INTERFERING PATENTS. When two patents have been issued, whether by oversight of the patent office, or for any other reason, which one of the patentees believes to cover the same invention, the question is ordinarily decided in the usual procedure of an infringement suit. The defense is made that the plaintiff's patent is invalid, or if valid does not include the device which the defendant is making, vending or using under the second patent. A decision in favor of the defense, sustains either the non-identity of the inventions or the invalidity of the plaintiff's patent. As the decision may be in the defendant's favor on either ground, it does not necessarily determine the validity or invalidity of the plaintiff's patent unless the court so specifies particularly. But a decision in the plaintiff's favor settles the identity of the patents and the priority of the plaintiff's patent, and thus indirectly, determines the defendant's patent to be invalid. The statute provides in addition to this procedure an action whereby one of the patents may be directly declared void. The section reads,356 "Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest. of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment."

It is to be noted that the result of the decision affects only. the parties to the suit and those subsequently deriving title from them. Its practical advantage is therefore not much greater than that of the ordinary infringement action. The the patent office from the time of application in 1877 to an issue in 1891 without any intermediate action was held not to invalidate the patent. 356 R. S. 4918.

statute also provides that both patents may be declared invalid on a proper showing, so that there is a certain risk in bringing the action to the plaintiff, unless he has, as in some actions, something to gain and nothing to lose. It was actually held, in the case of Palmer Pneumatic-tire Co. v. Lozier, 357 that both patents were invalid. Counsel on both sides agreed that the court could decide nothing but the priority of one or the other of the patents and such had been the opinion of the court below, which decided that the patent later applied for and issued really represented the prior invention and was therefore the valid one of the two. "On the contrary,” said the Appellate Court, "we think the court is bound to determine whether, upon identifying the subject matter of the interfering patents, the invention therein stated is patentable. If it is not, and the court should go on and pronounce a decree of nullity against one of the patents, it would do so at the instance of one who has no right to protect, and consequently no standing on which to assail his adversary. The parties would not stand on equal ground in such a litigation, and consequently the power of the court would be perverted to the determination of an unprofitable inquest as to who was the first discoverer of a nullity. The outcome would be that, while one pretender would be dislodged, the other would occupy the field unscathed. We think that if, upon inspection of the patents, or in the course of the investigation it must make in order to determine the nature of the alleged invention, the court should see that the patents are void for lack of patentable subject matter, it ought not to proceed to an inquiry as to who first discovered the thing which the court finds to be null, and decree thereon, but should dismiss the bill." The general state of the art as shown by evidence outside of the patents themselves is admissible in this action as it is in others.358

INSUFFICIENCY OF REMEDIES. It will be observed that neither of these actions gives any remedy to the individual who believes an existing patent to be void and unenforcible, but who is not certain of the fact. The statute authorizes an ac

357 90 Fed. 732.

358 Simplex Ry. Appliance Co. v. Wands, 115 Fed. 517.

tion to question the validity of a patent only when the complainant is himself the owner of another patent, or otherwise interested in an existing patent. The action by the government, to have a patent declared void, may be started in the interest of an individual, but it appears to be maintainable only where the patent is attacked on the ground of fraud, or something more fundamental than the mere lack of invention in the thing patented. Yet these seem to be the only cases in which a patent can be attacked when the owner of the patent has not himself started the action and will not do so.

The only way, therefore, that the validity and effectiveness of a patent can be ascertained by one who wishes to enjoy the use of the thing patented without the permission of the patentee, is for him to make use of the invention and take his. chances either of not being sued by the patentee, or, if he is sued, of being able to defeat the patent. But such a course involves unjust risk. Many inventions require the investment of considerable fixed capital for their utilization. If one should make such investments in a mistaken belief that the patent was void, and then be successfully restrained by the patentee from infringing what the courts should hold to be a valid patent, his loss, through inability to utilize his fixed capital, would be far in excess of the compensatory damages which might be recovered by the plaintiff. That is, he would not only have to pay damages to the patentee, but also would lose his own investment. Even if no great initial investment were required, men might hesitate to go into the manufacture of a patented article, even though advised by expert counsel that the patent was invalid, knowing that if the patent should be held good by the courts, all their profits would be swept away and a carefully built up business destroyed.

Even when capitalists are perfectly willing to take the risk of operating in contravention of what they are convinced is an improperly issued and worthless patent, they can not always do so, successfully, on account of the patent. The patentee may himself be too doubtful of the validity of his patent to go into court where it can be attacked, and yet he may nevertheless successfully prevent serious infringement. The Vac

uum Cleaner Co., for instance, had patents covering certain elements of the usual construction of vacuum cleaners. The Electric Renovator Co. manufactured cleaners which the Vacuum Co. asserted infringed its patents. As the Renovator Co. denied that it was infringing a valid patent, the Vacuum Co. sent out circulars and threatening letters warning the wholesale houses and other customers of the Renovator Co., that the Renovator Co. had no license and that whoever handled its products would be prosecuted for infringement of the Vacuum Co.'s patents. For two years it continued this practice of frightening off the Renovator Co.'s customers, while at the same time persistently refusing to bring suit against anyone, in which the validity of its patents could be tried out. Finally, the Renovator Co., in the absence of any other remedy, sued for an order restraining the Vacuum Co. from continuing its unfair practice. The court granted the injunction on the ground that the allegation of infringement and the warnings sent out were not made in good faith, and that the lack of good faith was indicated by the refusal to bring suit in which the matter could be tried out. But even in this case the validity of the patent itself was not tried out; the defendant was merely enjoined from unfair practices. It is quite conceivable that, without going so far as to be demonstrably unfair, the owner of an invalid patent might make it almost impossible for any one successfully to invade his unjust monopoly.

364a

It is a serious defect in the patent law that it does not furnish any practical method by which the individual public can protect itself against the menace and extortionate monopolies of invalid patents. It may be that in time an action of some form will be provided, whereby one who honestly doubts the validity of an existing patent can get the judgment of a court, without having to await the dangerous convenience of the patentee. 364b

364 Electric Renovator Co. v. Vacuum Cleaner Co., 189 Fed. 754, Accord, Adriance Co. v. National Harrow Co., 121 Fed. 827.

364b For a discussion of "declaratory judgments" in general see the article by E. R. Sunderland in 16 Michigan Law Rev. 69. See also that of Borchard in 28 Yale Law Rev. I. The state of Michigan now provides for such declaratory judgments, Pub. Acts of 1919, No. 150.

CHAPTER VIII

THE OWNERSHIP OF THE MONOPOLY

§ I. DURATION

The statute provides365 that the owner of a valid patent shall have the exclusve right, to make, use and vend the invention or discovery covered by it throughout the United States and its Territories. This exclusive right is given for a period of 17 years. The time begins to run from the date of issue of the patent, and is unaffected by the date of invention or the date of application. The right to acquire a monopoly dates from the time of the invention, and the first inventor alone is entitled to a patent, no matter if another has been the first applicant. The duration of the monopoly, however, dates from the time the patent is issued.365" An extreme illustration of the materiality of this difference is found in the case of United States v. Amer

ican Bell Telephone Co.366 From about 1878 that Company had been operating its phones with transmitters that were covered by patents issued at that time. In 1891 another patent 365 R. S. 4884.

365a It is obvious, of course, that since the monopoly dates from the issue of the patent, the inventor has no monopoly until then. He can not prevent others from using his invention prior to the issue of his patent, nor can he recover anything as damage. "A patentee can not recover damages for the sale or use of his invention prior to the issuance of a patent but the fact that articles embodying the invention were manufactured before the patent was issued, unless by the patentee's consent, does not authorize their use thereafter." (Syl.) Columbia & N. R. R. v. Chandler, 241 Fed. 261. See also cases cited infra.

One who has applied for a patent may, however, mark his product "Patent Applied For" and this does have a practical deterrent effect, because it warns the user of the invention that his invested capital may be rendered worthless by the granting of the patent.

366 167 U. S. 224. The "Oldfield Bill," H. R. 1700, April 1913, which failed of passage in Congress, contained a provision limiting the monopoly to a maximum period of 19 years from the date of application.