possessed by the claimant and by those claiming under him after the record thereof. But no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it.

Statute Revised-July 8, 1870, ch. 230, 54, 16 Stat. 206.

Prior Statute-March 3, 1837, ch. 45, 227, 9, 5 Stat. 193.

When Patent Valid.

This section is intended to cover inadvertencies and mistakes of the law, as well as inadvertencies and mistakes of fact. Wyeth v. Stone, 1 Story 273; s. c. 2 Robb 23.

This provision applies to patents granted prior to its adoption. Hotchkiss v. Oliver, 5 Denio 314.

The patentee can not maintain an action unless the part invented can be clearly distinguished from that claimed but not invented. Vance v. Campbell, 1 Fish. 483; s. c. 1 Black. 427; Rumford Works v. Lauer, 5 Fish. 615; s. c. 10 Blatch. 122; 3 O. G. 249; Rice v. Garnhart, 34 Wis. 453.

If the claim is for the whole machine, and the invention consists in an improvement, the invention will be good so far as it extends. Peterson v. Wooden, 3 McLean 248; s. c. 2 Robb 116; Hotchkiss v. Oliver, 5 Denio 314.

The provision requiring a disclaimer applies only in the case where the part claimed by the patentee, of which he is not the inventor, is a material and substantial part of the thing patented. A disclaimer is necessary, therefore, only where the thing claimed without right is a material and substantial part of the thing invented. The question as to the disclaimer is of no importance unless the part claimed is a material and essential part, or unless it was introduced into the description through the wilful default of the patentee, or with intent to defraud or mislead the public. Hall v. Wiles, 2 Blatch. 194.

If a patentee makes a claim which is not well founded in the same patent with other claims which are well founded, he may disclaim within a reasonable time that which he had no right to claim, and then his patent will be good as to the residue, as good as if it had issued originally only for the claims which are valid. Seymour v. McCormick, 3 Blatch. 209; s. c. 19 How. 96; Tuck v. Bramhill, 3 Fish. 400; s. c. 6 Blatch. 95; Taylor v. Archer, 4 Fish. 449; s. c. 8 Blatch. 315; Burdett v. Estey, 15 O. G. 877; s. c. 15 Blatch. 349; s. c. 4 Ban & Ard. 7; Schillinger v. Gunther, 16 O. G. 905; s. c. 17 Blatch. 66; s. c. 4 Ban & Ard. 479.

If a reissue contains one claim that is void because it is broader than the invention claimed in the original patent, a disclaimer may be made as to the void claim. Tyler v. Galloway, 22 O. G. 3072; s. c. 12 Fed. Rep. 567.

If the invention that remains after a disclaimer is not a material part of the thing patented, then the patent is void. Root v. E. N. Welch Manuf. Co., 17 Blatch. 478; s. c. 5 Ban & Ard. 189; s. c. 4 Fed. Rep. 423.

In connection with a disclaimer of a claim or part of a claim, a patentee may eliminate or withdraw those parts of the specification on which the disclaimed claim or part of the claim is founded. Schillinger v. Gunther, 16 O. G. 905; s. c. 17 Blatch. 66; s. c. 4 Ban & Ard. 479.

If the patentee omits to make a disclaimer, but brings a suit for a violation of his patent, and it satisfactorily appears upon the trial that he is entitled to be protected in a portion of the claims set up in his patent, but that he is not entitled to be protected in respect to another portion, he is still entitled to damages for the violation of the valid portion of his claims, the same as if all the claims were valid, so far as regards the mere right of recovery, but he gets no costs. Seymour v. McCormick, 3 Blatch. 209; s. c. 19 How. 96; Burdett v. Estey, 15 O. G. 877; s. c. 15 Blatch. 349 ; s. c. 4 Ban & Ard. 7; Christman v. Rumsey, 17 O. G. 903; s. c. 17 Blatch. 148; s. c. 38 How. Pr. 114; s. c. 4 Ban & Ard. 506; vide Heinrich v. Luther, 6 McLean 345.

A disclaimer can not be filed where the patent is for a combination. Batten v. Clayton, 2 Whart. Dig. 363; Vance v. Campbell, 1 Fish. 483; s. c. 1 Black. 427.

There is no distinction between an invalid claim for something of which the patentee was the discoverer, and a claim for something which was known before, and of which he was not the first discoverer. A patent for such a claim is as strongly forbidden by the statute as if some other person had made the invention before him. The law which requires and permits him to disclaim is not penal, but remedial. It is intended for the protection of the patentee as well as the public, and ought not therefore to receive a construction that would restrict its operation within narrower limits than its words fairly import. Whether, therefore, the patent is illegal in part because he claims more than he has sufficiently described, or more than he invented, he must in either case disclaim in order to save the portion to which he is entitled; and he is allowed to do so when the error was committed by mistake. O'Reilly v. Morse, 15 How. 62.

After a disclaimer has been properly filed, the construction of the patent must be the same as it would be if the matter so disclaimed had never been included in the description of the invention or the claims of the specification. Dunbar v. Myers, 11 O. G. 35; s. c. 94 U. S. 187.

A new specification which is not completed by a surrender of the old one, can not be considered as a disclaimer. Hovey v. Stevens, 3 W. & M. 17 ; s. c. 2 Robb 567.

A disclaimer can not be used for the purpose of altering or reforming the description of an invention. Hails v. Albany Stove Co., 16 Fed. Rep. 240.

A disclaimer can not enlarge the scope of the patent. White v. E. P. G. Manuf. Co., 24 O. G. 205.

When Filed.

A disclaimer may be filed as well after as before the commencement of a suit. Smith v. Nichols, 6 Fish. 61; s. c. 21 Wall. 112; 1 Holmes 172; 2 O. G. 649; O'Reilly v. Morse, 15 How. 62; Hall v. Wiles, 2 Blatch. 194; Silsby v. Foote, 20 How. 378; s. c. 2 Blatch. 260; Seymour v. McCormick, 19 How. 96; s. c. 3 Blatch. 209; Singer v. Walmsley, 1 Fish. 558; Tuck v. Bramhill, 3 Fish. 400; s. c. 6 Blatch. 95; Wyeth v. Stone, 1 Story 273; s. c. 2 Robb 23; Brooks v. Jenkins, 3 McLean 432; Gage v. Herring, 21 O. G. 2119; s. c. 14 Blatch. 293; s. c. 12 O. G. 753; s. c. 3 Ban & Ard. 55; vide Reed v. Cutter, 1 Story 590; s. c. 2 Robb 81; Parker v. Stiles, 5 McLean 44.

This provision means that a suit pending when the disclaimer is filed is not to be affected by such filing so as to prevent the plaintiff from recovering in it, unless it appears that he unreasonably neglected or delayed to file the disclaimer. Tuck v. Bramhill, 3 Fish. 400; s. c. 6 Blatch. 95.

A court of equity ought not to interfere to grant a perpetual injunction, whatever may be the right and remedy at law, unless a disclaimer has been in fact filed at the patent office before the suit is brought. The granting of such an injunction is a matter resting in the sound discretion of the court, and if the court should grant a perpetual injunction before any disclaimer is filed, it may be that the patentee may never afterwards, within a reasonable time, file any disclaimer. Wyeth v. Stone, 1 Story 273; s. c. 2 Robb 23.

There may be a decree for a perpetual injunction, each party to pay his own costs, without any actual previous disclaimer of record in the patent office. But the circuit courts will not make any decree beyond the perpetual injunction without an actual disclaimer previously recorded in the patent office. Aiken v. Dolan, 3 Fish. 197; Myers v. Frame, 4 Fish. 493; s. c. 8 Blatch. 446; Atwater Manuf. Co. v. Beecher Manuf. Co., 8 Fed. Rep. 608.

Who may File.

If an assignee does not join with the patentee in a disclaimer, the disclaimer can not operate in favor of the assignee in any suit either at law or in equity. Wyeth v. Stone, 1 Story 273; s. c. 2 Robb 23; Myers v. Frame, 4 Fish. 493; s. c. 8 Blatch. 446.

If a patent is issued jointly to the inventor and another as assignee of an interest in the invention, the former must offer to unite with the inventor in a disclaimer, before he can assert that some validity might thereby be imparted to the patent. Rice v. Garnhart, 34 Wis. 453.

If the disclaimer is filed by the patentee, it need not expressly declare that he has parted with no interest, for the fair implication from the averment that he is the patentee is that he still owns the whole. Silsby v. Foote, 14 How. 218; s. c. 1 Blatch. 445.

If an administrator, in whose name a patent has been extended, expressly states that he is the patentee, and refers to the patent as showing

his interest, this is a sufficient statement of his interest. Brooks v. Jenkins, 3 McLean, 432.

Delay.

The time in reference to the question of delay commences when the knowledge is brought home to the patentee that he was not the first inventor, or when it is declared by a court of competent jurisdiction to settle the question that he is not the first inventor, then it is that the time commences to run, and not till then. Singer v. Walmsley, 1 Fish. 558.

When the objectionable claim has been sanctioned by the commissioner of patents, and held to be valid by a circuit court, the patentee has a right to insist upon it, and not disclaim it until the highest court to which it can be carried has pronounced its judgment. Such delay is not unreasonable, and will not render the patent altogether void. O'Reilly v. Morse, 15 How. 62; Seymour v. McCormick, 19 How. 96; s. c. 3 Blatch. 209; Potter v. Whitney, 3 Fish. 77; s. c. 1 Lowell 87.

An unreasonable neglect or delay to enter a disclaimer cuts off the patentee from all the benefits of the section. He not only can not recover costs, but he can have no right of action. Brooks v. Jenkins, 3 McLean 432; Hall v. Wiles, 2 Blatch. 194; Winans v. N. Y. & Erie R. R. Co., 1 Fish. 213; s. c. 21 How. 88.

What is unreasonable delay is a question to be settled by the court, and not for the jury. Singer v. Walmsley, 1 Fish. 558; Seymour v. McCormick, 19 How. 96; s. c. 3 Blatch. 209.

Whether the neglect or delay to enter a disclaimer is unreasonable is a mixed question of law and fact, and must be decided by the jury under the instructions of the court. Brooks v. Jenkins, 3 McLean 432; Washburn v. Gould, 3 Story 122; s. c. 2 Robb 206; Lippincott v. Kelley, 1 West. L. J. 513.

SEC. 4918. Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person, except the parties to the

suit and those deriving title under them subsequent to the rendition of such judgment.

Statute Revised-July 8, 1870, ch. 230, § 58, 16 Stat. 207.
Prior Statute-July 4, 1836, ch. 357, § 16, 5 Stat. 123.

The proceeding contemplated by this section is an ordinary proceeding in chancery. It is not a summary proceeding but an adversary proceeding, in which the party must file the usual bill in chancery and issue the subpoena required by chancery practice. L. & M. Tobacco Co. v. Miller, 17 O. G. 798; s. c. 1 McCrary 31; s. c. 5 Ban & Ard. 237; s. c. 1 Fed. Rep. 203.

In a proceeding under this section, the subpoena can not be served on parties who live out of the district where the suit is instituted. L. & M. Tobacco Co. v. Miller, 17 O. G. 798; s. c. 1 McCrary 31; s. c. 5 Ban & Ard. 237; s. c. 1 Fed. Rep. 203.

The circuit court has no jurisdiction to enjoin a patentee, or declare the patent a nullity upon the application of a party who alleges that he is the first and original inventor of the thing patented for which the patentee surreptitiously and fraudulently obtained a patent, if the complainant has not obtained a patent. Hoeltge v. Hoeller, 2 Bond 386; Mason v. Rowley, 3 A. L. T. (N. S.) 8.

If the party who gets the later patent is the real inventor, he may have the prior patent cancelled. Sturges v. Van Hagan, 6 Fish. 572.

The assignee of an invention may file a bill in his own name to obtain the cancellation of letters patent which have been improperly granted to another. Gay v. Cornell, 1 Blatch. 506; Gold & Silver Ore Co. v. U. S. Ore Co., 3 Fish. 489; s. c. 6 Blatch. 307.

Two patents interfere within the meaning of this section when they claim the same invention in whole or in part. Gold & Silver Ore Co. v. U. S. Ore Co., 3 Fish. 489; s. c. 6 Blatch. 307; Gilmore v. Golay, 3 Fish. 522; Garratt v. Seibert, 98 U. S. 75; s. c. 15 O. G. 383; Putnam v. Hutchinson, 12 Fed. Rep. 131.

If a person who stands by and acquiesces in the purchase of a patent, subsequently takes out a patent in his own name for the same invention, his patent may be declared void on a bill filed by the purchaser. Natl. F. D. Co. v. Hibbard, 21 O. G. 635; s. c. 9 Fed. Rep. 558.

A party is not entitled to any benefit under this section, unless the patents are for the same invention. An averment that the defendant claims an interference and denial of such claim does not authorize a suit as for an interference. Celluloid Manuf. Co. v. Goodyear D. V. Co., 13 Blatch. 375; s. c. 10 O. G. 41; s. c. 2 Ban & Ard. 334.

The power of the circuit court in a case of interfering patents is not confined to the specific remedy pointed out by this section, but authorizes the granting of an injunction. The power conferred on the circuit courts to entertain bills in equity in controversies arising under the patent act is a general equity power, and carries with it all the incidents belonging to