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will not be obnoxious to the law now under consideration.' But if the invention could have been tested by the inventor on his own premises, as well as by any one there or elsewhere, then either an absolute or a conditional sale of a specimen of the thing invented, will be putting the invention on sale, unless there is unequivocal evidence that the sale was made for the purpose of experimental use.' And where a specimen of an invention is built or made to order, it is not "on sale" till it is completed, delivered, and accepted.'

§ 97. An assignment of the inchoate right to an invention, is not such a sale as will be obnoxious to the statute now under explanation. So far from furnishing evidence of abandonment, the sale of the inchoate right to a patent indicates an expectation that such a patent will be obtained, and that right be thus translated into a legal title.

§ 98. Precise identity between the thing covered by the patent, and the thing which the inventor allowed to be in public use or on sale more than two years before he applied for that patent, is not necessary to constitute constructive abandonment of the invention covered by the latter. It is enough if the two devices are substantially the same,' but it is not enough that the two devices perform the same function and are somewhat similar in construction and in mode of operation.*

§ 99. No constructive abandonment results from any mere making of a specimen of an invented thing more than two years before his application for a patent.' But where an invention consists in a process of making a thing, the making of a specimen of that thing, by that process,

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is a

Hall v. Macneal, 107 U. S. 90, 1882; Theberath v. Trimming Co. 15 Fed. Rep. 251, 1883.

Draper v. Wattles, 3 Bann. & Ard. 618, 1878.

↑ Comstock v. Sandusky Seat Co. 3 Bann. & Ard. 188, 1878; Campbell v. New York, 36 Fed. Rep. 261, 1888.

use of that process, and is therefore subject to the rules which govern using, and not to that which applies to making only.

§ 100. Public knowledge of an invention, acquired with the consent of the inventor, prior to his application for a patent, was formerly fatal to the validity of any patent granted for that invention. The Patent Act of 1793' provided that to be patentable a thing must not have been known before the making of an application for a patent thereon. The Supreme Court construed that enactment to mean only that the invention must not have been known to the public with the consent of the inventor. The Patent Act of 1836 repealed all prior statutes on the subject of patents, and did not provide that any unfavorable effect on an inventor's rights should result from public knowledge of his invention, acquired at any time after its production by him. Nor has any later statute made any such provision. Since 1836 there has, therefore, been no reason for an inventor to keep his invention secret, unless he proposed to rely upon secrecy, and not upon a patent, for his profits, or unless he feared that some other person, obtaining knowledge of the invention, would falsely claim it as his own.

§ 101. A public use or a sale of a specimen of a newly invented thing, occurring in any foreign country after its invention by an applicant for an American patent, but more than two years before his application is made, will have the same effect upon such a patent, as it would have had if that public use or that sale had occurred in the United States. That part of Section 4886 of the Revised Statutes which treats of public use or sale of a thing after its invention by an applicant, is not limited to this country; as that part is which treats of knowledge or use by others of that thing before its invention by the applicant. It is true that Section 4920, which provides for certain defences to infringe

11 Statutes at Large, Ch. 11, Section 1, p. 318.

2 Pennock v. Dialogue, 2 Peters,

18, 1829.

3 Elizabeth v. Pavement Co. 97 U. S. 136, 1877.

ment suits, provides that a defendant may give notice and prove that the invention had been in public use or on sale in this country more than two years before an application for a patent, and does not provide that he may give notice and prove that any such sale or use occurred elsewhere. But it is also true that Section 4920 does not enumerate all the defences that may be made to patent suits. It merely provides what defences may be made under the general issue, and it leaves a larger number to be set up in special pleas. That section does not, therefore, negative or tend to negative the effect on this subject of Section 4886.

§ 103. Constructive abandonment of an invention, after an application for a patent thereon, necessarily results from constructive abandonment of that application, in certain classes of cases which are explained in the chapter on applications. In still another class of cases, constructive abandonment of an invention, after an application for a patent thereon, necessarily results from a particular kind of constructive abandonment of that application, unless a new application is filed within a certain time after such abandonment. That class of cases is the following. Where an applicant omits to pay the final fee within six months from the time at which his application was allowed, and notice thereof sent to him or to his agent, and where he also omits to make any new application for a patent on the same invention within two years after such allowance, he can never obtain a patent for that invention.'

§ 104. The statutory law relevant to constructive abandonment, resulting from a public use or from a sale of a newly invented thing, more than two years before an application for a patent, is a law which operates inflexibly upon all cases coming within it. Its effect cannot be obviated by any evidence showing reasons for the delay, however ample and meritorious those reasons may be.' The rule of this section doubtless applies also to the constructive abandonment explained in the last.

1 Section 147 of this book.

Revised Statutes, Section 4897.

3 Sisson v. Gilbert, 9 Blatch. 189, 1871.

§ 105. Surrender of an invention may be effected after the grant of letters patent therefor, by means of a formal surrender of those letters patent. A proceeding of the kind was mentioned by the Supreme Court as being confessedly proper as early as 1832,' and an actual surrender of the sort was tacitly approved by that tribunal about twenty years later.'

§ 106. No abandonment of an invention after the issue of letters patent thereon, has ever been judicially decided to exist in the United States. The Patent Act of 1832' provided that a certain class of aliens might obtain United States patents, who had theretofore been excluded from that privilege; but it coupled with that provision an enactment that every patent granted by virtue of that Act, should cease and determine in case of failure on the part of the patentee to introduce the invention into public use in the United States within one year from the issuing of the patent, or in case of a discontinuance of such public use for any period of six months, or in case of failure on the part of the patentee to become a citizen of the United States. In providing such a rule of constructive abandonment for a certain class of aliens, Congress showed that it did not overlook the subject of non-user of patented inventions; and in omitting to provide any such rule for citizens of the United States, Congress showed that it did not intend constructive abandonment to result from non-user in their cases. Even as to aliens, the policy of the law upon the point was soon given up. The Act of 1836 repealed all former patent statutes, and did not re-enact the provision just cited from the Act of 1832, nor put any corresponding restrictions upon any class of patentees. Nor has any later statute contained any provision of the kind. The fair inference from this course of legislation seems to be, that Congress does not intend any patent right to be lost on any ground of non-user of that right. Even before Congress

1 Grant v. Raymond, 6 Peters, 240, 1832.

2 Battin v. Taggert, 17 Howard, 74,

1854.

3 4 Statutes at Large, Ch. 203, p. 577.

had thus indicated its intention on the subject, Justice WASHINGTON instructed a jury that no disuser of an invention, after it is patented, can amount to an abandonment, so as to deprive the patentee or his assignees of their exclusive right to it for the term of the patent.' So also the Supreme Court has held that no presumption arises against a patent from any use of the invention by the public after the patent is granted. Since no abandonment of an invention, after it is patented, can arise out of any existing statute, or be based on any non-user by the patentee, or on any user by the public, we seem shut up to the conclusion that no such abandonment is known to our laws.

§ 107. Acquiescence by a patentee in unlicensed use of his invention, during the life of the patent, has sometimes been said or been intimated by courts, to amount to an abandonment of the patent and of the invention. Four cases containing such statements or suggestions are to be found in the reports. In two of them the judges made their observations on the subject, in spite of their decisions that no such question was involved in the pleadings. In the other two cases the views of the judges were inserted in charges to juries, but inasmuch as the juries found for the respective plaintiffs, it seems that there were no facts in the cases which called for such statements in the charges. The opinions of the four judges on the point seem, therefore, to be no more weighty than the reasons which support them. But no reasons applicable to the subject of abandonment of a patent are contained in either of the cases, though one of them contains statements of reasons adapted to support the doctrine of estoppel. Nor do the four cases agree among themselves, relevant to the character or to the quantity of acquiescence needed to support an hypothesis of abandonment of a patent. In Wyeth v. Stone,' Justice STORY intimated that such acquiescence must be without objection,

1 Gray . James, 1 Peters C. C. 403, 1817.

'Shaw v. Cooper, 7 Peters, 320,

1833.

3

1840.

Wyeth v. Stone, 1 Story, 282,

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