but this invites an inquiry as to whether the benefit of the constructive reduction to practice evidenced by a foreign filing date, which accrues personally to a foreign inventor filing under the International Convention, would be available to third parties for the purpose of defense against a patent suit by another patentee.

ས.

The general equity of the result reached by the recent decision is also debatable. The Supreme Court speaking of a different question in Bates Refrigerating Co. v. Sulzberger, 157 U. S. 1, 34 said:

* *

"if there be reasonable ground for adopting either one of two considerations, this court, without departing from sound opinion, may well adopt the consideration which is in harmony with the settled practice of the executive branch of the Government, and with the course of judicial decision in the Circuit Courts of the United States; especially if there be reason to suppose that vast interests may have grown up under judicial decisions which may be disturbed or destroyed by the announcement of a different rule."

This case was cited in one of the briefs filed by an Amicus Curiae for the purpose of suggesting to the Court that the rule as to the irrelevance of abandoned applications should not be changed. It is believed that the broad principle of the Court just quoted was equally applicable to the facts in the present case.

In the absence of actual proof of inventorship by either Clifford or Reich of subject matter X, and consequent dedication to the public by failure to claim, no hardship is shown by awarding the grant to Whitford for his independent invention. On the part of Respondent, however, (typical of numerous patentees or assignees) severe

hardship has resulted by reason of the fact that its patent, issued to it as prima facie valid, has been declared invalid because of circumstances which might have been avoided by the Patent Office as agent of the Government.

At the trial of the case counsel for Respondent, relying upon the settled law of the Circuit in which the suit was brought, introduced no testimony attempting to carry back the date of Whitford's invention prior to his filing date. Since the events in question occurred over twelve years prior to the suit it may well be that sufficient evidence could not now have been obtained. If, however, the Patent Office had at the time the Clifford patent issued rejected the Whitford claims thereon, it might then have been possible for Whitford to have made the necessary affidavit under Rule 75. It is true that Whitford's attorneys, knowing of the issuance of Clifford, if such was the case, might have requested that the Whitford application then allowed, should be withdrawn from Issue in order that the Clifford patent might be made of record thus affording Whitford the opportunity of making such an affidavit under Rule 75. This was at best, however, a remote possibility even in the case of the Clifford patent and was entirely out of the question in the case of the Reich patent, which under the decision of the Supreme Court is apparently an equally good reference. The Reich patent issued after the Whitford patent, and Whitford had no means of settling the question of prior invention until suit was brought on his patent and Reich was set up as a defense.

Under amended Rules 93 and 96 an interference would not have been declared between either the Clifford and Whitford, or Reich and Whitford applications since claims to subject matter X would not have been suggested to Clifford and Reich because they were not claiming this subject matter. In the case of Myers v. Brown, 1904 C. D. 445, Commissioner Allen said:

"prior to the promulgation of amended Rule 96 it had become the practice to suggest claims to an ap

plicant who had merely disclosed the invention either in his specification alone or in his drawing alone, or in both the specification and drawing, but had failed to file any claim at all based upon such disclosure. Experience had shown the desirability of discontinuing this practice and amended Rule 96 was promulgated with that end in view."

VI

The result reached in the present decision detracts considerably from the premium which has heretofore been placed, and rightly, on good patent soliciting, and it seems that in fairness to applicants for patents, the Patent Office might well return to its former practice of suggesting claims to an applicant who shows but does not claim the subject matter in question. Such procedure would, under the present decision, have only partially taken care of either the Clifford or Reich situation, however. If for example the claims of Whitford had been suggested to either of these applicants and they had for any reason refused to make them, as Clifford would have done, for example, had he known the invention to be Whitford's the latter's position in the present instance would have been no different. In other words Clifford's refusal to make the claims might still have been construed alternatively either that the invention was not his or that he had dedicated the same to the public.

In the case of Bates v. Coe, 98 U. S. 31, it was suggested that if the patent in suit was accompanied by its application, the date of application prevailed as against defenses subsequent thereto but prior to the date of patent, and that a different rule applied in the case of patents set up as prior art as to which the date of issuance controlled. The rule of this case was modified where both applicants claimed the same or substantially identical subject matter by the line of such cases as Sundh v. Interborough, etc. supra. The rule is now further modified by the present decision at least to the extent that where the prior

filed application shows clearly but does not claim the subject matter claimed by the later filed application, the first filed application is prima facie evidence of prior invention.

In the Sixth Circuit in the case of Lemley v. Dobson, Evans, supra, the modification of the rule has been carried, possibly obiter, to the extent that the specification of the prior filed application is treated as prior art for all purposes. The general acceptance of such a rule might have serious consequences.

This question would arise under a modified Bournonville case, as follows. If the Clifford patent had disclosed subject matter clearly relevant to Whitford's claims, but not strictly anticipatory of the latter, should the validity of Whitford's patent on the question of the exercise of patentable invention be decided by the published art prior to his application date or by such art supplemented by the disclosure of Clifford's patent? If the latter standard is applied, then one of the following premises would seem necessary, either, (1) Clifford, actually sui generis, becomes by operation of law an "ordinary skilled worker in the art" whose knowledge and ability is to be taken as the criterion by which Whitford's exercise of patentable invention is to be gauged or (2) the fictional "ordinary skilled worker in the art" is presumed by law to know what in fact he does not know and could not have known without unlawful inspection of the Patent Office records. It is the writer's opinion that these premises are equally fallacious.

VII

The immediate consequence of the decision is to unsettle the standing of many patents. As for the future, it must affect the field of investigation and value of conclusion with respect to all validity and infringement reports. Changes in Patent Office practice, and perhaps in the Statutes may result.

SHALL INDUSTRIAL DESIGNS GO

"OUT OF THE FRYING PAN INTO THE FIRE?"

BY JOHN DASHIELL MYERS,

OF THE PHILADELPHIA BAR.

Attention is urgently directed to Bill H. R. 6249 pending in Congress. It provides for the copyright registration of industrial designs, and repeals the design patent laws. A similar Bill was reported favorably at the last session, but too late for action by Congress. The present Bill is being pushed vigorously. It merits searching examination. If enacted, it will not only effect a radical departure from established design practice, but will undoubtedly breed much trouble.

The purpose of the proposed legislation, as stated in the Committee's report to the iast Congress, is "to encourage and promote the protection of artistic designs in the United States by furnishing adequate protection against piracy for artistic articles of manufacture." This is a laudable purpose and one with which we are in entire accord.

But copyright registration of such designs, as provided by Bill H. R. 6249, will not afford adequate protection, at present. This is because of the fundamental difference between copyrights and patents.

Under the patent laws, the exclusive right to manufacture, use, and vend is granted. This constitutes an exclusive privilege. On the other hand, the Bill grants merely "the exclusive right to reproduce the said copyrighted design and sell and use reproductions thereof."

This constitutes merely a qualified, rather than an absolute, exclusive privilege, and is manifestly inferior in scope to the rights under the patent laws.

As copyright registration would thus vest in the copyright proprietor no absolute exclusive right in the design itself, but merely the right to prevent others from copying his original work in producing the design, it follows that one or more designs subsequently produced by others