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COMMISSIONER OF PATENTS
THE YEAR 1872.
S. G. MOYCE vs. B. F. ADAMS.
APPEAL FROJ THE EXAMINERS-IN-CHIEF.
Invention-Reasonable diligence-Forfeiture by laches-Public use prior to
application for patents-Section 61, act of 1870.
Whether the simple union of two tools by attaching them to a commou handle, while Where an inventor delayed for eighteen months to file his application for a patent,
their functions remain wholly distinct, is a patentable invention-quare. Neither in terms nor inferentially does section 61 of the act of 1870 estend any
guarantee to an inventor against the superior diligence of a competitor entering the field at a later date,unless the first inventor not only reduces his conception to practical
form, but proceeds to put the intention into public use or on sale. If, nninfluenced by controlling circumstances, au inventor, having reduced his invention
to practice, fails to put it into public use or on sale, he assumes the risk of incurring all the disabilities that attach to the man who comes out second in a race of dili
geņce. An inventor is to be held to as strict accountability for the time suffered to elapse
between the perfecting of his invention and its revelatiou to the public through the medium of the Pateut Office as for the time consumed in reducing it to practice after the original conception. A willful or negligent postponement of one's claims may, under some circumstances,
work a forfeiture of his right to a patent, even in the actual absence of any intention to relinquish it, or of any public use of the invention known and assented to. The policy of the patent law is to reward the man from whom the public actually
derives tbe benefit receired, unless, in fact, another, prior in making the iuventiou, is proceeding to give it to the world with no greater delay than what is imposed by
circumstances beyond his coutrol. The law looks with indulgence upon delays which arise froni the circumstances of
the party, and demands only a reasonable diligence. Delay, no matter how lovg continued, cannot impair an inventor's right to a patent,
unless by reason of it another party becomes the first to give the invention to the
world. Where au inventor, through lack of meaus, delayed his applicatiou for eight months
after perfecting the invention, but weanwhile was carrying on vegotiations for the sale of it, and was the first to file an application, iv tlıc Patent Office: Hild, that there was no unreasonable delay.
with view to filling the market with an inferior article, and meanwhile another party made the same invention and with due diligence filed an application upon it: Ieli, that the first inventor had forfeited his right.
DUNCAN, Acting Commissioner :
The alleged intention to which this interference relates consists in un ng a putty-knife and a revolving glass-cutter, the blade of the knife and the shank of the cutter being inserted in any arailable mode into the opposite ends of the same handle, but being in all other respects eu. tirely independent.
It may be premised at the outset that grave doubts are entertained as to the patentability of the subject matter embraced in the conflicting claims. Simply to unite two tools by attaching them to a common handle, while their functions remain wholly distinct, involves as little of 'invention, perhaps, as anything that can be presented for the protection of the patent laws. But as the interference has proceeded thus far without this point being raised, the question may be reserved for such consideration as it should receive until after final judgment as to priority of invention.
Adams produces an exhibit which he states to have been made early in March, 1870. The first inquiry prompted by an inspection of this exhibit is whether it represents the alleged invention as reduced to practice. It is a casting of metal, representing the knife, but without any cutter introduced into the end of the handle. There are, however, certain projections or rests upon the handle in all respects like the rests shown in the model and drawing of the application, and which can be for no other purpose than to give the hand a firmer grip on the instrument when it is being used as a cutter. In other words, the rests necessarily have relation to a cutter, and the moment their function is once pointed out it would require no intention to complete the instrument by the introduction of the missing member.
The intention, then, may be looked upon as reduced to practice by Adams in the month of March, 1870. His application was filed on the 28th day of the following October. He offers as an excuse for this delay that he did not have the requisite means for more immediate action, and that in the mean time he was conducting negotiations, the character of which he gives in detail, with view to derive profit from the sale of the invention.
Monce, in his behalf, prores that in May, 1869, he made a tool of the same character as that for which a patent is now sought; that on the same day he spoke to his attorney about having it patented “at some future day;" and that, in reply to an inquiry as to how long it would be safe to delay the application the attorney stated that it was not advisable to wait more than two years. It further appears, however, that this first tool was disorganized within a week after it was made, the blade and handle of the knife. subsequently passing out of the posses
sion of Monce, and the rotary cutter with its shank being used by him as a model in the manufacture which he was carrying on under a patent for glass-cutters, issued to him in the month of June. There is no reason to suppose that he did anything further with the intention until after Adams bad entered into negotiation with him and with his partner, Ives, for the sale to them of the invention as developed by Adams. The reason for this apparent negligence he frankly confesses to have been, to use his own phrase, "to run the original tool (manufactured under his patent for glass-catters] until the market was filled up before introducing a new article ;” though he arers that he nerer abandoned the intention of procuring a patent on the compound tool. His application, nor pending, was filed on the first day of December, 1870.
There can be no doubt from the testimony that Monce was the first to conceive of the alleged invention, and to give it some form of embodiment. The only question is whether his laches and the superior character of the proofs offered by Adams are such as to entitle the latter to be regarded as the prior inventor.
Adams must be held to have used due diligence in perfecting his in vention, and in giring the public the benefit of it through the ample instructions for fabricating the article which are contained in his specification. Monce delays more than a year and a half after the alleged date of his intention before filing an application-delays for the avowed purpose of filling the market with an article which he expects will at once depreciate in public estimation when the new article is made known; and files his application at last only when he finds a rival inventor seeking to corer the same ground; and even then not until a month after his competitor has taken steps, by filing in the Patent Office a complete application for letters patent, to give the public a full description of the invention. This, under the well-settled practice of the Office, must be regarded as working a forfeiture of his rights, unless, as he contends, he had an indefeasible right to delay two years after perfecting bis inrention before making an application upon it.
His reasoning seems to proceed upon the ground that, under section 61 of the patent act of 1870, which continues in force one of the provisions of section 7 of the act of 1839, a patent cannot be invalidated by proof of public use or sale of the invention in this country for any period not exceeding two years prior to the filing of the application; and that, a fortiori, one's right to obtain a patent cannot be affected by the mere fact of a subsequent independent inventor anticipating the application, provided the interral between the application and the making of the inrention on which it is based does not exceed two years. This is a non sequitur. The section named saves an existing patent as against a public use limited in point of time as specified; but neither in terms nor inferentially does it extend any guarantee to an inventor against the superior diligence of a competitor entering the field at a later date, up
less the first inventor not only reduces his couceptions to practical form, but proceeds to put the invention into public use or on sale. If he does this, he thereby destroys the right of a subsequent inventor to protection, no matter how diligent he may be; since no man is entitled to a patent for that which, prior to his own invention of it, has gone into public use. But if, uninfluenced by controlling circumstances, he fails to do this, he assumes the risk of incurring all the disabilities that attach to the man who comes out second in a race of diligence.
What constitutes a “race of diligence"-whether it is ended when the intention is ouce reduced to practice—is not clearly indicated in the law. The statute employs the phrase “reasonable diligence in alapting and perfecting" the invention. If this be not mere tautology, it must mean something more than merely reducing to practice; it must intend positive action looking to the introduction of the invention, or, at least, to giving the world knowledge of it. But, whatever be the siguificance of these particular words, there can be but little doubt that in fact an inventor is to be held to as strict accountability for the time suffered to elapse between the perfecting of his intention and its rer. elation to the public through the medium of the Patent Office as for the time consumed in reducing it to practice after the original conception.
This question was discussed at length in Gray vs. Hale, Commissioner's Decisions, May 27, 1871; and the conclusion reached upon the strength of the authorities then cited, to the effect that a willful or neg. ligent postponement of one's claims may, under some circumstances, work a forfeiture of his right to a pateut, eren in the actual abseuce of any intention to relinquish it, or of any public use of the invention known and assented to, has an important bearing upon the present
The fact that the delay extends over a less period than two years is, in itself, considered an immaterial circumstance. Not even this lim. ited period of exemption is accorded an inventor. The object of the patent law is to multiply inventions, with view, primarily, to the public advautage, and to secure their free use at the earliest date; and to this end its policy is to reward that man from whom the public actually de. rives the benefit received, unless, in fact, another, prior in makidg the inrention, is proceeding to give it to the world with no further delay thau what is imposed by circumstances beyond his control. If an in. ventor puts his iurentiou into use or on sale, be causes that the public shall bare the free use of it at the end of two years, unless he sooner makes an application for a patent; and in this last eveut, the free use of it derolres upon the public at the end of serenteen years from the date of any patent that may be granted. On the other hand, if an in
. vention when perfected may be withheld from use and kept a secret without the risk of forfeiture by reason of its subsequent discovery by another parts, such right, for augbt of limitation imposed by statute, may coutinue indefinitely ; can be terminated, in fact, only by the actual introduction of the invention by another for the space of two years.
Even the granting of a patent to the subsequent inventor would not defeat it; nothing less than a two years' actual or constructive public use under the patent conld avail for this purpose. But such a doctrine would be obnoxious to the whole spirit of the patent law, and is contrary to a lopg line of well-established judicial decisions.
It is true, as often announced, that mere delay, no matter how long continued, cannot impair an inventor's right to a patent. It is only when, by reason of such delay, another party gains the opportunity to gire the invention to the world, and actually becomes the first to do tuis, that the first inventor's rights pass away.
It is also true that the law looks with indulgence upon delays which arise from the circumstances of the party. Hence the requirement of reasonable diligence only; but in the present case there was no controlling necessity that compelled delay. It was an intelligent, deliberate act on the part of Monce, and done, not for the purpose of further improving the inrention before entering upon the manufacture of it, so that the public might erentually reap the greater benefit, but for the less praiseworthy object of filling the market with inferior goods before the public should become aware of the existence of the improved article, which, when once known, was to terminate the demand for the others. Hoverer little the bearing of this species of dishonesty upon the legal aspects of the case, it is plain that lonce has no ralid excuse for his delay.
Adams is adjudged entitled to the patent, and the decision of the Esaminers-in-Chief is afiirmed.
J. ARKELL AND B. AND A. SMITH.-EX PARTE.
APPEAL FROJI THE EXAMINERS-IN-CHIEF.
The inventor wbo should be the first to devise a tool or a machine to assist in the
manufacture of bags of a given description, which previously had been made by band alane, and by the use of the particular tool or machine thus devised to demonstrate the advantage of discontinuing the old method of land manipulation, would not be entitled to a broad claim for the use of tools or of machines in the manufacture of
snch bags. The man who first intents a special mode of manipulation by which square-bottom
paper bags can be made without the use of the “former” previously employed, is no more entitled to block the path by a broad claim against inventors who originate other methods of doing the same thing than would the inventor of the first machine for making a given article of manufacture be entitled to control all machines capable of producing the same article, no matter how widely different in their prin
ciple of operation. Au inventor who demonstrates the practicability of dispensing with the “former"
previously used in niaking square-bottom paper bags by substituting therefor a system of preliminary creases or guide-folds is entitled to a patent; but his claim should be restricteil to his particular methoil.