§ 56. Functions of Patent Office: Caveats: Disclaimers: Reissues. In furtherance of the advantages thus offered by the patent system to inventors, there are three collateral proceedings, designed to meet peculiar exigencies in the history of an invention. Where an inventor, who is still engaged in reducing his discovery to practice, fears that another, laboring in the same direction, may first obtain a patent, he can file a caveat in the Office and thereby protect himself during the residue of his experiments, and secure a hearing on the question of priority before a patent issues to any one for the invention. If a patent, as already granted, is defective on account of its excessive claims, the error may be cured by simply filing a disclaimer.2 When, through the inadvertence § 56. 1 Rev. Stat. 1874, § 4902. "Any citizen of the United States who makes any new invention or discovery, and desires further time to mature the same, may, on payment of the fees required by law, file in the Patent Office a caveat setting forth the design thereof, and of its distinguishing characteristics, and praying protection of his right until he shall have matured his invention. Such caveat shall be filed in the confidential archives of the Office and preserved in secresy, and shall be operative for the term of one year from the filing thereof; and if application is made within the year by any other person for a patent with which such caveat would in any manner interfere, the Commissioner shall deposit the description, specification, drawings, and model of such application in like manner in the confidential archives of the Office, and give notice thereof, by mail, to the person by whom the caveat was filed. If such person desires to avail himself of his caveat, he shall file his description, specifications, drawings, and model within three months from the time of placing the notice in the post-office in Washington, with the usual time required for transmitting it to the caveator added thereto; which time shall be endorsed on the notice. An alien shall have the privilege herein granted, if he has resided in the United States one year next preceding the filing of his caveat, and has made oath of his intention to become a citizen." See also Rules of Patent Office: Caveats. 2 Rev. Stat. 1874, § 4917. "Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, whether of the whole or of any sectional interest therein, may, on payment of the fee required by law, make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office; and it or mistake of the inventor, his patent fails to cover any part of his invention, as he attempted to describe and publish it in his specification, the patent may be surrendered and a new one, remedying the deficiency, may be procured.3 shall thereafter be considered as part of the original specification to the extent of the interest possessed by the claimant and by those claiming under him after the record thereof. But no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it." original applications are. Every patent so reissued, together with the corrected specification, shall have the same effect and operation in law, on the trial of all " actions for causes thereafter arising, as if the same had been originally filed in such corrected form; but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, See also Rules of Patent Office: except each by the other; but when Disclaimer. 3 Rev. Stat. 1874, § 4916. "Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the Commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee, or, in case of his death or of an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the amended patent. The Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued letters patent. The specifications and claim in every such case shall be subject to revision and restriction in the same manner as there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid." See also Rules of Patent Office: Reissues. In Smith v. Merriam (1881), 19 O. G. 601, Lowell, J.: (602) "The most natural construction of this law would perhaps be that, if a patent should be inoperative by reason of a defective specification or invalid for claiming too much, the defect might be supplied or the excessive claim be reduced by reissue; but the courts have given a different interpretation, much wider in most respects and narrower in only one. They do not permit a defective specifi cation to be supplied excepting from the drawings or model; but they do permit the claim to be varied, provided the same invention is described in both patents, and hold that the decision of the Office that the occasion had arisen for granting a reissue is final. The law is extremely liberal, perhaps too much so, and has been much abused." 6 Fed. Rep. 713 (716). § 57. Patent Privilege Conferred only on Inventors. The Constitution of the United States authorizes the grant of patents only to inventors. Under the construction given to the word "inventors" by the English courts, it comprehended not only those who by their ingenuity had discovered, and by their labors or expenditures had reduced to practice, some new art or manufacture, but all those who had introduced into the realm any new trade or industry from foreign lands.1 This construction was never recognized in the United States. An inventor, in the meaning of the Constitution, is one who has himself conceived the fundamental idea of the invention, and has embodied it in tangible materials. To him and to him only can a patent lawfully be granted.2 § 58. Patent Privilege Conferred only on the First and Original Inventor. To what inventors and for what inventions patents may be issued, is determined by the acts of Congress. For any one invention but one valid patent can exist; and of several distinct inventors of the same invention, one only is entitled to receive a grant of the exclusive right. This one is the original and first inventor.1 An original inventor is a creator, § 57. In the case of Edgebury v. Stephens (1691), 2 Salk. 447, it was held that "if the invention be new in England a patent may be granted, though the thing was practiced beyond sea before; for the statute speaks of new manufactures within this realm; so that if it be new here, it is within the statute; for the act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study, it is the same thing." 1 Web. 35; 1 Abb. P. C. 8. 2 In Livingston v. Van Ingen (1812), 9 Johns. 507, Kent, C. J.: (583) "It seems to be admitted that Congress are authorized to grant patents only to the inventor of the useful art. . . . There cannot, then, be any aid or encourage ment, by means of an exclusive right under the law of the United States, to importers from abroad of any useful invention or improvement." 66 In Pitts v. Hall (1851), 2 Blatch. 229, Nelson, J.: (234) "A person, to be entitled to the character of an inventor, within the meaning of the Act of Congress, must himself have conceived the idea embodied in his improvement. It must be the product of his own mind and genius, and not of another's." See also Washburn v. Gould (1844), 3 Story, 122; 2 Robb, 206; Sparkman v. Higgins (1846), 1 Blatch. 205. § 58. 1 Rev. Stat. 1874, §§ 4886, 4920. In Bedford v. Hunt (1817), 1 Mason, 302, Story, J.: (304) “The first inventor, who has put the invention in practice, and he only, is The first in not a borrower or copyist, of the invention.2 ventor is that original inventor whose inventive act, in point of time, preceded the inventive acts of others. According to the earlier statutes, a first inventor must have been such as to all the world. However meritorious an applicant might entitled to a patent. Every subsequent the first, although he may be a true patentee, although an original inven- inventor." 1 Robb, 542 (566). tor, may be defeated of his patent right upon proof of such prior inventions being put into use. The law in such case cannot give the whole patent right to each inventor, even if each be equally entitled to the merit of being an original and independent inventor; and it there fore adopts the maxim, qui prior est in tempore, potior est in jure." 1 Robb, 148 (150). See also Lowell v. Lewis (1817), 1 Mason, 182; 1 Robb, 131; Thomas v. Weeks (1827), 2 Paine, 92; Reed v. Cutter (1841), 1 Story, 590; 2 Robb, 81; Allen v. Blunt (1846), 2 W. & M. 121; 2 Rɔbb, 530. The term "original inventor," is sometimes used by the courts as synonymous with "first inventor." See Odiorne v. Winkley (1814), 2 Gallison, 51; 1 Robb, 52; Thomas v. Weeks (1827), 2 Paine, 92; Allen v. Blunt (1846), 2 W. & M. 121; 2 Robb, 530. In other cases the judges make a distinction between the “original" and the "first" inventor, giving the former title to every true inventor, and the latter only to the foremost among true inventors. See Lowell v. Lewis (1817), 1 Mason, 182; 1 Robb, 131; Bedford v. Hunt (1817), 1 Mason, 302; 1 Robb, 148; Pennock v. Dialogue (1829), 2 Peters, 1; 1 Robb, 542; Reed v. Cutter (1841), 1 Story, 590; 2 Robb, 81; Roemer v. Simm (1874), 5 O. G. 555. In Pennock v. Dialogue (1829), 2 Peters, 1, Story, J.: (23) "It gives the right to the first and true inventor and to him only; if known or used before his supposed discovery he is not In Reed v. Cutter (1841), 1 Story, 590, Story, J.: (599) "He is the first inventor in the sense of the Act, and entitled to a patent for his invention, who has first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable. . . . In a race of diligence between two independent inventors, he, who first reduces his invention to a fixed, positive, and practical form, would seem to be entitled to a priority of right to a patent therefor. The clause of the fifteenth section (Act of 1836; Rev. Stat. 1874, § 4920), now under consideration, seems to qualify that right, by providing that, in such cases, he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has, in fact, first perfected the same, and reduced the same to practice in a posi tive form. It thus gives full effect to the well known maxim, that he has the better right, who is prior in point of time, namely, in making the discovery or invention." 2 Robb, 81 (90, 91). In the act of 1790, the invention to be patentable, must have been one "not before known or used;" no limit to the time or place of user being men. tioned. In the act of 1793, it must have been one "not known or used before the application;" no limit of place being here established. In pursuance of these acts, the courts held that the inventor must be the first inventor as to all the world, in order to be entitled to a patent. be, he could obtain no valid patent for the fruits of his own ingenuity, if his discovery had been anywhere anticipated, even without his knowledge. The act of 1836 removed this hardship, and provided that he who first conceived and reduced to practice an invention which was not before known or used in the United States, and nowhere had been patented or described in any printed publication, should be regarded as its first as well as an original inventor.5 § 59. Patent Privilege Conferred only for Certain Classes of In ventions. Not everything that in itself is new is an invention, nor is every invention patentable under the existing law. Invention implies something more than change of form, or of arrangement, or of mode of use. It is the result of inventive as distinguished from mechanical skill. An operation of the intellect, not following the beaten track but striking out into some new direction and achieving some new triumph over matter, is involved in its production. It is perhaps incapable of exact definition, and the line between it and what the In Reutgen v. Kanowrs (1804), 1 Wash. 168, Washington, J. (170) "If it appears that the plaintiff was not the original inventor, in reference to other parts of the world as well as America, he is not entitled to a patent." 1 Robb, 1 (4). In Dawson v. Follen (1808), 2 Wash. 311, Washington, J.: (311) "To entitle the plaintiff to recover [the jury] must be satisfied that he was the original inventor, not only in relation to the United States, but to other parts of the world." 1 Robb, 9 (9). "If a patentee is not the first or original inventor, in reference to all the world, he is not entitled to a patent even although he had no knowledge of the previous use or previous description." Law Dig. (Inventor, B. 32). See also Whitney v. Emmett (1831), Baldwin, 303; 1 Robb, 567. the applicant for a patent was entitled to receive it unless, on due examination, it appeared that the same invention had been previously invented or discovered by some other person in this country. And § 15 provided that a patent should not be void on account of the invention or any part thereof having been before known or used in any foreign country. See also Rev. Stat. 1874, § 4886. "The provision of § 6 and § 15 of the act of 1836 introduced an important modification into the law of patents, designed to protect the American inventor against the injustice of being thrown out of the fruits of his ingenuity, by the existence of a secret invention or discovery abroad, that is, a discovery not patented, and not described in any printed publication." Law Dig. (Inventor, B. 33), citing 5 5 Act of 1836, §§ 7, 15. By § 7, Opin. 21 (1848). |