act.

United States v. Hatch.

national policy were undoubtedly taken into view in the passage of this law. It was wise and prudent to guard against our seamen being left in a foreign country. Our national strength is intimately concerned in the question; and by what rule can a jury estimate damages on this account? It is too limited and narrow a view to take of this provision in the law, that it was intended to indemnify the United States against payment of the passages of seamen on their return to this country, or for whatever assistance should be afforded them in a foreign country. Higher and more important considerations, in a national point of view, dictated the policy of this provision. This is evident from other provisions in the The United States could be under no obligations to provide for the return of our seamen who voluntarily quit the vessel and remained in a foreign country; yet masters of vessels are not even in such case permitted to discharge them, without paying to the Consul or Commercial Agent, for each seaman, three months' wages, over and above what may thus be due; and two thirds of this advance is to be paid to the seamen, upon their engagement on board a vessel to return to the United States. This is held out as a premium to induce their return, and not as a mere indemnity for the expenses of a passage. If the bond is only to indemnify for actual damages sustained, when does the right of action accrue? The master returns to the United States, having left his whole crew in a foreign country, and without being furnished with the documents or evidence required by the act to save the forfeiture of the bond. If actual damages must be shown, no suit can be brought until the United States are damnified by payment of passage money, or for some other expenses. Such never could have been the policy or intention of the law; and the alternative must necessarily follow, that a non-compliance by the master with his engagements, works a forfeiture of his bond, and subjects him to the payment of four hundred dollars. The judgment of the District Court must therefore be affirmed.

Morris v. Huntington:

MORRIS v. HUNTINGTON.

The first section of the patent law of 1793, construed in connexion with the other sections of the act, means that the invention should not be known or used as the invention of any other person than the patentee before the application for a patent.

If the invention have got into use while the inventor was practising upon it with a view to improve it before applying for a patent, such use does not invalidate the patent; and the motive for the delay is a question for the jury.

One who has patented his invention cannot take out a new patent for the same invention, until the first is surrendered, repealed, or declared void. The obstacle of an invalid patent may be removed by having it declared void after a verdict against it, or by having a vacatur entered ex parte in the Department of State on a surrender of the patent. But the provisions of the 6th section of the act, do not enable a patentee to declare his own patent void, and a verdict in a suit on the second patent in favour of such patent, does not avoid the first patent.

It seems that on surrendering a patent and taking out a new one, the latter should be for only the unexpired part of the fourteen years since obtaining the first patent.

Whether a new patent can be taken out where a patent has been declared void under the 6th section of the act? Quere.

THIS was an action on the case, brought by the plaintiff against the defendant, for infringements by him of a patent issued to the plaintiff in May, 1822, for an improvement in the stopcock.

The specification of the patent contained a clear description of the instrument, so that artists could make it from such description, and at its close, the improvements claimed under the patent were particularized.

Evidence was given by the plaintiff showing the time of the invention to be September, 1815; that the plaintiff was the inventor; that the invention was useful; and that the defendant had made and sold instruments which were infringements of the patent.

On a cross-examination of the plaintiff's witnesses, it appear

Morris v. Huntington.

ed that the plaintiff had taken out a patent in 1816, for an improved block-tin stopcock, the specification of which was proved by the witness to describe the same instrument as the one described in the specification of the patent of 1822, with this difference, that in the former the particular improvements claimed were not stated. It appeared in evidence on the part of the plaintiff, that certain parts of the instrument, described generally as part of the instrument in both patents, but not claimed in the patent of 1822, as improvements of the patentee, had been in use prior to the patent of 1815.

Upon this evidence,

C. D. COLDEN, G. GRIFFEN, and G. W. STRONG for the defendant, moved for a nonsuit,a on two grounds.

1. That it appeared that the instrument had gone into use before the date of the patent of 1822, and

2. That the patentee had a prior patent for the same thing, which had not been repealed, surrendered, nor declared void.

Under the first point it was contended-That by the words of the first section of the patent act, the invention must not have been used before the application for a patent: That the other sections of the patent law, the phraseology of which was indefinite, should be construed in subordination to the first section: That this construction was fortified by the words of the first section of the law of 1800, extending the patent act to aliens: That the instrument having gone into the use or knowledge of the public, the inventor had no secret to disclose as a consideration for the grant by

a Opinion of Van Ness, J. 4 No. U. S. Law Journal; Whittemore v. Cutter, Gall. R. 482.; Odiorne v. Amesbury Nail Factory, 2 Mas. R. 28.; Moody v. Fisk, 2 Mas. R. 112.; Collin on Patents, 70 or 170.; Godson on do. 200. ; Fessenden on do. 50. 173.

Morris v. Huntington.

the public: That in England the law was unquestionably settled to this effect-and that the English decisions should be adopted here, inasmuch as they were founded in the nature of the subject, and as our Courts had adopted English decisions on English statutes as applicable to the construction of statutes in this country, where there was much more difference in the phraseology, than existed between our patent law and the English statute: That the point in question had never been decided in this country under our present patent, before the decision of Judge Van Ness, which was in point in their favour: That very injurious consequences would result, if inventors might lie by, and after the public had got into the use of a thing, claim it by a patent.

On the second point it was contended, that the patent of 1816 was an estoppel to the plaintiff to take out another patent for the same thing, before the repeal or surrender of such prior patent: That the prior patent was not on its face void, but was voidable only, and that not by the plaintiff himself, but only by third persons: That to allow the plaintiff to allege his first patent to be void, would be embarrassing the Court with the trial of two issues, in which it would be inconsistently thrown on the defendant to prove that the first patent was good and the second bad: That at any rate the plaintiff should have surrendered the first patent before taking out the second-the course in England being so. He should also in such case have taken out the second patent, not for fourteen years from its date, but for the residue of the time, computing from the date of the first patent: That on the plaintiff's grounds, patentees would, by taking out patents, insidiously defective, secure to themselves a perpetuity: That the acts in favour of Oliver Evans were a legislative decision on the subject; and that the case of Odiorne v. Amesbury Nail Factory, was in point and decisive.

b2 Mas. Rep. 28.

Morris v. Huntington.

T. A. EMMET, S. P. STAPLES, and D. LORD for the plaintiff,

In reply, contended on the first objection, that the 6th, 7th and other sections of the act showed that reference was to be had to the time of invention in considering the question of prior use: That the general phraseology of the act was inconsistent with a literal construction of the first section: That a literal construction of that section was felo de se, and it must therefore be construed in subordination to the rest of the act: That the policy of the patent act in England and its words differed from our law: That in England it went on the ground of a bounty from the crown; in this country on the ground of protecting the common law right of the inventor to his invention: That the point in question had been directly decided in Evans v. Weiss, and in the case of Goodyear v. Mathews.

On the second point; that the doctrine of estoppel did not apply; the grant was void so as to prevent any right from vesting That the prior patent, on the state of the evidence, was void, not voidable: voidable implies that the thing is capable of confirmation, which the first patent is not: That a surrender of the first patent could not be made, there being no provision in the law to authorize it; as is the case in England, by the inherent power of the Chancellor. That as the patentee had enjoyed no legal protection under the first patent, it should not be computed against him as part of the fourteen years, at any rate that the question of an extra extension of time could not properly arise until the lapse of fourteen years from the date of the first patent.

c Banett v. Hall, 1 Mas. R. 474.—Goodyear v. Mathews, ante.; Woodcock v. Parker, 1 Gall. R. 438.; Davies on Pat. 448.; Evans v. Weiss, 3 Am. Law Journal, 180.