this ground the substitution of hot air for cold in the blast of furnaces was held to be patentable."7 531. The patentee must not only be the inventor—that is, he must actually himself make the invention-but he must also be the first inventor. The patent will be void if it is shown that another in this country invented the subject before the patentee, and it makes no difference whether such other has patented it or not, or whether his invention is known to the patentee or not. But a prior invention in a foreign country will not invalidate the patent unless the subject has been described in a printed publication, or patented in a foreign country more than six months prior to the application here." 58 There may be a number of original inventors, and the theory of the patent laws is that, as between our own citizens, only the first inventor is entitled to a patent, but an original inventor here shall not lose his right by any knowledge abroad not accessible to the public. The subject of the patent must not have been known or used by others before the application for a patent. The inventor may use his invention for any length of time before he applies for a patent, provided he keeps his knowledge to himself. He may allow others to use his invention for not more than two years before he applies for a patent. 60 532. Besides the ordinary subjects of patents, it is provided that any citizen or alien who has resided one year in the United States, and taken the oath of intention to become a citizen, who invents or produces any new and original design, or manufacture, whether of metal or other material or materials, and original design for a bust, statue or bas-relief, or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print or picture to be either worked into or worked on, or printed or painted or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture, may obtain a patent therefor for the term of three and one half years, or seven years or fourteen years, and the patents may be further extended for seven years. The proceedings and principles in regard to patents for designs are in general the same as for other patents. 61 533. The proceedings to obtain a patent are the caveat, which is an occasional preliminary proceeding, the ordinary proceedings where there is no opposition, and the proceedings in case of conflicting claims. 534. Any citizen of the United States, or alien who shall have resided in the United States one year next preceding, and shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on paying to the credit of the treasury the sum of ten dollars, file in the patent office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, for the protection of his rights till he shall have matured his invention. The caveat shall be filed in the confidential archives of the office and preserved in secresy.62 If another person should, within a year from the filing of the caveat, apply for a patent interfering with the rights of the person who has filed his caveat, 57 Crane v. Price, 1 Webst. Pat. Cas. 393. See as to the novelty required, Curtis, Pat. ch. 2; Phillips, Pat. 134; Le Roy v. Tatham, 14 How. 156, 22 How. 132; O'Reilly v. Morse, 15 How. 123. 58 Act of July 4, 1836, s. 8, 15; March 3, 1839, s. 6. 59 Act of July 4, 1836, s. 6. 60 Act of March 3, 1839, s. 7. 61 Act of Aug. 29, 1842, s. 3; superseded by Act of March 2, 1861, s. 11. 62 Act of July 4, 1836, s. 12. 63 the commissioner of patents is required to give the latter notice by mail, who shall within three months after receiving the notice declare whether he will avail himself of the benefit of the caveat. If he does, he is required to file his description, specification, drawings and model. If the claims interfere with each other, they shall be considered as conflicting claims.64 535. The ordinary proceedings, where there is no opposition, include the fees to be paid, the petition, the description or specification, including drawings, specimens, and models, the oath and the examination. 536. By the act of 1836, aliens were required to pay larger fees than citizens, but by the act of 1861 no discrimination is made against the citizens of foreign countries which do not discriminate against the citizens of the United States. The act of 1861 supersedes the earlier laws fixing the fees, and establishes the rates now in force.65 Under this act the fee paid on filing a caveat is not considered as part of the fee on the application, and no money paid for filing an application can be withdrawn.66 The fee for issuing a patent must be paid within six months after the application is allowed, but if this payment is not made, the applicant may make another application within two years from the date of the allowance of the original application.68 537. The petition. The applicant must make application in writing to the commissioner of patents. This application is usually a petition stating the invention, that the applicant verily believes he is the original and first inventor, and praying that letters patent may be granted. It must be signed by the inventor if alive, otherwise by his executor.70 538. The specification. The inventor must deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using and compounding the same, in such full, clear, and exact terms as to enable any person skilled in the art and science to which it appertains to make, construct, compound, and use the same; and in case of any machine he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement or combination which he claims as his own invention or discovery. Where the nature of the case admits of it he must send drawings, specimens of ingredients, and of the composition of matter, and a model.7 The specification is annexed to the patent and forms a part of it. 539. The specification has two objects: the first to give the public the full benefit of the discovery after the expiration of the patent, this being the consideration upon which the temporary exclusive right is granted. To accomplish this, the specification must be so written that a reasonably competent workman skilled in the particular art can practice the invention from the This time is computed from the day the notice is mailed at Washington, with the regular time for transmission added. Act of March 2, 1861, s. 9. Act of July 4, 1836, s. 12; Act of March 2, 1861, s. 9. The rates are: On filing a caveat, ten dollars; application, except for a design, twenty dollars; issuing a patent, twenty dollars; appeal from examiners in chief, twenty dollars; application for reissue, thirty dollars; application for extension, fifty dollars; granting of extension, fifty dollars; disclaimer, ten dollars; copies and recording, according to number of words. 66 Act of March 2, 1861, s. 9, 10. Act of March 3, 1863, s. 3. This was suspended for six months by act of June 25, 1864. Act of March 3, 1865. Acts of July 4, 1836, s. 6; March 3, 1837. Forms suitable for the petition are given in the rules issued from time to time by the patent office. TO Act of July 4, 1836, s. 10. 71 Act of July 4, 1836, s. 6. specification alone, without the use of any additional knowledge of his own, without using invention and without resorting to experiments.72 The second object of the specification is to inform the public how much the patentee claims as his invention, and to enable persons to use all that is not new, and put them on their guard against infringing the patent. Unless the specification clearly distinguishes between what is new and what is old, the patentee will be understood to claim the whole and the patent will be void.73 The patentee does not claim any thing which he states to be old, but he does necessarily claim everything new, and the distinction between old and new is one way of describing his invention.74 Under the patent laws it is held that the inventor cannot patent a "mode of operation," "principle," " idea," or other abstraction of a machine, but must claim the machine itself; and accordingly where the specification describes a practical application, the claim will be held to apply to such application only.75 But if the principle is new, the patent covers all practical applications, whether described or not. The patentee must not mislead the public as to what he claims; and it is a sufficient defence to an action for infringement, that the specification "does not contain the whole truth relative to his invention or discovery, or that it contains more than is necessary to produce the described effect; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public."76 The 540. The applicant is required to make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, etc., for which he solicits a patent, and that he does not know or believe the same was ever known or used; and also of what country he is a citizen. oath may be made in the United States, before any person authorized by law to administer oaths; and, out of the United States, before any minister plenipotentiary, chargé d'affaires, consul or commercial agent, holding a commission under the government of the United States, or before any notary public of the country in which such applicant may be.” 541. The commissioner is required to cause an examination to be made of the alleged new invention, new discovery, or invention; if this is satisfactory, the application is allowed and a patent ordered to issue. If, however, it appears that the applicant is not the original or first inventor, or that he has claimed too much, the application will not be allowed. The examination is made in the first instance by one of the examiners of the patent office. When the application has been twice rejected by the examiner, the applicant may appeal to the examiners in chief, paying a fee of ten dollars.78 From their decision he may appeal to the commissioner of patents. From the decision of the commissioner he may appeal to the chief justice or either of the assistant judges of the circuit court of the district of Columbia.79 No fees are repaid when the application is withdrawn or rejected. 542. When it appears that the application interferes with another application, or with an unexpired patent, an interference is declared between them, and a trial is had before the commissioner to ascertain who is the first inventor. From the decision appeals may be taken in the same way as in the case of rejected applications treated in the preceding section. 72 Lowell v. Lewis, 1 Mas. C. C. 182; Wood v. Underhill, 5 How. 1. 77 Acts of July 4, 1836, s. 6; Aug. 29, 1842, s. 4. 543. In treating of the patent we shall consider its form; how it may be corrected; the disclaimer; the assignment of the patent; the duration and extension of the right. 80 544. The patent is issued in the name of the United States, under the seal of the patent office, signed by the secretary of the interior, and countersigned by the commissioner of patents. It contains a short description or title of the invention, and a copy of the specification and drawings is annexed; and in its terms grants to the applicant, his heirs, etc., for a term of seventeen years, the full and exclusive right of making, using, and vending to others to be used, the invention or discovery.82 81 The patent may date from the time of filing the specification, not exceeding six months prior to the actual issuing of the patent, and cannot be dated more than six months after the application is allowed.83 545. When a patent is inoperative or invalid, by reason of a defective or insufficient description or specification, or because the claim is too broad, if the error arises by mistake without fraud, the patentee may surrender his patent and a new one will be granted, or several new patents will be issued for distinct and separate parts of the invention.84 A reissued patent expires at the end of the term of the original patent. If the patentee is dead or has assigned his interest, the patent may be reissued to his executors or assignees. The reissue can only cover the same invention that is described in the original patent. 85 A reissue is conclusive as to the existence of all the facts which are by law necessary to entitle the commissioner to grant it, and the propriety of the reissue being made cannot be questioned in any court except for fraud.86 A patent may be reissued after the expiration of the original term and during its extension.87 546. When a patentee through inadvertence, accident or mistake has made his specification or claim too broad, he may disclaim such part, and the disclaimer shall thereafter be considered as a part of the original specification. But such a disclaimer shall not affect any action then pending. 88 89 547. An invention may be assigned before the patent issues, and the assignment being duly recorded, the patent will issue to the assignee. After issue a patent is assignable in law, either as to the whole interest or any undivided part thereof, by any instrument in writing; which assignment, and also every grant of the exclusive right to the patent within any part of the United States, shall be recorded in the patent office within three months after its execution.90 A grant of a right to use the invention not exclusive is a license, and need not be recorded." The provision as to recording is merely directory, and an unrecorded assignment is good against all except bona fide purchasers without notice.92 548. All patents granted prior to March 2, 1861, were for the term of fourteen years, and may be extended for seven years more by the commissioner of Act of March 3, 1849. Before this act it was signed by the secretary of state. 82 Act of July 4, 1836, s. 5. Act of July 4, 1836, s. 8; 1862, s. 3. Act of July 4, 1836, s. 13; March 3, 1837, s. 5. Burr v. Duryea, 1 Wall. 531; O'Reilly v. Morse, 15 How. 62; Battin v. Taggart, 17 How. 74. Woodworth v. Stone, 3 Stor. C. C. 749; Allen v. Blunt, 3 Stor. C. C. 742. 7 Hartshorn v. Day, 19 How. 211. 89 Act of March 3, 1837, s. 7. 90 Act of July 4, 1836, s. 11. 89 Act of March 3, 1837, s. 6. Pitts v. Whitman, 2 Stor. C. C. 609; Boyd v. McAlpin, 3 McLean, C. C. 427. 93 patents. All patents issued since March 2, 1861, are for the term of seventeen years, and cannot be extended.94 549. It is the duty of every person who makes or vends a patented article to fix the word "patented," together with the date of the patent, to the article or to the envelope or package; on failure of which he cannot recover damages for infringement unless he proves that the infringer was duly notified of his infringement, and continued to infringe after such notice.95 550. Trade-marks are a species of property, and any person who has used exclusively a peculiar name, label or other mark is entitled to be protected in this exclusive use.9% This property rests upon the reputation which has been gained by the exclusive use, and the use by others is a fraud.97 No man can appropriate as a trade-mark a sign or symbol, which from the nature of the case others have an equal right to use, such as the regular name of an article, or an epithet denoting its use or its quality, unless the user of the mark has the exclusive right to make and sell the article.99 But the name of an article is a proper subject of a trade-mark when it denotes the origin, process of manufacture, owner or maker of the article, or is a new and original combination of letters.100 In many cases the name of the maker of an article constitutes a trade-mark, and the use of this by another is a fraud upon the public. But this can be availed of by the original maker only, for it is clear that a third party, though he may possess an exclusive right to make a particular article, cannot have any exclusive right to use a name which tends to mislead the public.101 The subject is regulated by statute in several of the states. 551. The first class of cases where things are acquired not by original possession is by the rights of war. In regard to these a distinction is to be made between personal property captured on land and on sea. The first is known as booty. The right of booty belongs to the sovereign, who may grant it to individual subjects. It is an undoubted right, and during a war a belligerent may capture the private property of his enemy, and may, if he see fit, give it to the soldiers as pillage or boot. But amongst civilized nations it is customary only to take such property as is needed for warlike operations or the support of the army. 552. It has been doubted whether a belligerent has a right to confiscate the property of individual enemies which is in its country at the commencement of hostilities. In this country it is settled that a belligerent does have such a right, and may confiscate all vessels and cargoes found in our ports at such a time.102 But this right exists in the government alone, and until authorized by an act of congress cannot be exercised, and the property cannot be judicially 93 Act of July 4, 1836, s. 18; May 27, 1848, s. 1. Act of March 2, 1861, sec. 16. A patent may be renewed for any period by special act of congress. 95 Act of March 2, 1861, s. 13, repealing Act of 1842, s. 6. 96 Taylor v. Carpenter, 2 Sandf. Ch. N. Y. 617; Partridge v. Menck, How. App. Cas. N. Y. 559; Amoskeag Mfg. Co. v. Spear, 2 Sandf. N. Y. 606; Marsh v. Billings, 7 Cush. Mass. 322. 97 Coffeen v. Brunton, 4 McLean, C. C. 517; Stone v. Carlan, 3 Bost. Law Rep. 361; Lemoine v. Ganton, 2 E. D. Smith N. Y. 347. 98 Amoskeag Mfg. Co. v. Spear, 2 Sandf. N. Y. 606; Stokes v. Landgraff, 17 Barb. N. Y. 609; Fetridge v. Wells, 13 How. Pr. N. Y. 387; Wolfe v. Gourard, 18 How. Pr. N. Y. 67; Corwin v. Daly, Upton, Tr. Marks, 191. 99 1857. Fetridge v. Merchant, 4 Abb. Pr. N. Y. 158; Tomlinson v. Battel, MS. Duer, J. N. Y. 100 Burnett v. Phalon, 12 Bost. Law Rep. 223; Davis v. Kendall, 2 R. I. 569. 101 Samuel v. Berger, 24 Barb. N. Y. 163; Fetridge v. Merchant, 4 Abb. Pr. N. Y. 157. 102 Cargo of The Emulous, 1 Gal. C. C. 563; Brown v. United States, 8 Cranch, 110. |