of applying the same, described herein as the second part of my invention." The claim was construed not to apply to the metal fixings (which were notoriously old and well known) apart from their application.1

1 Oxley v. Holden, 8 C. B. N. s. 705.

CHAPTER VII.

PROCEEDINGS AT THE PATENT OFFICE.

I. Caveat for incomplete Invention.

II. The Petition, Oath, Payment of Fees.

III. Signatures of the Secretary of the Interior and Commissioner.

IV. Interfering Applications.

V. Reissue and Amendment of Patents.

CAVEAT FOR INCOMPLETE INVENTION.

§ 270. THE twelfth section of the act of July 4, 1836, provided that any citizen of the United States, or alien who shall have been resident in the United States one year next preceding, and who shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on payment of the sum of twenty dollars, file in the Patent Office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right till he shall have matured his invention; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein mentioned, shall be considered a part of the sum required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such a caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the commissioner to deposit the description, specifications, drawings, and model in the confidential archives of the office, and to give notice, by mail, to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings, and model; and if, in the opinion of the commissioner,

the specifications of claim interfere with each other, like proceedings may be had in all respects as are provided in the case of interfering applications.

These provisions were somewhat modified by the Patent Act of 1861 (Laws 1861, c. 88, § 9), which declared, "And be it further enacted, That no money paid as a fee on any application for a patent after the passage of this act shall be withdrawn. or refunded, nor shall the fee paid on filing a caveat be considered as part of the sum required to be paid on filing a subsequent application for a patent for the same invention. That the three months' notice given to any caveator, in pursuance of the requirements of section twelve, act of July 4th, 1836, shall be computed from the day on which such notice is deposited in the post-office at Washington, with the regular time for the transmission of the same added thereto, which time shall be indorsed in the notice." Section ten of this act of 1861 also abolishes the laws regulating the fees at the Patent Office, and discriminating between citizens of the United States and that of other countries, and provides that the fee for filing each caveat shall be ten instead of twenty dollars. As to the effect of a caveat upon a subsequent patent, see the ruling of Sprague, J., in Johnson v. Root,1 MS.: "It is contended, on the part of the defendant, that the caveat itself is conclusive evidence that the invention was not perfected. You will observe that the application, which is in the caveat before you, made to the Patent Office by Mr. Johnson for leave to file. a caveat, sets forth that he has made a certain new and useful improvement in the sewing-machine, and that he is then making experiments to perfect it, and he asks leave to file a caveat to secure it. The defendant insists that that application is of itself conclusive evidence that he has not perfected it. We will look at it, gentlemen, and see. I do not instruct you that it is conclusive evidence; but it is evidence for you to take into view in connection with the other evidence, and in connection with the other parts of the same instrument, in which he begins by saying that he has made a new and useful invention in the sewing-machine. Now, gentlemen, although a caveat is understood to be, and in this instance is, filed in order to allow the party to perfect his machine, yet if, in point of fact, the invention had been perfected

1 See also Johnson v. Root, 2 Fisher's Pat. Cas. 291.

in the eye of the law, as I have explained to you, then, if you are satisfied of that from the evidence, you may deem it, for the purposes of this trial, as perfected. Or it may happen that a person may choose to file a caveat while he is going on and making improvements upon an invention which he has already completed, so as to be of practical utility. Therefore, gentlemen, I would say to you that you will take into consideration the declaration of the plaintiff himself in the application, that he had made a new and useful improvement in sewing-machines, and the further declaration that he is making experiments in order to perfect his invention, and the subsequent declaration that he has made a new and useful improvement, and the other evidence in relation to the case, that is, what is described in the caveat and the model made in 1848, and see if that exhibits to you a perfected machine; and then such further evidence as you have as of the actual operation of the machine that will be before you.

"Now, gentlemen, if he had perfected it, then he had a right to embrace it in a patent that he should afterwards take out. If he had not perfected it, then another question will arise, and that is, had he invented the feeding mechanism at that time, and did he use due diligence to perfect that and put it into a perfect machine so as to make it of some practical utility. If the invention was perfected, as I have already said, or, if not perfected, if Mr. Johnson used reasonable diligence to perfect it, then he had a right to have it incorporated into his patent, and to supersede those that had intervened between his first discovery and his subsequent taking out of the patent. If he had not perfected it, and did not use due diligence to carry it into effect, and in the mean time, before he got his patent, some one else had invented and used and incorporated into a practical, useful machine that mode of feeding, then he could not, by subsequent patent, appropriate to himself what was embraced in the former machine, between his caveat and the obtaining of his patent."

§ 270 a. The law on this subject is now regulated by the act of 1870, section forty of which provides: "That any citizen of the United States who shall have made any new invention or discovery, and shall desire further time to mature the same, may, on payment of the duty required by law, file in the Patent Office a caveat setting forth the design thereof, and of its distinguishing characteristics, and praying protection of his right until he shall

have matured his invention; and such caveat shall be filed in the confidential archives of the office and preserved in secrecy, and shall be operative for the term of one year from the filing thereof; and if application shall be made within the year by any other person for a patent with which such caveat would in any manner interfere, the commissioner shall deposit the description, specification, drawings, and model of such application in like manner in the confidential archives of the office, and give notice thereof, by mail, to the person filing the caveat, who, if he would avail himself of his caveat, shall file his description, specifications, drawings, and model within three months from the time of placing said notice in the post-office in Washington, with the usual time required for transmitting it to the caveator added thereto, which time shall be indorsed on the notice. And an alien shall have the privilege herein granted, if he shall have resided in the United States one year next preceding the filing of his caveat, and made oath of his intention to become a citizen."

THE PETITION, OATH, PAYMENT OF FEES, ETC.

§ 271. The act of 1836, § 6, required an inventor who desired to obtain a patent to "make application in writing to the Commissioner of Patents," &c. This application in writing has, from the origin of the government, been by way of petition, generally with the specification annexed and referred to, or accompanied by the specification, filed at the same time. The form of the petition is not material, provided it set forth the facts to which the applicant is required to make oath. When filed, it is to be presumed to adopt the specification, or schedule, filed at the same time, and to ask for a patent for the invention therein described.1

If a party chooses to withdraw his application for a patent and pay the forfeit, intending at the time of such withdrawal to file a new petition, and he accordingly does so, the two petitions are to be considered as parts of the same transaction and as constituting a continuous application, within the meaning of the law. The question of the continuity of the application should be submitted to the jury. Where an inventor, having made application for a

1 Hogg v. Emerson, 6 How. 437, 480. The rules of the Patent Office give a form of petition which it is advisable to adopt in all cases. See Appendix. 2 Godfrey v. Eames, 1 Wall. 317.