of obtaining legal protection for his invention. That an inventor has power thus to abandon his invention is unquestionable, and it may often happen that after endeavoring to procure a patent and encountering unexpected difficulties he will deem it expedient to forego further trouble and expense, and allow his idea to become public property. But the proof of such abandonment as this must be conclusive. No length of time expended in surmounting obstacles arising in the Patent Office, no number of successive applications rendered necessary by the rejection of others previously filed, no interval of unavoidable delay between one application and another, nor any other action or omission of the inventor which is not manifestly inconsistent with the design to further prosecute his claims, can issue in this species of abandonment. While in § 353. 1 In United States Rifle & Cartridge Co. v. Whitney Arms Co. (1886), 118 U. S. 22, Gray, J.: (24) "There may be an abandonment of an invention to the public, as well after an application has been rejected or withdrawn as before any application is made. Such abandonment may be proved either by express declarations of an intention to abandon, or by conduct inconsistent with any other conclusion. An inventor, whose application for a patent has been rejected, and who, without substantial reason or excuse, omits for many years to take any step to reinstate or renew it, must be held to have acquiesced in its rejection, and to have abandoned any intention of further pros ecuting his claim." 35 O. G. 873 (873). In American Hide and Leather Splitting and Dressing Mach. Co. v. The American Tool and Machine Co. (1870), Holmes, 503, Shepley, J.: (513) "The abandonment to the public in the sense in which it is here used need not be two years before the date of the application for the patent; it may be afterward, although the presumption always is against an abandonment to the public by a patentee after he has applied for his patent. But he can do so; he can do so within two years; he can do so at any time. It is a matter that may be proved, but it is never to be presumed." 4 Fisher, 284 (299). See also Weston v. White (1876), 13 Blatch. 447; 2 Bann. & A. 364. That an abandonment after application must be clearly proved, see McMillin v. Barclay (1872), 4 Brews. (Pa.) 275; 5 Fisher, 189. 2 For a general discussion of the cases of abandonment after application, see Colgate v. Western Union Telegraph Co. (1878), 15 Blatch. 365; 4 Bann. & A. 36; 14 O. G. 943. That no delays in the Patent Office without fault of the inventor work an abandonment, see Planing Mach. Co. v. Keith (1879), 101 U. S. 479; Henry v. Francestown Soapstone Stove Co. (1876), 2 Bann. & A. 221; 9 O. G. 408; Jones v. Sewall (1873), 3 Clifford, 563; 3 O. G. 630; 6 Fisher, 343; Dental Vulcanite Co. v. Wetherbee (1866), 2 Clifford, 555; 3 Fisher, 87; Sayles v. Chicago & Northwestern R. R. Co. (1865), 1 Bissell, 468; 2 Fisher, 523. That a delay caused by war is not abandonment, see Knox v. Loweree pursuit of his legal rights, according to the measure of his abilities, he cannot be affected by the adverse action either of the government or of the public. Only when he gives up the struggle and finally surrenders his exclusive privilege as no longer worth maintaining, is the public so possessed of his in- * vention that his rights in it become incapable of recognition. (1874), 1 Bann. & A. 589; 6 0. G. 802. That the mere abandonment of the application is not abandonment of the invention, see Lindsay v. Stein (1882), 20 Blatch. 370; 10 Fed. Rep. 907; 21 O. G. 1613; Clark v. Scott (1872), 2 O. G. 4; 9 Blatch. 301; 5 Fisher, 245; Bevin v. East Hampton Bell Co. (1871), 9 Blatch. 50; 5 Fisher, 23. That an abandonment of the application during eighteen years has been held to be an abandonment of the invention, see Marsh v. Commissioner of Patents (1872), 3 Bissell, 321. That fifteen years' inaction after withdrawal is abandonment, see Consolidated Fruit Jar Co. v. Bellaire Stamping Co. (1886), 27 Fed. Rep. 377 ; 35 O. G. 627. That no abandonment of an application can take place except by conduct inconsistent with due dili gence in prosecuting the application, see Ballard v. Pittsburgh (1882), 12 Fed. Rep. 783; Singer v. Braunsdorf (1870), 7 Blatch. 521; Adams v. Ed. wards (1848), 1 Fisher, 1. 1536; Howes v. McNeal (1878), 15 Blatch. 103; 15 O. G. 608; 3 Bann. & A. 376; Howard v. Christy (1876), 2 Bann. & A. 457; 10 O. G. 981; Goodyear Dental Vulcanite Co. v. Willis (1874), 1 Bann. & A. 568; 7 O. G. 41; 1 Flippin, 388; Howe v. Newton (1865), 2 Fisher, 531; Godfrey v. Eames (1863), 1 Wall. 317. That between two successive applications the inventor may abandon his intention to procure a patent, and then resuming his intention, file a new and independent application, see Pelton v. Waters (1874), 1 Bann. & A. 599; 7 O. G. 425. See further as to abandonment of the application and its effect on the inven tion §§ 574–581 and notes, post. 8 That a public use and sale of the invention, pending an application, however prolonged, is not abandonment, see Goodyear Dental Vulcanite Co. v. Smith (1874), 5 O. G. 585; Holmes, 354; 1 Bann. & A. 201; Smith v. O'Connor (1873), 4 O. G. 633; 2 Sawyer, 461; 6 Fisher, 469; Dental Vulcanite Co. v. Wetherbee (1866), 2 Clifford, 555; 3 Fisher, 87. That no number of successive applications indicate an intention to abandon, but that, in reference to the question of abandonment, all such are regarded as one application, see Graham v. McCormick (1880), 10 Bissell, 39; 11 Fed. Rep. 859; 21 O. G. 1533; 5 Bann. & A. 244; Graham v. Geneva L. C. Co. (1880), 11 Fed. Rep. 138; 21 O. G. § 353 That the decision of the Commissioner on a question of abandonment is not conclusive, and the patent may be attacked on that ground, see United States Rifle & Cartridge Co. v. Whitney Arms Co. (1886), 118 U. S. 22; 35 O. G. 873. SECTION II. OF ABANDONMENT BY PUBLIC USE OR SALE. § 354. Abandonment by Public Use: History of the Doctrine. The public use of an invention, with the consent of the inventor, has always been regarded as furnishing conclusive evidence of his intention to abandon it. In its earlier stages the law both in England and in this country was in this respect especially severe. The statute of James I. allowed the grant of letters-patent only for inventions which others, at the date of such letters-patent, did not use; and under this provision the courts held that a single instance of such use by any person other than the inventor, or even by the inventor in a public manner, was sufficient to debar him from a patent. In the United States, the act of 1793 required that the invention should not have been used before the application, and this our courts construed as prohibiting a public use by the consent of the inventor, and decided that his acquiescence in the enjoyment of his invention by the public, whatever might be its duration or extent, was equivalent to an abandonment. So strict a rule was necessarily disadvantageous to inventors and indirectly prejudicial to the public. In 1835 the evil was diminished in Great Britain by an act of Parliament providing for the confirmation of such patents as would otherwise be void by reason of some prior use by others; and in 1852 the 15 and 16 Vict. c. 83 rendered this use a bar only when it occurred before the application. In this country, by the act of 1836, Congress adopted the construction given by the courts to the language of the act of 1793, and also placed the sale of the invention, as an article of traffic, on the same footing with its public use. In 1839 it further relieved inventors by permitting public use and sale of the invention for two years before the application.1 This provision still continues in our law. § 354. 1 That the date of the application for a patent is the date when such application is filed in the Patent Office, not when the inventor places his case in the hands of his solicitors, see Graham v. McCormick (1880), 10 Bissell, 39; 11 Fed. Rep. 859; 21 O. G. 1533; 5 Bann. & A. 244; Henry v. At present, therefore, an abandonment is conclusively presumed against the inventor from the public use or sale of the invention with his consent for more than two years before his application for a patent.2 As to what constitutes such public use and sale we shall now inquire, and first, in ref Francestown Soapstone Stove Co. (1880), 2 Fed. Rep. 78; 17 O. G. 569; 5 Bann. & A. 108. That if on the rejection of one application another is filed, both are regarded as the same application, and the date of the former is that of its successors, see Graham v. McCormick (1880), 10 Bissell, 39; 11 Fed. Rep. 859; 21 O. G. 1533; 5 Bann. & A. 244; Graham v. Geneva L. C. Co. (1880), 11 Fed. Rep. 138; 21 O. G. 1536; Howes v. McNeal (1878), 15 Blatch. 103; 15 O. G. 608; 3 Bann. & A. 376; Howard v. Christy (1876), 2 Bann. & A. 457; 10 O. G. 981; Goodyear Dental Vulcanite Co. v. Willis (1874), 1 Bann. & A. 568; 70. G. 41; 1 Flippin, 388; Godfrey v. Eames (1863), 1 Wall. 317. That under § 4894 Rev. Stat., if a new application is not filed within two years after a former application is rejected, it does not date from the date of the former, in reference to public use and sale, see Lindsay v. Stein (1882), 20 Blatch. 370; 10 Fed. Rep. 907; 21 O. G. 1613. That a delay in prosecuting the application for over two years may be condoned if it is unavoidable, and on this point the decision of the Commissioner is final, see McMillin v. Barclay (1872), 4 Brews. (Pa.) 275; 5 Fisher, 189. That a reissue application is of the same date as its original, as far as the question of public use or sale is concerned, see Shaw v. Colwell Lead Co. (1882), 20 Blatch. 417; 11 Fed. Rep. 711. That no public use or sale after the application, for however long a time, raises a conclusive presumption of abandofment, see Goodyear Dental Vulcanite Co. v. Smith (1874), 5 O. G. 585; Holmes, 354; 1 Bann. & A. 201; Smith v. O'Connor (1873), 4 O. G. 633; 2 Sawyer, 461; 6 Fisher, 469; Dental Vulcanite Co. v. Wetherbee (1866), 2 Clifford, 555; 3 Fisher, 87. 2 In Manning v. Cape Ann Isinglass & Glue Co. (1879), 4 Bann. & A. 612, Lowell, J.: (613) “It has always been a pre-requisite or condition precedent to the grant of a valid patent that the thing patented shall not have been in use. By the English law, and formerly by ours, a use before the date of the patent, or of the application, destroyed the novelty of the invention. But for the last forty years we have permitted a use not exceeding two years before the application. Obvious reasons of policy and justice require that an inventor should not monopolize what he has neglected to patent for a considerable time, if in the meantime the public have acquired the knowledge of it, whether through him or from an inde pendent source. Before 1870 it was generally understood that two years' use would not destroy the patent unless it was had with the 'consent and allowance' of the inventor. These words are not found in the statute of 1870, nor in the Revised Statutes; and Judge Blatchford has lately decided that they are no part even of the law of 1839." That under the act of 1793, use by others than the inventor with his consent was a bar, see Earl v. Page (1834), 6 N. H. 477; Pennock v. Dialogue (1829), 2 Peters, 1; 1 Robb, 542; Tread erence to public use, consider: (1) The nature of the use itself; (2) Its public character; and (3) The consent of the inventor. § 355. Experimental Use not Public Use. That use of an invention from which, if public and consented to by the inventor, abandonment may be presumed, consists in the practical employment of the invention in the ordinary course of trade, as distinguished both from the mere construction of the invention and from its experimental use. To make an instrument is not to use it.1 A use which is experimental, or is designed to test the capability or merits of an art or instrument, is not a use from which abandonment can be inferred.2 Such use assumes that the inventor does well v. Bladen (1827), 4 Wash. 703; 1 Robb, 531; Pennock v. Dialogue (1825), 4 Wash. 538; 1 Robb, 466. That two years' use or sale before the application raises a conclusive presumption of abandonment, see Andrews v. Hovey (1887), 123 U. S. 267; 41 O. G. 1162; Adams & Westlake Mfg. Co. v. Rathbone (1886), 26 Fed. Rep. 262; Hutchinson v. Everett (1885), 26 Fed. Rep. 531; 35 O. G. 1110; Bates v. Coe (1878), 98 U. S. 31; 15 O. G. 337; Elizabeth v. Pavement Co. (1877), 97 U. S. 126; McMillin v. Barclay (1872), 4 Brews. (Pa.) 275; 5 Fisher, 189. That this presumption cannot be rebutted by any evidence of difficulties with which the inventor was obliged to contend, see Sisson v. Gilbert (1871), 5 Fisher, 109 9 Blatch. 185. That this rule applies to all classes of inventions, including designs, see Burtou v. Town of Greenville (1880), 18 O. G. 411; 5 Bann. & A. 541; 3 Fed. Rep. 642. That a defective combination on sale for two years cannot be so reconstructed as to be useful and then patented, unless inventive skill is used and the combination is new, see Newark Mach. Co. v. Hargett (1886), 28 Fed. Rep. 567; 36 O. G. 692. That the public use and sale of an impracticable machine bars a patent for its component devices, see Newark Mach. Co. v. Hargett (1886), 28 Fed. Rep. 567; 36 O. G. 692. That an assignment of the patent to the user does not prevent the public use from being an abandonment, see Worley v. Tobacco Co. (1882), 104 U. S. 340; 21 O. G. 559. That two years' public use before the first application is necessary to abandonment where several applications are continuous, see Graham v. McCormick (1880), 21 O. G. 1533; 10 Bissell, 39; 11 Fed. Rep. 859; 5 Bann. & A. 244. § 355. That the making or construction of an invention, without using or selling it, is not public use, see Comstock v. Sandusky Seat Co. (1878), 13 0. G. 230; 3 Bann. & A. 188; Betts v. Menzies (1859), 5 Jur. N. s. 1164; Bramah v. Hardcastle (1789), Holroyd, 81; 1 Web. 44, n.; 1 Abb. P. C. 51. 2 In Lyman v. Maypole (1884), 19 Fed. Rep. 735, Blodgett, J.: (736) "The law permits an inventor to con. |