and, if it has been, that, according to his knowledge and belief, the same has not been in public.use in the United States for more than two years prior to the application in this country; and he must also name such foreign country and set forth the number and date of the patent:

The grounds upon which the request are based are (1) that in the original proceedings on which the patent was granted the applicant must have complied with all the requirements of the law and satisfied the Commissioner on all points on which the law required that he should be satisfied; (2) that the phraseology of Rules 39 and 45 restricts the applicability of the former rule to original applications; and (3) that it is suggested in the foot-note to Form 18 that the oath relating to foreign patents may be incorporated into the oath attached to the original application, but is not suggested that it may be incorporated into the oath attached to the reissue application.

It is provided in section 4916 of the Revised Statutes, which relates to reissues, that—

The specifications and claims in every such case shall be subject to revision and restriction in the same manner as original applications are.

This statutory provision is a valid basis for the requirement of the statement prescribed in the old rules (Forms 23 and 24) showing that the applicant believes himself to be the original and first inventor. The same statutory provision justifies the corresponding requirement in the forms of oaths annexed to the new rules (Forms 19 and 20).

It is provided in section 4887 of the Revised Statutes that

No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented, or caused to be patented, in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. This authorizes the requirement of old Rule 91 that

An applicant whose invention has been patented abroad should state the fact that a foreign patent has actually been obtained, giving its date, and, if there be more than one, the date of each.

It also justifies the requirements of new Rule 39.

One object of the new rule is to enable the public to ascertain from the face of the patent what its duration is to be. The rule ought certainly, in cases of original applications, to be rigidly enforced, so that if the American patent shows no foreign patent the presumption that there is none may be well founded. I think that the reissue patent ought to exhibit the facts relating to foreign patents with equal certainty and for kindred reasons. But the applicant suggests that the presump. tion afforded by the action of the Commissioner on the original applica. cation under old Rule 91 is sufficient; that the absence of any reference to foreign patents in the original patent is evidence that the Commissioner was satisfied that none had been granted. The same reasoning would exclude from the reissue oath the averment that the applicant was the first and original inventor. I think that the facts relating to foreign patents which are to appear in the reissue patent ought to ap

pear in the reissue oath; and that to secure accuracy of statement the applicant for reissue should show whether foreign patents have or have not been obtained.

The suggestion that the phraseology of Rules 39 and 45 points to a different meaning of Rule 39 does not seem to me to be well founded. It is true that the foot-note to Rule 45 suggests an incorporation of the statement of Rule 39 into the oath prescribed in the first paragraph of Rule 45; but then the second paragraph of Rule 45 makes the original oath prescribed in the first paragraph a part of the reissue oath prescribed in the second paragraph; and when the statement of Rule 39 is incorporated into the original oath it is to go with that into the reissue oath. The foot-note to Form 18 should refer to Rules 17 and 19. The motion is overruled.

The extent to which a case decided by the Commissioner is to be accepted as res judicata is not determined by the words used where they are narrower than the substance of the decision.

APPEAL from Primary Examiner.

IMPROVEMENT IN BOOT-HEELS.

APPLICATION of Henry Pennie filed August 8, 1879.

Mr. A. V. Briesen and Mr. C. E. Foster for applicant.

PAINE, Commissioner:

The Primary Examiner having required a division of the application on the ground that it embraced several distinct independent inventions, the Acting Commissioner affirmed his decision on appeal. The applicaut subsequently amended his application. But the Primary Examiner decided that he had not, by such amendment, complied with the requirements of the Acting Commissioner's decision, and that a division of the application was still necessary. The applicant appeals from this latter decision.

The only question to be considered on this appeal is whether the applicant has complied with the requirements of the Acting Commissioner. The appellant suggests that the Acting Commissioner's decision that certain features claimed were not parts of an invention designated as embracing a solid heel was not a decision that they were not parts of an invention embracing a hollow heel; and that, inasmuch as the solid heel has been by amendment excluded from the specification, drawing, and model, and the hollow heel only retained, the question now presented is not res judicata. It is true that the Acting Commissioner did, in terms,

only hold that the parts in question constituted inventions distinct from that described as embracing a solid heel. But it seems clear, upon an examination of his decision and of the Examiner's answer, to which he refers, that the difference between the solid and hollow heel did not af fect the applicability of his decision to an invention embracing the latter form. The extent to which a case decided by the Commissioner is to be accepted as res judicata is not determined by the words used where they are narrower than the substance of the decision.

The decision of the Primary Examiner is affirmed.

EX PARTE MANN.

Decided February 6, 1880.

17 O. G.. 330.

1. A foreign patent granted after the patentee files his American application, but before he obtains his American patent, does not limit the term of the American patent.

2. A foreign patent granted on the day on which an American application is filed is not, in legal intendment, granted before the American application is filed, and does not restrict the term of the American patent.

3. An English patent is not granted, in the sense of sections 4886 and 4887 of the Revised Statutes, until the completed specification is enrolleu.

REQUEST by the Primary Examiner for instructions.

PAINE, Commissioner:

The application was filed January 23, 1878, and on the same day an English provisional specification for the same invention was filed as a communication from this applicant in the English patent office. The provisional patent was sealed March 19, 1878. The completed specification was enrolled July 20, 1878.

The questions presented are-(1) whether an English patent granted after the patentee files his American application, but before his American patent is granted, limits the term of the American patent; (2) whether an English patent granted on the day on which the patentee files his American application limits the term of his American patent; (3) whether within the meaning of sections 4886 and 4887 of the Revised Statutes the English patent is granted on the day on which the provisional specification is enrolled.

The following are the statutory provisions:

SECTION 4886. Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.

SEC. 4887. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years.

The last clause of section 4887, standing alone, is evidently susceptible of such an interpretation as would restrict the American patent to the term of the foreign patent if the American patentee had obtained a foreign patent after his American application was filed, but before his American patent was granted. Such is its meaning if the word "previously" refers to time anterior, not to the filing of the application, but to the granting of the patent. This may be the more obvious meaning of the clause when separated from its context. But the statute as a whole shows, I think, that the word "previously" here used refers to time prior to the filing of the application. A literal construction of the clause would restrict the American patent to the term of the foreign patent granted after the American application was filed, but before the American patent was granted, even if the American patentee had no connection directly or indirectly with the foreign patent. So construed as to limit the American patent to the term of the foreign patent granted after the American application is filed, the paragraph is obviously repugnant to section 4886, which does not permit a foreign patent to bar the grant of an American patent for seventeen years to the foreign patentee or to any one else if the foreign patent is not granted until after the Ameri. can application is filed.

If an American patent is not restricted to the term of a foreign patent granted to a different patentee after the American application is filed, certainly an American patent should not be restricted to the term of a foreign patent granted to the same patentee after the American application is filed. For if an American applicant is not to be prejudiced by a foreign patent to an independent inventor he clearly ought not to be prejudiced by a foreign. patent to himself.

The effect of the two sections taken together seems to be this: It is first provided, in section 4886, that a foreign patent granted before the invention was made by the American applicant shall bar an American patent; and although there is no presumption that an invention not shown to have been made in a foreign country was not made before the application was filed, so also is there no presumption that it was made on any particular day before the filing of the application, and therefore, in the absence of legitimate proof of an earlier specific date, its date is fixed by the date of filing the application. It is then provided, in the first paragraph of section 4887, that this bar shall be of no effect as against an American applicant who is a foreign patentee of the same invention; and, finally, in the last paragraph of section 4887, it is provided that in such case the foreign patent shall limit the term of the American patent.

If the last clause of section 4887 is to be literally construed, the attempt, as a part of the practical execution of the law, to refer in American patents to foreign patents granted before and up to their dates would of course be ineffectual.

There is nothing in the character of this legislation to justify any strain on the ordinary rules of construction for the purpose of extending its effect. Its object seems to be to relieve citizens of the United States from monopolies from which foreigners are exempt. But in that view the statute is a failure. Its object is only effected when the foreign monopoly is secured first. If the invention is absolutely free in every other country, or if the foreign patent is obtained last, the monopoly here is complete.

The result is, I think, that a foreign patent granted after the patentee files his American application, but before he obtains his American patent, does not limit the term of the American patent.

If the English patent had been granted on the 23d of January, 1878, the day on which the American application was filed, the English patent would not have limited the term of the American patent, for it is only when the English patent is granted before the American application is filed that such limitation takes effect. And if the law, disregarding fractions of a day, makes the grant of the English patent operative during the whole day on which it is made, from the earliest moment of that day, so does it regard the American application as on file from the earliest moment of the day on which it is filed. In the eye of the law, therefore, the English patent is not granted before the American application is filed; but the patent is granted and the application is filed simultaneously. Of course there is a difference in absolute time between the commencement of the English day and the commencement of the American day; but that is not to be considered.

An English patent is not granted in the sense of sections 4886 and 4887 of the Revised Statutes until the completed specification is enrolled. In this case the English patent was not granted on the day of enrolling the provisional specification, but on the 20th of July, 1878, the day of filing the completed specification.

The applicant is entitled to a patent for seventeen years. It is not necessary that his American patent should contain any reference to the date of his English patent.

LOVEJOY v. HILL.

Decided January 17, 1880.

17 O G., 331.

1 Under Rule 59, 1878, the Examiner of Interferences called attention to certain patents which, in his opinion, were complete answers to the subject-matter in isThis opinion was transmitted to the Primary Examiner with instructions to dissolve the interference and reject the applications if he concurred with the

sue.