1 Blatchf., 245. substantial part of the thing patented, of 2 Blatchf., 198. 15 How., 122. 19 How., 106. 20 How., 387. 5 Denio, 318. 3 Fish., 197. 3 Fish., 400. Notice of special matter. which he was not the original and first in ventor or discoverer as aforesaid, every such patentee, his executors, administrators, and assigns, whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity for the infringement of any part thereof which was bona fide his own, provided it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the parts so claimed, without right as aforesaid, notwithstanding the specifications may embrace more than that of which the patentee was the original or first inventor or discoverer. But in every such case in which a judgment or decree shall be rendered for the plaintiff, no costs shall be recovered, unless the proper disclaimer has been entered at the Patent Office before the commencement of the suit; nor shall he be entitled to the benefits of this section if he shall have unreasonably neglected or delayed to enter said disclaimer. 61. In any action for infringement the de4 July, 1856, ch. fendant may plead the general issue, and, hav357, 15, v. 5, Ping given notice in writing to the plaintiff or 123. 3 Mar., 1839, ch. 88, 27, v. 5, p 354. his attorney thirty days before, may prove Pet. C. C., 348. on trial any one or more of the following 7 Wheat., 469. 4 McLean, 179, special matters: 371, 525. 3 Wheat., 503. 4 Wash., 74, 705. 14 Pet., 459. 1 Wall, jr., 195. First. That for the purpose of deceiving the public the description and specification 1 Blatch, 376. filed by the patentee in the Patent Office was 14 How., 222. 23 How., 7. made to contain less than the whole truth 15 How., 110,141. relative to his invention or discovery, or more than is necessary to produce the desired ef- 5 fect; or, Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or, Third. That it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or, Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or, Fifth. That it had been in public use or on sale in this country for more than two years before his application for a patent or had been abandoned to the public. And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented or to have had the prior knowledge of the thing patented and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defenses MeLean, 61. 17 How. 84. 2 Story, 441. 1 Fish.. 465. 1 Fish., 615. 2 Fish., 52. 3 Fish., 464. Prior knowledge or use in for 357, 15, v. 5, p. 123. 5 McLean, 61. 6 McLean, 313. 1 Fish., 516. may be pleaded in any suit in equity for relief against an alleged infringement; and proofs of the same may be given upon like notice in the answer of the defendant, and with the like effect. 62. Whenever it shall appear that the pateign country. entee, at the time of making his application 4 July, 1836, ch. for the patent, believed himself to be the original and first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country before his invention or discovery thereof, if it had not been patented or described in a printed publication. 1 Fish., 586. Extension of pat ent. Duty of 63. Where the patentee of any invention applicant. or discovery, the patent for which was grant4 July, 1836, ch. ed prior to the second day of March, eighteen 22 Mar., 1861, ch. hundred and sixty-one, shall desire an exten88, 12, 16, v. 12, sion of his patent beyond the original term 357, 18, v. 5, p. 124. pp. 248, 249. of its limitation, he shall make application therefor, in writing, to the Commissioner, setting forth the reasons why such extension should be granted; and he shall also furnish a written statement under oath of the ascertained value of the invention or discovery, and of his receipts and expenditures on account thereof, sufficiently in detail to exhibit a true and faithful account of the loss and profit in any manner accruing to him by reason of said invention or discovery. And said application shall be filed not more than six months nor less than ninety days before the expiration of the original term of the patent, and no extension shall be granted after the expiration of said original term. tion to be pub 4 July, 1836, ch. 248. 2 Mar., 1861, ch. 64. Upon the receipt of such application, Notice of applicaand the payment of the duty required by _lished. law, the Commissioner shall cause to be pub-357, 15, v. 5, p. lished in one newspaper in the city of Wash- 124. ington, and in such other papers published 8, 12, v. 12, p. in the section of the country most interested adversely to the extension of the patent as he may deem proper, for at least sixty days prior to the day set for hearing the case, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. red to exam 27 May, 1848, ch. 47, 21, v. 9, p. 231. 65. On the publication of such notice the Case to be referCommissioner shall refer the case to the iner. principal examiner having charge of the class of inventions to which it belongs, who shall make to said Commissioner a full report of the case, and particularly whether the invention or discovery was new and patentable when the original patent was granted. granting exten 66. The Commissioner shall, at the time Hearing of case, and place designated in the published notice,_sion. hear and decide upon the evidence produced, 357,, v. 6, p. both for and against the extension; and if it 124 4 July, 1836, ch. 27 May, 1848, ch. 47,2 1, v. 9, p. 231. 2 Fish., 499. 3 Fish., 536. 9 Wall, Extension, how far for the bene shall appear to his satisfaction that the patentee, without neglect or fault on his part, has failed to obtain from the use and sale of his invention or discovery a reasonable remuneration for the time, ingenuity, and expense bestowed upon it, and the introduction of it into use, and that it is just and proper, having due regard to the public interest, that the term of the patent should be extended, the said Commissioner shall make a certificate thereon, renewing and extending the said patent for the term of seven years from the expiration of the first term, which certificate shall be recorded in the Patent Office, and thereupon the said patent shall have the same effect in law as though it had been originally granted for twenty-one years. 67. The benefit of the extension of a patfit of assignees. ent shall extend to the assignees and grant4 July, 1836, ch. ees of the right to use the thing patented to the extent of their interest therein. 357, 18, v. 5, p. 125. 248. 3 Fish., 9. 3 Fish., 410. 68. The following shall be the rates for 10, v. 12, p. patent fees: 27 June, 1866, On filing each original application for a ch. 143, 1, v. 14, patent, fifteen dollars. p. 76. On issuing each original patent, twenty dollars. On filing each caveat, ten dollars. On every application for the reissue of a patent, thirty dollars. |