For what a patent may be granted.

Application.

Specification.

4 July 1836 ? 6. art, (a) machine,(ʊ) manufacture (c) or composition of matter, (d) or any new and useful 5 Stat. 119. improvement (e) on any art, machine, manufacture or composition of matter, not known or used by others before his or their discovery or invention thereof,(g) and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer, and shall desire to obtain an exclusive property therein, may make application in writing to the commissioner of patents, expressing such desire; and the commissioner, on due proceedings had, may grant a patent therefor. But before any inventor shall receive a patent for any such new invention or discovery, he shall 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, (h) avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound and use the same; (i) 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 (k) or combination,(7) which he claims as his own invention or discovery. He shall, furthermore, accompany the whole with a drawing or drawings,(m) and written references, where the nature of the case admits of drawings; or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the patent office. And he shall moreover

Drawings.

Specimens.

(a) This term embraces the useful as distinguished from the fine arts. It applies to all those cases, where the application of a principle is the most important part of the invention, and where the machinery, apparatus or other means by which the principle is applied, is incidental only, and not of the essence of the invention. It applies also to all those cases where the result, effect or manufactured article is old, but the invention consists in a new process or method of producing such result, effect or manufacture. Curtis on Patents. 90. O'Reilly v. Morse, 15 How. 130. McClurg v. Kingsland, 1 Ibid. 202. Kneass v. Schuylkill Bank, 4 W. C. C. 9, 12. Gray v. James, Pet. C. C. 394. Evans v. Eaton, 1bid. 322. A process, eo nomine, is not made the subject of a patent; it is included under the general term "useful art." An art may require one or more processes or machines in order to produce a certain result or manufacture. Where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called processes. Corning v. Burden, 15 How. 267. But a principle is not patentable. A principle in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of ma chinery a new steam power may be said to have been generated; but no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may 1 applied to useful purposes by the use of machinery. Le Roy r. Tatham, 14 Ibid. 175. Detmold v. Reeves, 4 Am. L. J. 189. Whittemore v. Cutter, 1 Gall. 450. Neither is the substitution of a letter material for the manufacture of a particular article the subject of a patent. Hotchkiss v. Greenwood, 11 How. 248. s. C., 4 McLean, 457.

(b) The term machine includes every mechanical device or comlination of mechanical powers and devices to perform some function and produce a certain effect or result. Corning r. Burden, 15 How. 267. If the subject of the invention or discovery is not a mere function, but a function embodied in some particular Lechanism whose mode and general structure are pointed out, and which is designed to accomplish a particular purpose, function or effect, it will be a machine, in the sense of the patent law. Blanchard v. Sprague. 3 Sumn. 540. A machine is the subject of a patent, when well known effects are produced by machinery entirely new in all its combinations; or when a new or an old effect is produced by mechanism, of which the principle or modus operandi is new. Whittemore v. Cutter, 1 Gall. 450. See McCornick v. Manny, 6 McLean, 539.

(c) See Curtis on Patents, & 100. It has been decided, by the commissioner of patents, that every now and useful invention is patentable, and may be appropriately ranked under one or other of the clauses designated in the statute. 14 Leg. Int. 380.

(a) It is not necessary that any of the ingredients should be new or unused before for the purpose. The true question is, whether the combination of materials by the patentee is substantially new. Ryan v. Goodwin. 3 Sumn. 514, 518.

(e) There is no substantial difference between a patent for an improved machine and one for an improvement on a machine. Evans v. Eaton, 3 Wh. 454. But a patent cannot be granted merely for a change of form. Winans v. Denmead, 15 How, 341. And if a patent be taken out for the whole of a machine, when the patentee merely improved an existing machine, it is not valid. Evans. Eaton, 7 Wh, 356. And so, when the patentee claims three distinct improvements. he must show himself entitled to each. Heinrich v. Luther, 6 McLean, 345.

(g) The title of the patentee to an invention may be impeached, although he was ignorant at the time he received the letters patent, that the invention had been in use before his discovery. Evans . Eaton, Pet. C. C. 323. 8. c. 3 Wh. 514. But a prior construction and use of the thing patented, in one instance only, which had been finally forgotten, or abandoned, and never made public, so

that at the time of the invention by the patentee, the invention did not exist, will not render a patent invalid. Gayler r. Wilder, 10 How. 477. And so, it is not necessary for the protection of a patent, that the patentee should be the first person who conceived the practicability or existence of the thing patented, but who, though making important experiments, was unable to bring them to any successful or valuable result. He who reduces speculation to practice; whose experiments result in discovery: and who then afterwards puts the public into practical and useful possession of the compound, art, machine or product. is entitled to the patent right. Goodyear . Day, 2 Wall. Jr. 283. Allen v. Hunter, 6 McLean, 303. O'Reilly . Morse, 15 How. 110-11. But where the invention is not of a mere philosophical speculation, abstraction or theory, but of something corporeal, something to be manufactured, the applicant need not show that he has reduced his invention to practice, otherwise than by filing his specification and furnishing drawings and a model, as required by the statute. Hildreth v. Heath, Cranch's Patent Decisions, 101.

(4) A specification must be construed according to the true import of the terms used, rather than by their grammatical arrangement. Allen e. Hunter, 6 McLean, 303. The description of the invention and discovery, even if quite wide of the truth, when taken literally, may be aided and made good by the descrip tion of the manner and process of making, constructing, using and compounding the same. When a full and candid description of the manner and process of making and compounding any invention or discovery describes such manner in a concrete and illustrative, rather than in an abstracted and essential way, the description will cover every kind of application which was meant to come within, and which men of science can see is really involved in the principle attempted to be described. And so conversely, where an abstract description or abstract term is used, or an agent is described generally, rather than in its terms, the application of the thing, and not the form of the thing being patented, this is enough. Goodyear v. The Railroad, 2 Wall, Jr. 356. In patents for machines, the sufficiency of the description must, in general, be a question of fact to be determined by the jury. And this must also be the case in compositions of matter, where any of the ingredients mentioned in the specification do not always possess exactly the same properties in the same degree. Wood v. Underhill, 5 How. 4. Grant e. Raymond. 6 Pet. 245. Winans . Denmead, 15 How. 330. Battin v. Taggert. 17 Ibid. 74. But where the defect is apparent, the court may decide it as a question of law. Wood r. Underhill. 5 Ibid. 1. Wilson v. Rousseau, 4 Ibid. 686. Hogg r. Emerson, 6 Ibid. 484.

(Where it is evident, on the face of the letters patent for a composition of matter, that the propositions are so vaguely stated that one skilled in the art with which the composition is most nearly connected, could not make it by following the directions therein given, without experiment, it is the duty of the court to declare the patent void. Wood v. Underhill. 5 How. 1.

(k) If the claim is for an improvement, it is incumbent on the patentee to show the extent of his improvement, so that a person understanding the subject may comprehend distinctly in what it consists. Evans . Eaton. 3 Wh. 518. s. c., 7 Ibid. 356.

(1) A combination is usually formed by using known processes or mechanical powers, in which case the invention consists in the union of those powers. The constituent parts remain with the public, as before the combination. Pitts . Wemple. 6. Melean, 558. And therefore, a patent for a combination of three distinct things, is not infringed by combining two of those things with a third, which is substantially different from the third element described in the specification. Prouty e. Ruggles, 16 Pet. 336. Stimpson v. Baltimore and Susquehanna Railroad Co., 10 How. 329. Byam r. Eddy, 24 Verm. 666.

(m) To constitute an inventor, it is not necessary that be should have the manual skill to make drawings; if he furnishes the idea to produce the result, he is entitled to avail himself of the mechan ical skill of others to carry out his contrivance in practice. Sparkman v. Higgins, 1 Blatch. 206.

4 July 1836.

furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts. The applicant shall Models. also make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, machine, composition or improvement, for which he Oath of applicant solicits a patent, and that he does not know or believe that the same was ever before known or used; (a) and also of what country he is a citizen; which oath or affirmation may be made before any person authorized by law to administer oaths.(b)

patent.

25 On the filing of any such application, description and specification, and the pay- bid. 3 7. ment of the duty hereinafter provided, the commissioner shall make, or cause to be made, Commissioner to an examination of the alleged new invention or discovery. And if, on any such examina- examine. tion, it shall not appear to the commissioner that the same had been invented or discovered by any other person in this country prior to the alleged invention or discovery thereof by the applicant; or that it had been patented or described in any printed publi- When to issue cation in this or any foreign country; or had been in public use or on sale with the applicant's consent or allowance prior to the application; (c) if the commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor.(d) But whenever, on such examination, it shall appear to the commissioner Notice of rejec that the applicant was not the original and first inventor or discoverer thereof; (e) or that tion, &c. any part of that which is claimed as new had before been invented or discovered or patented, (g) or described in any printed publication in this or any foreign country, as aforesaid; or that the description is defective and insufficient; he shall notify the applicant thereof, giving him, briefly, such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of the invention or discovery which is new. In every such case, Withdrawal of if the applicant shall elect to withdraw his application, relinquishing his claim to the application. model, he shall be entitled to receive back twenty dollars, part of the duty required by this act, on filing a notice in writing of such election in the patent office; a copy of which, certified by the commissioner, shall be a sufficient warrant to the treasurer for paying back to the said applicant the said sum of twenty dollars.(h) But if the applicant in Appeal from de such case shall persist in his claim for a patent, with or without any alteration of his cision of commis specification, he shall be required to make oath or affirmation anew in manner as aforesaid. And if the specification and claim shall not have been so modified as, in the opinion of the commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners, &c.(i)

sioner.

Ibid. ? 8.

Commissioner to

take out foreign

26. Whenever an application shall be made for a patent which, in the opinion of the commissioner, would interfere with any other patent for which an application may be pending, or with any unexpired patent which shall have been granted, it shall be the decide on interfering claims. duty of the commissioner to give notice thereof to such applicants, or patentees, as the case may be; and if either shall be dissatisfied with the decision of the commissioner on Appeal. the question of priority of right or invention, (k) on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the preceding section of this act; and the like proceedings shall be had, to determine which or whether either of the applicants is entitled to receive a patent as prayed for. But nothing in Inventor may this act contained shall be construed to deprive an original and true inventor of the patent. right to a patent for his invention, by reason of his having previously taken out letters patent therefor in a foreign country, and the same having been published, at any time within six months next preceding the filing of his specification and drawings.(1) And Date of patent. whenever the applicant shall request it, the patent shall take date from the time of the filing of the specification and drawings, not however exceeding six months prior to the actual issuing of the patent. And on like request, and the payment of the duty herein When specificarequired, by any applicant, his specification and drawings shall be filed in the secret kept secret until archives of the office, until he shall furnish the model and the patent be issued, not issuing of patent. exceeding the term of one year, the applicant being entitled to notice of interfering applications.

(a) The want of such an oath does not invalidate the patent. Whittemore v. Cutter, 1 Gall 429. It is primâ facie evidence of the novelty and originality of the invention, until the contrary be proved. Parker v. Stiles, 5 McLean, 60.

(b) See infra, 36.

(c) Altered, infra, 32. And for the construction of this clause, Bee Shaw . Cooper, 7 Pet. 292. Pennock v. Dialogue, 2 Ibid. 1. McClurg v. Kingsland. 1 How. 207.

(d) The grant of a patent is not, of itself, a bar to an interlocutory injunction in favor of one claiming to be a prior patentee of the same thing. such person not having received notice at the patent office, to appear and be heard. Wilson v. Barnum, 1 Wall. Jr. 347. (e) The commissioner may refuse to grant a patent, if it appear that the applicant was not the sole inventor. Arnold v. Bishop, Cranch's Patent Decisions, 110.

(g) It is no ground for refusing a patent, that a prior patent has

tions, &e.. to be

been issued to another person for the same invention unless such patent were issued prior to the invention. Hildreth v. Heath, Cranch's Patent Decisions. 98-9.

(h) See infra, 29. And 6 Opin. 36.

The remainder of this section relating to the board of examiners, is repealed and supplied by act 3 March 1839; infra, 33. () No appeal lies from the decision of the commissioner, unless the application for a patent has been rejected by him. His error in granting a patent is corrected by the ordinary tribunals. So, no Poneroy's Appeal, Cranch's Patent Decisions, 112-13. appeal lies from a decision refusing to re-examine the decision of a former commissioner. Janney's Case. Ibid 144. The authority, however, vested in the commissioner for examination and final decision, exists in full force, until the patent shall have been actually issued. 5 Opin. 220.

(1) See infra, 31. And O'Reilly . Morse, 15 How. 127.

4 July 1836 9. 27. Before any application for a patent shall be considered by the commissioner as Duty on patents. aforesaid, the applicant shall pay into the treasury of the United States, or into the

Patent fund.

patent office, [or into any of the deposit banks to the credit of the treasury,] (a) if he be a citizen of the United States, or an alien, and shall have been resident of the United States for one year next preceding, and shall have made oath of his intention to become a citizen thereof, the sum of thirty dollars; if a subject of the king of Great Britain, the sum of five hundred dollars; and all other persons the sum of three hundred dollars; for which payment duplicate receipts shall be taken, one of which to be filed in the office of the treasurer. And the moneys received into the treasury under this act shall constitute a fund for the payment of the salaries of the officers and clerks herein provided for, and all other expenses of the patent office, and to be called the patent fund.(b) 3 March 18372 6. 28. Any patent hereafter to be issued, may be made and issued to the assignee or assignees of the inventor or discoverer; (c) the assignment thereof being first entered of record, (d) and the application therefor being duly made, and the specification duly sworn issue to assignees. to by the inventor. And in all cases hereafter, the applicant for a patent shall be held to Duplicate drawings. furnish duplicate drawings, whenever the case admits of drawings, one of which to be deposited in the office, and the other to be annexed to the patent, and considered a part of the specification. (e)

5 Stat. 193.

Patents may

Ibid. 12. Two-thirds of

duty to be repaid

to alien on with

drawal of appli

cation.

Ibid. 13.

Parties may swear or affirm.

3 March 1839 265 Stat. 354.

use.

Ibid. 7.

Inventors may

dispose of right

to use machines, &c.. prior to application.

29. Whenever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, pursuant to the seventh section of the act to which this is additional, the certificate thereof of the commissioner shall be a sufficient warrant to the treasurer to pay back to such applicant two-thirds of the duty he shall have paid into the treasury on account of such application.(g)

30. In all cases in which an oath is required by this act, or by the act to which this is additional, if the person of whom it is required shall be conscientiously scrupulous of taking an oath, affirmation may be substituted therefor.

31. No person shall be debarred from receiving a patent for any invention or discovery, as provided in the act approved on the 4th day of July 1836, to which this is Foreign patent additional, by reason of the same having been patented in a foreign country more than not to affect right of applicant. six months prior to his application: Provided, That the same shall not have been introIf not in public duced into public and common use in the United States, prior to the application for such patent: And provided also, That in all cases every such patent shall be limited to the Duration of patent in such case. term of fourteen years from the date or publication of such foreign letters patent.(k) 32. Every person or corporation who has, or shall have, purchased or constructed (¿) any newly invented machine, manufacture or composition of matter, prior to the application by the inventor or discoverer for a patent, (k) shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture or composition of matter so made or purchased, without liability therefor to the inventor, or any other person interested in such invention. And no patent shall be held to be invalid by reason of such purchase, sale or use prior to the application for a patent as aforesaid, except on During period of proof of abandonment of such invention to the public; or that such purchase, sale or prior use has been for more than two years prior to such application for a patent.(7) 33. In all cases where an appeal is now allowed by law from the decision of the commissioner of patents to a board of examiners provided for in the seventh section of the act to which this is additional, the party, instead thereof, shall have a right to appeal to the chief justice of the district court of the United States for the District of Columbia, by giving notice thereof to the commissioner, and filing in the patent office, within such time as the commissioner shall appoint, his reasons of appeal, specifically set forth in writing, and also paying into the patent office, to the credit of the patent fund, the sum of twenty-five dollars.(m) And it shall be the duty of said chief justice, on petition, to hear and determine all such appeals, and to revise such decisions in a summary way, on the evidence produced before the commissioner, at such early and convenient time as he may

two years.

Ibid. 11.

Appeals from the decision of the commissioner to

be heard by the

chief justice of

the District of Columbia.

(a) Clause within brackets repealed by act 6 August 1846. 9 Stat. 59. (b) Contracts for necessary expenses may be paid out of the patent fund without other appropriation. 5 Opin. 663.

(c) An assignment of an invention, before the issuing of a patent, is valid, though made after the rejection, by the commissioner, of the assignor's application for a patent and an affirmance thereof on appeal. Gay v. Cornell, 1 Blatch. 506. But such assignment must be of the whole interest in the invention. 4 Opin. 399.

(d) It is sufficient, if the assignment be recorded at any time before the issuing of the patent. Gay v. Cornell, 1 Blatch. 506. The title to letters patent granted to an inventor, inures to his assignee under a deed recorded in the patent office before the letters were issued, and no further conveyance from the patentee to the assignee is necessary to vest the legal title in the latter. Gayler v. Wilder, 10 How. 477. Rathbone v. Orr, 5 McLean, 131. (e) The duplicate set of drawings, required by this act, being for the purpose of annexation to the patent, need not be filed until the time of issuing it. O'Reilly v. Morse, 15 How. 126. French v. Rogers, 4 Am. L. J. 151.

(g) See 6 Opin. 36.

(h) If under such circumstances, a domestic patent purports to give the exclusive right of fourteen years from its date, the patent is void. Smith v. Ely, 5 McLean, 76. But this provision relates only to such patents as are applied for here, after the issue of a foreign patent. French v. Regers, 4 Am. L. J. 150.

(i) To entitle a person to claim the benefit of this section, he must be one, who is a purchaser, or who has used the patented invention before the patent was issued, by a license or grant, or by the consent of the inventor; and not a purchaser from a mere wrongdoer. Pierson v. Eagle Screw Co., 3 Story, 402.

(k) This section has exclusive reference to an original application for a patent, and not to a renewal of it. Stimpson v. West Chester Railroad Co. 4 How. 403. And see Rathbone e. Orr, 5 McLean, 131. (7) The inventor may now sell any number of his machives to the public, during any period less than two years, accompanied by a claim to the inchoate right, sufficient to show an intention not to abandon it to the public. Sargent e. Seagrave, 2 Curt. C. C. 555. Root v. Ball, 4 McLean, 177. Allen v. Blunt, 2 W. & M. 122. See Booth v. Garelly, 1 Blatch. 247. Sparkman v. Higgins, 6 Penn. L. J. 344.

(m) See infra, 38.

laid before him.

appoint, first notifying the commissioner of the time and place of hearing; whose duty it 3 March 1539, shall be to give notice thereof to all parties who appear to be interested therein, in such manner as said judge shall prescribe. The commissioner shall also lay before the said Evidence be judge all the original papers and evidence in the case, together with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined. And at the request of any party interested, or at the desire of the judge, the commissioner and the examiners in the patent office may be examined under oath, in explanation of the principles of the machine or other thing for which a patent, in such case, is prayed for. And it shall be the duty of Decision to be re said judge, after a hearing of any such case, to return all the papers to the commissioner, with a certificate of his proceedings and decision, which shall be entered of record in the patent office; and such decision, so certified, shall govern the further proceedings of the commissioner in such case: Provided however, That no opinion or decision of the Not to bar legal judge in any such case, shall preclude any person interested in favor or against the validity of any patent, which has been or may hereafter be granted, from the right to contest the same in any judicial court, in any action in which its validity may come in question.

corded.

remedies.

Ibid. 12.

Commissioner to

34. The commissioner of patents shall have power to make all such regulations in respect to the taking of evidence to be used in contested cases before him, as may be just and reasonable. And so much of the act to which this is additional, as provides prescribe rules for a board of examiners, is hereby repealed.

for taking evidence.

5 Stat. 543. may be

35. Any citizen or citizens, or alien or aliens, having resided one year in the United 29 Aug. 1842 ₫ & States and taken the oath of his or their intention to become a citizen or citizens, who by his, her or their own industry, genius, efforts and expense, may have invented or pro-Patents origi duced any new and original design for a manufacture, whether of metal or other mate- nal designs. rial or materials; or any new and original design for the printing of woollen, silk, cotton or other fabrics; or any new 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 manufac ture; or any new and original shape or configuration of any, article of manufacture (a) not known or used by others before his, her or their invention or production thereof, and prior to the time of his, her or their application for a patent therefor; and who shall desire to obtain an exclusive property or right therein, to make, use and sell and vend the same, or copies of the same, to others, by them to be made, used and sold, may make application in writing to the commissioner of patents expressing such desire, and the commissioner, on due proceedings had, may grant a patent therefor, as in the case now of application for a patent: Provided, That the fee in such cases which by the now Fees. existing laws would be required of the particular applicant shall be one-half the sum; and that the duration of said patent shall be seven years; and that all the regulations Term of patent. and provisions which now apply to the obtaining or protection of patents, not inconsistent with the provisions of this act, shall apply to applications under this section.

Ibid. 24.

administered

36. The oath required for applicants for patents may be taken, when the applicant is not, for the time being, residing in the United States, before any minister, plenipo- How cath to be tentiary, chargé-d'affaires, consul or commercial agent, holding commission under the government of the United States, or before any notary public of the foreign country in which such applicant may be.

abroad.

10 Stat. 75.

of the district to

37. Appeals provided for in the eleventh section of the act entitled "An act in addition 30 Aug. 1852 L to an act to promote the progress of the useful arts, approved March the 3d 1839," may also be made to either of the assistant judges of the circuit court of the District of Assistant judges Columbia; and all the powers, duties and responsibilities imposed by the aforesaid act, hear appeals. and conferred upon the chief judge, are hereby imposed and conferred upon each of the said assistant judges. (b)

Ibid. 2 2.

38. In case appeals shall be made to the said chief judge, or to either of the said assistant judges, the commissioner of patents shall pay to such chief judge or assistant Their compensajudge the sum of twenty-five dollars, required to be paid by the appellant into the tion therefor. patent office, by the eleventh section of the said act, on said appeal.

III. RIGHTS OF REPRESENTATIVES AND ASSIGNEES.

5 Stat. 121.

39. Where any person hath made, or shall have made, any new invention, discovery 4 July 1836 8 10. or improvement, on account of which a patent might by virtue of this act be granted, and such person shall die before any patent shall be granted therefor, the right of apply- Patents may issue to execu ing for and obtaining such patent shall devolve on the executor or administrator of such tors, &c.

(a) Booth v. Garelly, 1 Blatch. 247.

(b) See 6 Opin. 38.

4 July 1836.

Oath.

Ibid. 11.

patents.

person, in trust for the heirs at law of the deceased, in case he shall have died intestate; but if otherwise, then in trust for his devisees; in as full and ample manner, and under the same conditions, limitations and restrictions, as the same was held, or might have been claimed or enjoyed by such person in his or her lifetime. And when application for a patent shall be made by such legal representatives, the oath or affirmation provided in the sixth section of this act shall be so varied as to be applicable to them.

40. Every patent (a) shall be assignable in law,(b) either as to the whole interest, or Assignments of any undivided part thereof, (c) by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout To be recorded. any specified part or portion of the United States, (d) shall be recorded in the patent office within three months from the execution thereof; (e) [for which the assignee or grantee shall pay to the commissioner the sum of three dollars.] (g)

4 July 1836 & 12. 5 Stat. 121.

Inventor may caveat.

Fees.

file

41. The commissioner of patents shall require a fee of one dollar for recording any assignment, grant or conveyance, of the whole or any part of the interest in letters patent, or power of attorney, or license to make or use the things patented, when such instrument shall not exceed three hundred words; the sum of two dollars, when it shall exceed three hundred and shall not exceed one thousand words; and the sum of three dollars, when it shall exceed one thousand words; which fees shall in all cases be paid in ad

vance.

IV. CAVEATS.

42. Any citizen of the United States, or alien who shall have been resident of 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, in manner as provided in the ninth section of this act, the sum of twenty dollars, (h) file in the patent office a caveat, (i) setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right till he shall have matured his invention; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein To be kept secret. mentioned, shall be considered a part of the sum herein required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in Notice to be given secrecy. And if application shall be made by any other person within one year from of interfering up the time of filing such caveat, for a patent of any invention with which it may in any plication. respect interfere, it shall be the duty of the commissioner to deposit the description, specifications, drawings and model, in the confidential archives of the office, and to give notice, by mail, to the person filing the caveat, of such application; who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings and model; and if, in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are in this act provided in the case of interfering applications: Provided however, That no opinion or decision [of any board of examiners, under

Decision.

(a) See supra, 28, as to assignments before the issuing of the patent. (b) The assignment vests in the assignee the legal right. Boyd v. McAlpin. 3 MeLean, 427. But the assignee of a sectional interest must have the entire right within the territory specified, to enable him to maintain a suit in his own name. An assignment of less than the exclusive right is but a license, and the legal right remains in the patentee. Gayler v. Wilder, 10 How. 477, 495. Blanchard v. Eldridge, 1 Wall. Jr. 337. A license, however, may be assigned. it not being a mere personal privilege. Wilson v. Stolly, 5 McLean, 1. See Brooks r. Byam, 2 Story, 526. A general assignment conveys only an interest during the term for which the patent was granted. Brooks v. Bicknell, 4 Ibid. 64. But persons in the lawful use of machines at the expiration of the first terun, may continue to use them. Wilson v. Rousseau, 4 How. 646. Woodworth e. Curtis, 2 W. & M. 524. And when the assignment is special, conveying clearly the intention to give an interest in the renewal of the patent, the assignee will take an interest in the renewal. Phelps v. Comstock, 4 McLean, 353.

(c) This section provides that a patent shall be assignable-1. As to the whole interest. 2. As to any undivided part thereof. 3. Or grant or conveyance of an exclusive right within any specified part of the United States. Blanchard v. Eldridge, 1 Wall, Jr. 339. Brooks r. Byam, 2 Story, 525. Parker v. Haworth. 4 McLean, 370. (d) The grantee of an exclusive right to construct, use and vend two patented machines within a specified territory, may maintain an action for an infringement in his own name. Wilson v. Rousseau. 4 How, 646. But where the owner of a patent for turning irregular forms generally granted to another the full and exclusive license, right and permission to use it for turning shoe lasts; this was held to be a license only, and a suit for infringement should be in the name of the patentee. Blanchard r. Eldridge. 1 Wall. Jr. 337. So also, where a patentee of friction matches undertook to graut unto B., his executors, administrators and assigns, "the right and privilege. hereinafter mentioned, of making, using and selling the friction matches" patented, and to have and to hold "the right and privilege of manufacturing the said matches, and

to employ in and about the same, six persons and no more, and to vend the said matches in any part of the United States; this was held to be a license or authority only. Brooks r. Byam, 2 Story, 525. But where a grant was made of a right to construct and use fifty machines, within certain localities reserving to the granter the right to construct and to license others to construct, but t to use them therein; this was held to be the grant of an exclusive right within the act. Washburn v. Gould, 3 Ibid. 122. Where a patentee of a planing machine conveys to another the authority to use one of such machines in a certain locality, the grantee may erect and use that one, or he may build and use another instead of it, but not both at the same time. Woodworth e. Curtis, 2 W. & M. 524. And a patent for a machine is not a patent for its product, so that an assignee restricted to the use of the machine within a particular district. may sell the product elsewhere. Simpson v. Wilson, 4 How. 709.

(e) It is not essential to the validity of an assignment of a patent right, between the parties, or as against strangers, that it should be recorded. Case v. Redfield. 4 McLean, 526. The recording within three months is merely directory, and any subsequent recording of an assignment, will be sufficient to pass the title to the assignee, except as to intermediate bond fide purchasers, without notice. Brooks e. Byam, 2 Story, 525. Olcott P. Hawkins, 2 Am. L. J. 319. But see Boyd v. McAlpin, 3 McLean, 427, where it is held that, should the same right be assigned, after the expiration of the three months, to a stranger, the assignee will hold it, whether he had or had not notice of the previous assignment.

(g) The clause within brackets is repealed by act 3 March 1839 8. 5 Stat. 354. See now, as to the fees for recording, infra, 41. (h) The attorney-general has decided that no part of the sum so paid for filing a caveat, can be repaid to the party, under the provisions of 37, (supra. 25). 24 August 1857.

(i) The filing of a caveat is not necessary for the preservation of the right: it only enables the inventor to have notice of any interfering application. Hildreth v. Heath, Cranch's Patent Decisions, 101.