trators of persons dying before a patent is taken out may apply and take it out in trust for the heirs or devisees, on due compliance with the terms of the statute. Patents are assignable, and may be granted in whole or in part by writing, to be recorded in the patent-office. If invalid by reason of defective specifications, or by claiming too much, the patent may be surrendered, and a new patent taken out for the unexpired period, provided the error did not arise from any fraudulent intention. If the patentee be an alien, he forfeits his exclusive right, if he fails, for eighteen months from the date of the patent, to continue on sale to the public, on reasonable terms, the invention or discovery covered by the patent. The patentee does not lose his patent if it satisfactorily appears to the court, that at the time of his application he believed himself to be the first inventor or discoverer of the thing patented, though the invention or discovery, or any part thereof, had been before known or used in a foreign country; provided it does not appear that the same, or any substantial part thereof, had before been patented or described in any printed publication. (b) 6

These are the principal existing statute provisions on the subject,

izen, and having invented or produced any new and original design for a manufacture, &c., or for a bust, statue, or the like, may apply for a patent, and, if granted, the duration of the patent is to be for seven years, and the fee in such cases shall be reduced onehalf of the sum heretofore required. A penalty of not less than $100 given for each

infringement of the patent right.

(b) Act of Congress, July 4, 1836, ch. 357.

A new combination of several old and known designs, forming together one new design, is patentable. Norton v. Nicholls, 1 Ell. & El. 761. Harrison v. Taylor, 4 Hurl. & Nor. 815. The term of patents is now seventeen years and extensions are prohibited. Laws of 1861, ch. 88, sec. 16. The same Act alters the fees and regulates the practice in obtaining patents. + The recording of the assignment is not a constituent part of the transfer of the title, and is required only to give notice. Peck v. Bacon, 18 Conn. 377. Case v. Redfield, 4 McL. 526. McKernan v. Hite, 6 Ind. 428. An assignment recorded in the patent-office, conveying all inchoate rights, vests the property in the assignee, though a patent is afterwards issued to assignor. Gayler v. Wilder, 10 How. U. S. 477. Clum v. Brewer, 2 Curtis C. C. 506. Rathbone v. Orr, 5 McL. 131. Gay v. Cornell, 1 Blatch. C. C. 506. Where one of two assignees of a patent dies, an action for infringement, in his lifetime descends to the survivor, who may recover whole damages. Smith v. London R. Co. 20 E. L. & Eq. 94.

But where a part of a machine is not covered by the original patent, it cannot be included in a reissue on a surrender after the machine has come into use, because so much of the machine as was not patented was abandoned to the public. Batten v. Taggert, 2 Wallace, Jr. 101.

O'Reilly v. Morse, 15 How. U. S. 62.

and though the Act of Congress of 1836 has made considerable alterations in the preexisting laws, respecting the organization of the patent-office, and the limitations on the granting of patents, yet the essential and established doctrines concerning patents, heretofore declared in the decisions of the courts, remain unaffected. The Act of 1793 declared, that simply changing the form or the proportions of any machine or composition of matter in any degree was not a discovery. And also, that the person who had discovered an improvement in the principle of any machine, or in the process of any composition of matter, might obtain a patent for such improvement, but that he could not thereby make, use, or vend the original discovery, nor could the first inventor use the improvement. These declaratory provisions are omitted in the law of 1836, and I presume the construction was considered to be necessarily the same without the provision. (c)

(c) The Act of Congress of July 4, 1836, authorized the extension of a patent for seven years, on the application of the executor or administrator of the deceased patentee; and such extension, according to the decision in the case of Wilson v. Rousseau, 4 How. U. S. 646, inures to the benefit of the administrator, &c., as such, and is good, though the original patenteee had in his lifetime disposed of all his interest in the patent, inasmuch as such sales do not carry anything beyond the term of the original patent. But it is Leld, that the assignees, who were in use of the patent at the time of the renewal, have still a right to use it during the new term, though not to sell it. This subject is full of difficulty, and the confidence in the decision is much impaired by the conflicting discussions and decisions on the bench, some of the judges contending that unless the assignment gave to the assignee the right in the extended or renewed patent, his interest would expire with the limitation of the original patent. It is held, in Woodworth v. Sherman, 3 Story, 171, that the assignee or grantee under the original patent does not acquire any right under the extended patent, unless such a right be expressly conveyed to him by the patentee. But the extension of a patent may be granted to an administrator. Washburn v. Gould, Ibid. 122. An assignee of a patent right takes only such rights as the inventor had, and if the inventor be an alien, and not within the specified qualifications required of an alien, his assignee takes no title.9 Tatham v. Loving, C. C. Massachusetts District, May Term, 1845.

The assignee has a right to make bonâ fide and reasonable repairs upon his machine, according to the usual and established course of business, or to supply a particular or effective part; but he has no right to reconstruct it, or to build a substantially new machine on the old frame. Wilson v. Simpson, 9 How. U. S. 109. See, also, Woodworth v. Curtis, 2 Wood & M. 524. A special Act, extending a patent, is considered as engrafted on the general law. A party, purchasing a right under the general law, is entitled to use it during the extension authorized by the special Act. Bloomer v. McQueewan, 14 How. U. S. 538.

8 Brooks v. Bicknell, 4 McL. 64. Phelps v. Comstock, Ibid. 353. Case v. Redfield, Ibid. 526. 9 But a contract may be made to convey future inventions or improvements. Nesmith v. Calvert, 1 Wood. & M. 34.

*

In an age distinguished for an active and ardent spirit of improvement in the arts of agriculture and manufactures, and * 368 in the machinery of every kind applied to their use, the doctrine of patent rights has attracted much discussion, and become a subject of deep interest, both here and in Europe. (a)

The circuit courts of the United States have original jurisdiction over the question of damages for the infringement of patent rights, and exclusive authority to declare a patent void. (b)1 It

(a) Patents are no doubt procured in many cases for frivolous and useless alterations in articles, implements, and machines in common use, under the name of improvements; and the abuses arising from the facility in suing out patents and provoking litigation, were painted in glowing colors by the district judge at New York, in Thompson v. Haight, (U. S. Law Journal, vol. i. p. 563,) and yet the collection of models and machines in the patent-office, relating to every possible subject, constitutes a singularly curious museum of the arts, and one strongly illustrative of the inventive and enterprising genius of our countrymen. The Act of Congress of July 4th, 1836, ch. 357, sec. 20, gave authority and facility to the classification and arrangement in rooms and galleries, for a beneficial and favorable display of the unpatented models and specimens of compositions, and of fabrics and other manufactures and works of art, and machines and implements relating to agriculture deposited in the office.

On the morning of the 15th of December, 1836, the building at the city of Washington, containing the general post-office, the city post-office, and the patent-office, was destroyed by fire, and all the machines and other materials and matter in the patent-office were consumed. The loss of the patent-office and all its contents was a national calamity; and to repair it as far as possible, the Act of 3d March, 1837, ch. 45, provided for the recording anew of patents and assignments of patents recorded prior to the 15th December, 1836, and for issuing new patents for those destroyed. Duplicates of the most interesting models destroyed were to be procured by the officers of the patent-office, at an expense not exceeding $100,000.

(b) Act of Congress of July 4th, 1836. See the former Acts of Congress of 21st February, 1793, ch. 11, secs. 6, 10; 17th April, 1800, ch. 25, sec. 3; 15th February, 1819, ch. 19; Parsons v. Barnard, 7 Johns. 144; Supra, vol. i. p. 303. But in Burrall v. Jewett, 2 Paige, 134, the Court of Chancery in New York sustained jurisdiction in the case of a patent, by investigating the merits of a patent claim and by ordering a contract in relation to the sale of a patent right to be rescinded, as being founded in mistake. It was considered, in the last case, that the jurisdiction of the circuit courts of the United

1 A bill in equity, to enforce a specific performance of a contract to convey a patent, it seems, is not "a case arising under the laws of the United States." Nesmith v. Calvert, 1 Wood. & M. 34.

The right of patent will be enforced against foreigners coming to England with machinery constructed in their own country, if the machinery be within the English patent. Caldwell v. Van Vlissengen, 9 Eng. L. & Eq. 51. But the United States Patent Law has received a different construction. Brown v. Duchesne, 2 Curtis C. C. 371, S. C. 19 How. U. S. 183; and since the case of Caldwell v. Van Vlissengen, the English law on this subject has been changed by Stat. 15 & 16 Vict. ch. 83, sec. 26. 4 Chitty's Statutes, 217.

has been adjudged in the federal courts that the first inventor who has reduced his invention first to practice, and put it to some real and beneficial use, however limited in extent, is entitled to a priority of the patent right; and a subsequent inventor cannot sustain his claim, although he be an original inventor, and has obtained the first patent. The law, in such case, cannot give the whole patent right to each inventor, even if each be equally entitled to the merit of being an original and independent inventor; and it therefore adopts the maxim, qui prior est in tempore, potior est in jure. If the patentee be not the first or original inventor, in reference to all the world, he is not entitled to a patent, even though he had no knowledge of the previous use or previous description of the invention, in any printed publi- * 369 cation, for the law presumes he may have known it. (a) If the first inventor has suffered his invention to go into public use, or to be publicly sold for use, before taking out a patent, the better opinion and the weight of authority is, that he cannot afterwards resume the invention, and hold the patent. This voluntary act or acquiescence in the public sale or use is an abandonment of his right, for it creates a disability to comply with the terms and conditions of the patent law. It would be unreasonable and injurious for a person to be permitted to lie by, and suffer his invention or improvement to go into use, and expensive undertakings to be assumed, and machinery constructed for the application of that invention, and then sue out a patent

States, in respect to patents, under the Act of Congress, 15th February, 1819, was not exclusive, except to the extent mentioned in the text. But since the Act of Congress of July, 1836, it has been held, in the New York Court of Chancery, that the courts of the United States have exclusive cognizance of suits in equity, relative to interfering patents, in cases where the court may declare a patent void in whole or in part.2 Gibson v. Woodworth, Paige, 132. But where the validity of patent rights comes in collaterally, they are necessarily the subject of inquiry in the state courts. Rich v. Atwater, 16 Conn. 409,3 By the Revised Patent Act of 1836, the former statute provisions are essentially superseded.

(a) Woodcock v. Parker, 1 Gallison 438. Bedford v. Hunt, 1 Mason, 302. Evans v. Eaton, 3 Wheaton, 454. 1 Peters C. C. 322, S. C. Reutgen v. Kanowrs, 1 Wash. C. C. 168. Dawson v. Follen, 2 Ibid. 311. Shaw v. Cooper, 7 Peters U. S. 292. Whitney v. Emmett, Bald. C. C. U. S. 303.

2 So, also, in Dudley v. Mayhew, 3 Comst. 9. The consent of the parties cannot give the court jurisdiction.

3 But the contrary was held in Elmer v. Pennell, 40 Maine, 430. And see Thomas v. Quintard, 5 Duer (N. Y.) 80.

and arrest all such proceedings. The just inference from such delay is, that he has made an abandonment or surrender of his discovery to the public; and a similar construction has been put upon the English statute of monopolies of 21 James I. ch. 3. (b) The use or knowledge of the invention, prior to the application for a patent, will not affect the right of the inventor, provided that knowledge was surreptitiously obtained and communicated to the public, and there is no acquiescence in the public use by the inventor, and he immediately asserts his right. (c) 3 But after the patent has been obtained, any disuse of it by the patentee, unless he be an alien, within the fourteen years, is not, of itself, an abandonment of his right. (d) It has been a point of some

(b) Whittemore v. Cutter, 1 Gallison, 478. Thompson v. Haight, U. S. Law Journal, vol. i. p. 563. Morris v. Huntington, 1 Paine, 368. Mellus v. Silsbee, 4 Mason, 108. Pennock and Sellers v. Dialogue, 2 Peters U. S. 1. Gray v. James, 1 Peters C. C. 394. Wyeth v. Stone, 1 Story C. C. 273. Rundell v. Murray, 3 Jacob, 311, 316. Saunders v. Smith, 3 Myl. & Craig, 711, 735. Wood v. Zimmer, 1 Holt N. P. 58. If the first inventor keeps his invention a secret, or does not put it in practice until another person makes the same invention and obtains a patent for it, the patent is valid and will prevail. Dollond's case, cited by Buller J., in 2 H. Blacks. 487. It is the first inventor who has put the invention in practice, and he only, that is entitled to a patent. Story J., in Bedford v. Hunt, 1 Mason, 304. The doctrine in Dollond's case is not law in the United States. The first, as well as the original inventor, who first perfects and adapts his patent to use, is entitled to a patent, though he had kept his invention in secret. Reed v. Cutter, 1 Story C. C. 590. And again it is said, that whoever finally perfects a machine, and renders it capable of useful operation, is entitled to a patent, although others may have had the idea, and made experiments towards putting it in practice.2 Washburn v. Gould, 3 Story C. C. 122. The English statute of monopolies, and the French law according to M. Renouard, confine the patent to inventions not in use at the time of the patent. The Act of Congress of 1836 is more large and liberal, and it only requires the invention to be new at the time of the invention, and not in use at the time of the application for the patent. The French doctrine on this point is unreasonable, for, according to that doctrine, even if there be a confidential disclosure of the invention, prior to a patent, or if the public have acquired the knowledge of it by other means, they are not bound afterwards to buy the secret, though a subsequent patent be obtained, for it is no longer a novelty. Renouard's Traité des Brevets d'Invention, p. 170, edit. Paris, 1825. (c) Shaw v. Cooper, 7 Peters U. S. 292.

(d) Gray and Osgood v. James, 1 Peters C. C. 403.

1 In re Adamson's Patent, 35 Eng. L. & Eq. 327. But a special permission to an individual to use the invention is not an abandonment. McKay v. Burr, 6 Barr, 147. The owner of secret medicine can restrain his operatives from setting it up against their employer. Morison v. Moat, 9 Eng. L. & Eq. 182.

2 See Parker v. Ferguson, 1 Blatch. 407; Parkhurst v. Kinsman, Ibid. 488; Goodyear v. Day, 2 Wallace, Jr. 283.

Hovey v. Stevens, 1 Wood. & M. 291.