principle announced in the earlier Welsbach case is cited with approval and followed.

In both of these cases, it should be noted, the foreign invention had been described in a foreign patent. Since the whole theory behind the patent statutes is to insure the advancement of the useful arts in this country by familiarizing the American public with the subject matter of the invention, these cases may be distinguishable on principle from the Hanifen cases. Although a knowledge and use in the United States may be sufficiently accessible to the public to warrant the refusal of a patent to another on the invention, it is doubted that the use of an invention abroad is accessible to the American public.20 Where, however, the invention has been published or patented abroad, it is potentially accessible to the American public, and it is not illogical on the basis of this earlier foreign disclosure to deny patent protection to a later alleged inventor, since the public can no longer be benefited thereby.21 On the other hand, as between rival inventors, the foreign inventor who first made the invention abroad and embodied it in the form of a foreign patent accessible to the American public, may well be favored as against the mere user in this country, even though the use was begun before the foreigner's application for patent in this country. It may well be that the possibility of the general public being taught how to practice the invention is greater in the case of a foreign disclosure than in an unpublished domestic use. Where, however, the foreign made invention is not embodied in a foreign patent or printed publication and may therefore never be made accessible to the American public, these considerations do not apply, and it would not be inconsistent to favor the one who benefited the American public at least to the extent of introducing the practice of the invention in this country,22 as against the foreign inventor who later seeks and obtains a United States patent, when the public is already in part possessed with the expected benefits of the invention.

CLAUDE NEON CASE

In the Smiadzu case as well as in the Hanifen cases, the defense was based on an alleged prior knowledge and use in this country before the filing of the patent. In the Claude Neon case,23 however, the defense relied on anticipation by a publication dated prior to the United States filing date of the patent sued on. Here also the court, on the authority of the Hanifen and Welsbach and Badische cases, permitted plaintiff to prove that the invention was made abroad at a time antedating the publication.

Although the Supreme Court in the Shimadzu case referred to the Claude Neon case with approval, and drew no distinction between a defense based on prior use (less than 2 years before the filing of the patent) and one based on prior publication, the two situations might logically be distinguished. In the case of a mere use, the American public has no teaching of the invention to the extent that it has in the case of a publication as such or a description in a patent. Since in the latter case plaintiff has added nothing to the stock of knowledge and understanding in this country, at the time of filing his application for a United States patent, he may not be entitled to the grant of a patent monopoly. Where, however, the invention is not described but merely being used by defendant, there may be some merit in allowing a patent to plaintiff, who is actually putting the general public in possession of the subject matter of his invention to a somewhat greater extent than could be derived from defendants mere use. This is parallel with the conclusion reached above in this paper in distinguishing between the plaintiffs in the Hanifen cases and the Welsbach and Badische cases in determining the extent to which the American public is benefited.24 In other words in determining the relative rights of plaintiff and defendant the rational measure is the extent to which the American public is benefited. And the question as to the effect of acts done abroad should only arise where these acts are not of a lesser caliber than that of the acts in this country, in other words, publication or patenting abroad may predominate over a mere use in this country, whereas a mere use abroad would be to no avail to antedate a publication or description in a patent. Nor is the decision of the Supreme Court on the facts in the Shimadzu case inconsistent with this principle. Where the acts are of the same caliber, as in the case of a use against a use, the one earlier in time, regardless of place, may well prevail.

20 See Gayler v. Wilder (10 How. 477).

21 Disregarding any possible economic benefit that might be derived from the parctice of the invention in this country.

22 Although patents for importations are not recognized in American patent law, they are provided for in the laws of several foreign countries.

23 Cited supra, note 15.

24 See supra, pp. 510 and 511.

POSSIBLE EXTENT OF SHIMADZU CASE ON OTHER SITUATIONS

No sooner had the decision of the Supreme Court in the Shimadzu case been announced than, it is understood, attempts were made in interference proceedings to introduce testimony showing the conception and reduction to practice of the invention outside of the United States. It is apparent without going beyond the expression of the Court that there is nothing in the Supreme Court's decision to warrant any contention that prior practice in interference proceedings is affected thereby; for, in fact, the Court specifically distinguished the case before it from one in which interfering patents or applications are involved, the latter situations being expressly governed by Revised Statutes 4923. The long line of consistent decisions on this subject clearly set forth the law that knowledge and use in a foreign country will not operate to defeat a United States patent.25

Three type situations must be taken into consideration and compared in attempting to determine the scope of the decision of the Supreme Court in the Shimadzu case. May completion of an invention abroad he introduced:

(1) To overcome a defense of anticipation by a printed publication or of public use in the United States prior to the filing date of the patent sued on, where defendant does not claim rights under a patent?

(2) To prove priority in cases of interfering patents or applications?

(3) In a situation as specified in (1) above, but where defendant “relies upon a United States patent"?

Situation (1) embodies the facts of the Shimadzu case, where the defense is prior sale or use, and parallels the facts of the Claude Neon case where the defense is based upon a prior publication. In view of these cases the first question must of course be answered in the affirmative.26

Situation (2) is distinguished by the Supreme Court, and in the light of Revised Statutes 4923, the question must be answered in the negative.27 Situation (3) appears to be grouped by the Supreme Court without much ado with situation (2) above, no distinction being specifically drawn by it as to the relative scope of the respective patents of plaintiff and defendant in relation to the infringing use. This situation, however, warrants further consideration.

It is manifest that in a case where the patent relief upon by the defendant and the one sued on fall within the category of interfering patents, that situation (2) is applicable, since only one valid patent can exist on the same claimed invention, and defendant's patent cannot be invalidated by the foreign use (Rev. Stat. 4923), the plaintiff's patent must be held invalid on the theory of prior patenting. Where, however, the claims of the respective patents are not in conflict, when, for instance, one of the patents constitutes a species of or improvement on the subject matter of the other, the situation becomes more complex and confusing and the a priori reasoning of the Supreme Court is not so easily applicable.

In the possible situations tabulated below, speculation as to the probable distinctions and conclusions that may be reached following the reasoning of the Supreme Court, will be found interesting, if not enlightening.

25 Electric Accumulator Co. v. Julien Electric Co. (38 Fed. 117), A. G. Spaulding and Bros. v. John Wanamaker (256 Fed. 530), City of Milwaukee v. Activated Sludge (69 F. (2d) 577). This is true even if there is knowledge in this country of the foreign use, Westinghouse Machine Co. v. General Electric Co. et al. (207 Fed. 75, 1913 C. D. 493).

26 Unless we are to disapprove of the decision in the Claude Neon case and distinguish between situations involving a defense based on prior use and one based on a prior publication; see p. 511 supra.

27 Wilson v. Sherts (81 F. (24) 755). Rebuffat v. Crawford (F (2d) 980), Lorimer v. Erickson (227 O. G. 1445, 1916 C. D. 200, 44 App. D. C. 503), Dekando v. Armstrong (1911 C. D. 413, 37 App. D. C. 314), Bell v. Brooks (1881 C. D. 4).

As early as the year 1848, Commissioner Edmund Burke submitted this question for an opinion by the Attorney General in connection with an interference between Morse and Bain on an improvement on the original telegraph. The opinion (Opinions of Attorneys General, vol. V, p. 19) interprets the several patent statutes as construed together and reaches the conclusion that the earlier foreign use was ineffective to establish priority over a United States application first filed in this country. On appeal to the court the matter was disposed of on the ground that there was no interference in fact (McArthur's Patent Cases, 1885, vol. I, p. 90).

It would appear that a different result might logically be reached in cases where defendant uses an embodiment claimed in a patent relied upon by him but not described specifically in, although covered by the generic claims of, the plaintiff's patent, particularly where the plaintiff seeks to introduce evidence of a prior use abroad of an embodiment other than that used by defendant;28 and on the other extreme in cases where the defendant uses an embodiment specifically claimed in plaintiff's patent, and defends under a generic patent not even describing the embodiment actually involved in the infringing use. 29 If we do recognize the distinction in these extreme cases, it is still not easy to classify the intermediate cases tabulated above with one or the other of these conclusions.

Where the prior foreign use attempted to be proved by plaintiff would also anticipate the invention claimed in the patent relied upon by the defendant, to permit plaintiff to prove such earlier foreign use might be considered contrary to Revised Statutes 4923,30 but in instances where both patents can exist and be valid as dominant and subservient patents, the reasoning by analogy to conflicting patents governed by Revised Statutes 4923 is no longer applicable. Again, it may well be questioned whether the defendant falls within the category of one "claiming under a patent" if the patent relied upon by him does not even describe the embodiment involved in the infringing use. Furthermore, we must not ignore the possibility, in a proper situation, of permitting the plaintiff to prove an earlier foreign use to overcome the patent relied upon by defendant, so as to hold the plaintiff's patent valid, and yet allow the defendant a personal right to practice the invention described within his patent without paying tribute to plaintiff.31

RULE 75 SITUATION

It is at least clear that the practice in inter partes cases before the Patent Office is not affected by the holding of the Supreme Court in the Shimadzu case. What of ex parte cases, however?32 If the interpretation given by the Supreme Court to Revised Statutes 4886 is to be followed, does it necessarily follow that Patent Office Rule 75 is inconsistent with the statute?

Present rule 75 reads:

"When an original or reissue application is rejected on reference to an expired or unexpired domestic patent which substantially shows or describes but does not claim the rejected invention, or on reference to a foreign patent or to a printed publication, and the applicant shall make oath to facts showing a completion of the Invention in this country before the filing of the application on which the domestic patent issued, or before the date of the foreign patent, or before the date of the printed publication, and shall also make oath that he does not know and does not believe that the invention has been in public use or on sale in this country, or

29 For instance in situations tabulated under I, 2.

29 For instance in situations tabulated under II, 2. 30 The text of this statute appears in note 12, supra.

31 This would be comparable to the so-called "rights of third persons" provided for in the patent laws of some foreign countries. The present German law, sec. 7, provides that one using the invention or making preparations for such use in that country, prior to the filing of an application thereon, shall have certain shop rights inuring to his business, and transferable therewith, notwithstanding the grant of the patent. Our own patent laws formerly provided (sec. 7 of the act of 1839) for a right to use the invention, without liability to the inventor, where the subject matter of the patent was purchased or constructed prior to the date of the application for patent. The present statute (R. S. 4899; U. S. C. title 35, sec. 48) limits the exemption to those purchasing from the inventor or operating with the latter's knowledge and consent.

32 The question is mentioned in an article in this Journal, May 1939, but is left unanswered (21 J. P. O. S., p. 329).

patented or described in a printed publication in this or any foreign country for more than two years prior to his application, and that he has never abandoned the invention, then the patent or publication cited shall not bar the grant of a patent to the applicant unless the date of such patent or printed publication be more than two years prior to the date on which application was filed in this country." [Italics added.]

The italicized portion first appeared in the rule in the general revision of April 18, 1888. It would be interesting and perhaps helpful to learn the reason for the added limitation in the rule, but nothing has been found on the matter. This amendment to the rules preceded the Hanifen cases, and after the decisions in the Hanifen cases were rendered, the apparent inconsistency of Revised Statute 4886, as interpreted in these decisions and the practice of the Patent Office under rule 75 was squarely before the Office in the Grosselin case.33 Much of the reasoning contained therein is still applicable, and for convenience, it may be well to quote at length from that decision:

"The purpose of the patent law is, as stated in the Constitution, 'to promote the progress of science and the useful arts,' and this means to progress in this country. Anything which does not give the invention to the public of this country will not promote such progress, and therefore Congress has provided, in section 4923 of the Revised Statutes, that when a party has obtained a patent it shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country, before his invention or discovery thereof, it it has not been patented or described in a printed publication.

"By reason of the above sections of the statutes this Office in conducting an interference under section 4904 of the Revised Statutes to determine priority of invention between two applicants claiming the same invention excludes testimony as to what was done by them abroad unless in the form of a patent or printed publication and issues the patent to the original inventor who is shown to have been the first to introduce the invention in this country, although the other party may have been the first to make the invention abroad. This is true notwithstanding the fact that section 4904 provides that the Commissioner shall issue the patent to the party who is adjudged to be the prior inventor' and contains no limitation as to the place where the invention is made. Section 4923 is construed as modifying section 4904 and indicating who will be considered the 'prior inventor.'

"A full disclosure in a foreign patent, a printed publication, or a United States patent not claiming the invention is conclusive proof that the invention was known and in the full possession of the public in this country at the date of publication. It is immaterial whether the author of the patent or publication claims to be the inventor, since the essential point is that some one must have invented it at or before that time, and the invention having been given to the public no subsequent inventor is entitled to a patent.

"The statutes make no provision directly by which an applicant may establish his right to a patent over a reference showing and describing, but not claiming, the invention by proving that he is in fact the first and original inventor. There can be no contest where the reference is not a United States application or patent claiming the invention. By analogy to the statute relating to interferences, however, the applicant should be permitted to show in some way that he is the prior inventor and entitled to a patent in spite of the reference, and since there can be no contest the Office by rule 75 permits him to make an ex parte showing of his rights. In that ex parte showing, however, it requires the same kind of facts to be set forth which, if true, would establish prima facie his right to a patent even if the reference claimed the invention. The whole proceeding is by analogy to the interference practice, and therefore it follows that practice as closely as possible. This is necessary for the protection of the public.

"If the appellant's contention were accepted, the Office would be in the anomalous position of being compelled to grant a patent to him, so long as Muller does not file an application, but of refusing a patent upon the same evidence previously in its possession if such application were filed, and at the same time it would be prohibited by its rules from informing the appellant that the other application has been filed. To hold that Congress intended to establish two rules of evidence for determining the effective date of invention-one to be applied where the rights of applicants were to be determined inter partes and another where they were to be determined ex parte—would lead to endless confusion. A question which is ex parte one day may be raised inter partes the next."

33 Ex parte Grosselin (97 O. G. 2977, 1901 C. D. 248).

And, referring to the Hanifer cases and the Welsbach case, the Commissioner continues:

66* * * In none of those cases was the invention described in a patent or publication. In the present case there is no question of an infringer, but merely the question as to the rights of the public to the invention after it has been put fully into its knowledge by publication. The question as to the right of a party who would upon application be entitled to a patent to dedicate his invention to the public or abandon it by publication without claim in accordance with the well-settled principles of law was not presented to the courts for decision on ́‍the facts before them and was not considered.

"It is held that rule 75 is not inconsistent with law and that the affidavits presented referring to invention abroad are incompetent to show invention prior to the date of the references.'

If we can agree with the Commissioner's reasoning in that case, no more reason appears, in the light of the facts involved in the Shimadzu case, for changing rule 75, than was present at the time of the Grosselin decision, were it not for the Claude Neon case. The possible inconsistency between the Commissioners ruling in the Grosselin case is considered in an article appearing in this Journal soon after the decision in the Claude Neon case was rendered.34

After fully considering the two cases referred to above, the article concludes: "Clearly, the views expressed in the Grosselin case and the Claude Neon decision must either be reconciliable, or entirely inconsistent with one another. The conclusion reached in each case is premised upon the same patent statutes. Further, the Claude Neon case refers to a group of prior Federal Court decisions for authority to sustain its holding, while the Grosse'n case justifies its opposite holding by showing that the same group of Federal decisions is not authority to answer affimatively the question which was before the Court in the Neon case. Can it be accepted, then, that the legal doctinre of the Grosselin case governs only ex parte prosecution before the Patent Office, necessarily implying that rule 75 is but a measure of substantive rights before the Commissioner of Patents, and that the Claude Neon case enunciates the true yardstick of substantive rights of the foreign inventor who has been fortunate enough to safely guide his patent application to patent without having encountered a situation of the Grosselin type?

"A further interesting query suggests itself upon attempting to reconcile the Grosselin and Neon cases. If the latter correctly construes Revised Statutes 4886 as the basis of the right of a patentee to show the act of invention in a foreign country in order to avoid a publication whose date is prior to his United States filing date, but less than 2 years pricr, does not rule 75 contain a limitation inconsistent with the basic law as stated in the same statute?"

Even though the apparent inconsistence was before the administration, yet no reason then appeared for modifying rule 75, nor have any cases been found questioning the propriety of the rule.

If then, the Shimadzu case is to be confined to the facts there involved, and the Claude Neon case ignored as being out of line with the principle to be derived from the remaining cases, then rule 75 is not inconsistent with the doctrine formulated, since a public use of less than 2 years is not ordinarily employed by the Patent Office as a basis of refusing a patent.35 Where however, the rejection by the Office is based on a prior patent describing the invention claimed or on a printed publication, antedating the filing date of the application, the showing of the applicant who made the invention abroad must be of the same caliber in order to be effective in overcoming the anticipation; that is, the showing of the prior making of the invention abroad must be supported by a foreign patent or printed publication. This requirement is entirely consistent with the conclusions reached above in this paper.36 Some logic or rationalization can therefore be found to support the view that the situation involved under rule 75 is distinguishable from that presented in an infringement suit where the defense is based on an unpublished and undescribed use.

Even if we subscribe to the view that the tacit approval by the Supreme Court of the Claude Neon case leads to a conclusion that the distinction drawn herein between cases where the defense is based on a patent or printed publication and those where the defense is a mere use, is unwarranted, does it necessarily follow that revision of rule 75 is indicated?

It should be noted that the Supreme Court in the Shimadzu case recognized the force in the argument that the distinction in the case where the alleged

34 Greenberg: Note on the Foreign Invention and rule 75 (14 J. P. O. S. 178 (March 1932)).

35 The only situation where the same could arise that comes to mind, is in a rejection based on personal knowledge by an employee of the Patent Office.

36 See pp. 510, 511, 512.