Whether these enactments apply where the invention claimed in the United States patent was not claimed but only described in the prior foreign patent, is a question which has been decided in the affirmative in one case,' and in the negative in another,' and has not yet been settled.

In a case to which these enactments apply, the United States patent will not expire with the first term of the foreign patent, if the foreign patent is extended before the expiration of its first term, in pursuance of a statute which was in force when the United States patent was applied for and when it was issued, and which conferred an absolute right to such an extension, and if the extension or extensions of the foreign patent cover a continuous space of time; but it has been decided on the Circuit, and not yet otherwise decided by the Supreme Court, that where the patentee has no absolute right to an extension of the first term of his foreign patent, no such extension has any effect upon the duration of his United States patent.*

The termination of a foreign patent, prior to its appointed end, because of an omission of the patentee to do what the foreign laws require in order to keep it in force, has no effect upon the duration of a corresponding United States patent; but a repeal ab initio, of a foreign patent which would otherwise limit the duration of a corresponding United States patent, restores the latter to its full term of seventeen years.

It is not necessary, to the validity of a United States patent granted for an invention which has previously been granted in a foreign country, that it shall be so limited on its face, as to appear to expire at the same time with the

13 Fed. Rep. 553, 1882; Gramme Electrical Co. v. Electric Co. 17 Fed. Rep. 838, 1883; Edison Electric Light Co. v. United States Electric Lighting Co. 35 Fed. Rep. 135, 1888. ' Commercial Mfg. Co. v. Canning Co 27 Fed. Rep. 87, 1886.

2 Holmes Protective Co. v. Alarm Co. 22 Fed. Rep. 341, 1884.

Bate Refrigerating Co. v. Hammond, 129 U. S. 151, 1889.

Henry v. Tool Co. 3 Bann. & Ard. 501, 1878.

5 Holmes Protective Co. v. Alarm Co. 21 Fed. Rep. 458, 1884; Paillard v. Bruns, 29 Fed. Rep. 864, 1886. Bate Refrigerating Co. v. Gillett, 20 Fed. Rep. 192, 1884.

foreign patent which limits its life.' The statute is satisfied when the courts decline to enforce it after the expiration of that foreign patent, whether or not it appears on its face to be so limited."

The law set forth in this section applies to no patent which was originally granted prior to July 8, 1870; and applies to no reissue of any patent which was originally granted before that date, even though the reissue itself was granted after that date.' The duration of such patents, where they were granted for inventions which had previously been granted in some foreign country, was governed by certain earlier statutes which it is now in order to explain.

§ 164. Section 8 of the Patent Act of 1836 provided that nothing therein contained should be construed to deprive any original and true inventor of the right to a patent for his invention, by reason of his having previously taken out letters patent therefor in a foreign country, and the same having been published, at any time within six months next preceding the filing of his specification and drawings." Section 6 of the Patent Act of 1839 provided that no person should be debarred from receiving a patent for any invention, as provided in the Act of 1836, by reason of the same having been patented in a foreign country more than six months prior to his application, provided, among other things, that every such patent should be limited to the term of fourteen years from the date or publication of such foreign letters patent. The effect of these enactments was to allow an inventor to take out a patent in the United States, for an invention which he had previously patented in a foreign country, no matter how long previously that

Telephone Cases, 126 U. S. 572, 1888; Bate Refrigerating Co. v. Hammond, 129 U. S. 151, 1889.

New American File Co. v. Nicholson File Co. 8 Fed. Rep. 816, 1881; Canan v. Mfg. Co. 23 Fed. Rep. 185, 1885.

3 Badische Anilin and Soda Fab rik v. Hamilton Mfg. Co. 3 Bann. & Ard. 235, 1878.

45 Statutes at Large, Ch. 357, Section 8, p. 121.

55 Statutes at Large, Ch. 88, Section 6, p. 354.

foreign patent was granted; but the duration of the United States patent was limited to the term of fourteen years from the date or publication of the foreign patent, unless the United States patent was applied for within six months after the foreign patent was taken out, and within six months after the foreign patent was published. This law applied only to cases where the foreign patent was published, or, if it was a British patent, was sealed,' before the United States patent was applied for. It did not, therefore, affect any United States patent for an invention which was patented in a foreign country while the application for the United States patent was pending in the Patent Office. It was not necessary under the law stated in this section, any more than it is necessary under the law stated in the last, that a patent should be limited on its face, so as to appear to expire when it really ceased to be in force. Whether so limited or not, the courts would limit it to its legal life, when called upon to enforce it after the end of that life; but its validity for the term of fourteen years. from the date of the foreign patent, was unaffected by the fact that on its face the United States patent purported to run for fourteen years from its own date.*

$165. Section 16 of the Patent Act of March 2, 1861, provided that all patents thereafter granted should remain in force for the term of seventeen years from the date of issue; and the Supreme Court has decided that this enactment modified the statute of 1839 precisely as it would have done had it expressly substituted the word "seventeen" for the word "fourteen" in the earlier statute; thus making it read: "every such patent shall be limited to the term of seventeen years from the date or publication of such foreign letters patent." The law which was estab

De Florez v. Raynolds, 17 Blatch. 444, 1880.

* French v. Rogers, 1 Fisher, 136, 1851.

Gold & Stock Telegraph Co. v. Telegram Co. 23 Fed. Rep. 343,

996

1885.

O'Reilly . Morse, 15 Howard, 62, 1853.

5 Siemens's Adm'r v. Sellers, 123 U. S. 276, 1887.

lished on the subject by the Patent Act of 1836, as modified by the Patent Act of 1839, was still further modified to that extent by the Patent Act of March 2, 1861; and as thus modified it is the law which governs the point, in respect of patents granted between the latter date and July 8, 1870.

§ 170. The terms of all United States patents begin at their respective dates.' Those dates are selected by the Commissioner of Patents, but they cannot be later than six months after the time at which the respective applications are allowed; and cannot be earlier than the time of such allowance that is to say, patents cannot now be antedated.'

Section 8 of the Patent Act of 1836 provided that whenever the applicant should request it, the patent should take date from the time of the filing of the specification and drawings, not however exceeding six months prior to the actual issuing of the patent. This continued to be the law for nearly a quarter of a century, and patents so antedated conferred rights of action upon the patentees, for infringements occurring after their respective dates, and before the respective days of their actual issue." Section 16 of the Patent Act of March 2, 1861, provided a change in this law: provided that thereafter the term of patents should begin with the dates of their respective issue, and such has ever since been the law on the subject. In actual practice, patents are now dated and issued on the third or the fourth Tuesday after the applicant pays the final Patent Office fee. § 171. The grantee of the government in cases of letters patent for inventions may be the inventor himself; or his assignee; or an assignee of an assignee; or an assignee

Rein v. Clayton, 37 Fed. Rep. 355, 1889.

2 Revised Statutes, Section 4885. 3 De Florez v. Raynolds, 17 Blatch. 444, 1880.

45 Statutes at Large, Ch. 357, Section 8, p. 121.

Burdett v. Estey, 3 Fed. Rep.

566, 1880.

12 Statutes at Large, Ch. 88, Section 16, p. 249.

Revised Statutes, Section 4886. & Revised Statutes, Section 4895. 9 Selden v. Gas Burner Co. 19 Blatch. 544, 1881.

who has assigned the invention; or if an inventor dies before any patent is granted for his invention, the right to obtain the patent devolves on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate; or if he shall have left a will, disposing of the invention, then in trust for his devisees.' In this last case the patent may be granted to the executor by his proper personal name, without any declaration that he takes in his representative capacity; and the same thing is equally true in cases where the patent is granted to an administrator. Where an inventor assigns his invention before making an application for a patent, and then makes such an application, coupled with a request that the patent be granted to the assignee, and accompanied with an entry of the assignment on the records of the Patent Office, and then dies before any patent is granted; there appears to be no reason why the patent should not be granted to the assignee, though the statute literally provides that in all cases where the inventor dies before the patent is granted, the right to the patent devolves on his executor or administator in trust for his heirs or devisees. But this statute must receive a reasonable construction, and it is not reasonable to hold that the death of an inventor, who has sold and assigned his inchoate right to a patent, should operate to divest his assignee of that right, and devolve it upon another person, in trust for still another party. Nor is there any propriety, in such a case, in granting the patent to the executor or administrator, on the theory that he will take as trustee for the assignee. The assignee requires no trustee, for his inchoate title, is a legal, and not a merely equitable one;' and the executor or administrator, if he

1 Consolidated Electric Light Co. ↑. Edison Electric Light Co. 25 Fed. Rep. 719, 1885; Consolidated Electric Light Co. v. McKeesport Light Co. 34 Fed. Rep. 335, 1888.

3

* Revised Statutes, Section 4896. Stimpson v. Rogers, 4 Blatch.

336, 1859; Northwestern Fire Extinguisher Co. v. Philadelphia Extinguisher Co. 1 Bann. & Ard. 177, 1874.

• Revised Statutes, Section 4896. 5 Hendrie v. Sayles, 98 U. S. 549, 1878.