inventor then had a right to obtain, because it requested that the patent might issue to the assignee, there was no sound reason for restraining the assignment to the inchoate interest and requiring a further transfer of the patent. In the present case the patent had been allowed and ordered to issue before the assignment was made, and the assignment refers to that fact and to the fact that the purchase is of all the right, title, and interest of Heath in the invention "in consequence of the grant of letters patent therefor." The defendant does not set up any right derived from Decker. Under the above decision it must be held that when the patent issued to Heath the legal right to the property it created became vested in the company on the recording of the assignment to them.

The plaintiff is entitled to the usual interlocutory decree for an account and a perpetual injunction.

[United States Circuit Court-Northern District of New York.]

THE METAL STAMPING COMPANY v. CRANDALL.

Decided October Term, 1880.

18 O. G., 1531.

1. A bill of revivor will not lie when filed by the assignee of the original complainant, as the right to file such a bill is confined to cases of representation of the party deceased by the mere operation of law.

2. In case of the death of an original complainant and assignor the proper course for the assignee is to file a supplemental bill.

3. The bill of an unincorporated company should be prosecuted in the names of the individual partners, and not in the name of the company.

Mr. A. v. Briesen for the complainant.

Mr. R. H. Duell, Mr. George W. Hay, and Mr. Charles H. Duell for the defendant.

WALLACE, J.:

This cause comes here upon the bill of revivor filed by the complainants, the plea of the defendant, the replication of the complainant, and the proofs taken under the issue thus raised.

The original bill. was filed by Charles Schuessler, March 24, 1879, to restrain the infringement of letters patent for an "improvement in buckle-fastenings," originally issued to Robert Meyers on the 29th day of January, 1867, assigned by him to Schuessler, May 8, 1874, and reissued to Schuessler, as assignee of Meyers, May 23, 1876. There was an answer and replication in the original suit, and proofs were taken therein; but before a hearing, and on the 6th day of September, 1879, Schuessler died.

The proofs show that March 16, 1874, Schuessler and one Walters entered into an agreement to become partners under the name of the Metal

Stamping Company, by which, among other things, they agreed that all inventions or improvements made by either party, or for which either party should obtain letters patent, should be owned by the parties jointly and equally.

November 27, 1877, one Loercher was by articles of agreement admitted as a partner into the firm of the Metal Stamping Company, the agreement reciting that Loercher was to have a fifth interest in the assets and business of the firm as manufacturers under various letters patent, including the Meyers reissued letters patent. By a further agreement made between the partners August 13, 1879, Schuessler transferred to the Metal Stamping Company the sole and exclusive right and privilege to manufacture, use, and sell the invention and improvement described in the letters patent during the life of the partnership, and the agreement of transfer also provided that upon the dissolution or extinction of the partnership the letters patent should only be assigned by the joint signatures of the partners or their legal representatives.

It thus appears that when the original bill was filed Schuessler held the legal title to the patent in question; but the equitable title to the patent and the right to recover for damages by reason of its infringement since its assignment to Schuessler was in the Metal Stamping Company, and by the instrument of August 13, 1879, the legal title to the patent became vested in the Metal Stamping Company, because after that nothing remained in Schuessler which he could transfer without the participation of the other members of the firm.

The case thus presents the single question whether a bill of revivor will lie to introduce the Metal Stamping Company into the controversy, and I am of opinion that it will not, because the complainant's interests have not been acquired by the death of Schuessler, but by the transfers and agreements made between him and the complainants. After the complainants acquired the legal title to the patent they were in a posi tion to file a supplemental bill. Story Eq. Pl., sec. 346. The right to file a bill of revivor is confined to cases of representation of the party deceased by the mere appointment and operation of law. Story Eq. Pl., sec. 354. On the other hand there may be a priority of right and title under the deceased by a transfer or conveyance of that right to a person who is not in by mere operation of law, and is not the heir or personal representative of the deceased, and in such a case a bill of revivor will not lie. 2 Barb. Ch. Practice, 51.

It is proper to suggest that as the Metal Stamping Company is not a corporation, but the name of a partnership, neither a bill of revivor nor a supplemental bill can be prosecuted except in the names of the individual partners. This point has not been raised, but should not be overlooked if further proceedings are taken.

Judgment is ordered for the defendant upon the plea.

[United States Circuit Court-Southern District of New York.]

MILLER ET AL v. BUCHANAN ET AL.

Decided August 21, 1880.

18 O. G., 1532.

Messrs. Hatch & Stem for the plaintiffs.
Mr. Samuel S. Boyd for the defendants.

BLATCHFORD, J.:

The first exception specifies that the matter excepted to is impertinent, not that it is scandalous. The bill alleges that the decision in the suit against Force was made "after full consideration." The answer denies that it was made after full consideration, and then proceeds to allege that it was, "on the contrary," made under certain alleged circumstances, which, if proved, would go to show that it was not made after full consideration; but there is nothing in the circumstances alleged which make the allegation scandalous, or which contains any imputation on the court. The matter excepted to is neither impertinent nor scandalous.

The second exception is for insufficiency, and seems to be based on the idea that while the bill alleges substantially that the defendants have used the process claimed in the first claim of the patent the answer does not specifically deny that allegation; but the answer expressly denies that the defendants have practiced the invention described in the first claim.

The exceptions are overruled, with costs.

INDEX

Court cases are designated by an asterisk (*)—Decisions of the Secretary of the Interior by a dag-
ger (t).1

ABANDONMENT. See Construction of Statutes, 8, 9; Diligence, 3; Practice in the Pat-
ent Office, 22.

1. If an inventor abandons or forgets his invention before its public use, it may
become the property of a subsequent inventor. Abandonment, in the sense in
which the term is here used, is the cessation of all effort to confer upon the
public the benefits of the invention. Such abandonment may be voluntary
and absolute, as when the invention is deliberately thrown aside with a pur-
pose never to resume it; but it may also occur when the invention is thrown
aside, not with a purpose never to resume it, but without any purpose to re-
sume it. Farmer v. Brush, 5.

2. The question of abandonment is not one of mere mental operation. Proof of a
mental purpose to give the public, at some future time, the benefit of the com-
pleted invention, unaccompanied by corresponding acts or words, will not nec-
essarily overcome the presumption raised by acts of a party tending to show a
purpose to abandon the invention. Id.

3. A mere delay of two years in the application for a patent is not evidence of
abandonment; but neglect to confer the benefits of the invention upon the
public, whether it is or is not accompanied by neglect to apply for a patent, is
evidence of abandonment. Id.

4. An inventor may abandon or forget his invention, and then resume or recall it
before another makes the invention; but his rights will not, in such case, re-
late back to his original invention, so as to give him the benefit of its date as
against rival inventors. Id.

5. Where an applicant describes and claims a preferred species, but his application
and patent refer to a second species described in a prior rejected or abandoned
application, and such reference, although repeated in the first reissue, is wholly
omitted in the second, the facts constitute evidence tending to prove an aban
donment of the right to claim the second species in a subsequent application
for a separate patent. Ex parte McClintock, 41.

6. An application filed April 5, 1845, and withdrawn by applicant, together with a
portion of his fee, July 9, 1847, as provided by section 7 of the act of July 4,
1836, and not renewed or attempted to be renewed, cannot be now revived, but
was abandoned by operation of section 35 of the act of July 8, 1870. Ex parte
Cryer, 89.

7. Where an interference is dissolved by the Commissioner, and both interfering
applications are rejected, an appeal to the supreme court of the district by one
applicant does not relieve the other from the operation of the statutory pro-
vision that a failure to prosecute an application within two years after any ac-
tion thereon shall be regarded as an abandonment of the application unless
the delay is shown to have been unavoidable. Cruikshank v. Strong et al., 102.
8. Woodbury filed a caveat May 28, 1846, and his application June 3, 1848. The
latter was rejected February 20, 1849, and the fee withdrawn in October, 1852.
Under the act of 1870 the application was renewed within the six months al-
lowed, and the patent granted April 29, 1873. No serious attempt having been

ABANDONMENT-Continued.

made to procure a re-examination of the old application, or to renew it, for a
period of more than twenty years, though during more than sixteen years of
that time the improved device had been in common use with the knowledge of
the patentee, it was held that the invention was abandoned before the renewed
application was made. * Woodbury Patent Planing Machine Company v. Keith,
428.

9. The action of the Commissioner of Patents in granting a patent, under section
35 of the act of 1870, is not conclusive on the question of abandonment. *Id.
10. Abandonment, although a matter of intention on the part of the inventor, need
not be expressed in words, but may be gathered from the acts of the inventor.
* Id.

11. Abandonment may occur as well after an application has been made and re-
jected or withdrawn as before, and evidenced in the same manner. *Id.
12. Circumstances may arise which will excuse delay in prosecuting an application,
such as extreme poverty or protracted sickness; but in the absence of any such
excuse entire inaction on the part of the inventor, coupled with long-continued
public use without complaint or remonstrance on his part, constitute aban-
donment to the public. *Id.

13. The rule of the Patent Office that an application rejected, or not prosecuted
within two years after its rejection or withdrawal, should be conclusively pre-
sumed to have been abandoned, was not a statutory rule, nor inflexible in its
application, but was frequently departed from and abolished before the act of
1870, and was no bar to a movement on the applicant's part to have his appli-
cation reinstated after withdrawal, or to have it re-examined, or take an appeal,
or file a new one, and cannot be regarded as an adequate excuse for a long
delay. *Id.

14. In both the courts and the office abandonment is an ill-favored finding, and
cannot be presumed, but must be conclusively proven. Hockhausen v. Weston,
185.

ABANDONED APPLICATION. See Abandonment.

1. An abandoned or rejected application is not a public document; and if a refer-
ence to it in a subsequent patent granted to the applicant removes from it the
seal of secrecy in the Patent Office, it does not render it accessible to the pub-
lic, so as to furnish those skilled in the art such information as will enable
them to practice the invention, and is not such a description as is required by
section 4888 of the Revised Statutes. Ex parte McClintock, 41.

ABANDONED EXPERIMENTS. See Delay 1; Experiments.

1. Unsuccessful and abandoned experiments cannot avail to invalidate a patent to
an inventor who has disclosed to the public an invention the utility of which
has been demonstrated by its general adoption. *Roberts et al. v. Schreiber, 557.
2. The cause that works successful results cannot be the same as that exhibited
in abandoned experiments; and holding the latter up as anticipations of the
former is but an illustration of what is very common-an attempt to defeat a
meritorious invention by proof that something similar had been previously
known, though it had never been perfected, and had never been any useful
contribution to human knowledge or convenience. *Id.

3. A patent will not be defeated by evidence of prior similar devices which were
of an experimental character simply, and which were subsequently destroyed.
* Whittlesey et al. v. Ames et al., 593.

ACQUIESCENCE. See Injunction, 22; Priority of Invention, 8.

AFFIDAVITS. See Evidence, 1; Ex parte Cases, 1; Injunction, 17; Interferences, 3;

Practice in the Courts, 1; Practice in the Patent Office, 1, 2, 10, 11, 14; Presump-
tions, 1; Priority of Invention, 1; Rehearing, 1.