The applicant supposes the provisions of the law, as construed in the former decision, to involve a discrimination between citizens who are applicants for patents and foreign applicants; but this is erroneous. The discrimination is not between foreign applicants and American ap. plicants, but between inventions made in the United States and inventions not made in the United States. An invention made in the United States by a citizen has no advantage over an invention made in the United States by a foreigner. An invention made in a foreign country by a citizen of the United States has no advantage over an invention made by a foreigner in a foreign country. But an invention made by a foreigner in the United States has the same advantage over an invention made by a citizen of the United States in a foreign country which an invention made in the United States by a citizen has over an invention made abroad by a foreigner. The law is absolutely impartial as between foreign and domestic applicants, and so is the decision in the case of Lauder v. Crowell.

It is said that the provisions of section 4904 of the Revised Statutes are mandatory in such a sense as to compel the declaration of an interference between two pending applications claiming the same invention in all cases. The language of the section is this:

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the Primary Examiner to proceed to determine the question of priority of invention.

If this statutory provision compels the Commissioner to declare an interference in every case in which an application is filed claiming an invention claimed in another pending application, then it also compels him to declare an interference in every case in which an application is filed claiming an invention claimed in an unexpired patent; for the language applicable to the two classes of cases is precisely the same. The interference is to be declared "whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent." But it would be impossible to say that the statute requires an interference to be declared between an application claiming an invention and every patent less than seventeen years of age claiming the same invention. On the contrary, the first thing to be done is to reject the application on the unexpired patent; and an interference is only to be declared when the applicant neutralizes the presumption of priority arising from the date of the patent by an affidavit showing that he himself made the invention before the filling of the patentee's application.

If two applications are pending claiming an invention made by each applicant in the United States, an interference will be declared because, while each application is prima facie evidence that the invention was made by the applicant as early as the date of his application, it affords

no presumptive evidence that it was not made at an earlier date, nor that the applicant will not be able to establish an earlier date in the Patent Office; and, in the absence of any evidence to the contrary, it is presumed in every case that the invention claimed was made in the United States. If an application is executed in a foreign country, and states the applicant to be a resident of such foreign country, the presumption is that the invention was made abroad, and if the applicant admits that the invention was made abroad, that, of course, is conclusive. In such case the presumption is, in the absence of special circumstances, that the date of the filing of the application is the earliest date which can be given to the foreign invention in the Patent Office; for mere invention abroad is no invention in the United States, and is no bar to a patent for the same invention subsequently made in the United States. This presumption must be overcome by an affidavit showing something more than mere foreign invention in order to warrant a declaration of interference.

If there is nothing in the case of Thomas to conflict with the case presented by Reese's application beyond the single fact that Thomas made the invention in England before the filing of Reese's application, Thomas cannot be the first inventor in the sense of our law, and an interference would be a fruitless, not to say a puerile, proceeding.

But the attorney of Thomas submits an affidavit embracing two substantive statements: (1) that Thomas published his invention in a trade newspaper styled "Iron," and circulated in England and in the United States, "not later than the middle of May, 1879,” and (2) that his invention " was known in this country anterior to the earliest record date of the said Thomas as his invention by his agent to work the Thomas invention in this country." He also refers, in an unsworn paper, to certain English patents of Thomas prior in date to the filing of Reese's application, and also to certain United States patents of Thomas prior and subsequent in date to the filing of Reese's application.

All questions as to the formality of this affidavit are decided in favor of the appellant. It will, for the purposes of this motion, be accepted as equivalent to the affidavit of Thomas, and the averment of the publi cation in England and of knowledge in this country will be regarded as referring to the invention in controversy. For the purposes of this motion Thomas is therefore assumed to be able to prove that he published the invention in question in England as early as the middle of May, 1879. That single fact, if established, will defeat the applicationof Reese, but it will not carry the invention of Thomas back of the date of his own application. It will constitute no ground for an interference between Thomas and Reese. Whether it will or will not defeat the application of Thomas is a question for future consideration. This disposes of the first reason for an interference suggested in the affidavit.

For the purposes of this motion it will also be assumed that Thomas is able to prove, what his attorney asserts, "that his said invention was

known in this country anterior to the earliest record date of the said Reese as his invention by his agent to work the Thomas invention in this country."

If an inventor, having conceived his invention in a foreign country, comes to the United States to complete it, and with due diligence reduces it to practice in the United States, he may, in an interference, carry back the date of his invention to the day of his arrival in the United States. If, having conceived it and reduced it to practice abroad, he comes to the United States for the purpose of introducing it to public use, or of obtaining a patent in the United States, he may, in an interference, fix the date of his completed invention on the day of his arrival in the United States. If, having conceived it and reduced it to practice abroad, he communicates it to an agent in a foreign country aud sends his agent to the United States to obtain letters patent or to introduce it to public use, he may, in an interference, fix the date of his invention on the day of his agent's arrival in the United States. If, having conceived it and reduced it to practice in a foreign country, he communi. cates it to an agent in the United States for the purpose of obtaining letters patent or of introducing it to public use in the United States, he may, in an interference, carry the date of his invention back to the day in which it was fully disclosed to such agent in the United States. In each of these cases the application will be subject to forfeiture by abandonment, as in other cases.

An interference ought to be instituted between Thomas and Reese to afford Thomas an opportunity to establish a date of invention earlier than that of the filing of his application by proving such an importation of his completed invention in the United States as will secure to him an earlier date.

Inasmuch as the affidavit now presented was not submitted to the Primary Examiner, his decision is not formally reversed; but the application of Reese is withdrawn from issue, and the case is remanded to him for reconsideration and for further action in conformity with the conclusion herein stated.

EX PARTE NAGEL ET AL.

Decided January 15, 1880.

17 O. G., 193.

1. An appeal from a decision of the Primary Examiner rejecting an application as anticipated by an unexpired patent cannot be taken to the Commissioner, but only to the Examiners-in-Chief.

2. The law makes no distinction between citizens and foreigners in the Patent Office; but it does make a wide distinction between inventions made in the United States and those made in a foreign country, whether made by citizens of the United States or by foreigners.

3. An application executed in a foreign country, and showing the applicant to be a citizen or resident of a foreign country, is presumptive proof that the invention was made in a foreign country; but it is not conclusive proof of that fact either to determine or to prevent an interference.

4. An affidavit made by an applicant, in compliance with the rules, showing that he made the invention and had obtained foreign patents therefor, is presumptive proof that he is the original inventor and has obtained foreign patents for the invention; but it is not conclusive evidence of such facts either to determine or to prevent an interference.

5. Such proof may be overcome by showing that the patent mentioned in the affidavit was never in fact issued, or by showing that, if issued, it did not contain the invention in question, or by showing that the applicant, although he was the patentee, was not the inventor.

6. It may be that an affidavit setting forth, under the rules, that the inventor has obtained for his invention a foreign patent therein designated will estop the applicant from claiming, as against the public, an earlier foreign patent; but it cannot estop the Office from referring to such earlier patent as a ground for refusing an award of priority or the grant of a patent to another applicant.

7. In no case, under the rules, does a mere prima facie showing of priority on the record in favor of one applicant prevent another applicant from securing an interference by the interposition of the proper affidavit.

8. Section 4904 of the Revised Statutes does not require the Commissioner to declare an interference whenever an application is filed in which is claimed an invention which is also claimed in an unexpired patent; on the contrary, as a rule, an application is to be rejected if it contains a claim embraced in an unexpired patent. It is only when the applicant makes oath that he made the invention before the filing of the patentee's application that an interference is declared between an original application and an unexpired patent.

9. Where the record exhibits conclusive proof in favor of either party, an interference is a frivolous and unwarranted proceeding.

APPEAL from the Primary Examiner.

APPLICATION of August Nagel and Reinhold Kaemp filed September 20, 1878.

Messrs, Munson & Philipp for appellants.

PAINE, Commissioner:

Nagel and Kaemp filed their application September 20, 1878. The first claim has been rejected upon reference to the patent of J. B. Toufflin, dated March 18, 1879. Toufflin's application was filed October 15, 1878. His patent shows, but does not claim, the invention claimed by the appellants. The appellants admit that they made the invention in a foreign country. In the affidavit annexed to their application they state

That they are subjects of the German Emperor, and that a letters patent has been granted for in France, 16th, in Belgium, 18th October, 1877; in Great Britain, November 5, 1877; in Italy, December 31, 1877; in Austria, March 6, 1878, and applied for in Germany, October 8, 1877; Denmark, February 2, 1878.

Toufflin's patent shows that he is a resident of Paris, in France, and that his invention was patented in England July 30, 1878. If it shows

presumptively, it does not show conclusively, that his invention was made in a foreign country, and not made in the United States.

Nagel and Kaemp appeal to the Commissioner from the decision of the Primary Examiner rejecting their first claim on this reference upon the following grounds:

First. That the said patent to Toufflin does not constitute a legal bar to the grant of the patent prayed for, because it does not prove that the invention was known to or used by others in this country, that it was patented in any country, or that it was described in a printed publication before it was made by applicants, or that it was in public use or on sale for more than two years before their application, or that it has been abandoned.

Second. That, as no statutory bar exists to the grant of the patent prayed for, the Examiner errs in refusing the same.

This claim, in its present form, has been rejected several times, and would seem to be ripe for appeal to the Examiners-in-Chief; but, whether it is so or not, both the rules and the law require an appeal from a decision of the Primary Examiner rejecting the application on an unexpired patent to be taken to the Examiners-in-Chief. Inasmuch, however, as the questions involved in this appeal could be brought before the Commissioner by a motion to dissolve an interference, it may be better to state now the principles which will govern the disposition of such a motion, if it shall be made.

The law makes no distinction between citizens and foreigners in the Patent Office; but it does make a wide distinction between inventions made in the United States and those made in a foreign country, whether made by citizens of the United States or by foreigners. The appellants are of the opinion that it is shown by the record that their invention and that of Toufflin were made in foreign countries, and that theirs was patented abroad before Toufflin's was patented abroad, and that these facts excluded the possibility of an award of priority to Toufflin as the result of an interference, if one should be declared, so that a proceeding in interference would necessarily be fruitless, and therefore unwarranted.

But there is in this case no conclusive proof that Toufflin's invention was made in a foreign country; nor has anything been suggested which would estop him from proving that he made it in the United States before it was patented abroad to the appellants. The prima facie proof of foreign invention furnished by the circumstance that his application was signed abroad and shows him to be a foreigner cannot preclude him from showing that in fact he made the invention in the United States. There is no conclusive proof that the appellants ever obtained as inventors any foreign patents for the invention involved in the claim under consideration. There is prima facie proof to that effect in the affidavit annexed to their application. But that might be controverted by showing that the patents mentioned in the affidavit were never in fact issued, or by showing that, if issued, they did not contain the invention