fringer. In the other case cited the validity of the patent and the right of the plaintiff to the exclusive use of it were the subject of controversy; and it was held that those cases were within the exclusive jurisdiction of the Federal court. The cases generally where it has been held that the State court had jurisdiction upon the subject have been those founded upon contract to which the defendants were parties. Such were Hartell v. Tilghman (99 U. S., 517) and Dale Tile Manufacturing Co. v. Hyatt, (C. D., 1888, 312; 125 U. S., 46; 8 Sup. Ct. Rep., 756.) But that was not so in Hill v. Whitcomb, (5 O. G., 430; 1 Holmes, 317.) And, inasmuch as the validity of the patent and the license in the present case were admitted, there was practically no conflict of claim, other than such as arose upon the construction of the instrument of license to the plaintiffs; and for that reason, we think, it involved the consideration of no question arising under any act of Congress in relation to patents; and in that view the case was properly in the State court for determination.
The plaintiffs insist that they took by the license, except as against one other licensee, the exclusive right to the use of the patent. Although such may have been the understanding of the plaintiffs, the patentee was not by the terms of the agreement denied the right to manufacture and sell the patented article, nor was she by any express provision of it required to retain the title in herself. Her covenant was that she would grant a license to one other person, firm, or corporation only. She held the title to the patent, and did not grant the exclusive right to its use to the licensees, but made the covenant before mentioned with a view to the protection, to that extent and in that manner, of the privileges granted to them. The assignment of the patent apparently carried with it to the assignee all the rights which remained in her in respect to it. It is said that whatever right to its use remained in the patentee after the licenses were granted were personal to her. If that were so, and the assignment operated, within the meaning of the contract, as a license to her assignee, it would follow that she committed a breach of the covenant for which she would be liable to the plaintiffs. But it is not seen how that had the effect to charge the defendant, because, as against him, the rights of the plaintiffs rest upon the grant to them, and not upon the covenant made by the pat entee for their protection in the use of the rights granted, as against other licensees. Upon the construction of the grant of the license to the plaintiffs, we fail to see any support for the conclusion of the trial court that the defendant, in manufacturing and selling the patented article, was a wrong-doer and trespasser against the rights of the plaintiff's taken by the license granted to them.
The judgment entered upon the order of the general term, so far as it dismissed the complaint, should be reversed, in other respects affirmed, and a new trial granted, costs to abide the event.
All concur, except Brown, J., not sitting.
[Decisions of the United States courts are indicated by an asterisk (*), of the Secretary of the
Interior by a dagger (†), and of the State courts by a double dagger (4).]
ABANDONED CAVEAT. See First and Original Inventor, 5.
ABANDONED EXPERIMENTS. See Invention, 9.
ABANDONMENT. See Designs, 25: Interference, 39, 40.
1. EVIDENCE TO NEGATIVE-REVISED STATUTES OF THE UNITED STATES,
SECTION 4894.-To negative abandonment it is necessary for applicant
to show that the delay for the whole period from the last official action
to the filing of the petition was unavoidable. The mere failure of appli-
cant's attorneys to notify him of his rights after the last official action
and the alleged neglect on their part to prosecute the case are not suffi-
cient excuses. Ex parte Murray, 130.
2. PETITION FOR REVIVAL.-A petition for the revival of an abandoned ap-
plication should aver facts showing that the delay for the whole period
from the last official action to the filing of the petition was unavoidable.
Ex parte Edison, 133.
3. MISUNDERSTANDING OF ATTORNEYS.-A misunderstanding of the attor-
neys of the different parties in interest of an invention as to their duties
is not sufficient to warrant a holding that a delay of over two years in
the prosecution of a case was unavoidable. Ex parte Macphail, 134.
4. NONCOMPLIANCE WITH THE REQUIREMENTS OF THE OFFICE.-When an
Examiner makes a definite requirement of an applicant, with a sugges
tion as to other things that are desired, it is the requirement, and not
the suggestion, that applicant must act on within two years in order to
avoid abandonment. Ex parte Hume, 168.
5. REQUIREMENTS OF THE OFFICE.-Applicant filed his application Septem-
ber 16, 1879, and after various amendments filed a substitute specifica-
tion January 25, 1885. On February 13, 1885, the Examiner required di-
vision, which requirement was not finally complied with until July 20,
1891, the only action between these dates consisting of objections to the
requirements by the applicant and their reiteration by the Office, the last
letter from the office repeating requirements being of July 25, 1889.
Held that the Examiner's letters must be taken as satisfying section 4894
of the Revised Statutes and as saving the case from abandonment. Ex
parte Hunter, 198.
6. CONSTRUCTION OF STATUTES.-Section 4894 of the Revised Statutes, re-
quiring that an application shall be completed an 1 prepared for exam-
ination within two years after filing, gives ample time to the applicant,
and public policy demands that this Office shall consider it as exhaust-
ing the liberality which the law requires as regards forfeitures. Ex
parte Price, 201.
7. PROOF OF ABANDONMENT.-Abandonment is never presumed, but must
always be strictly proved. Clark v. Broad, 217.
ACTION AT LAW. See Statute of Limitations; Suits for Infringement, 6.
AFFIDAVITS. See Interference, 7, 16, 57.
AGGREGATION. See Invention, 1, 5, 18.
AGREEMENTS. See Assignments, 5, 6, 8.
AMENDMENTS. See Priority of Invention, 1; Withdrawal of Case from Issue,
1, 2.
1. DEPARTURE FROM INVENTION.-Amendments involving departure of in-
vention raise no question for the Examiners-in-Chief unless they consist
of new claims, either in whole or in part, or unless they alter or enlarge
the meaning of old claims already in the case. Ex parte Gäbel, 65.
2. APPLICATION—AMENDMENT.-Amendments, without new oaths, in cor-
rection or amplification by attorneys in the specification and claims upon
which the patents were granted are allowable. Whether proposed
amendments come within the scope of what is proper in that behalf
rests largely in the discretion of the Commissioner. *Wirt v. Hicks et al,
395.
3. DUTY OF OFFICIALS.-Officials of the Patent Office should be upon their
guard against amendments. made late in the history of proceedings upon
an application, which are apparently inspired by the purpose of domi-
nating inventions subsequently made by other inventors and not em-
braced within the scope of the application as originally filed. Rogers v.
Winssinger, 111.
4. AMENDMENTS AFTER FINAL REJECTION.-An amendment upon the merits
after final rejection should be accompanied by a verified showing of good
and sufficient reasons why it was not earlier presented. Ex parte Pelou-
bet, 121.
5. SAME-AFTER APPEAL.-Amendments after appeal may be admitted for
the purpose of putting the rejected claim in better form for considera-
tion on appeal. Such amendments should not vary the scope of the
claim. If they have been admitted and do vary the scope of the claim
the appellate tribunal should not pass upon the merits, but the case
should be sent back to the Primary Examiner for action. Ex parte
Hooper and Clark, 123.
6. SAME AFTER ISSUE.-Amendments not affecting the merits of the appli-
cation, but intended to correct formal matters, may be admitted under
Rule 78. Ex parte Cornelius, 124.
7. SAME. When, however, such amendments affect the merits they cannot
be made without withdrawing the case from issue. Such withdrawal
will be made only upon a proper showing. Id.
8. NEW MATTER.-After an amendment supposed to contain new matter has
been incorporated into the application the question as to whether or not
said amendment really contains new matter is one involving the merits,
and hence is appealable to the Examiners-in-Chief. It is not a question
whether Rule 70 shall or shall not be applied. Ex parte Nicolin and
Ochsenreiter, 155.
9. DEPARTURE FROM ORIGINAL BASIS OF INVENTION.-A petition does not
lie directly to the Commissioner under Rule 145 simply on the point
whether or not a proposed amendment involves a departure from the
invention disclosed in the application as originally presented. This
question is one which involves the merits, and appeal lies to the Exam-
iners-in-Chief under Rule 133. Ex parte Turner, Van Beek, and Brown,
ANALOGOUS DEVICES. See Infringement, 2, 7, 8.
ANALOGOUS USE. See Invention, 3; Patentability.
ANTICIPATION. See Particular Patents, 2; Priority of Invention, 4.
APPARATUS AND PROCESS. See Division of Application, 10.
APPEAL FEES. See Appeal to the Examiners-in-Chief, 1, 2.
APPEAL FROM PRIMARY EXAMINER. See Interference, 3.
1. APPEALS-RULE 124 (3) CONSTRUED.-Questions involving "the merits of
an invention" are questions concerning the meritorious or unmeritorious
attitude of an alleged invention to the antecedent rights of the public;
or, in other words, questions other than questions of "form" arising be-
tween the applicant and the Office. The presence in Rule 124 of the
words quoted means no more than that the questions which go to the Ex-
aminers-in-Chief, when they arise directly under Rule 133, go to the same
tribunal when they arise collaterally under Rule 123. Zeidler et al v.
Leech et al., 9.
2. SAME-SAME.—All appeals in which, under the rule, the party only “whose
claim is affected" has a right to be heard lie to the Examiners-in-Chief,
and if decided adversely by them, to the Commissioner, and if by him
decided adversely, to the Supreme Court of the District of Columbia.
All appeals from the Examiner's decision upon motions to dissolve upon
which both parties have the right to be heard go directly to the Com-
missioner, and from his decision there is no further appeal. Id.
APPEALS. See Interference, 41, 44, 56.
FROM AFFIRMATIVE ACTION OF EXAMINER.-No appeal can be taken to any
tribunal from the decision of a Primary Examiner affirming the patenta-
bility of a claim or the applicant's right to make the same.
Stanley, Jr., 173.
APPEAL TO THE COMMISSIONER. See Designs, 12.
1. APPEAL FROM THE EXAMINERS-IN-CHIEF.-No appeal lies to the Commis-
sicner from a refusal of the Examiners-in-Chief to direct the attention
of the Commissioner in a decision in an interference case to certain pat-
ents alleged by one of the contestants to constitute a statutory bar.
Schmiedl v. Walden, 150.
2. OBJECTIONS TO FORM OF CLAIMS.-Objections that a claim is indefinite or
that certain claims are substantially identical pertain to form and a pe-
tition lies to the Commissioner. Ex parte Eastman, 178.
APPEAL TO THE EXAMINERS-IN-CHIEF. See Amendments 8,9; Designs,
11; Division of Application, 9, 13, 14;· Examination of Applications, 1, 3;
Interference, 21, 47; Reissues, 7.
1. APPEAL FEES.-An applicant will be required to pay only one fee on a
single application on appeal to the Examiners-in-Chief, even if such ap-
peal be repeated. Ex parte Thomson, 138.
2. INTERFERENCES-APPEAL TO THE EXAMINERS-IN-CHIEF.-Only those
parties are entitled to be heard by the Examiners-in-Chief who have spe-
cifically entered an appeal and paid the fee thereon. Shinn v. Baker v.
Gold, 139.
3. INOPERATIVENESS-RULE 133.-The question of inoperativeness is one
which goes to the merits of the invention, and from a rejection on this
ground an appeal lies to the Examiners-in-Chief. Ex parte Ferguson,
4. OBJECTIONS TO SUBSTANCE OF A CLAIM.-Objections that a claim is drawn
to a bad combination, or that it is for an aggregation, or that it does not
involve invention, pertain to the merits and an appeal lies to the Ex-
aminers-in-Chief. Ex parte Eastman, 178.
APPEAL TO THE SUPREME COURT OF THE UNITED STATES. See
Parties to Suit, 2: Subsequent Patents. 4.
1. APPEAL BOND.-An appeal with no other bond than a bond for costs does
not act as a supersedeas. Daniels v. Morgan, 31.
2. FROM FINAL DECREE OF CIRCUIT COURT.-An appeal from the final decree
of a circuit court must be taken within two years from the entry of such
decree or it will not be entertained. *Fowler v. Hamill, 381.
APPLICANT'S RIGHT TO INSPECT AN ASSIGNED APPLICATION. See
Inspection of an Assigned Application by Applicant, 1.
APPLICATIONS.-See Concurrent Applications; Copies of Pending Applications,
2: Description; Division of Application; Forfeited Cases; Infringement, 1;
Inks required in the Preparation of Papers for the Files of the Patent Office;
Inspection of an Assigned Application by Applicant; Interference, 18.
ASSIGNED APPLICATIONS. See Concurrent Applications; Inspection of an
Assigned Application by Applicant.
ASSIGNEES. See Parties to Suit, 3; Renewal of Forfeited Cases, 1.
ASSIGNEE'S RIGHT TO APPEAR AS A GRANTEE IN A PATENT. See
Assignments, 4.
ASSIGNMENT OF TRADE MARKS. See Trade-Marks, 9, 10.
ASSIGNMENTS. See Concurrent Applications; Contracts, 1; Infringement, 6;
Inspection of an Assigned Application by Applicant, 1; Licenses, 1, 2, 3, 4;
Parties to Suit, 1, 4, 5; Trade-Marks, 9, 10.
1. ASSIGNMENTS DEFINED.-An assignment is an instrument in writing, con-
veying either (1) the whole patent, comprising the exclusive right to
make, use, and vend the invention throughout the United States; or (2)
an undivided part or share of that exclusive right; or (3) the exclusive
right under the patent within and throughout a specified part of the
United States. *Waterman v. Mackenzie et al., 320.
2. SAME-TITLE-RIGHT TO SUE.-Such an instrument vests in the assignee
a title in so much of the patent itself, with a right to sue infringers,
alone in the first and third cases and jointly with the assignor in the
second. *Id.
3. LICENSE-RIGHT TO SUE.-Any other transfer is a mere license, giving
the licensee no title in the patent and no right to sue at law in his own
name for an infringement. *Id.
4. RULE 26—ASSIGNMENT.—Although a transfer of the exclusive right to a
patent within and throughout a specified part of the United States is,
properly speaking, an assignment, and vests in the assignee a title to
so much of the patent itself, with the right to sue infringers, yet section
4895 of the Revised Statutes, as interpreted by section 4916 thereof, and
as always and consistently understood by the framers of the Rules of
Practice, authorizes the Commissioner to grant a patent only to assignees
of the entire interest or undivided parts thereof. Ex parte Buchanan,
104.
5. WRITTEN AGREEMENT-PAROL TESTIMONY TO EXPLAIN.-When a written
agreement is uncertain and shows a patent ambiguity, it is proper to
admit parol testimony to explain it, and to construe it according to such
testimony adduced. Ligowsky v. Peters v. Hisey, 225.
6. AGREEMENT—ESTOPPEL.—An agreement or contract to create an estoppel
must be of certain intent and effect, and leave nothing open to conjec-
ture. Id.
7. WHAT MAY CONSTITUTE-LICENSE.-
-"In consideration of the premises
* * I * ** do hereby license and convey *
* the full
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