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In the early American cases, after the act of 1793, it appears to have been supposed that the law had by that act been varied from the English; so that the patent right was forfeited and lost, only in case of the defects specified in the 6th section being designed and fraudulent. It is provided by that section that, in a case for an infringement, the defendant may give in evidence, in his defence, " that the specification does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public."
Mr. Justice Story, in giving an opinion in the Circuit Court, in 1813, on an examination of this section, remarked: “We think that the manifest intention of the legislature was not to allow any defect or concealment in a specification to avoid the patent, unless it arose from an intention to deceive the public."
In the same year, Mr. Justice Washington, instructing the jury in the Circuit Court of the United States for Pennsylvania, said on the subject of concealment, “ the matters not disclosed must appear
the examinations made by the committee of the House of Commons, in 1829, and remedies some of the most material defects of the English law as it stood before.
90 Whittemore v. Cutter, 1 Gall. R. 429.
to have been concealed for the purpose of deceiving the public, in order to invalidate the patent.
In 1817, again, these judges appear still to have entertained the same opinion.” But it was, at the same time, remarked by Mr. Justice Story, that the doctrine was liable to grave objections on the score of expediency:93 And it was subsequently abandoned and the English doctrine adopted, that a defect in the specification, from want of compliance with the requisitions of the third section of the act of 1793, rendered the patent void; but that, if the defect arose from mistake, a new patent could be taken out for the unexpired part of the term. In this respect our law, on this subject, differed from the English.
This doctrine, as to the surrender and renewal of the patent, was suggested by Mr. Justice Thompson in a case that came before him in 1824, in which he remarked, “I see no insuperable objection to entering a vacatur of the patent of record in the department of state, if taken out inadvertently and by mistake. All the proceedings in that department, on the subject of patents, are ex parte, except in the case of interfering applications. The department
91 Park v. Little & Wood, 3 Wash. C. C. R. 196.
92 Lowell v. Lewis, 1 Mass. R. 182. Gray and Osgood v. James and others, 1 Pet. C. C. R. 401, 402.
93 Whittemore v. Cutter, 1 Gall. R. 429.
act rather ministerially than judicially, and upon the representation of the applicant, without entering into the question of right, and there seems to be no good reason why, on a like ex parte application, the patent may not be surrendered, and cancelled of record, if no misconduct be imputable to the patentée in taking it out. And in such case, as the exclusive right is not to exceed fourteen years, the second patent may be limited according to circumstances, and thereby secure, both to the patentee and the public, their respective rights."94
This doctrine was afterwards distinctly adopted by the Supreme Court. 95
In confirmation of the construction thus given to the patent law of 1793, the fifth section of the additional law of 1832 was passed, by which it is enacted that “whenever any patent shall be invalid or inoperative, by reason that any of the terms and conditions prescribed in the third section in the said act (of 1793) have not, by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the said inventor, it shall be lawful for the secretary of state, upon the surrender to him of such patent, to cause a new one to be granted to the said inventor, for the same invention, for the residue of the period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said third section of said act.”
94 Morris v. Huntington, 1 Paine, 355.
95 Townsend and Grant v. Raymond, 6 Pet. S. C. R. 220. Shaw v. Cooper, 7 Pet. S. C. R. 292.
The law was thus put upon a liberal footing in respect to patentees, and the act of 1836, section 13, makes a similar provision. It provides, that, “whenever any patent shall be inoperative or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new; if the error has or shall have arisen by inadvertency, accident or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired, for which the original patent was granted, in accordance with the patentee's corrected description and specification. And in case of his death or any assignment of the original patent, a similar right shall vest in his executors, administrators or assigns. And the patent so waived, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions thereafter, for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the suing out of the original patent.”
Signing of the Specification. Attestaticn. Oath. De
livery of Drawings, Models and Specimens. Petition. Fees.
Sec. 1. Signing of the Specification. Attestation.
2. The Oath.
Sec. I.-SIGNING OF THE SPECIFICATION.
The third section of the act of 1793 required that the specification should be signed by the inventor and attested by two witnesses. The act of 1836 makes a slight alteration by providing, section 6, “ that the descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the patent office.” The former act said