sumed acquiescence, where the public use is known, or might be known to the inventor, is the only safe rule which can be adopted on this subject. Some of the decisions of the Circuit Courts were overruled in the cases of Pennock & Sellers v. Dialogue. They made the question of abandonment to turn upon the intention of the inventor. But such is not considered to be the true ground. Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent, nor will a patent, obtained under such circumstances, protect his right."'11

The facts of the case to which the above doctrines were applied, were as follows. Shaw, the patentee, came to this country in 1817, from England, and being an alien, he could not take out a patent for his invention (which was that of the percussion gunlock) within two years, that is until 1819. He did not take his patent out until 1822. His invention had, in the mean time been sold in England, in 1819, by his brother, to whom he had entrusted the secret, and was in public use there the two following years; and during the latter of those years also in France. Though it was alleged that during this time he was delaying for the purpose of making some improvement in his lock, yet it did not appear that

147 Shaw v, Cooper, 7 Pet. S. C. R. 292.

he had made any material alteration in it. He had taken no steps during this time to assert his right, and he could not satisfactorily account for this delay. It was considered, therefore, that he had forfeited his right.

The preceding cases present a distinct view of the doctrines of the courts of the United States upon this subject. In the last case, Mr. Justice M'Lean, in giving the opinion of the court, lays very considerable stress upon public notice being given by the patentee of his claim, as affecting the validity of his patent. But if he had given such notice it would not have satisfied the other ground of the decision, viz. that the patent act gives only a limited monopoly, and that it would be a fraud upon the law to permit an inventor to extend that period by using his invention any considerable time before taking out his patent. For this reason it would seem to be by no means safe for an inventor unnecessarily to delay taking out a patent, on the ground that he had given sufficient public notice of his intention so to do.

A patent once granted is not forfeited in the United States by the neglect of the patentee to put his invention into practical operation. Our law differs in this respect, from that of France, which provides that unless the patentee reduces his invention to use within two years from the granting of the patent, he forfeits his privilege. This provision is

148

148

Renouard, c. 9, s. 2, p. 319.

rather rigid, for a general rule, since some inventions, requiring extensive preparations and large outlays, cannot be brought into operation in that time. A law containing a provision of this description ought also to provide for lengthening the time in particular cases. But the laws of England and the United States, contain no provision on this subject. Mr. Justice Washington distinctly lays down the doctrine that no neglect of the patentee, to put his invention into practical operation, will be construed to be an abandonment of his patent right.149 And such is the language of all the cases.150 Our law appears to go upon the presumption that the public benefit may in this case be left wholly to the influence of the interest of the patentee; and confides to him the absolute control and disposal of his invention for the period of his monopoly.

There may be instances of inventions, the use of which are vitally material to the public safety, just as in some instances the appropriation of individual property to the public use is essential to the public. defence. In the latter case the general safety is not subjected to the caprice or inordinate cupidity of the proprietor, for his property may be taken for

149

Gray & Osgood v. James, 1 Pet. C. C. R. 403.

150 Whittemore v. Cutter, 1 Gallison's R. 478; Thompson v. Haight, U. S. Law Journal, Vol. 1. p. 563; Morris v. Huntington, 1 Paine's R. 345; Pennock & Sellers v. Dialogue, 2 Pet. S. C. R. 1; Wood v. Brimmer, 1 Holt. N. P. C. 58; Kent's Com. Vol. 2. p. 369.

the public use without his consent, and a reasonable compensation allowed. And such would be the rules, probably, in regard to the use of a patent right, which is no more sacred than other personal property. This provision of law is limited to the case of the use of property by the public as a corporate political body, and does not reach the case of an indirect benefit derived to the public by the use of a thing by individuals. In this respect the law leaves patent rights upon the same footing as other personal property, the proprietor of which may, by his own caprice or folly, deprive the public and himself of the benefit that would result from a reasonable use of it, and there does not seem to be any pressing urgency for a different rule in regard to different species of property. There is, it is true, no absolute insurmountable objection to a regulation on this subject in relation to patents, for the public may grant patents or lands upon such conditions as may be deemed expedient, and for the general benefit; but as a general rule, unless the case is plain and urgent, it is the better policy to leave private rights to the discretion and interest of proprietors, where their interest evidently coincides with that of the public, since the inconveniences attendant upon an attempt by law to supply their want of reasonable discretion, would, in a majority of cases, be greater than those consequent upon their abuse of the discretion and control allowed by the law.

CHAPTER VIII.

Appeal to Board of Examiners. Interfering Applications. Previous Foreign Patent by the Applicant. Secret Filing of the Specification. Caveat.

By the 7th section of the act of Congress of 1836, it is provided that whenever, on examination, it shall appear to the Commissioner of Patents that the applicant for a patent, for an invention, "was not the original and first discoverer thereof, or that a part of that which is claimed as new had before been invented or discovered, or patented, or described in any printed publication in this or any foreign country, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him, briefly, such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of his invention which is new." The applicant may thereupon withdraw his application, and receive back twenty dollars of the thirty dollars paid into the treasury by him, and leave his model in the patent office. But if he persist in his claim, whether he chooses to alter the specification or not, he must again make the usual oath, and if the commissioner still refuses to grant the patent, he may appeal to a board of examiners, consisting of three persons appointed by the Secretary of State, "one of whom, at least, to be selected, if practicable and convenient, for his knowledge and skill in the art, manufacture