After

upon the government, and renders the patent void. the patent issues, however, the Patent Office has no jurisdiction over it, and cannot entertain the question whether the oath were true or false.2

§ 457. The Application-Oath: how far Conclusive.

The oath is in all cases prima facie evidence that the applicant is the first and true inventor, and in uncontested cases in the Patent Office is conclusive upon all the matters to which it relates. Where rival applications are filed, each containing the same oath made by its own applicant, the contradictory affidavits nullify each other, and the question is open to further proof without bias toward either party.1 The averments of the oath concerning the grant of foreign patents for the same invention to the applicant add nothing to the force of the oath as evidence of the originality of his invention.2

§ 456. 1 That a false oath of citizenship is an irremediable defect and avoids the patent, see Child v. Adams (1854), 3 Wall. Jr. 20; 1 Fisher, 189.

2 That after a patent has once issued the Patent Office cannot inquire whether the application-oath were true or false, see Ex parte Gillen (1877), 11 O. G.

419.

§ 457. In Little v. Lillie (1876), 10 O. G. 543, Duell, Com. (544) "When an application is made the party is required to make oath that he verily believes himself to be the first and original inventor; and this is received as evidence of the fact, and renders the patent, when granted, prima facie evidence that the patentee is the first and original inventor. (Philadelphia & Trenton Railroad v. Stimpson, 14 Pet. 456; Corning v. Burden, 15 How. 270; Parker v. Stiles, 5 McLean, 60.) When, however, a party claims an invention which is described and may be claimed by another applicant or patentee, the oath of one nullifies

that of the other, and it becomes a mat

ter for further proof as to which one is, in contemplation of law, the first and original inventor. It is for this purpose that an interference is declared, not to determine the patentability of the invention, but whether the party claiming it is the person designated by the statute as the originator of the inven tion. This distinction is observed throughout all the statutes on this subject."

See also Bartholomew v. Sawyer (1859), 1 Fisher, 516; 4 Blatch. 347. 2 That the affidavit of an applicant concerning his foreign patents is only presumptive evidence that he is the real inventor, see Ex parte Nagel (1880), 17 0. G. 198.

That the oath of an applicant that another had obtained a patent in England for the same invention, as one communicated to him, is conclusive evidence that the applicant is the sole inventor until the contrary appears, see Von Alteneck v. Thomson (1880), 17 O. G. 571.

§ 458. The Application-Oath: Letters-Patent not Invalidated by its Omission.

Although the oath is one of the essential portions of the application, and cannot be dispensed with by the Patent Office, yet a patent granted without an oath is not on that account invalid.' The presumption that all things were rightly done in the department is sufficient to sustain it in all suits, except those which are instituted directly for its repeal.2

SECTION IV.

OF THE APPLICATION: ITS SUBJECT-MATTER.

§ 459. Subject-Matter of Application must be a Patentable

The subject-matter of the application for a patent must be a patentable invention. It must be a concrete art or instru

ment, embodying an idea of means conceived by the creative faculties of the inventor, belonging to one of the six classes enumerated in the statutes, and being new, useful, and not already abandoned by the inventor to the public.1 For nothing less than this can any valid patent be granted; and, of course, for nothing less can any application for a patent be entertained. These characteristics of a patentable invention have been sufficiently discussed, and therefore here demand only this passing reference. There are, however, a few additional provisions of the law, particularly relating to the scope of an application for a patent, which require our present notice. These may be grouped into: (1) Rules which compel an applicant to limit his application by the Claims of patents

127; affirming s. c. in 20 Blatch. 430; and he is further required to illustrate 12 Fed. Rep. 111.

That the recital in a patent that the oath was taken is conclusive until fraud is shown, though the patent issues on an amended application, see Hancock Inspirator Co. v. Jenks (1884), 21 Fed. Rep. 911; Seymour v. Osborne (1870), 11 Wall. 516. § 459. In Starr v. Farmer (1883), 23 O. G. 2325, Teller, Sec.: (2327) "The question whether an invention has been perfected and is capable of useful operation has to be determined in the consideration of every application for a patent; for until a conception has been shown to be complete and capable of useful adaptation, requiring no further invention to make it practically operative, a patent therefor cannot be legally issued. To provide the means from which the Commissioner of Patents may decide upon the patentability in this respect of a discovery, the law prescribes that an applicant for a patent shall file a written description of the invention, and of the manner and process of making, constructing, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains to construct and use the same;

it by drawings. Patents are constantly issued for inventions the utility and completion of which are not shown otherwise than by the specifications and drawings, the cases being exceptional in which the applicant is required to present an operative model to demonstrate his discovery. Where an original discoverer has made a formal application for a patent in conformity with the requirements of the law, has furnished a description of the invention, which with the drawings and the model, if required by the Commissioner, is a sufficient disclosure to a person skilled in the art of the practical utility of an invention which in other respects is patentable, and has evinced by diligent prosecution of his application a faith in its importance, it is not necessary, to entitle him to be considered an inventor, that he shall prove actual reduction to practice. It is enough, if he has shown, in the manner prescribed in the law, that the invention is perfect and capable of useful operation."

That where the invention is obviously impracticable the application must be rejected, see Ex parte De Bausset (1888), 43 O. G. 1583.

that he has previously obtained; and (2) Rules which govern the joinder of separate inventions in a single application.

§ 460. Subject-Matter must not be an Invention already Patented in the United States by the same Inventor.

Two patents cannot be granted by the United States to the same inventor for the same invention. Its power to create a monopoly is exhausted by the first grant, and hence the later patent must be absolutely void.1 That the application on which the later patent is based was of earlier date than that in pursuance of which the first patent issued is immaterial.2 The government, having once conferred upon the inventor all it had to bestow in reference to that invention, cannot add to his exclusive privilege by a repetition of its granting act; and therefore, where the scope of both the earlier and the later patents is the same, the former is the only one by which the rights of the inventor are secured. And since no application for a patent can be proper where the patent, if allowed, would be invalid, an application for a patent for any invention covered by a previous patent to the same inventor is prohibited.

§ 461. Subject-Matter may be an Invention already Patented in the United States by a Rival Inventor, or in a Foreig Country by the same Inventor.

This rule applies, however, only where the same inventor seeks an additional patent from the United States. The later

§ 460. That there cannot be two concurrent American patents to the same inventor for the same invention, and that where two such patents are issued the last is void, see McMillin v. Rees (1880), 1 Fed. Rep. 722; 17 O. G. 1222; 5 Bann. & A. 269; Ex parte Locke (1879), 16 O. G. 1140; Ex parte Langlois (1878), 14 O. G. 84; Ex parte Cottrell (1876), 9 O. G. 495 ; Jones . Sewall (1873), 3 O. G. 630; 3 Clifford, 563; 6 Fisher, 343; Suffolk Co. v. Hayden (1865), 3 Wall.

315; Treadwell v. Bladen (1827), 4 Wash. 703; 1 Robb, 531; Morris v. Huntington (1824), 1 Paine, 348; 1 Robb, 448; Odiorne v. Amesbury Nail Factory (1819), 2 Mason, 28; 1 Robb, 300; Barrett v. Hall (1818), 1 Mason, 447; 1 Robb, 207.

2 That a later patent to the same inventor is void, though its application were earliest, see McMillin v. Rees (1880), 1 Fed. Rep. 722; 17 O. G. 1222; 5 Bann. & A. 269.

application of a rival inventor assumes that no monopoly has been created in favor of his adversary by the former patent, that patent being invalid because granted to one who was not, as the law requires, the original and first inventor. The application of the same inventor for a re-issue of his former patent, so amended as to protect his actual invention, is merely an endeavor to secure in express terms the privilege which the government has already ambiguously bestowed.2 And where the same inventor who has obtained a patent from a foreign state subsequently makes an application for a patent in the United States, the monopoly he seeks is one essentially distinct in territorial limits from that which he has previously received, and therefore one which may yet be conferred upon him by the government within whose gift it still resides. It is when the granting of a patent on the present application would be the mere empty repetition of the granting act, as distinguished from the clearer definition of a monopoly already in existence, and from the creation of a new monopoly either in favor of the same inventor or his rival, that the application is improper and must on that account be refused.

§ 461. That a patent issued to a rival inventor is no bar to a later one to the true inventor, see Hibbard v. Richmond (1880), 17 O. G. 1155.

That where two patents to different inventors cover the same general invention the later will, if possible, be construed to claim only the new matter appearing therein, see Richardson v. Noyes (1876), 10 O. G. 507.

2 That upon the surrender of a former defective patent a later one may be granted and be valid, see Jones v. Sewall (1873), 3 O. G. 630; 3 Clifford, 563; 6 Fisher, 343.

3 That a prior foreign patent does not invalidate though it limits the term of a subsequent American patent, see Dolbear v. American Bell Telephone Co. (1888), 126 U. S. 1; 43 O. G. 377.

That a prior foreign patent does not prevent the issue of a broader American patent, see Faure v. Bradley (1888), 44 O. G. 945.

That the grant of surreptitious foreign patents to others cannot affect the rights of the real inventor in the United States, see Kendrick v. Emmons (1875), 2 Bann. & A. 208; 9 O. G. 201.

That under section 8, act of 1836, no American patent could be granted if the foreign patent issued more than six months before, see Cornely v. Marckwald (1883), 17 Fed. Rep. 83.

That a foreign patentee seeking an American patent is not compelled to adhere to the precise subject-matter of his foreign patent, see Ex parte Siemens (1877), 11 O. G. 969.