DECISIONS OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1872. S. G. MONCE vs. B. F. ADAMS. APPEAL FROM 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 common handle, while their functions remain wholly distinct, is a patentable invention-quære. Neither in terms nor inferentially does section 61 of the act of 1870 extend 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 invention into public use or on sale. If, uninfluenced by controlling circumstances, an 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 diligence. An inventor is to be held to as strict accountability for the time suffered to elapse between the perfecting of his invention and its revelation to the public through the medium of the Patent 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 the benefit received, unless, in fact, another, prior in making the invention, is proceeding to give it to the world with no greater delay than what is imposed by circumstances beyond his control. The law looks with indulgence upon delays which arise from the circumstances of the party, and demands only a reasonable diligence. Delay, no matter how long 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 an inventor, through lack of meaus, delayed his application for eight months after perfecting the invention, but meanwhile was carrying on negotiations for the sale of it, and was the first to file an application in the Patent Office: Held, that there was no unreasonable delay. Where an inventor delayed for eighteen months to file his application for a patent, 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: Held, that the first inventor had forfeited his right. DUNCAN, Acting Commissioner: The alleged invention to which this interference relates consists in uniting a putty-knife and a revolving glass-cutter, the blade of the knife and the shank of the cutter being inserted in any available mode into the opposite ends of the same handle, but being in all other respects entirely 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 invention to complete the instrument by the introduction of the missing member. The invention, 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, proves 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 |