4. It is not the practice of the Office, upon applications for an extension, to review the
decisions made upon the question of novelty when the patent was granted, except
upon newly discovered testimony.
[Channing and Farmer, 114; J. E. A. Gibbs, 155; Wm. Kelly, 186.
5. The validity of a claim will not be strictly scrutinized upon an application for an
extension, when the same question is pending before the courts.
[J. D. Sarvin, 170.
6. The extension of a patent refused, because it was found that the invention was
old when patented.
[S. Bennett, executor, 191; G. B. Massey, 213.
7. The novelty of an invention described in a patent for which an extension is prayed
cannot be impeached upon the ground that it is described in another patent of nearly
the same date, if the grantee in the latter patent has conceded in a written instrument
that the applicant is the prior inventor.
8. The extension of a patent which appropriated a certain compound movement of
parts of a machine refused until a disclaimer was filed which restricted the claim to
the peculiar mechanism by which the movement was produced.
[Lovejoy and Butterfield, 267.
(See Claims, 1; Extension, A, 2; Manufactures, 1; Novelty, A, 3; Novelty, E, 1, 16.)
(C) As to value and importance.
1. Affidavits as to the value of an invention expressed in general terms, without fur-
nishing data from which the Commissioner can judge of their correctness, will not
warrant the extension of a patent, especially where it is apparently unimportant.
[O. H. Needham, 3; B. J. Lamothe, 201.
2. Great uncertainty must generally exist as to the money value of an invention;
and, while gross estimates are entitled to little credit, a liberal allowance must be made
to such endeavors as are made in good faith to ascertain it.
[Thaddeus Fairbanks, 15; Brickman & Sisson, 92; Amos Rank, 235.
3. The extension of a patent refused where no evidence was furnished of the value
and importance of the invention, nor of the diligence exerted to introduce it, and where
the claim was functional, and otherwise objectionable.
4. The price for which a patentee sells his right under the pressure of indigence,
forms no criterion of the value of his invention.
5. When the value of an invention is established beyond doubt by the evidence
a numerical estimate will not be insisted on.
[Peter Cook, 24; E. F. Whiton, 200.
6. No reliance can be placed upon affidavits to the value of an invention, which is
apparently of little importance, if it is doubtful whether they have in view the precise
invention, or a large structure in which it is used.
[Reuben Conins, 27; Nicholas Whitehall, 266.
7. When it was manifest from the evidence that the invention was valuable, a
patent was extended, although the statements on that point were defective.
[D. H. Whittemore, 30; Sidney S. Hogle, 72.
8. Although the structure for which an invention was designed has gone out of use, yet,
if it is valuable as now used in a modified form upon others of the same kind, the
patent may be extended.
9. A patent for a machine should be extended although but few are wanted, or can
be sold, if those are capable of furnishing all the articles it produces that are required
by the public, and by means of those it proves highly useful.
10. An extension denied, there being no proof of the value of the invention, and no effort
having been made to introduce it, and four years of the life of the patent having been
spent by the patentee in the rebel service.
[Lydia Moore, administratrix, 82.
11. Little confidence is felt in the usual mode of ascertaining the value of an inven
tion in extension cases.
[J. D. Sarvin, 170.
12. A patent should not be extended if the invention is of no value to the public.
[J. L. Mason, 182.
13. An extension refused for want of a statement of the value of the invention.
[S. W Francis, 268.
14. Public policy may require the extension of a patent to be refused on account of
claims which the patentee might insist upon on a reissue.
(D) As to amount of remuneration.
1. An applicant for an extension has not received a reasonable remuneration, where
the sum he has realized is little or nothing more than he could have earned in other
pursuits in the time he has devoted to introducing his invention.
2. Upon an application for the extension of the first of several patents upon the same
article, where the respective values of the several improvements cannot be easily deter-
mined, the proper question to be considered is whether the amount already realized
from all of them, and the sum likely to be obtained from the later ones, constitute an
adequate remuneration for the aggregate invention.
3. The expense of obtaining foreign patents, from which nothing appears to have
been received, is not a proper charge upon an application for an extension.
4. Where the merits of an application for an extension are extraordinary, and the
circumstances leave no room to doubt the truthfulness of the statement of receipts and
expenditures, an extension will not be refused because the data for forming an inde-
pendent judgment respecting them are defective.
5. Expenses incurred in endeavoring to introduce an invention into market may be
charged against it, on applying for an extension.
[S. R. Smith, 16; J. D. Sarvin, 170.
6. Where the amount which the applicant is morally certain to obtain under patents
for a machine which have been already extended, will constitute, with what he has
before received, an abundant remuneration for the whole of the invention, a patent for
improvements which merely secure greater economy and simplicity in the construction
of the machine, will not be renewed so as to give a colorable continuation of the
monopoly.
[Wm. B. Bates, administrator, 17.
7. When the receipts and expenditures on account of one of several connected inven-
tions, of equal importance, cannot be separated, they may be evenly apportioned on an
application for the extension of a patent for one of them.
[James Stimpson, 21; Isaac Hayden, 73.
8. In order to justify an extension no assurances of the applicant will supply the
place of a detailed statement of receipts and expenditures.
9. An extension granted, although no detailed account of expenditures could be
furnished in consequence of the destruction of the patentee's books by fire, it being
evident that the invention had been insufficiently rewarded without his fault.
[John Benedict, 40.
10. Receipts from foreign patents on account of the invention must be embraced in
the accounts upon an application for an extension.
[D. N. Woodward, 42.
11. Where a patent covered a small part of a lock, the applicant for an extension was
sustained in charging the invention with only one-tenth of the profits of manufacturing
the whole.
12. Where a patent covered an improvement in a lock which could be applied to any
other, the patentee was sustained in crediting the invention with only the amount
which was saved by it in the manufacture.
13. Damages for infringements of a patent, for which suits have been commenced,
are not to be charged upon an application for an extension, when there is no prospect
that they will pay the expenses of litigation.
14. An extension granted, although no detailed accounts were furnished, it having
been rendered impracticable through the bankruptcy and death of the patentee, and his
failure to receive a reasonable compensation being satisfactorily established.
15. An exact statement of receipts and expenditures may be dispensed with when
extending a patent, if the death of the inventor renders it impossible to obtain one.
[Brickman and Sisson, 92.
16. An applicant for an extension is not required to account for the profits made
under the patent by his assignees, to whom he sold under the pressure of poverty.
[Roxanna Rice, executrix, 95.
17. A patentee who has devoted nearly his whole time and his professional skill in
introducing an invention which has already proved to be of not less than $50,000 or
$70,000 value, is entitled to an extension, although he has reaped $20,000 from it.
18. The applicant for an extension had received during the life of his patent $9, 853 44
as his share of the profits made by a firm, of which he was previously a member, and
who worked the invention and resisted infringements, which he was unable to do, and
he had continued to contribute to their service his labor, genius, and skill. The inven-
tion involved extraordinary ingenuity, had cost twelve months' study and experiment,
and had conferred great benefit on the public. His patent was renewed.
[Lauriston Towne, 258.
19. If the accounts do not make it clear that the applicant has failed of receiving a
sufficient remuneration, his patent will not be extended.
[Nicholas Whitehall, 266.
20. Applicants for an extension who had manufactured under their patent, were al-
lowed to credit the invention with less than half the net amount they had realized,
and to deduct the rest as manufacturer's profits.
[Lovejoy and Butterfield, 267.
21. A patent will not be extended if, according to the applicant's statement, large
sums must have been received which are not credited in the accounts, and other dis-
crepancies occur which are not explained.
1. A patentee who has failed of receiving a proper remuneration for his invention in
consequence of the fraudulent conduct of his assignees, is not on that account entitled
to an extension if he had an effectual remedy against them at law, and has made no
attempt to enforce it.
2. Where the invention is highly valuable, but required a large outlay to introduce
it successfully, and the means of the patentees were inadequate, so that, after strug-
gling for several years, they sold it for less than would remunerate them, it was held
that there was no such lack of diligence or prudence as should debar them from hav-
ing an extension.
3. A patentee who has not received as much on account of his invention as he has
expended, having been compelled by poverty, and the necessity of protecting his rights,
to assign most of his interest in the extension, is entitled to have it renewed.
[Ira Gill, 12.
4. Where the patentee's failure to obtain an adequate remuneration was owing to the
high cost of manufacturing the patented article until a machine was invented for that
purpose at a late period, the patent was renewed.
5. An applicant for an extension will not be charged with want of prudence who,
under the pressure of indigence, discharged for too small a sum his claims for infringe-
ments, and then sold his monoply on terms which did not remunerate him.
6. An extension of a patent refused because the inventor's failure to obtain adequate
remuneration was due to his want of effort.
[Kelly and Livingstone, 29.
7. An applicant for an extension is not chargeable with imprudence who has from
poverty sold his patent for a sum which, added to what he had already received, did
not give him a reasonable remuneration.
[J. D. Brown, 39; G. F. Hutchins, 57; Elliott Savage, 69.
8. Although an invention was somewhat in advance of the age, so that it has fur-
nished its author no reasonable compensation, yet the patent for it will not be ex-
tended if it does not appear that he made any effort to overcome the difficulties in
the way of introducing it.
9. It is only when an applicant for the extension of a patent claims that he has
failed in receiving a suitable remuneration without his fault, that the Office inquires
whether he has spent his time in the rebel service, instead of introducing his inven-
tion.
10. A patent extended, although the patentee was a citizen of the South during the
war, he having failed to obtain a sufficient remuneration for his invention through the
consequent breaking up of his business.
11. An extension will not be granted to one who shows no exercise of diligence in
introducing his invention, especially as the main feature of it had gone into extensive
[Arnton Smith, 208.
12. A patentee is not obliged, in order to avoid being charged with negligence in
introducing his invention, to devote all his energies and capital to the business.
[G. W. Hildreth, 261.
1. An extension is not to be refused because the petitioner owns only half the inter-
est under it.
2. If the applicant claims that the conveyances, under which he is alleged to have
parted with his interest in the invention, are fraudulent and void, and the evidence
leaves the question in doubt, the Commissioner will not consider it upon an application
for extension; measures to determine it should have been previously taken in the
3. An extension will not be granted if the inventor has no interest remaining in
the extended term.
[J. L. Mason, 182; H. H. Furbish, 190.
4. When the assignees of a patent, who would own two-thirds of the extension if
allowed, had obtained a reissue with claims embracing much more than the invention,
it was considered inequitable to extend the patent after they had so long enjoyed a
monopoly of what did not belong to them.
5. A patent was ordered to be extended, although the inventor had made an assign-
ment of the extension on record, on the production of a reconveyance of the patent by
the assignee to the inventor, and leaving it for record. But the order was revoked
upon finding that a reassignment by the inventor to the same assignee, and of the same
date, had been afterward left for record.
6. If the patentee has conveyed away a large interest in the extension, and bound
himself to convey away most of the rest to parties whose object there is reason to be-
lieve is not to work the patent, but to sue rival manufacturers, he should not have an
extension.
7. It is doubtful whether a patentee should not be denied an extension if he has
bound himself, without any controlling necessity, to convey his interest at what, from
his own point of view, must be a great sacrifice.
1. The public use in this country of an invention patented in a foreign state is no
bar to an application here since the act of July 8, 1870, unless such use has been con-
tinued for two years before filing the application.
(Claims, 4, 5, 6; Extension, B, 8.)
(See Invention and Skill, 1; Novelty, E, 17.)
1. The withdrawal of his application by one of the parties to an interference is a
dissolution of it.
[Eames and Seeley vs. McDougal, 206.
2. If an interference is dissolved upon the withdrawal of his application by one of
the parties, this does not entitle the other to a decision in his favor on the question of
priority.
[Eames and Seeley vs. McDougal, 206.
3. A party to a pending interference can withdraw only such claims as cover devices
not involved in the interference, so that if he obtains a patent for them on a separate
application, it shall not prejudice the interests of the other party.
[Hermance vs. Bussey, 216.
4. After an interference has been dissolved because it then appeared from the
evidence that one alone of two joint applicants, who constitute one party, made the
invention before their competitor, evidence may still be received that both the joint
applicants were engaged in making the invention, and a patent may be awarded to
them.
5. Where an interference has been dissolved because the invention appears to have
been made by only one of two joint applicants, who constitutes one of the parties, the
other stands rejected, and has no right to interfere in the subsequent proceedings upon
the joint application, or to oppose the granting of a patent upon it.
[Crane vs. Rogers, 230.
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