solves itself down to the same point exactly, viz, who is the original and first inventor? Obviously there can be but one person legally entitled to that appellation, and it is for the purpose of discovering which of two or more parties is the inventor of the matter claimed that these proceedings are instituted.

The kind and character of the evidence necessary to establish this fact may vary with the circumstances under which the investigation is conducted, the situation of the parties, and the presumptions of law; but what constitutes a person the prior inventor remains the same in every instance.

Now, the rule is too well established to need the citation of authorities, either from the decisions of the courts or the Office, that he is the prior inventor who first reduces the invention to practice, subject, however, to the qualification that if another, first to conceive of the inven tion, used reasonable diligence in perfecting the same, he, as against the one first to reduce to practice, is entitled to the patent, being recognized in law as the original and first inventor.

What constitutes a reduction to practice within this rule has been discussed at some length in this case, and I do not see any good reason for departing from what I understand to be the practice of the courts in this respect, or the plain meaning of the terms.

In considering the effect of an application as a matter of evidence to establish priority of invention, it was said in the case of the Lyman Ventilating and Refrigerating Co. vs. Chamberlain (10 OFFICIAL GAZETTE, 588), that

Although the description may be so full and precise in the application for a patent as to enable one skilled in the art to which it appertains to construct what it describes, it does not attain the proportions or the character of a complete invention until it is embodied in a form capable of useful operation.

If an application, such as is here referred to, consisting of specification, drawing, and model, is not evidence of complete invention, certainly a drawing alone cannot be considered better or of greater effect. Respecting the matter of diligence, as bearing upon the question of priority, I do not regard it as comparative, or, as it is sometimes termed, a "race of diligence," where one was first to conceive and the other to reduce to practice. If the second to conceive is the first to reduce to practice, his claim is founded upon that fact, and derives no support whatever from previous efforts, and whether he has been more or less diligent from the time of the conception of his invention to its maturity, he stands in exactly the same position. The fact that being an original inventor he did actually first reduce the invention to practice is all that we are to look for, or that he can base his claim to priority upon. Not so, however, with the one first to conceive. He must show affirmatively that he was reasonably diligent from the time of his conception of the invention until its completion. His diligence is not to be compared with that of his competitor, but must stand as an independent fact. It

is for him to show that, under the circumstances, he used reasonable diligence, in order that he may connect the two events, conception and completion, and so establish a superior title to the invention. Diligence is thus made one of the elements necessary to his title as prior inventor, and without it his title would be defective, and could not prevail as against one claiming under the title of the first to reduce to practice.

Even disregarding the testimony of W. F. and J. Barnes, that they conceived of the invention in October, 1873, as too indefinite for the purpose of establishing the fact, it is clear that, being the first and only ones to reduce to practice, they are entitled to judgment of priority. The decision of the Board of Examiners-in-Chief is affirmed.

GROSS vs. SARGENT.

Interference.

O. G., vol. xi, p. 797.

APPEAL FROM THE DECISION OF THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERINCE BETWEEN THE APPLICATION OF HENRY GROSS, FILED AUGUST 28, 1875, AND THAT OF JAMES SARGENT, FILED JULY 12, 1875, FOR "IMPROVEMENT IN TIME AND COMBINATION LOCKS."-Decided March 14, 1877.

It is a well-settled principle of law that diligence on the part of the party first to conceive the invention constitutes an essential element of the title of first and original inventor.

A delay of eight years in reducing the invention to practice and giving it to the public unaccompanied by extenuating circumstances, but resulting from indifference toward the invention, is not sufficient to defeat the claim of one who, in the mean time, had independently perfected his invention and created a demand for it in the market.

Notice of an adverse claim is to be presumed where one of two rival companies, engaged in the same line of business, having manufactured and introduced a valuable invention, the other suddenly commences to perfect and manufacture the same article which it had previously been solicited to take hold of, but had shown no desire or intention of so doing, until after the other parties had been some time manufacturing.

The case under consideration distinguished from that of White vs. Allen, the reasons alleged in excuse of the delay not being analogous.

The theory of the patent law requires that an inventor should be diligent in giving his efforts to the public, and a private corporation cannot be substituted for the public as the recipient of the inventor's efforts.

The law does not look with favor upon a party who withholds the knowledge of his invention from the public by a negligent postponement of his claim until after others have made and introduced the same.

W. C. DODGE & SON for Gross.

J. L. NORRIS for Sargent.

DOOLITTLE, Assistant Commissioner:

The subject matter involved may be stated as follows:

In combination with a time mechanism and a permutation-lock, a lever or its equivalent connected with the time mechanism, and so arranged as to hold the dog or locking-bar of the lock out of contact with the tumblers of the lock until released by the time mechanism.

The right of priority in this case turns upon the question as to whether reasonable diligence was exercised by the party first to conceive the invention in reducing the same to practice. That such diligence constitutes an essential element in the title of first and original inventor has become a well-established principle of law.

It appears, without doubt, that Gross was the first to conceive of the idea embodied in this structure and now constituting the subject-matter in issue. He alleges having thought of it as early as 1866 or 1867, but his preliminary statement confines him to the latter year. According to his testimony he made sketches of the invention in 1867, and at that time described it to others. This, also, it is asserted, he did in 1869, 1870, and in the spring of 1873. The 1867 and 1869 sketches were lost or thrown aside. They are not produced, and hardly a single witness is able to give any clear or definite statement as to what was communicated to him by Gross prior to 1873.

In the spring of 1873, he, as has been said, made sketches, which are now produced as exhibits, but which he then put away in a trunk, where they remained undisturbed for two years or more. The first model which he appears to have made that was preserved, and that others saw, was in April, 1875, and in the summer of that year he sent it to the Howard Watch Company, who finally made the different parts of the device therefrom. Subsequent to July, 1875, he alleges that the parts were put on perhaps two hundred safes.

In 1869 or 1870, he was an employé of the Hall Safe and Lock Com. pany, and engaged in the capacity, among others, of an inventor. He spoke to the leading member of that firm about this invention in 1870, and subsequently showed to him the sketches made in 1873. Mr. Hall, the witness alluded to, admits substantially that the conversation in 1870, and even the sketches of 1873, did not make much impression upon him, or at least he did not then regard the invention as practicable. He cannot remember the dates, and his testimony consists of impressions that were left upon his mind. Gross admits that this company refused to adopt his ideas, and this refusal to adopt and introduce the invention was the cause of his long delay.

This rather uncertain testimony shows a decided indifference on the part of Gross and his employers toward this invention for the period of eight years. Gross admits that he never solicited any one but the com. pany by which he was employed to take hold of this invention.

Millward, to whom this company submitted inventions before their adoption of the same, for his opinion as an expert, says that Gross spoke to him about this matter, and showed a sketch or two of it in 1873 or 1874; but he has no recollection as to the particular object that Gross had in showing him the sketch; nor is he positive as to what the invention was that Gross described to him; nor can he say whether it was in 1873 or 1874.

As early as the spring of 1873, while Gross was engaged in making

a few crude sketches, and putting them away in his trunk, Sargent had not only conceived of the invention but had embodied it in a practical working model, which was filed with an application in the Patent Office June 11, 1873, and that application was finally merged into the present one. He followed up this embodiment in practical form, by introducing the public to a knowledge of it in attempts in many directions to induce bankers and others to adopt the device upon their safes, and his efforts in this direction were crowned with success in 1874, in which year numerous banking companies purchased and used the invention.

It seems hardly possible that a rival company, engaged in the same line of manufacture, and anxious to increase their trade, should have been ignorant entirely of these efforts, and I am at a loss to account for the waking up of the Hall Safe and Lock Company from their indifferent conduct towards Gross's alleged invention from 1870 to 1875, to the active interest and prosecution by them of said invention in the summer and fall of 1875, on any other ground than the knowledge by them of their rival's efforts. They present the excuses that in the first place there was no demand for this invention; and second, that it would have interfered with the sale of the lock they were already making. After their opponent had created a demand for it they were not retarded from also prosecuting it by the effect it might have on their previous inventions.

The contrast between the circumstances of this case and the case, for instance, of White & Allen, 2 Fish., 440, is sufficient in showing the inapplicability not only of the doctrine in that case, but in several others of a similar kind, that counsel for Gross has relied upon as establishing the validity of such excuses.

In the White & Allen case, the patentee, White, invented an improvement as early as the year 1849, and continued to experiment and perfect his invention until 1852, but did not apply for or obtain his patent until 1855. It appeared that during the whole time from 1849 to 1855 he was in the employ of one who held a prior and controlling patent which prevented the use of his improvement; that he delayed his ap plication and was advised to delay it on this account; and it also ap peared that his employer had discharged several men for making, or attempting to make, improvements upon such patents or in the line represented thereby.

In the present case, Hall was employed for this very purpose to get up improvements of this sort. The interests of his company, by whom he was employed, and his own, were identical. He not only gave the work of his hands and of his brains to the company, but submitted freely to their control, and he made no practical experiments for years after his discovery.

Now, the theory of the patent law is, that an inventor should be diligent in giving his efforts to the public, and I know of no decision or any plausible ground upon which it can be urged that a private corpo

ration can be substituted for the public as the recipient of an inventor's efforts.

The sole and admitted reason for Gross's delay of seven or eight years was the benefit to be conferred on the Hall Safe and Lock Company, by its adoption of his invention when convenient, and not the benefit of the public or community at large, which the Supreme Court has held is doubtless the primary object in granting and securing to inventors the monopoly of their discoveries. (Kendall et al. vs. Windsor, 21 How., 322.) Regarding, then, as we must, Gross's intention to keep and apply the invention for the profit of his company and himself, and to withhold it from the public until it was convenient for them to bring it forth, the language of the same decision applies to his conduct:

With a very bad grace (says the court) could such a one appeal for favor or protection to that society which, if he had not injured, he certainly had neither benefited nor intended to benefit. Hence, if, during such a concealment, an invention similar to or identical with his own should be made and patented, or brought into use without a patent, the latter could not be inhibited nor restricted, upon proof of its identity with a machine previously invented and withheld and concealed from the public. The rights and interests, whether of the public or of individuals, can never be made to yield to schemes of selfishness or cupidity; moreover, that which is once given to or is invested in the public, cannot be recalled or taken from them.

Although the court was there speaking of a completed invention which had been operated in secret, yet the principle is equally applicable to a case where an inventor alleges to have the knowledge of a complete invention, but persistently keeps that knowledge from the public. The exception to this rule of diligence is well stated in the same decision, as follows:

But the relation borne to the public by inventors, and the obligations they are bound to fulfill in order to secure from the former protection, and the right to remuneration, by no means forbid a delay requisite for completing an invention, or for a test of its value or success by a series of sufficient and practical experiments; nor do they forbid a discreet and reasonable forbearance to proclaim the theory or operation of a discovery during its progress to completion, and preceding an application for protection in that discovery. The former may be highly advantageous as tending to the perfecting the invention; the latter may be indispensable in order to prevent a piracy of the rights of the true inventor.

It is clear that Gross and his employers have not brought themselves within this exception. They rested for years upon mere theoretical knowledge of the invention, and until a rival and successful inventor had, as we have seen, given the public the benefit of its introduction and use.

Again, say the Supreme Court in the above case

An inventor may forfeit his right as an inventor by the willful or negligeat postponement of his claims, or by an attempt to withhold the benefit of his improvement from the public until a similar or the same improvement should have been made and introduced by others.

This doctrine has been reiterated in the very recent case of The U. S. Rifle and Cartridge Co. et al. vs. The Whitney Arms Co. et al., 11 OFFICIAL GAZETTE, 373.