attending the neglect in relation to the note, and requested him to take time and determine what he would do as to arranging the note; telling him that he did not wish defendant to say a word to him to commit himself, but to consider whether, if he did not arrange it, the bank might not do him a greater injury than the amount of the note; that some time after this conversation, he had another with defendant; that the defendant asked him, if the debt was lost, whose loss would it be; would it fall on any of the officers of the bank? Witness replied that he did not know how that would be; that he could not answer that question; that the bank would, perhaps, look to the officers; and the defendant then said, no officer of the Union Bank should lose any thing by him. That he afterwards had another conversation with defendant in Mr. Wharton's store; that defendant said, 'he meant to pay the note, but would take his own time for it; that he would not put himself in the power of the bank.' He thinks this last conversation was about three or four months after the note fell due. That just before the suit was brought, the witness was desired, by the president of the bank, to call on the defendant, and know what he meant to do with the note; that he did so, and that defendant then said, 'I will pay that note now, if the bank will take the house on Cherry street for what it cost me.' Witness reported the answer to the president, who said the bank did not want the house, and shortly afterwards suit was brought. Plaintiffs further proved that the defendant, when the note fell due, and before, was administrator of the drawer of the note, George Magruder, who had died before the note fell due, and who, it is also admitted, was insolvent. "Whereupon the plaintiffs, on the aforegoing evidence, prayed the court to instruct the jury as follows: "That if the jury believe the defendant held the above conversations as stated by the witnesses, such conversations amount to a waiver of the objection of the want of demand and notice; and 42 VOL. X. Union Bank of Georgetown v. Magruder. 7 P. the defendant is liable on the note, if the jury should [290] *believe that the defendant made the acknowledgments and declarations stated in the conversations in reference to the claim of the bank upon him, as indorser of the note; which the court refused. "And the plaintiffs then prayed the court to instruct the jury as follows: "That if the jury believe, from the evidence aforesaid, that the defendant, after knowing of his discharge from liability as indorser of the said note, by the neglect to demand and give notice, said, 'that he meant to pay the note, but should take his own time for it, and would not put himself in the power of the bank,' and that the bank forbore bringing suit, from the time of said conversation, about three or four months after the note fell due, until the date of the writ issued in this cause, then the plaintiffs are entitled to recover on the second count of the declaration, which, also, the court refused to give; to which refusal to give the said instructions, the plaintiffs excepted." The question is whether these instructions, thus propounded, were rightly refused by the court. And we are of opinion that they were. The first requests the court to instruct the jury upon a mere matter of fact, deducible from the evidence, and which it was the proper province of the jury to decide. It asks the court to declare that the conversations stated (sufficiently loose and indeterminate in themselves) amounted to a waiver of the objection of the want of demand and notice. Whether these did amount to such a waiver, was not matter of law but of fact; and the sufficiency of the proof for this purpose was for the consideration of the jury. The second instruction is open to the same objection. It calls upon the court to decide upon the sufficiency of the proof; to establish that there was a forbearance by the plaintiffs to sue the defendant upon the note, and of the promise of the defendant, in consideration of the forbearance, to pay the same. That was the very matter upon which the jury were to respond, as matter of fact. It is also open to the additional objection, that it asks the court to decide this point, not upon the whole evidence, but upon a single sentence of the conversations stated, without the slightest reference to [291] the manner in which the meaning and effect of that sentence was, or might be controlled by the other points of the conversations, or the attendant circumstances. In either view it was properly refused. The court have also been called upon to review their former decision in this case. 3 Pet. 87. To this it might be a sufficient Shaw v. Cooper. 7 P. answer to say that no case is made out upon the record, calling for such a review; and, if it were, we are entirely satisfied with that decision. The judgment of the circuit court is therefore affirmed, with costs. 10 P. 572. JOSEPH SHAW, Plaintiff in Error, v. JOSEPH COOPER. 7 P. 292. An alien patentee made an invention in England, and came to this country in 1817; his invention was fraudulently disclosed in England, and went into public use there, and also in France, in 1820; the patentee knew of this use, but neglected to apply for a patent until 1822; the court below instructed the jury that the patentee had slept too long on his rights to be entitled to the benefit of a patent under the act of April 17, 1800, (2 Stats. at Large, 37.) Held, this instruction was correct. If a patent was surrendered for a defective specification, before any act of congress on the subject, the rights of the patentee must be tested by the law as it stood when the original patent was issued. Whatever may be the intention of the inventor, if he suffer his invention to go into public use, by any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent. THE case is stated in the opinion of the court. Paine, for the plaintiff. Emmet, contrà. *M'LEAN, J., delivered the opinion of the court. This writ of error brings before this court, for its revision, [*310] a judgment of the circuit court of the United States for the southern district of New York. An action was brought in the circuit court, by Shaw, against the defendant, Cooper, for the violation of a certain patent right, claimed by the plaintiff. The defendant pleaded the general issue, and gave notice that on the trial he would prove "that the pretended new and useful improvement in guns and fire-arms, mentioned and referred to in the several counts in the declaration; also, that the said pretended new and useful improvement, or the essential parts or portions thereof, or some or one of them, had been known and used in this country, namely, in the city of New York and in the city of Philadelphia, and in sundry other places in the United States, and in England, in France, and in other foreign countries, before the plaintiff's application for a patent as set forth in his declaration," &c. Shaw v. Cooper. 7 P. On the trial, the following bill of exceptions was taken: "to maintain the issue joined, the plaintiff gave in evidence certain letterspatent of the United States, as set forth in the declaration, issued on the 7th day of May, 1829; and, also, that the improvement for which the letters were granted, was invented or discovered by the plaintiff in 1813 or 1814; and that the defendant had sold instruments which were infringements of the said letters-patent. "And the defendant then proved, by the testimony of one witness, that he had used the said improvement in England, and had purchased a gun of the kind there, and had seen others use the said improvement, and had seen guns of the kind in the duke of York's armory, in 1819. And also proved, by the testimony of five other witnesses, that, in 1820 and 1821, they worked in England at the business of making and repairing guns, and that the said improvement was generally used in England in those years; but [*311 ] that they had never seen guns of the kind prior to those years; and also proved that, in the year 1821, it was used and known in France; and, also, that the said improvement was generally known and used in the United States after the 19th day of June, 1822. * "And the plaintiff, further to maintain the issue on his part, then gave in evidence that he, not being a worker in iron in 1813 or 1814, employed his brother in England, under strict injunctions of secrecy, to execute or fabricate the said improvement for the purpose of making experiments. And that the plaintiff afterwards, in 1817, left England and came to reside in the United States; and that, after his departure from England, in 1817 or 1818, his said brother divulged the secret for a certain reward to an eminent gun-maker in London. That, on the arrival of the plaintiff in this country, in 1817, he disclosed his said improvement to a gun-maker, whom he consulted as to obtaining a patent for the same, and whom he wished to engage to join and assist him. That the plaintiff made this disclosure under injunctions of secrecy, claiming the improvement as his own, declaring that he should patent it. That the plaintiff treated his invention as a secret after his arrival in this country, often declaring that he should patent it; and that this step was only delayed, that he might make it more perfect before it was introduced into public use; and that he did make alterations which some witnesses considered improvements in his invention, and others did not. That in this country the invention was never known nor used prior to the said 19th day of June, 1822; that on that day letters-patent were issued to the plaintiff, being then an alien, and that he immediately brought his invention into public use. That afterwards, and after suits had been Shaw v. Cooper. 7 P. brought for a violation of the said letters-patent, the plaintiff was advised to surrender them on account of the specification being defective; and that he did accordingly, on the 7th day of May, in the year 1829, surrender the same into the department of the secretary of state, and received the letters-patent first above named. "And the plaintiff also gave in evidence that, prior to the 19th day of June, 1822, the principal importers of guns from England in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard any thing of the * said in- [ * 312 ] vention, or that the same was used or known in England; and that no guns of the kind were imported into this country, until in the years 1824 or 1825. And that letters-patent were granted in England on the 11th day of April, 1807, to one Alexander J. Forsyth, for a method of discharging or giving fire to artillery and all other fire-arms; which method he describes in his specification as consisting in the 'use or application as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and exploding without any actual fire being applied thereto, and merely by a blow, or by any sudden or strong pressure or friction given or applied thereto, without extraordinary violence; that is to say, some one of the compounds of combustible matter, such as sulphur, or sulphur and charcoal, with an oxymuriatic salt; for example, the salt formed of dephlogisticated marine acid and potash, (or potasse,) which salt is otherwise called oxymuriate of potash; or such of the fulminating metallic compounds as may be used with safety; for example, fulminating mercury, or of common gunpowder mixed in due quantity with any of the above-mentioned substances, or with any oxymuriatic salt, as aforesaid, or of suitable mixtures of any of the before-mentioned compounds;' and that the said letters-patent continued in force for the period of 14 years from the time of granting the same." And the defendant, further to maintain the issue on his part, gave in evidence a certain letter from the plaintiff to the defendant, dated in December, in the year 1824, from which the following is an extract: "Some time since I stated that I had employed counsel respecting regular prosecutions for any trespass against my rights to the patent; I have at length obtained the opinion of Mr. Sergeant of this city, together with others eminent in the law, and that is, that I ought (with a view to insure success) to visit England, and procure the affidavits of Manton and others, to whom I made my invention known, and also of the person whom I employed to make the lock at the time of invention; for it appears very essential that I should prove that I did actually reduce the principle to practice, |