and by its president with his seal, is good as to both, see Campbell. James, 18 O. G. 979. It is not required that an assignment be under seal, see Gottfried v. Miller, 21 O. G. 711; nor need the signature of the assignor be witnessed or acknowledged in order to be effective.

AS TO ASSIGNMENT BEFORE ISSUE OF PATENT.-The right to an invention dates from its discovery, see Wintermute v. Redington, 1 Fisher, 239; and an assignment before patent is valid, see Cammeyer v. Newton, 11 O. G. 287. A patent cannot issue to the assignee, however, unless the assignment contains a request to that effect and is duly recorded as prescribed by the rules, see Wright v. Randell, 21 O. G. 493. Rule 215 requires that such an assignment be presented for record at a date not later than the day upon which the final fee is paid. The invention should be identified in the instrument by the name of the inventor, the serial number, and date of application.

ASSIGNMENT SHOULD BE RECORDED.-An unrecorded assignment, grant or conveyance, is valid between the parties thereto, see Horne v. Chatham, 64 Tex., 36; Turnbull . Weir Plow Co., 7 O. G. 173; and is good, except against creditors and subsequent bona fide purchasers, see Holden v. Curtis, 2 N. H., 61; for one who knows of an unrecorded assignment cannot be a bona fide purchaser, see Ashcroft e. Walworth, 2 O. G. 546; and an assignment though unrecorded is good against all who have actual notice, see Maurice v. Devol, 23 W. Va., 247; Ashcroft e. Walworth, 2 O. G. 546; but in order that the record may be constructive notice to intending purchasers, the assignment must be recorded within three months from the date of its execution. After three months without record a prior conveyance becomes invalid as against a later transfer, except in cases where the later purchaser had actual notice of the existence of the prior assignment. An assignment is not valid against innocent parties unless recorded, see Boyd v. McAlpin, 3 McLean, 427. It should be observed, however, that the record although made after three months have elapsed, affords constructive notice to all persons acquiring interests in the invention subsequently to the date of record, see Brooks v. Byam, 2 Story, 525; Case v. Redfield, 4 McLean, 526; also that section 4895 does not provide for recording assignments of unpatented inventions, unless the patent is to issue to the assignee, and if recorded, such record is not notice to anyone, see Wright . Randel, 21 O. G. 493; also that the record of an instrument which the law does not require to be recorded is not constructive notice of anything to any person, see Wright ». Randel, 21 O. G. 493; and that the law provides for the recording of these instruments only an assignment before issue, when the patent is to issue to the assignee, either alone or jointly with the inventor; an assignment after patent; a grant of a territorial interest; and a license, see Brooks v. Byram, 2 Story, 525. A single assignment may transfer several patents, but to avoid confusion on the records, a separate conveyance for each patent is desirable.

PERSONS PURCHASING OF INVENTOR, BEFORE APPLICATION, MAY USE

OR SELL THE THING PURCHASED.

SEC. 4899.-Every person who purchases of the inventor or discoverer, or, with his knowledge and consent, constructs any newly invented or discovered machine, or other patentable article, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or purchased, without liability therefor.

The object of this provision is evidently two-fold: 1st, to protect the person who has used the thing patented by having purchased, constructed, or made the machine, etc., to which the invention is applied, from any liability to the patentee or his assignee; 2nd, to protect the rights granted to the patentee against any infringement by any other persons.

The "purchaser" here spoken of is a purchaser not from a mere wrong-doer, but from the first and true inventor before he obtained his patent, see Pierson v. Eagle Screw Co., 3 Story, 402. The right of a party who has bought, or constructed a machine before the application for a patent is confined to the specific machines so bought or constructed, see Brickillo. New York, 18 O. G. 463.

PATENTED ARTICLES MUST BE MARKED AS SUCH.

SEC. 4900. It shall be the duty of all patentees, and their assigns and legal representatives, and of all persons making or vending any

patented article for or under them, to give sufficient notice to the public that the same is patented; either by fixing thereon the words "patented," together with the day and year the patent was granted; or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is enclosed, a label containing the like notice; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented.

The duty of marking patented articles as "patented" devolves upon the manufacturer, see Wilson v. Singer Mfg. Co., 16 O. G. 1091. Unless the evidence shows that the statute has been complied with, only nominal damages can be recovered for infringements, see McComb v. Brodie, 2 O. G. 117. The failure to stamp prevents recovery of damages, but is no bar to an injunction either preliminary or perpetual, see Goodyear v. Allyn, 3 Fisher, 374. However, in McComb . Brodie, 2 O. G. 117, it was held that notice otherwise given is equivalent to a mark on the articles themselves in its effect on the right to substantial damages.

PENALTY FOR FALSELY MARKING OR LABELING ARTICLES AS PATENTED. SEC. 4901.-Every person who, in any manner, marks upon anything made, used, or sold by him for which he has not obtained a patent, the name or any imitation of the name of any person who has obtained a a patent therefor, without the consent of such patentee, or his assigns or legal representatives; or

Who, in any manner, marks upon or affixes to any such patented article the word "patent" or "patentee," or the words "letters patent," or any word of like import, with intent to imitate or counterfeit the mark or device of the patentee, without having the license or consent of such patentee or his assigns or legal representatives; or

Who, in any manner, marks upon or affixes to any unpatented article the word "patent" or any word importing that the same is patented, for the purpose of deceiving the public, shall be liable, for every such offence, to a penalty of not less than one hundred dollars, with costs; onehalf of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offense may have been committed.

The object of this provision is to prevent fraudulent imposition upon the community at large. The marking is an offense, though no sales result, sce Nichols v. Newell, 1 Fisher, 647; and however the mark may be put on, Idem. The fine may be recovered by any person in a qui tam action brought in the name of the informer, not of the United States. The suit can be maintained only in the district in which the stamping was done, and not where the goods were sold, see Pentlarge . Kirby, 19 Fed. Rep. 501. Acts of employees in false stamping are acts of the principal, see Kass v. Hawlowetz, 33 0. G. A corporation may violate this act through its officers, see Thompkins v. Butterfield, 33 O. G. 758.

1135.

FILING AND EFFECT OF CAVEATS.

SEC. 4902.-Any citizen of the United States who makes any new invention or discovery, and desires further time to mature the same, may, on payment of the fees required by law, file in the Patent Office a caveat setting forth the design thereof, and of its distinguishing characteristics, and praying protection of his right until he shall have matured

his invention. Such caveat shall be filed in the confidential archives of the office and preserved in secrecy, and shall be operative for the term of one year from the filing thereof; and if application is made within the year by any other person for a patent with which such caveat would in any manner interfere, the Commissioner shall deposit the description, specification, drawings, and model of such application in like manner in the confidential archives of the office, and give notice thereof, by mail, to the person by whom the caveat was filed. If such person desires to avail himself of his caveat, he shall file his description, specifications, drawings, and model within three months from the time of placing the notice in the post office in Washington, with the usual time required for transmitting it to the caveator added thereto; which time shall be indorsed on the notice. An alien shall have the privilege herein granted, if he has resided in the United States one year next preceding the filing of his caveat, and has made oath of his intention to become a citizen.

Rules of Practice, 1892.-197 to 209, 15, 154.

The purpose of a caveat is to prevent the grant of a patent for the same invention to another person, without notice to the caveator, in case an application should be filed by another inventor during the existence of the caveat. Thus it simply entitles an inventor to a certain notice. It gives him no advantage over such other applicant, and imposes no obligation upon him either to file an application for patent after receiving such notice, or to oppose the grant of a patent to the other inventor. It simply affords him the opportunity to do so, and allows him the term of three months for preparing and filing his application. If, during the time which elapses between the filing of the caveat and his application the inventor allows his invention to go into public use, his caveat will not protect him, see Bell v. Daniels, 1 Fisher, 377. A caveat cannot be filed for a design, as a design cannot exist at all until it is complete enough to be patented, see ex parte Čarty, 44 O. G. 570. A caveat for a joint invention may be signed by one of the inventors only, see ex parte Gray, 12 O. G. 396. A patent issued on a subsequent application without notice to the caveator is "surreptitiously obtained," see Philips . Brown, 4 Blatch., 362; and gives no advantage to the patentee, but as against the caveator he will still be treated as a rival applicant, see Ware . Bullock, 7 O. G. 39.

A caveat may be renewed from year to year upon payment of the fees.

NOTICE OF REJECTION OF CLAIM FOR PATENT TO BE GIVEN TO

APPLICANT.

SEC. 4903.-Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a re-examination of the case.

Rules of Practice, 1892.-65, 66, 67, 69 to 78.

For statement as to prosecution of application, rejections, right of applicant to amend, etc., see notes to section 4893, ante.

The specification is always open to amendment of its description and claims, until the application is finally disposed of by the granting of the patent or otherwise.

After a first rejection the applicant may insist upon his claim as presented. If the examiner re-affirms his former decision, without supporting it with fresh references, the rejection is final, and there is no remedy but appeal. But if the examiner gives new references, the applicant has a right to reply to them or to amend his specification, see ex parte Appleton, 1 Dec. Com. 8. If a reference is a domestic patent, or if it is a foreign patent or a publication, the applicant may avoid the reference by an affidavit showing his completion of the invention before the filing of the application for the

domestic patent, or before the date of the foreign patent, or the publication, and averring that he does not know or believe that the invention has been in public use or on sale in this country for more than two years prior to his application, and that he has never abandoned the invention. Foreign inventors may show that their inventions were known in this country before the dates of their applications, and can go back to the dates of any prior foreign patent granted to them for the same invention, but cannot show use abroad prior to the dates of their patents, see ex parte Lamfrey, 20 O. G. 892. In case the prior patent cited is an unexpired domestic patent, an interference arises upon the filing of the affidavit above referred to. (See Section 4904 and notes as to proceedings in interferences.)

INTERFERENCES.

SEC. 4904. Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the primary examiner, or of the board of examinersin-chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe.

Rules of Practice, 1892.-93 to 132, 146, 147.

INTERFERENCES DEFINED.-An interference is a proceeding instituted in the Patent Office for the purpose of determining the priority of the inventive act between two or more parties claiming substantially the same patentable invention. The intent of the law is that a patent shall be granted to the first and original inventor, and in an interference proceeding the sole question is that of the priority of the inventive act, see Hicks. Keating, 40 O. G. 343. Where there are rival claimants for the same invention it becomes the duty of the Patent Office to ascertain which of the claimants is the true and first inventor. To determine this fact a judicial proceeding is instituted, in which each of the claimants is required to prove the date upon which he conceived the invention, each of the parties having the right to be heard by evidence and argument in defense of his own claims and in opposition to the claims of his opponents. When all the testimony has been taken, the examiner of interferences passes upon the evidence and declares which of the claimants appears to be the true and first inventor and is entitled to a patent. This judicial proceeding is called an Interference.

WHEN DECLARED.-Interferences will be declared between two or more pending applications, whether original or for re-issues; or between one or more pending applications (whether original or for re-issues) and any unexpired patent or patents, when all the parties claim substantially the same patentable invention, see Sawyer v. Edison, 25 O. G. 597. An interference cannot be declared between an application and an unexpired patent unless the later applicant claims priority under oath, see Thomas v. Reese, 17 O. G. 195. An interference cannot be declared against an expired patent, see ex parte Mason, 9 O. G. 1196; nor with forfeited or abandoned applications, see Starr v. Farmer, 23 O. G. 2325. An interference between two or more patents cannot be adjudicated in the Patent Office, see Nicholson v. Bennett, 16 O. G. 631; and it should be observed that a judgment against a patent in an interference proceeding does not annul the patent, but simply awards a patent to the rival, see C. A. Yale Cigar Mfg. Co. v. Yale, 30 O. G. 1183. As to interfering patents, see Section 4918 and notes.

Under former rules of the Patent Office an interference was declared where applications might be so amended as to include conflicting claims, although the conflicting matter was not so claimed at the time the interference was instituted. At the present time the rules forbid the declaration of an interference until the conflict appears specifically in the claims.

An application does not conflict with another application, or an unexpired patent, unless the invention covered by each specification is substantially the same, see ex parte Lassall, 28 O. G. 1274. Similarity or diversity in name and appearance are of no consequence, and an interference may be declared whenever the inventions conflict, see Drawbaugh v. Blake, 30 O. G. 259.

An application for a design patent may interfere with one for a mechanical invention, if both claim the same subject matter, see Collender v. Griffith, 3 O. G. 91.

When only part of the invention included in an application is involved in an interference, the applicant may file certified copies of the part or parts of the specification, claims, and drawings which cover the interfering matter, and such copies may be used in the proceeding in place of the original application. The applicant may then withdraw from his application the subject matter adjudged not to interfere, and file a new application therefor, or he may file a divisional application for the subject-matter involved, if the invention can be legitimately divided; no claim, however, can be made in either application broad enough to include matter claimed in the other, see ex parte Wheeler, 23 O. G. 1031; ex parte Clarke, 26 O. G. 824.

Amendments to an application while in interference can be made only for the purpose of withdrawing its subject-matter, wholly or in part, from the conflict in which it is involved. An applicant who prefers to abandon his claim to the contested matter rather than incur the expense, delay and risks of an interference, may file, before the date fixed for lodging his preliminary statement, a disclaimer in writing over his own signature, and attested by two witnesses, averring that he does not claim to be the inventor of the particular matter at issue. This disclaimer should be accompanied by an amendment removing the contested matter from his application and claims. Where there has been an assignment of any interest, such disclaimer must be accompanied by the written consent of the assignee, see Laverty v. Flagg, 16 O. G. 1141.

PROCEDURE IN INTERFERENCES.-Where a primary examiner believes that an interference exists, it becomes his duty, after all preliminary questions are settled, to forward all the papers to the examiner of interferences, who reviews them, and if he finds that the papers are complete and in form, will declare the interference by sending notice of the same to the parties interested.

No interference will be declared until all preliminary questions have been settled by the primary examiner, and the invention decided to be patentable, see ex parte Bland, 18 O. G. 47. The primary examiner decides whether the claims interfere, see Faure v. Bradley, 44 O. G. 945; ex parte Saunders, 23 O. G. 1224; and whenever there is any doubt in his opinion as to the conflict of the inventions it is his duty to notify the applicants, and require them to state their claims in such a manner that the nature and extent of their antagonism will become distinct and unmistakable. Upon receipt of this notice, and within the time therein specified, all the parties must put their claims in such condition that no further change in them will be required to precisely cover their respective rights. The examiner may grant an extension of time if it be found necessary or desirable. Whenever a party fails to put his application in proper condition for an interference within the time specified, the declaration of interference will not be delayed. After final judgment of priority the application of such party will be held for revision and restriction, subject to interferences with other applications.

The notices of interferences define the exact issue involved, and contain a summary of the contested matter, see Dod v. Cobb, 10 O. G. 826; and name a time before which

the parties interested must file their preliminary statements. The time for filing a preliminary statement may be extended, upon motion duly made and served upon the other parties, if such extension be necessary. (See Rule 104.)

PRELIMINARY STATEMENTS.-The preliminary statement is a concise written recital, under oath, of the date of all the facts upon which the applicant intends to rely to support his claim of priority.

If the invention was made within the United States, the inventor must set forth in his statement:

(1.) The date of his original conception of the invention.

(2.) The date upon which a drawing of the invention was made.

(3.) The date upon which a model of the invention was made.

(4.) The date upon which the invention was first disclosed to others.

(5.) The date of the reduction to practice of the invention.

(6.) A statement showing the extent of use of the invention.

If a drawing or model has not been made, or if the invention has not been reduced to practice, or disclosed to others, or used to any extent, the statement must specifically disclose these facts, see Dermody v. Pennock, 14 O. G. 202.

If the invention was made abroad, the inventor must set forth :

(1.) That the applicant made the invention set forth in the declaration of interference.

(2.)

Whether or not the invention was ever patented; if so, when and where, giving the date and number of each patent.