Lawton & Bliss, 3 O. G. 150; R. A. Stewart, 4 O. G. 665; Francis D. Ballou, 5 O. G. 29; H. H. King, 2 Dec. Com. 79.

An extension may be granted and the question of novelty left for the determination of the courts. A. J. Johnson, 1 O. G. 631.

If the courts have sustained the validity of a patent, and no new references are introduced to the notice of the office, the patent is regarded as unimpeachable, and will be extended. Henry Blandy, 2 O. G. 174; George Johnson, Adm'r, 2 Dec. Com. 86; W. W. Lewis, 3 O. G. 92.

If the novelty of the invention has been sustained by the courts, it will be assumed to have been satisfactorily established. Eli W. Blake, 1 O. G. 605.

The extension of a patent will be refused if it be found that the device patented is wanting in novelty, although it has been sustained in two suits at law in which that question was not raised. Mary J. Osborn, Adm'x, 2 Dec. Com. 80; Geo. B. Arnold, 5 O. G. 553.

The question whether an invention was sufficiently perfected when the patent was granted, having been considered at the time, and discussed upon trials in which the patent was sustained, should not be agitated anew upon an application for extension, without good reason. John E. Burrow, 1 Dec. Com. 48.

The novelty of an invention described in a patent for which an extension is prayed, can not be impeached upon the ground that it is described in another patent of nearly the same date, if the grantee in the latter patent has conceded in a written instrument that the applicant is the prior inventor. Thomas J. Chubb, 3 Dec. Com. 233.

An extension may be granted upon ex parte affidavits showing that the patentee was the first inventor, although a prior patent had been granted to another. Frederick Nishwitz, 1 O. G. 143.

If it is doubtful whether the inventions shown in a previous patent to the same party were perfected when the prior patent was applied for, an extension will be granted. John Tyler, 2 Dec. Com. 159.

The extension of a patent will be refused if it appears that the process and machine claimed in the reissues of the patent had been described in a prior printed publication. F. P. E. Carré, 4 O. G. 180.

W. G.

The extension of a patent will be refused where the applicant has held a previous patent, embodying essentially the same principle. Creamer, 2 Dec. Com. 133; A. B. Latta, 3 O. G. 349.

Upon an application for extension, in determining whether the alleged invention is new or not, the consideration that the patent has been reissued, and has been extended, and has been sustained in litigation, is of especial weight. Calista E. Cox, 2 O. G. 491.

There can be no extension of an original patent when it has been reissued by the patentee himself, or if he has in any manner assented to such reissue. Henry H. Packer, 2 O. G. 31; Chas. G. Dickinson, 3 O. G. 91.

If one has failed to cure an insufficient specification by reissue during the life of the patent, an extension can not be allowed merely to afford an opportunity. George W. Morse, 6 O. G. 296.

Extended patents should contain only such matters as are proved valuable to the public, and the inventor has no right to an extension of what has no value, that subsequent inventors may not be embarrassed. C. W. Marsh, 2 O. G. 197; Thomas Allender, 1 Dec. Com. 46; Robert M. Wilder, 2 Dec. Com. 40; Darlington & Piper, 2 Dec. Com. 133; John L. Mason, 3 Dec. Com. 182; B. J. Lamothe, 3 Dec. Com. 201; Behr & Mongel, Adm'r, 3 O. G. 292.

If the patentee has made an application for a reissue which has been rejected, he can not ask for an extension on the ground that the invention contains a feature which might be covered by a reissue, where it is the same as that named in the application. Ezra Emmert, 1 O. G. 90.

It is sufficient if, upon an extension, devices are disclaimed, except when used in a certain combination which is new. James A. Woodbury, 1 Dec. Com. 86; Timothy Bailey, 1 Dec. Com. 93; Charles T. Eames, 2 Dec. Com. 47; R. M. Hoe, 2 Dec. Com. 68.

A patent may properly be extended with reference to features in the invention which are not covered by the claims, but which are capable of being embraced in a reissue. Ezra Emmert, 1 O. G. 90.

Phrases intended to extend the scope of an invention, although of genuine import, when they overreach the features of the device, can not be allowed in an extension. M. Smith, 2 O. G. 117; Benjamin F. Avery, 2 Dec. Com. 1.

If other conditions are favorable, it is the established practice of the commissioner to grant extensions of patents having only such defects as may be cured by reissue. Thomas J. Mayall, 4 O. G. 582.

A patent will be extended notwithstanding the claim is too broad, when there is not sufficient time to correct it by a reissue. Mary F. Crocker, Adm'x, 1 Dec. Com. 85.

Diligence.

Where the inventors are themselves the manufacturers of their improvements, but have had their profits decreased by infringers introducing inferior machines into the market, and they have used due diligence in bringing them to justice, it can not be charged that their proper remuneration failed by reason of their own neglect or fault. Henry & F. J. L. Blandy, 2 O. G. 174; Lauriston Towne, 3 Dec. Com. 258; John W. Masury, 4 O. G. 1; Hosea Ball, 2 Dec. Com. 110.

An application for extension will be refused where the failure to receive proper remuneration has arisen mainly from applicant's own fault and neglect. John B. Read, 2 Dec. Com. 137; George W. Morse, 2 Dec. Com. 139.

A patent will not be extended where the patentee has not been diligent in introducing his invention, nor where the affidavits as to the value of the invention are general, and no data are furnished from which it can be estimated. Henry A. Rains, 2 Dec. Com. 82; George U. White, 2 Dec. Com. 160; G. W. Francis, 3 Dec. Com. 268; Wm. M. Draper, 3 O. G. 3. The question of loyalty or disloyalty during the rebellion has no effect upon the status of the applicant, except so far as it pertains to the question of due diligence in introducing his invention into public use. Geo. W. Morse, 10. G. 489; Geo. W. Morse, 1 O. G. 607.

The extension will be refused if the patentee did not use due diligence to introduce the invention into public use. Samuel Falkenberg, 2 O. G. 3. Extension will not be granted an applicant who has failed to receive a reasonable remuneration in consequence of suffering a foreign patent, previously granted, to run out before its regular determination. Robert Mushet, 2 Dec. Com. 106; Wm. E. Ward, 2 Dec. Com. 126; Jos. E. Boyer, 2 Dec. Com. 130.

SEC. 4928. The benefit of the extension of a patent shall extend to the assignees and grantees of the right to

use the thing patented, to the extent of their interest therein.

Statute Revised-July 8, 1870, ch. 230, § 67, 16 Stat. 209.
Prior Statute-July 4, 1836, ch. 357, 17, 5 Stat. 124.

The extension of a patent is a new grant of the exclusive right or monopoly in the subject of the invention. All the rights of assignees or grantees, whether in a share of the patent or to a specified portion of the territory held under it, terminate and become reinvested in the patentee. This clause is a qualification of such exclusive right. It refers to those who are in the use of the patented article at the time of the extension, and is intended to save to them that right which, without the clause, would be vested again exclusively in the patentee. The phrase "thing patented" as used in the connection here found, with the right simply to use the thing patented, not the exclusive right, which would be a monopoly, necessarily refers to the patented machine and not to the invention, and indeed it is in that sense that the expression is to be understood generally throughout the patent law, when taken in connection with the right to use in contradistinction to the right to make and sell. The phrase "to the extent of their respective interests therein " refers to their interests in the thing patented, and, in connection with the right simply to use, means their interests in the patented machines, be that interest in one or more at the time of the extension. Wilson v. Rousseau, 4 How. 646; s. c. 1 Blatch. 3; s. c. 2 Robb 373; Woodworth v. Sherman, 3 Story 171; s. c. 2 Robb 257; Wilson v. Turner, 4 How. 712 ; Taney 278; s. c. 2 Robb 467. If that interest was short of the whole of the original term for which the patent was originally issued, it is still to be bounded by it. But if it is an interest in terms designed to be coextensive with all the interest which the patentee now has or may hereafter acquire, not merely to his present rights in esse, but with his contingent rights in posse, then the section makes that a legal interest which otherwise would be but a mere potential equitable interest to be enforced in equity as a mere right under contract, and not as a fixed present vested interest. Woodworth v. Sherman, 3 Story 171; s. c. 2 Robb 257; Brooks v. Bicknell, 4 McLean 64. When a patentee has made and vended to others to be used, one or more of the things patented, to that extent he parts with his exclusive right. He is entitled to but one royalty for a patented machine, and, consequently, when he has himself constructed a machine and sold it or authorized another to construct and sell it, or to construct and use and operate it, and the consideration has been paid to him for the right, he has then to that extent parted with his monopoly, and ceased to have any interest whatever in the machine so sold or so authorized to be constructed and operated. Where such circumstances appear, the owner of the machine, whether he built it or purchased it, if he has also acquired the right to use and operate it during the lifetime of the patent, may continue to use it until it is worn out in spite of any and every extension subsequently

obtained by the patentee or his assignee. Bloomer v. Millinger, 1 Wall. 340; Blanchard v. Whitney, 3 Blatch. 307; Wooster v. Seidenberg, 13 Blatch. 88; s. c. 9 O. G. 244; s. c. 2 Ban & Ard. 91; Black v. Hubbard, 12 O. G. 842.

The patentee under the extension is to be vested with the consequences of the acts of his predecessors. He takes the extension just as it falls to him on the expiration of the original patent from those holding under the original patent, and of course is not to be reinstated in all his original rights in every respect as they stood when the original patent was issued. Goodyear v. Honsinger, 3 Fish. 147; s. c. 2 Biss. 1.

The protection which the clause affords is limited to those who have a right to use, and in the construction and operation of the clause it should be limited to the exercise of that particular right, although the persons holding that right may also have held during the original term the exclu sive right to use, to make and to vend. This right to use is protected, continued and secured only to the extent of the respective interests of such assignees and grantees therein. If the right to use before the extension was limited, it continues under this clause subject to the same limitation. Day v. Union Rubber Co., 3 Blatch. 488; s. c. 20 How. 216.

If a licensee contracts to pay a royalty during the original term and any renewal thereof, he will not be released from his liability upon an extension of the patent. Union Manuf. Co. v. Lounsbury, 41 N. Y. 363; s. c. 42 Barb. 125.

If the licensor prohibits the licensee from granting the right to use a machine beyond the original term, a purchaser of a machine from the licensee can not use it during an extended term. Notice to the purchaser of this limitation is not necessary, as the law imposes upon the purchaser the risk as to whether the title of the vendor is such that he can make a valid conveyance as against the real owner. Mitchell v. Hawley, 4 Fish. 388; s. c. 6 Fish. 331; 16 Wall. 544; 1 O. G. 306; 3 O. G. 241; s. c. 1 Holmes 42.

If a party was not rightfully in the enjoyment of the thing patented during the original term of the patent, he has no right to use it during the extended term, unless he shows that the use is with the license, consent or knowledge of the patentee, or of some person authorized under him to convey the right. Chaffee v. Boston Belting Co., 22 How. 217.

A party who buys a machine from an infringer, and then subsequently purchases a territorial right from the patentee, thereby acquires a lawful title to the machine, and may use it after the expiration of the patent. Eunson v. Dodge, 18 Wall. 414; s. c. 5 O. G. 95.

An assignee who holds the right to make and use the thing patented may continue to use it after the expiration of the patent, but can not make it for use or for any other purpose. Wood v. Railroad Co., 3 Fish. 464; s. c. 2 Biss. 62; Hodge v. Hudson River R. R. Co., 6 Blatch. 165; s. c. 3 Fish. 410.

Those who construct machines, or cause them to be constructed, under the authority of the patentee or his assigns, have the same rights as grantees or assignees. Bloomer v. Millinger, 1 Wall. 340.

This clause has no reference to the rights or interests of assignees and grantees under the new and extended term. Wilson v. Rousseau, 4 How. 646; s. c. 1 Blatch. 3; s. c. 2 Robb 373.

The terms of the clause are broad and general, and appropriate enough to secure the just rights of all who can be regarded as assignees or grantees of the right to use the patented invention, whether under a purchase of a machine, or a direct assignment or grant of a limited or unlimited right to use, and the equities of the case and the policy of the patent laws require that the clause should be so construed as to give such security. Day v. Union Rubber Co., 20 How. 216; s. c. 3 Blatch. 488; Woodworth v. Curtis, 2 W. & M. 524; s. c. 2 Robb 603; Woodworth v. Cook, 2 Blatch. 151.

The term "the thing patented," as used in connection with the right simply to use, necessarily refers to the patented machine and not to the invention. A licensee of a patented process has no right to use the process after an extension of the patent. Wetherill v. Zinc Co., 6 Fish. 50; s. c. 9 Phila. 385; 2 O. G. 471; vide Day v. Union Rubber Co., 20 How. 216; s. c. 3 Blatch. 488.

Where a process requires a peculiar machine or apparatus for its practice, and the right to each is held by different persons under different patents, the right to use the machine will not give the right to use the process under an extension. Wetherill v. Zinc Co., 6 Fish. 50; s. c. 9 Phila. 385; 2 O. G. 471.

The right to use the machine after the expiration of the term is not a mere personal right. It is a right of property. The value of it is attached to the thing used. The machine and the right attached to it may pass by sale, devise or levy of execution, or an assignment of an insolvent's effects. Woodworth v. Curtis, 2 W. & M. 524; s. c. 2 Robb 603.

Between repairing and replacing there is a difference. Form may be given to a piece of any material, so as to produce an original result, or to aid the efficiency of one already known, and that would be the subject for a patent. It would be the right of a purchaser to repair such a thing as that, so as to give to it what was its first shape, if it had been turned from it, or by filing, grinding or cutting, to keep it up to the performance of its original use. But if, as a whole, it should happen to be broken, so that its parts could not be readjusted, or so much worn out as to be useless, then a purchaser can not make or replace it by another, but he must buy a new one. The doing of either would be entire reconstruction. Wilson v. Simpson, 9 How. 109.

The right to repair may extend to a replacement of an essential part of a combination. It comprehends and permits the resupply of the effective ultimate tool of the invention, which is liable to be often worn out or to become inoperative for its intended effect, which the inventor contemplates would have to be frequently replaced anew during the time that the machine, as a whole, might last. The right to replace is not because the tool is of perishable materials, but because the inventor of the machine has so arranged it as a part of the combination that the machine can not