any new art, machine or improvement thereof, and shall desire further time to mature the same, may file in the patent office a caveat, setting forth the design and purpose thereof, and its distinguishing characteristics, and praying protection of his right, till he shall have matured his invention. And such caveat shall be filed in the confidential archives of the office and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the commissioner to deposit the descriptions, specifications, drawings and model, in the confidential archives of the office, and to give notice by mail to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings and model; and if in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings may be had as in case of interfering applications. CHAPTER IX. Divers Patents for the same Invention. The joining of divers Inventions in the same Patent. Patent for a part of an Invention. Sec. 1. Divers valid Patents cannot be taken out for the same thing. 2. Patent for a Combination, and for the separate Things combined. 3. Distinct Inventions cannot be joined in the same Patent. 4. Patent for a part of a Machine. Sec. I.-DIVERS VALID PATENTS CANNOT BE TAKEN OUT FOR THE SAME THING. IT is a well settled doctrine, that divers valid patents cannot be taken out for the same invention, whether by the same or by different patentees. That different patentees cannot take independent valid patents for the same thing, follows from what has already been said on the subject of patents, in a preceding chapter, where it is stated that the invention must be new and original, and prior to any other invention of the same thing, in order to be the subject of a valid patent, which necessarily excludes the possibility of two valid patents for the same thing. It is also inconsistent with the character of a patent as an exclusive privilege.' The same person cannot, at the same time, be the joint and separate patentee of the same thing. "A joint patent for an invention," says Mr. Justice Story, "is utterly inconsistent with several patents for the same invention by the same patentees. Sec. II.-PATENT FOR A COMBINATION, AND FOR THE SEPARATE THINGS COMBINED. 3 But an invention of a combination, and that of a part or the whole of the things combined, may be joined in the same patent. The reason is that, though they are separate inventions combined in one thing, and may therefore be joined in the same patent without violating the rule about to be stated on the joining of different inventions in one patent, yet the taking of a patent for the combination, after taking one 1 Barrett v. Hall, 1 Mason's R. 473. 2 Barrett v. Hall, 1 Mason, 473. 3 Per Story J., Moody v. Fiske, 2 Mason, 112. for the separate parts, is not a double patent, or, in other words, is not the patenting, under the claim of the combination, the same thing which had before been claimed under the separate parts; for a machine may be the combination of a number of others, each of which, when invented, might have been the subject of a patent, and yet the combination of them might also, when first made, be the subject of a patent, and accordingly, if both the parts, or some of them and the combination, be invented by the same person, he may specify these distinctly in the same patent, or, if he invent them at different times, he may make the parts the subject of one or more patents, and then take a patent for the combination. Sec. III.-DISTINCT INVENTIONS CANNOT BE JOINED IN THE SAME Patent. The doctrine is equally clear that different, distinct and independent inventions cannot be joined in the same patent. Mr. Chief Justice Marshall says, in giving the opinion of the court, "Under the general patent law alone, a doubt may well arise, whether improvements on different machines could regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately, as well as a right to the exclusive use of those machines in combination." So Mr. Justice Story says, "Though several distinct improvements in one machine may be united in one patent, it does not follow that several improvements in two different machines, having distinct and independent operations, can be so included. Much less that the same patent may be for a combination of different machines, and for distinct improvements in each." And in another case the same judge says, that". a patent under the general patent act, cannot embrace various distinct improvements or inventions; but in such case the party must take out separate patents. If the patentee has invented certain improved machines, which are capable of a distinct operation, and also has invented a combination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines; for the inventions are as distinct, as if the subject were entirely different." So Mr. Justice Wilde, of the Supreme Court of Massachusetts, was of opinion, where a joint patent for a reel and lap-frame was granted to two persons, that as these were distinct and 4 Evans v. Eaton, 3 Wheaton, 454. |