assign to him the renewed patent; and the patent is renewed, such an agreement is valid, and conveys to the assignee an equitable title, which can be converted into a legal title by paying or offering to pay the stipulated consideration.1

§ 285. The Supreme Court of the United States have decided, upon great consideration, that the Commissioner of Patents can lawfully receive a surrender of letters-patent for a defective specification, and issue new letters-patent upon an amended specification, after the expiration of the term for which the original term was granted, and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term.2

§ 286. Specifications may also be amended by another process, that of filing a disclaimer, whenever through inadvertency, accident, or mistake, the original claim was too broad, claiming more than or corrections in the old specification of 1828. After these new letters-patent for the whole term, no assignment having been made to Washburn and Brown, but only one previously on the 2d of January, 1843, the plaintiffs contend that all the previous letters being surrendered, and a new specification filed, and new letters issued, any conveyance of any interest under the old letters is inoperative and void under the new ones; and hence that Washburn and Brown possess no interest in these last, and are improperly joined in the bill.

"But my impression, as at present advised, is, that when a patent has been surrendered, and new letters are taken out with an amended specification, the patent has been always considered to operate, except as to suits for violations. committed before the amendment, from the commencement of the original term. The amendment is not because the former patent or specification was utterly void, as seems to be the argument, but was defective or doubtful in some particular, which it was expedient to make more clear. But it is still a patent for the same invention. It can by law include no new one, and it covers only the same term of time which the former patent and its extensions did.

"In the present case, these are conceded to have been the facts; and it is an error to suppose that on such facts the new letters ought to operate only from their date. By the very words of those letters, no less than by the reasons of the case as just explained, they relate back to the commencement of the original term, and for many purposes should operate from that time."

1 Hartshorn et al. v. Day, 19 How. 211.

Wilson v. Rousseau, 4 How. 646. See also Gibson v. Harris, 1 Blatch. 167; Woodworth v. Edwards, 3 Woodb. & Minot, 120. If a new patent, issued on surrender of an old one, be void for any cause connected with the acts of public officers, it is questionable whether the original patent must not be considered in force till its term had expired. Woodworth v. Hall, 1 Woodb. & Minot, 389.

that of which the patentee was the original or first inventor, provided some material and substantial part of the thing patented is justly and truly his own. Such a disclaimer may be filed in the Patent Office by the patentee, his administrators, executors, and assigns, whether of the whole or of a sectional interest in the patent; and it will thereafter be taken and considered as part of the original specification, to the extent of the interest of the disclaimant in the patent, and by those claiming by or under him, subsequent to the record thereof.1

§ 287. Patents are sometimes extended by special acts of Congress, passed upon the application of the patentees. By the act of July 4, 1836, ch. 357, § 18, the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury were constituted a board of commissioners to hear evidence for and against the extension prayed for, and to decide whether, having due regard to the public interest therein, it is just and proper that the term of the patent should be extended, because the patentee has failed to obtain a reasonable remuneration. The commissioners being satisfied that the patent ought to be renewed, it was made the duty of the Commissioner of Patents to make a certificate on the original patent, showing, that it is extended for a further term of seven years from the expiration of the first term.

By the act of 1848, ch. 47, § 1, this power was vested solely in the Commissioner of Patents, who was thereby required to refer the application to the principal examiner, having charge of the class of inventions to which the case belongs, and, upon his report, to grant or refuse the patent, upon the same principles and rules that had governed the board provided by the former act.

But the act of 1861, ch. 88, § 16, enacts, "That all patents hereafter granted shall remain in force for the term of seventeen years from the date of issue; and all extension of such patents is hereby prohibited." The operation of the statute is that all patents granted after the passage of the act of 1861 are incapable of being extended, except by special act of Congress, while patents granted

1 Act of 1837, ch. 45, § 7. As to the effect of a disclaimer, see chapter on Action at Law.

"A disclaimer cannot work in favor of an assignee, without his having joined in it, in any suit, either at law or in equity." Per Story, J., in Wyeth v. Stone, 1 Story, 273.

before that date may still be extended on application to the commissioner. It therefore remains of importance to ascertain the construction passed by the courts upon the action of the commissioner in granting an extension, whether and to what extent the same is examinable elsewhere.

Upon this point Judge Curtis, in Clum v. Brewer, ruled as follows: "Of all matters necessary to an extension there is not only a strong presumption arising from the act of extension, but in respect to the entire merits of the patentee, and the existence of the legal grounds for an extension, the law makes the commissioner the judge, and in the absence of fraud his adjudication is conclusive."1 Similar language is employed by Judge Nelson in his decision in the case of Colt v. Young.2 In an earlier case it was held that the decision of the Board of Commissioners of Extension, while conclusive as to the matter of expense, the payment of the money required, and the notice, was not conclusive as to the question of law, whether or not an administrator had a right under the act of 1836 to apply for an extension.

1 Clum v. Brewer, 2 Curtis, C. C. 506.

* Colt v. Young, 2 Blatch. 471.

8

* Brooks et al. v. Bicknell et al. 3 M'Lean, 250.

CHAPTER VIII.

INFRINGEMENT.

§ 288. THE statute grants to the patentee, for a term not exceeding fourteen years, "the full and exclusive right and liberty of making, using, and vending to others to be used, the invention or discovery";1 and it gives a right of action for damages, in case of "making, using, or selling" the thing patented. No definition of what is to constitute an infringement is given in the statute; but, of course, there is an infringement of the right, when one "makes, uses, or sells a thing" which another has the excluşive right of" making, using, and vending to others to be used." But what constitutes making, using, and selling, with reference to the various things that may be the subjects of patents, so as to interfere with the exclusive right of the patentee, is left by the statute for judicial interpretation.

§ 289. An infringement takes place whenever a party avails himself of the invention of the patentee, without such variation as will constitute a new discovery; or, as it has also been stated, 1 Act of July 4, 1836, ch. 357, § 5.

* Ibid, § 14.

3

* In Walton v. Potter, Webs. Pat. Cas. 585, 586, Sir N. C. Tindall, C. J., said to the jury: "Now, according to the general rule upon this subject, that is a mere question of fact, and peculiarity for the consideration of a jury, and it will be for you to say, under the circumstances that have been brought in review before you, whether that which has been done by the defendants amounts to such an infringement or not. Where a party has obtained a patent for a new invention or a discovery he has made by his own ingenuity, it is not in the power of any other person, simply by varying in form or in immaterial circumstances the nature or subject-matter of that discovery, to obtain either a patent for it himself, or to use it without the leave of the patentee, because that would be in effect and in substance an invasion of the right; and therefore, what you have to look at upon the present occasion, is not simply whether, in form or in circumstances that may be more or less immaterial, that which has been done by the defendants varies from the specification of the plaintiff's patent, but to see whether in reality, in substance, and in effect, the defendants have availed themselves of the plaintiff's invention in order to make that fabric, or to make that article which they have sold in the way of their trade; whether, in order to make that, they have availed themselves of the invention of the plaintiff. The course which the evidence has

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an infringement is a copy made after and agreeing with the principle laid down in the specification.1 There will be therefore different modes in which patents may be infringed, according to their subject-matter. Our statute has made use of the phrases making, using, and vending to others to be used," to comprehend the exclusive right of the patentee; and consequently the making, using, or selling are the modes in which that right may be infringed, according to the nature of the subject-matter. We are now, therefore, to consider the meaning of these phrases, as applied to the infringement of the several classes of things which may be the subjects of letters-patent.

In a recent case it was held, after an elaborate discussion, "That the rights of property and exclusive use granted to a patentee do not extend to a foreign vessel lawfully entering one of our ports; and that the use of such improvement in the construction, fitting out, or equipment of such vessel, while she is coming into or going out of a port of the United States, is not an infringement of the rights of an American patentee, provided it was placed upon her in a foreign port and authorized by the laws of the country to which she belongs." 2

taken has made it not an immaterial, but, on the contrary, a very necessary inquiry for you upon this first head of investigation, to determine whether the defendant's patent, which they have taken out, is in effect borrowed from the plaintiff's or not, because there can be no doubt whatever that all the defendants have done they have endeavored to clothe themselves with the right of doing by taking out the subsequent patent of 1839. The only evidence of infringement we have had before us is the purchase at the manufactory of the defendants of that little piece of card which was marked with the initials S. G., and there can be no doubt but that that fabric, which was so produced in evidence before us, is made on the plan and according to the specification of their own patent, and therefore it will be not immaterial to call to your attention upon this first head of inquiry the specification of the plaintiff's, and next that of the defendant's patent, in order that we may compare them together, and see whether there really is that variation in substance so as to give the denomination of a new discovery to what the defendants have done, or whether they are not following out the invention of the plaintiff, with some variation in the description, which may not allow it the name of a new discovery."

1 Galloway v. Bleaden, Webs. Pat. Cas. 523.

2 Browne v. Duchesne, 19 How. 183, per Taney, C. J.; affirming the previous opinion of Curtis, J., in same case, 2 Curtis, C. C. 371. This opinion is directly opposed to that laid down in the English case of Caldwell v. Van Vliessingen, 9 E. L. & Eq. 51, which however, according to Taney, C. J., turned upon the construction given to 32 Hen. VIII. ch. 16, § 9.