§ 184. The Supreme Court of the United States have decided, upon great consideration, that the Commissioner of first, Mr. Justice Story said: "If the present case had stood merely upon the original bill, it appeaas to me clear, that the motion to dissolve the injunction granted upon that bill, ought to prevail, because, by the surrender of the patent, upon which that bill is founded, the right to maintain the same would be entirely gone. I agree that it is not in the power of the patentee, by a surrender of his patent, to affect the rights of third persons, to whom he has previously, by assignment, passed his interest in the whole or a part of the patent, without the consent of such assignees. But, here, the supplemental bill admits, that the assignees, who are parties to the original. and supplemental bill, have consented to such a surrender. They have, therefore, adopted it; and it became theirs in the same manner as if it had been their personal act, and done by their authority. The question, then, is precisely the same, as if the suit were now solely in behalf of the patentee. In order to understand, with clearness and accuracy, some of the objections to the continuance of the injunction, it may be necessary to state, that the original patent to William Woodworth, (the inventor,) who is since deceased, was granted on the 27th of December, 1828. Subsequently, under the 18th section of the Act of 1836, ch. 357, the Commissioner of Patents, on the 16th of November, 1842, recorded the patent in favor of William W. Woodworth, the administrator of William Woodworth, (the inventor,) for seven years, from the 27th of December, 1842. Congress, by an act passed at the last session, (Act of 27th of February, ch. 27,) extended the time of the patent for seven years, from and after the 27th of December, 1849, (to which time the renewed patent extended); and the Commissioner of Patents was directed to make a certificate of such extension, in the name of the administrator of William Woodworth, (the inventor,) and to append an authenticated copy thereof to the original letters-patent, whenever the same shall be requested by the said administrator or his assigns. The Commissioner of Patents, accordingly, on the 3d of March, 1845, at the request of the administrator, made such certificate on the original patent. On the 8th day of July, 1845, the administrator surrendered the renewed patent granted to him, " on account of a defect in the specification." The surrender was accepted, and a new patent was granted on the same day to the administrator, reciting the preceding facts, and that the surrender was 66 on account of a defective specification," and declaring that the new patent was extended for fourteen years from the 27th December, 1828, "in trust for the heirs at law of the said W. Woodworth, (the inventor,) their heirs, administrators or assigns." Now, one of the objections taken to the new patent is, that it is for the Patents can lawfully receive a surrender of letters-patent for a defective specification, and issue new letters-patent upon term of fourteen years, and not for the term of seven years, or for two successive terms of seven years. But it appears to me that this objection is not well founded, and stands inter Apices juris; for the new patent should be granted for the whole term of fourteen years, from the 27th of December, and the legal effect is the same as it would be if the patent was specifically renewed for two successive terms of seven years. The new patent is granted for the unexpired term only, from the date of the grant, namely, for the unexpired period existing on the 8th of July, 1845, by reference to the original grant in December, 1828. It is also suggested, that the patent ought not to have been "in trust for the heirs at law of the said W. Woodworth, their heirs, administrators or assigns." But this is, at most, a mere verbal error, if, indeed, it has any validity whatsoever; for the new patent will, by operation of law, enure to the sole benefit of the parties in whose favor the law designed it should operate, and not otherwise. It seems to me that the case is directly within the purview of the 10th and 13h sections of the Act of 1836, ch. 357, taking into consideration their true intent and objects. Another objection urged against the continuation of the injunction is, that the breach of the patent assigned in the original bill, can have no application to the new patent, and there is no ground to suggest, that, since the injunction was granted, there has been any new breach of the old patent, or any breach of the new patent. But it is by no means necessary that any such new breach should exist. The case is not like that of an action at law for the breach of a patent, to support which it is indispensable to establish a breach before the suit was brought. But, in a suit in equity, the doctrine is far otherwise. A bill will lie for an injunction, if the patent-right is admitted, or has been established, upon well-grounded proof of an apprehended intention of the defendant to violate the patent-right. A bill, quia timet, is an ordinary remedial process in equity. Now, the injunction already granted, (supposing both patents to be for the same invention,) is primâ facie evidence of an intended violation, if not of an actual violation." In the last case, Mr. Justice Woodbury said: "The original patent for fourteen years, given in December, 1828, expired in 1842, and, though it was extended by the board for seven years more, which would last till 1849, and by Congress for seven more, which would not expire till 1856, yet all of these patents were surrendered July 8th, 1845, and a new one taken out for the whole twenty-eight years from December, 1828. This was done, also, with some small amendments or corrections, in the old specification of 1828. After these new letters-patent for the whole term, no assignment an amended specification, after the expiration of the term for which the original patent was granted, and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term.1 § 185. Specifications may also be amended by another process, that of filing a disclaimer, whenever, through inadvertence, accident, or mistake, the original claim was too broad, claiming more than that of which the patentee was the original or first inventor, provided some material and substantial part of the thing patented is justly and truly his own. Such a disclaimer may be filed in the Patent Office by the patentee, his administrators, executors, and assigns, whether of the whole or of a sectional interest in the patent; and it having been made to Washburn and Brown, but only one previously on the 2d of January, 1843, the plaintiffs contend that, all the previous letters being surrendered, and a new specification filed, and new letters issued, any conveyance of any interest under the old letters is inoperative and void under the new ones; and hence that Washburn and Brown possess no interest in these last, and are improperly joined in the bill. But my impression, as at present advised, is, that, when a patent has been surrendered, and new letters are taken out with an amended specification, the patent has been always considered to operate, except as to suits for violations committed before the amendment, from the commencement of the original term. The amendment is not because the former patent or specification was utterly void, as seems to be the argument, but was defective or doubtful in some particular, which it was expedient to make more clear. But it is still a patent for the same invention. It can by law include no new one, and it covers only the same term of time which the former patent and its extensions did. In the present case, these are conceded to have been the facts; and it is an error to suppose that, on such facts, the new letters ought to operate only from their date. By the very words of those letters, no less than by the reasons of the case as just explained, they relate back to the commencement of the original term, and, for many purposes, should operate from that time." 1 Wilson v. Rousseau, 4 Howard, 646. If a new patent, issued on a surrender of an old one, be void for any cause connected with the acts of pub will be thereafter taken and considered as part of the original specification, to the extent of the interest of the disclaimant in the patent, and by those claiming by or under him, subsequent to the record thereof.1 § 186. Patents are sometimes extended by special Acts of Congress, passed upon the application of the patentees. But, by the Act of July 4th, 1836, c. 357, § 18, the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury were constituted a board 'of commissioners, to hear evidence for and against the extension prayed for, and to decide whether, having due regard to the public interest therein, it is just and proper that the term of the patent should be extended, because the patentee has failed to obtain a reasonable remuneration. The commissioners being satisfied that the patent ought to be renewed, it was made the duty of the Commissioner of Patents to make a certificate on the original patent, showing that it is extended for a further term of seven years from the expiration of the first term. § 187. But, by a very recent statute, this power is vested solely in the Commissioner of Patents, who is required to refer the application to the principal examiner, having charge of the class of inventions to which the case belongs, and, upon his report, to grant or refuse the patent, upon the same principles and rules that have governed the board provided by the former act.2 lic officers, it is questionable whether the original patent must not be considered in force till its term had expired. Woodworth v. Hall, 1 Woodb. & Minot, 389. 1 Act of Mar. 3, 1837, § 7. As to the effect of a disclaimer on actions, see the Chapter on REMEDY. 2 Act of Cong. May 27, 1848, § 1. This act declares that no patent shall be extended for a longer term than seven years. |